PTAB

IPR2013-00134

ZTE Corp v. ConTentGuard HOldIngs Inc

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1. Case Identification

2. Patent Overview

  • Title: Digital Works Having Usage Rights and Method for Creating the Same
  • Brief Description: The ’160 patent relates to a system and method for controlling the use of digital works. The invention involves a computer-readable medium where a digital work comprises a digital content portion and an associated usage rights portion, all organized within a "description structure" that defines the content's location and the rules for its use.

3. Grounds for Unpatentability

Ground 1: Anticipation - Claims 1-2, 9, 12-13, 23, and 30-31 are anticipated by EP 306 under 35 U.S.C. §102(b).

  • Prior Art Relied Upon: EP 306 (European Patent Pub. No. 0 464 306).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that EP 306 discloses every limitation of the challenged independent claims. EP 306 teaches a system for managing a structured electronic book using Standardized General Markup Language (SGML) tags to control use. Petitioner contended that the "Parameter Table" shown in Figure 5 of EP 306 is the claimed "description structure." This table is alleged to comprise a "plurality of description blocks" (the individual rows or entries in the table), where each block contains "address information" (e.g., coordinates for a local element or flags for the cover page/all pages) and a "usage rights part" (e.g., rules prohibiting printing or communication).
    • Key Aspects: This ground directly targeted the "description structure" limitation that the Patent Owner added to overcome prior art during prosecution. Petitioner argued EP 306’s Parameter Table, which links content sections to specific usage rules, squarely meets this limitation.

Ground 2: Anticipation - Claims 1-3, 8-9, 12-13, 15-16, 20, 23, and 30-31 are anticipated by EP 800 under §102(b).

  • Prior Art Relied Upon: EP 800 (European Patent Pub. No. 0 567 800).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that EP 800, similar to EP 306, discloses a complete digital rights management (DRM) system that anticipates the claims. EP 800 describes controlling softcopy books using embedded statements (tags) in a structured document. The "Loaded Parameter Table" in Figure 7 of EP 800 was identified as the claimed "description structure." This table contains multiple entries ("description blocks") that associate element coordinates ("address information") for parts of the digital book (e.g., a specific chapter) with usage rights, such as royalty fee requirements ("usage rights part"). Dependent claims relating to fee types (claim 3) and best-price fees (claim 8) were also allegedly disclosed through EP 800's teaching of royalty fees and amounts.
    • Key Aspects: Petitioner noted that EP 800 shares a nearly identical specification with the Hartrick patent, a reference considered during prosecution. However, Petitioner argued EP 800 was being presented in a new light, as the specific portions disclosing the "description structure" were never cited or relied upon by the Examiner.

Ground 3: Obviousness - Claims 2-4, 6-7, 15-18, 21, 25-26, and 34-35 are obvious over EP 306 in view of Perritt under §103(a).

  • Prior Art Relied Upon: EP 306 (European Patent Pub. No. 0 464 306) and Perritt (a 1993 conference paper on "Knowbots, Permissions Headers and Contract Law").

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that EP 306 provides the base system of a digital work with a description structure and usage rights, as detailed in Ground 1. Perritt was introduced as teaching a "permissions header" attached to information objects that flexibly specifies various economic terms and usage rights, such as flat fees, volume-based fees, and metered, connect-time-based fees (e.g., $10.00 per minute). The combination was argued to render obvious the dependent claims related to specific fee structures (e.g., metered use fees, scheduled fees).
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the teachings because both references address protecting a copyright owner's interests in a digital work. A POSITA would have been motivated to incorporate the flexible and varied economic terms from Perritt's permissions header into the structured DRM system of EP 306 to create a more robust and commercially flexible system.
    • Expectation of Success: The combination was asserted to be predictable, as it involved applying a known method for defining flexible usage fees (Perritt) to a known type of DRM system (EP 306) to achieve the expected benefit of enhanced control over digital content.

  • Additional Grounds: Petitioner asserted numerous additional grounds, primarily arguing obviousness by substituting EP 800 for EP 306 as the base reference or by combining the base references with other art. These included combinations with Wyman (Patent 5,260,999) to teach more flexible license terms (e.g., license duration, number of copies); with Porter (Patent 5,263,160) to teach using pointers between description blocks; and with "admitted prior art" (the common knowledge of "mark-up prices") to teach mark-up fees.

4. Key Claim Construction Positions

  • Petitioner argued for a broad construction of the term "description structure" to encompass any "structure which describes the location of content and the usage rights and usage fees for a digital work," based on the patent's own specification. This construction was critical to Petitioner's case, as it allowed the "Parameter Table" structures in both EP 306 and EP 800 to be mapped directly onto this claim limitation, thereby rebutting the specific reason for allowance cited by the Examiner during prosecution.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of all claims, 1-38, of Patent 7,225,160 as unpatentable under 35 U.S.C. §§ 102 and 103.