PTAB

IPR2014-00060

Apple Inc v. Grobler Benjamin

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Data vending system
  • Brief Description: The ’084 patent describes an electronic data vending system that allows users to purchase or rent copyrighted data, such as music and software. The system includes a central "data depot," remote "data dispensing devices," and portable "data carriers" onto which data is downloaded.

3. Grounds for Unpatentability

Ground 1: Anticipation over Saigh - Claims 1 and 4 are anticipated by Saigh under 35 U.S.C. §102(e).

  • Prior Art Relied Upon: Saigh (Patent 5,734,823).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Saigh, which was not considered during prosecution, discloses every element of claims 1 and 4. Saigh describes a point-of-sale information distribution system where users download data to a portable storage device ("data carrier"). For claim 1, Saigh’s system uses a unique serial number linked to the portable device’s processor and a user's PIN to decrypt downloaded files, meeting the "key means" limitation. The point-of-sale terminal verifies the user's PIN and password to activate the device, meeting the "verification mechanism" limitation. For claim 4, Saigh explicitly discloses a "data renting and removing" feature where rented information is automatically erased or made inaccessible after a rental period expires.
    • Key Aspects: Petitioner contended that Saigh provides new, noncumulative technological disclosure that directly corresponds to the "key means," "verification mechanism," and "data renting" features identified as the points of novelty during the ’084 patent’s prosecution.

Ground 2: Anticipation over Katz - Claim 1 is anticipated by Katz under 35 U.S.C. §102(e).

  • Prior Art Relied Upon: Katz (Patent 5,926,624).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Katz, also not previously considered, discloses every limitation of claim 1. Katz describes a digital information library system with a removable mobile playback device ("data carrier") that has a unique player ID. The device includes a microprocessor linked to a "pre-defined set of bit streams or data structures" (a "software key") that performs a verification sequence to "activate the data carrier for receiving data," thus teaching the "key means." Furthermore, the client computer system in Katz uses a similar verification sequence to confirm the authenticity of the mobile device, teaching the "verification mechanism" limitation.

Ground 3: Anticipation over Ackroyd - Claim 4 is anticipated by Ackroyd under 35 U.S.C. §102(b).

  • Prior Art Relied Upon: Ackroyd (UK Patent Application No. GB 2,305,339).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Ackroyd discloses every element of claim 4, particularly the "data renting and removing" feature. Ackroyd describes a system for temporary usage of data ("data rental") where access is limited to a predetermined time. After the time expires, the data is either erased or its use is inhibited by preventing its decompression or decryption. Petitioner contended that preventing decryption is equivalent to the "scrambled" limitation in claim 4. Although Ackroyd was cited in an IDS during prosecution, Petitioner argued it was never substantively considered by the examiner with regard to the key features of claim 4.

Ground 4: Obviousness over Saigh and Sachs - Claim 1 is obvious over Saigh in view of Sachs under 35 U.S.C. §103(a).

  • Prior Art Relied Upon: Saigh (Patent 5,734,823) and Sachs (Patent 5,956,034).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Saigh teaches the entire data vending system of claim 1 except for a robust verification mechanism. Sachs, which describes an electronic publishing distribution system, remedies this deficiency by teaching a host computer ("data dispensing device") that authenticates a portable electronic book ("data carrier"). Sachs discloses that the host computer verifies the authenticity of the portable device by comparing its unique serial number, which serves as a "public key," against a valid key list stored in memory. This teaches the "verification mechanism" limitation of claim 1.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to combine the teachings of Saigh and Sachs to improve the security of the data vending system. Both references address the same problem of distributing electronic data and are therefore analogous art. A POSITA would have recognized the benefit of incorporating Sachs's known public-key verification method into Saigh’s system to ensure that only authorized data carriers could download protected content.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining these systems. The verification of encryption keys was a well-known technique, and applying Sachs's specific authentication protocol to Saigh's data vending system would have predictably resulted in a more secure system using known methods.

4. Key Claim Construction Positions

  • "key means" (Claim 1): Petitioner proposed that this term is a means-plus-function limitation under 35 U.S.C. §112, ¶ 6.
    • Function: Performing at least one function from the group of: activating/deactivating the data carrier for receiving data, and activating/deactivating the data carrier for releasing data.
    • Structure: A microprocessor linked to a hardware or software key configured with a software algorithm for performing the recited functions.
  • Petitioner noted that this construction is consistent with the Patent Owner's infringement contentions in parallel district court litigation and argued it is the broadest reasonable construction, despite asserting that the specification provides no adequate disclosure of the corresponding structure.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1 and 4 of Patent 6,799,084 as unpatentable.