Adobe Systems Inc v. Grecia William

1. Case Identification

• Case #: IPR2018-00418
• Patent #: 8,402,555
• Filed: January 4, 2018
• Petitioner(s): Adobe Systems Incorporated
• Patent Owner(s): William Grecia
• Challenged Claims: 1-26

2. Patent Overview

• Title: Personalized Digital Media Access System (PDMAS)
• Brief Description: The ’555 patent discloses a system for monitoring access to encrypted digital media and facilitating interoperability across multiple devices. The system employs an electronic ID and a unique "membership verification token" that are "branded" or written into the metadata of the digital media to manage access rights.

3. Grounds for Unpatentability

Ground 1: Obviousness over Core DRM References - Claims 1-6, 8-22, and 24-25 are obvious over Ameerally, Gautier, Frakes, Zweig, and Venkataramu.

• Prior Art Relied Upon: Ameerally (Application # 2006/0212401), Gautier (Application # 2005/0021478), Frakes (a 2008 MacWorld.com article), Zweig (Application # 2007/0233606), and Venkataramu (a 2007 project report).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of references described the well-known features of Apple's iTunes/FairPlay digital rights management (DRM) system. Ameerally and Frakes taught a system where a user redeems a unique promotional or serial code (the claimed "membership verification token") to access encrypted media. This process inherently involved a server receiving a request from a user's device, authenticating the token against a database, and requiring the user to be logged into an account (the "electronic identification reference"). The key contribution of Frakes and Venkataramu was their explicit disclosure that the iTunes system writes user account information directly into the metadata of the downloaded media file, thus satisfying the "branding" limitation of independent claim 1.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) developing a DRM system would combine these contemporaneous references as they all describe compatible solutions within the same field, namely Apple's industry-leading iTunes system. Ameerally incorporated Gautier by reference, and the other references described different facets of the same integrated system, providing a strong suggestion for their combination. Venkataramu provided reverse-engineered details of the FairPlay DRM that a POSITA would use to understand aspects Apple would not publicly disclose.
  • Expectation of Success: A POSITA would have a high expectation of success in combining the references, as the resulting system would largely mirror the features of the commercially successful and widely implemented Apple iTunes system.

Ground 2: Obviousness with Identifier Teaching - Claims 7 and 23 are obvious over Ameerally, Gautier, Frakes, Zweig, Venkataramu, and Linking to iTunes.

• Prior Art Relied Upon: The references from Ground 1, plus Linking to iTunes (a 2009 iTunes external documentation).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claims 7 and 23, which further require the encrypted digital media to be associated with an "identifier" in a database that is cross-referenced with the verification token. Petitioner asserted that this identifier was inherent in Ameerally's promotional database, which must cross-reference codes with specific media files. Linking to iTunes was added to show an explicit example of such an identifier, as it taught associating digital media with a unique HTML link that functions as a distinct identifier for that content.
  • Motivation to Combine: A POSITA would combine Linking to iTunes with the core references from Ground 1 as it was another piece of official documentation for the same Apple ecosystem, providing a known and simple method for implementing the claimed content identifier.

Ground 3: Obviousness of Authoring System - Claim 26 is obvious over Ameerally, Gautier, Frakes, Zweig, Venkataramu, Kondrk, and Modifying Content in iTunes.

• Prior Art Relied Upon: The references from Ground 1, plus Kondrk (Application # 2004/0254883) and Modifying Content in iTunes (a 2006 book chapter).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targeted claim 26, which depends from system claim 12 and adds an "authoring system" comprising several functional modules. Petitioner mapped these modules to prior art describing content preparation for the iTunes store. Kondrk taught a software tool ("iTunes Producer") for inputting, customizing, and packaging media content for the iTunes system, which corresponded to the claimed "selection," "password," and "customization" modules. Ameerally's promotional database taught the "database module," and both Ameerally and Kondrk taught encrypting media before distribution, satisfying the "encryption module."
  • Motivation to Combine: A POSITA would combine the user-facing access control systems of Ground 1 with the content management and authoring systems taught by Kondrk to create a complete, end-to-end digital content distribution platform. It was a natural and obvious design choice to integrate the content preparation pipeline with the distribution and DRM system.

4. Key Claim Construction Positions

• "metadata of the encrypted digital media": Petitioner proposed this term be construed as "data about the encrypted digital media," clarifying that such data is not required to be physically embedded within the digital content file itself but can be stored separately, such as in a database.
• Various "Modules" (Claims 12 and 26): Petitioner contended that the various "module" terms (e.g., "first receipt module," "authentication module," "branding module") were means-plus-function limitations under §112. For the purposes of its obviousness analysis, Petitioner identified the claimed function for each module and the corresponding structure in the specification. However, Petitioner noted that the specification provided little more than functional descriptions and reserved the right to argue in district court litigation that the claims were indefinite for failing to disclose adequate corresponding structure.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. § 325(d) would be inappropriate despite a previous, denied IPR petition against the ’555 patent filed by MasterCard. Petitioner asserted that its petition was not based on the "same or substantially the same prior art or arguments." Specifically, this petition relied on the Venkataramu reference, which was not presented in the prior MasterCard proceeding. Petitioner argued that Venkataramu cured the primary deficiency identified by the Board in its prior denial decision by providing explicit evidence that an electronic identification reference (the user's account ID) was written into the metadata of the encrypted digital file.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-26 of Patent 8,402,555 as unpatentable.