PTAB

IPR2013-00136

ZTE Corp v. ConTentGuard HOldIngs Inc

Log In

1. Case Identification

2. Patent Overview

  • Title: Method and Apparatus for Processing Usage Rights Expressions
  • Brief Description: The ’884 patent is directed to systems and methods for processing digital rights management (DRM) expressions. The invention addresses the computational burden of processing complex, grammar-based rights expressions (e.g., XrML) by translating them into a simplified "intermediate format" that can be more efficiently processed, particularly on resource-constrained devices.

3. Grounds for Unpatentability

Ground 1: Anticipation over Messerges - Claims 1-8, 14-20, 27-34, 40-46, and 53-70 are anticipated by Messerges under 35 U.S.C. §102.

  • Prior Art Relied Upon: Messerges (Application # 2002/0157002).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Messerges, which discloses a DRM system for managing digital content, anticipates the challenged claims. Messerges teaches transcribing a rights document written in a standard format like XrML (the claimed "original format") into a more efficient, binary "Encoded Rights Table" or ERT. Petitioner asserted that this ERT constitutes the claimed "intermediate format." Messerges allegedly discloses that the ERT is generated from the original rights document and is used to control usage rights on a device, thereby teaching all limitations of independent claims 1 and 27.

Ground 2: Obviousness over Messerges and Safadi - Claims 1-8, 14-20, 27-34, 40-46, and 53-70 are obvious over Messerges in view of Safadi.

  • Prior Art Relied Upon: Messerges (Application # 2002/0157002) and Safadi (Application # 2003/0126086).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Messerges teaches converting a rights expression into an intermediate format (the ERT), while Safadi teaches translating a rights expression from an original DRM format into a different, native DRM format. The combination of these teachings allegedly renders the claimed invention obvious, as it describes a system that can translate a rights expression from one scheme to another (Safadi) and then transcribe it into a simpler, subsequent format (Messerges).
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Messerges and Safadi to increase DRM system flexibility and interoperability. Both references address making DRM more efficient for a wider range of devices, including those with limited resources, providing a clear reason to integrate their respective solutions.
    • Expectation of Success: A POSITA would have reasonably expected to successfully combine the teachings, as it involves a straightforward integration of two known DRM processing techniques (translation and transcription) to improve overall system efficiency.

Ground 3: Obviousness over Daniele and Stefik - Claims 1, 4-7, 19-20, 27, 30-33, 45-46, 53-54, 61, and 69 are obvious over Daniele in view of Stefik.

  • Prior Art Relied Upon: Daniele (Patent 5,444,779) and Stefik (Patent 5,629,980).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Daniele teaches encoding rights information (e.g., copyright and royalty data) into an intermediate format (ASCII data and then a 2D glyph) to control the printing of a document. Stefik teaches a rights management system that uses a formal, grammar-based language to define usage rights statements. Petitioner asserted that it would have been obvious to use the formal, grammar-based rights language of Stefik as the input for the encoding process taught by Daniele.
    • Motivation to Combine: A POSITA would have been motivated to combine these references to enhance the flexibility of rights management. Using Stefik's structured rights language with Daniele's glyph-based enforcement mechanism would enable support for a wider variety of distribution and fee schemes for controlling document reproduction.
    • Expectation of Success: Success would be expected because the combination simply applies a more structured, grammar-based rights language (Stefik) to a known system for encoding and enforcing such rights (Daniele), which is a predictable improvement.

  • Additional Grounds: Petitioner asserted numerous additional challenges, including anticipation of various claim sets by Safadi, Erickson (Application # 2003/0046093), Daniele, and Hall (Patent 5,920,861). Further obviousness grounds were asserted based on combinations of Hall in view of Stefik, Messerges in view of Erickson, and Messerges in view of Daniele, all relying on similar arguments about combining known DRM processing steps to achieve more efficient or flexible rights enforcement.

4. Key Claim Construction Positions

  • "means for generating an intermediate format" (§112 Indefiniteness): Petitioner dedicated significant argument to the means-plus-function language in independent claim 27 and several dependent claims. The petition contended that these claims are invalid as indefinite under §112 because the ’884 patent specification fails to disclose adequate corresponding structure or algorithms for performing the claimed functions. The specification allegedly describes only high-level, generic blocks (e.g., "localizer," "simplifier," "translator") without the necessary detail to inform a POSITA of what the structure is.
  • Construction for IPR Purposes: Despite arguing for indefiniteness, Petitioner proposed a construction for the IPR to proceed. Petitioner construed the "means for generating" limitations as a hardware, software, or combined hardware-software system that performs the functions described in the specification (e.g., localizing, simplifying), allowing the prior art to be applied against the claims.

5. Key Technical Contentions (Beyond Claim Construction)

  • Contested Priority Date: A central contention of the petition was that the ’884 patent is not entitled to its claimed priority date of March 14, 2002, from its provisional application. Petitioner argued that the provisional application lacks the requisite written description support for key claim limitations, including "generating an intermediate format." Petitioner asserted the correct priority date for most claims is the patent's actual filing date of March 14, 2003. This argument is critical, as it makes several key references, including Messerges, Safadi, and Erickson, prior art under §102(b) or §102(e).

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-11, 13-22, 27-37, 39-48, and 53-70 of the ’884 patent as unpatentable.