Microsoft Corp v. Optimum Content Protection LLC

1. Case Identification

• Case #: IPR2015-00048
• Patent #: 7,502,470
• Filed: October 8, 2014
• Petitioner(s): Microsoft Corporation
• Patent Owner(s): Optimum Content Protection LLC
• Challenged Claims: 1-33

2. Patent Overview

• Title: Method and Apparatus for Content Protection Within an Open Architecture System
• Brief Description: The ’470 patent discloses a system for securely processing and rendering protected digital content (e.g., from a DVD) within an "open architecture" computing environment like a personal computer. The invention uses a "closed subsystem," which users cannot modify, to decrypt received content, process it, optionally combine it with unprotected graphics or audio, and then re-encrypt the final output before sending it to an external device.

3. Grounds for Unpatentability

Ground 1: Anticipation by Evans - Claims 1-9, 11-15, 18-19, and 23-33 are anticipated by Evans.

• Prior Art Relied Upon: Evans (Patent 7,296,154).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Evans disclosed every limitation of the challenged claims. Evans described a system for protecting content within a computer using a "protected media path" composed of "trusted" components. Petitioner asserted this path constituted the claimed "closed subsystem" because it was designed to prevent tampering by end-users. Within this path, Evans disclosed receiving encrypted data, decrypting it to generate raw data, mixing (or "blending") the decrypted content with other graphics data (e.g., a user's desktop), and re-encrypting the resulting data before output. This re-encryption, Petitioner argued, met the limitation of "preventing access to the raw data outside of the closed subsystem" before asserting the protected data to an external rendering device. The petition provided a detailed, element-by-element mapping of Evans to independent claims 1, 12, and 29, and extended the analysis to the dependent claims.

Ground 2: Obviousness over Evans and Pasqualino - Claims 5, 10, 17, 22, and 31 are obvious over Evans in view of Pasqualino.

• Prior Art Relied Upon: Evans (Patent 7,296,154) and Pasqualino (Application # 2002/0097869).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative for claims requiring re-encryption according to the HDCP (High-bandwidth Digital Content Protection) protocol. Petitioner argued that while Evans taught digital output protection over DVI interfaces, it did not explicitly name HDCP. Pasqualino remedied this by disclosing the use of the HDCP version 1.0 specification to encrypt output from a DVI interface.
  • Motivation to Combine: A POSITA would combine these references because Evans already disclosed the necessary hardware (a DVI interface) and the general goal (digital output protection). HDCP, as taught by Pasqualino, was the well-known industry standard specifically designed to provide content protection for DVI interfaces. Therefore, incorporating Pasqualino’s teaching of HDCP into the Evans system would have been a simple and routine design choice to implement the known concept of output protection.
  • Expectation of Success: Success would be expected because implementing a known standard (HDCP) on a compatible interface (DVI) was a straightforward task for a person of ordinary skill.

Ground 3: Obviousness over Evans and Peled - Claims 1-33 are obvious over Evans in view of Peled.

• Prior Art Relied Upon: Evans (Patent 7,296,154) and Peled (Patent 7,350,228).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground was asserted in the event the Patent Owner argued that Evans' "protected media path" did not meet the "closed subsystem" limitation. Peled taught techniques to improve the security of the same type of Microsoft media architecture described in Evans by making it more tamper-resistant. Peled explicitly disclosed implementing content processing components as a tamper-resistant hardware subsystem (e.g., a "watchdog" component) that continually monitors for unauthorized modifications, thereby creating a "closed subsystem" that prohibits the addition or removal of components.
  • Motivation to Combine: A POSITA would combine Evans and Peled because both references were directed to solving the exact same problem: protecting digital content within a Microsoft media architecture on a personal computer. Peled’s security enhancements were presented as improvements to the type of system disclosed in Evans. A POSITA seeking to enhance the security of the Evans system would have naturally looked to a reference like Peled and incorporated its tamper-resistance methods.
  • Expectation of Success: A POSITA would have a high expectation of success because Peled was designed to be applied to systems like the one in Evans.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Evans with Novak (Patent 7,219,308) for adding menu information, with the HDCP Component License Agreement for using HDMI outputs, and with Kim (Patent 7,058,290) for using HD-DVDs as a content source.

4. Key Claim Construction Positions

• "closed subsystem" / "closed system": Petitioner argued for the express definition in the ’470 patent’s specification: "a subsystem that does not provide users a way to add hardware or software thereto or remove hardware or software therefrom." This construction was critical to mapping the "trusted" and tamper-resistant components of the prior art to the claims.
• "preventing access to the raw data outside of the closed subsystem": Petitioner contended this phrase should be interpreted to mean preventing access other than by sending encrypted data that can be decrypted by an authorized external device for display. This construction was necessary to argue that the prior art, which re-encrypts data before output, met the limitation, as the receiving device must ultimately access the raw data to display it.

5. Arguments Regarding Discretionary Denial

• The petition noted the concurrent filing of a second IPR petition (IPR2015-00049) against the same ’470 patent. Petitioner argued that the grounds in the two petitions were not redundant. It was explained that this petition ('048) rested primarily on anticipation under 35 U.S.C. §102, while the companion '049 petition relied solely on different prior art combinations for obviousness under 35 U.S.C. §103, which had earlier priority dates. This was presented as a strategic hedge in case the Patent Owner successfully asserted an earlier date of invention.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-33 of the ’470 patent as unpatentable.