PTAB

IPR2013-00454

ZTE Corp v. ContentGuard Holdings Inc

Log In

1. Case Identification

2. Patent Overview

  • Title: Digital Works Having Usage Rights and Method for Creating the Same
  • Brief Description: The ’160 patent discloses a system and method for controlling the use of a digital work. The system embeds a digital work on a computer-readable medium, where the work comprises a digital content portion, an associated usage rights portion, and a description structure that links specific rights to specific parts of the content.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-3, 8-9, and 23 by EP 800

  • Prior Art Relied Upon: EP 800 (European Patent Publication No. 0 567 800).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that EP 800 discloses every element of independent claims 1 and 23. EP 800 teaches a system for managing digital "softcopy books" where the claimed "digital work" is a combination of two logically associated entities stored in memory: a "structured document" and a "Loaded Parameter Table." The structured document, which contains the book's text and embedded royalty tags (e.g., using SGML), corresponds to the claimed "digital content portion" and "usage rights portion." The Loaded Parameter Table, which contains coordinates mapping the royalty tags to specific parts of the text and defines the associated usage fees, constitutes the claimed "description structure." Petitioner contended this table includes a plurality of "description blocks" (i.e., table entries), each with address information (element coordinates) and a usage rights part (royalty flags and amounts).
    • Key Aspects: A central argument was that the claimed "digital work" does not need to be a single file. Petitioner asserted that both the ’160 patent's preferred embodiment and the system in EP 800 describe the content and the description structure as separate files (a "contents file" and a "description tree file" in the patent), which are logically combined to form the complete digital work. This argument directly addressed a previous PTAB finding in a related IPR (IPR2013-00134) that EP 800’s parameter table was not “included within, or part of, the softcopy book.”

Ground 2: Obviousness of Claims 1-3, 8-9, and 23 over EP 800 in view of O’Callaghan

  • Prior Art Relied Upon: EP 800, and O’Callaghan (Patent 5,477,263).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that EP 800 teaches all components of the claimed "digital work"—the structured document (content and rights) and the Loaded Parameter Table (description structure). O’Callaghan teaches a digital content distribution system for video programming that combines digital content (video/audio streams) with a description structure (a program map table) into a single data stream for efficient transmission and storage.
    • Motivation to Combine: A POSITA would be motivated to combine the teachings because both references address the distribution and rendering of digital content. Applying O’Callaghan’s teaching to EP 800’s system, a POSITA would find it obvious to combine EP 800's structured document and Loaded Parameter Table into a single entity or data stream. This combination would adapt the digital work for more efficient transmission or storage, a known goal in the art.
    • Expectation of Success: Success would be expected as combining data structures into a single stream for transmission was a well-understood and routine practice in digital content distribution at the time.

Ground 3: Obviousness of Claims 2, 10, and 24-28 over EP 800 in view of Wyman

  • Prior Art Relied Upon: EP 800, and Wyman (Patent 5,260,999).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground built upon EP 800's disclosure of the independent claims' features. Wyman discloses a flexible license management system for software that uses a "product use authorization" document to specify various usage rights. This document includes fields for status information (e.g., product name, release date), conditions on use (e.g., number of copies, valid time window), and allows for usage rights to be stored in a separate license database from the software itself. Petitioner argued Wyman’s teachings render obvious the dependent claims reciting status information (claim 2), storing content and rights on different devices (claim 10), and conditions based on the number of copies or time units (claims 24-25).
    • Motivation to Combine: A POSITA would be motivated to combine the references to provide a more flexible and robust digital rights management system. Combining EP 800’s basic DRM structure with Wyman’s detailed and flexible license management features would have been a predictable improvement to enhance control over the distribution and use of digital works.
    • Expectation of Success: The combination involved applying known licensing and status-tracking concepts from Wyman to the DRM system of EP 800, which would have been straightforward for a POSITA.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, primarily targeting dependent claims. These grounds relied on combinations including Perritt (a paper on permissions headers for flexible economic terms), Porter (Patent 5,263,160, teaching linked lists for data structures), and Admitted Prior Art (the common knowledge of "mark-up prices").

4. Key Claim Construction Positions

  • "digital work": Petitioner’s primary contention, woven throughout the grounds, was that the term "digital work" should be construed to encompass a collection of logically associated but potentially separate files. They argued that a construction requiring the content, rights, and description structure to be a single, monolithic entity would improperly exclude the patent’s own preferred embodiment, which describes a separate "contents file" and "description tree file." This construction was critical to arguing that EP 800’s separate "structured document" and "Loaded Parameter Table" together constitute an anticipatory "digital work."

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-11 and 23-29 of the ’160 patent as unpatentable under 35 U.S.C. §102 and/or §103.