PTAB

IPR2014-00061

Apple Inc v. Grobler Benjamin

Key Events

Petition

petition

Title: Data vending system
Brief Description: The ’084 patent describes an electronic data vending system that allows users to purchase or rent copyrighted digital data, such as music, videos, and computer programs. The system is designed to facilitate royalty payments for the use of the vended data.

Prior Art Relied Upon: Saigh (Patent 5,734,823).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued Saigh, which was not considered during prosecution, discloses a complete data vending system with a central information bank ("data depot") and point-of-sale terminals ("data dispensing devices"). Saigh’s system uses a portable storage cartridge ("data carrier") with a unique serial number. This cartridge is activated for receiving and releasing encrypted data using a combination of the serial number and a user's PIN, which collectively constitute the claimed "key means." The point-of-sale terminal verifies the user's PIN and a password to authorize downloads, meeting the "verification mechanism" limitation of claim 1. Furthermore, Saigh's remote central transactional database keeps records of each transaction, including user data and downloaded content, satisfying the detailed database limitations. For claim 4, Saigh explicitly teaches a "point of rental storage media" configurable to permit reading of data for a preset time, after which an automatic erasure mechanism deletes the information, directly teaching the "data renting and removing" feature.

Prior Art Relied Upon: Katz (Patent 5,926,624).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Katz, also not considered during prosecution, describes a digital information library system meeting all limitations of claim 1. The system includes a library server ("data depot") that communicates with a client computer system ("data dispensing device"). A removable "mobile playback device" serves as the "data carrier" and has a unique player ID for identification. This device includes a microprocessor linked to a "pre-defined set of bit streams or data structures" ("software key") that performs a verification sequence to "activate the data carrier for receiving data," thus teaching the claimed "key means." The client system and library server also use a unique authentication protocol to verify each other's authenticity, satisfying the "verification mechanism" limitation.

Prior Art Relied Upon: Ackroyd (UK Application No. GB 2,305,339).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that although Ackroyd was cited during prosecution, it was never substantively applied against the claims. Ackroyd discloses a data vending system comprising a central database on a main host computer ("data depot") that communicates with point-of-sale recording terminals ("data dispensing devices"). Users record data onto plug-in data storage devices ("data carriers") with unique identification numbers. Crucially, Ackroyd teaches an option for temporary usage of the data ("data rental") defined by a predetermined period. After this period, access is limited by either erasing the data or inhibiting its decompression or decryption, which Petitioner contended is equivalent to the claimed data being "deleted immediately" or "scrambled," thus anticipating every element of claim 4.

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 discloses a complete data vending system as detailed in Ground 1. Sachs, which describes an electronic publishing and distribution system, teaches a host computer ("data dispensing device") that verifies the authenticity of a portable electronic book ("data carrier"). This verification is performed by comparing the device's unique serial number, which acts as a "public key," against a stored list of valid keys in memory. This explicitly teaches the "verification mechanism" for verifying the authenticity of the "key means" as recited in claim 1(g).
- Motivation to Combine: A POSITA would combine these references because both relate to the analogous art of distributing electronic data. A POSITA seeking to improve the security of Saigh's system would have been motivated to incorporate the known key verification method taught by Sachs to prevent unauthorized data access and enhance the protection of vended content.
- Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination. The integration involves applying a known security protocol (key verification from Sachs) to a known data vending system (Saigh), which would have been a predictable and straightforward implementation using known methods to achieve a more secure system.

Petitioner proposed that the term "key means" in claim 1 should be construed as a means-plus-function limitation under §112, ¶ 6.
- Function: Performing at least one function from the group: 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 functions.
Petitioner noted that this construction is consistent with the Patent Owner's infringement contentions in co-pending litigation. Petitioner also argued that the ’084 patent specification fails to disclose the corresponding algorithm for this structure, but assumed for the purposes of the IPR that the claim was adequately supported.

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