Adobe Systems Inc v. Grecia William

1. Case Identification

• Case #: IPR2018-00419
• Patent #: 8,533,860
• Filed: January 4, 2018
• Petitioner(s): Adobe Systems Incorporated
• Patent Owner(s): William Grecia
• Challenged Claims: 9-10, 21-30

2. Patent Overview

• Title: Personalized Digital Media Access System-PDMAS Part II
• Brief Description: The ’860 patent describes a system for managing digital rights management (DRM) across multiple devices. The system uses a personal electronic ID to authorize access by "branding" a verification token or other user identification reference into the metadata of the digital content.

3. Grounds for Unpatentability

Ground 1: Obviousness over iTunes-Related Art - Claims 9 and 10 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 academic report).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of references, all describing aspects of Apple's commercially successful iTunes/FairPlay system, taught every limitation of independent claim 9. Ameerally and Frakes disclosed a system where a user submits a unique code (a "verification token") through a client interface to a remote server to access digital content. Gautier and Ameerally taught requiring user authentication (e.g., via email login, the "identification reference") to access the system. Crucially, Frakes and Venkataramu showed that the user's account information was then written, or "branded," into the metadata of the downloaded digital file. Petitioner asserted these teachings map directly to the claimed "first receipt," "authentication," "connection," "request," "secondary receipt," and "branding" modules of claim 9.
  • Motivation to Combine: A POSITA would combine these references because they all described compatible and interconnected features of the same real-world system: Apple iTunes. The references themselves suggested their combination, with Ameerally incorporating Gautier by reference. A POSITA seeking to build a robust DRM system would naturally look to the industry-leading iTunes system and combine its known, successful features for user authentication, token redemption, and metadata branding.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the combination merely involved assembling features that were already proven to work together in the widely implemented commercial iTunes system.

Ground 2: Obviousness over iTunes-Related Art with Customization - Claims 21-30 are obvious over Ameerally, Gautier, Frakes, Zweig, Venkataramu, Suitts, and Kondrk.

• Prior Art Relied Upon: The five references from Ground 1, plus Suitts (Application # 2008/0040379) and Kondrk (Application # 2004/0254883).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the teachings of the first combination to address the limitations of independent claim 21 and its dependents. The primary new element in claim 21 was a "customization module" for customizing a user access panel or tag. Petitioner argued that Suitts and Kondrk provided this missing element. Both references disclosed methods and graphical user interfaces (GUIs), such as "iTunes Producer," for content creators to input, modify, and customize metadata, including "tags," for media distributed through the iTunes system. Frakes further showed customizable access panels, such as a promotional code entry screen with a custom banner image. The remaining limitations of claim 21 concerning a computer product with various modules were taught by the base combination for the same reasons as claim 9.
  • Motivation to Combine: A POSITA would combine Suitts and Kondrk with the other references to integrate known content management and customization tools into the established DRM framework. Providing content owners with the ability to customize metadata and user-facing panels was a logical and desirable feature for any commercial digital media distribution platform like the one disclosed by the primary references.
  • Expectation of Success: Success was expected because Suitts and Kondrk described tools designed specifically for use with the iTunes ecosystem, making their integration with the other iTunes-related features straightforward and predictable.

4. Key Claim Construction Positions

• "Module" Terms (e.g., "first receipt module," "authentication module"): Petitioner argued that each of the "module" limitations in claims 9 and 21 was a means-plus-function term under 35 U.S.C. § 112, para. 6. This position was central to the petition's strategy, as a prior IPR filed by MasterCard on the ’860 patent was denied institution for failing to properly address these terms. For each module, Petitioner identified the claimed function (e.g., "authenticating the verification token") and argued the corresponding structure was a server with a CPU, memory, and software, implementing algorithms inferable from the prior art for performing the function (e.g., cross-referencing a token against a database).
• "metadata of the digital content": Petitioner proposed this term be construed as "data about the digital content." Petitioner emphasized that this data need not be physically embedded within the content file itself but could exist in a separate file or database on the content provider's server, a position the Patent Owner had reportedly agreed with in related district court litigation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under § 325(d) was inappropriate despite a prior IPR petition filed by MasterCard (IPR2017-00791) that challenged some of the same claims. Petitioner contended that this petition was not substantially the same because it cured the procedural deficiencies that led to the Board's denial of institution on claims 9-10 and 21-30 in the MasterCard case. Specifically, this petition properly analyzed the "module" limitations as means-plus-function terms and relied on a new key reference, Venkataramu, which was not previously presented to the Board, to show that branding user identification into metadata was known in the art.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and cancellation of claims 9-10 and 21-30 of the ’860 patent as unpatentable under 35 U.S.C. § 103.