Unified Patents Inc v. Uniloc 2017 LLC

1. Case Identification

• Case #: IPR2019-00480
• Patent #: 8,606,856
• Filed: December 27, 2018
• Petitioner(s): Unified Patents Inc.
• Patent Owner(s): Uniloc 2017 LLC
• Challenged Claims: 1-3, 5, 7-11, 13, 15-19, 21, 23-24

2. Patent Overview

• Title: System for Distributing and Tracking Digital Assets
• Brief Description: The ’856 patent describes a system for tracking digital assets distributed over a network. The claimed invention involves creating unique instances of a digital asset by embedding both a customer identification and an asset identification into a portion of the instance separate from the digital content, allowing for tracking of each transfer.

3. Grounds for Unpatentability

Ground 1: Obviousness over Narasimhalu, Leung, Boykin, and Wiser/Pollak - Claims 1, 5, 7-9, 13, 15-17, 21, and 23-24 are obvious over Narasimhalu in view of Leung, Boykin, and either Wiser or Pollak.

• Prior Art Relied Upon: Narasimhalu (Patent 5,499,298), Leung (Patent 7,010,808), Boykin (Application # 2001/0042048), Wiser (Patent 6,385,596), and Pollak (Application # 2003/0004833).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination teaches all limitations of independent claim 1. Narasimhalu disclosed embedding a customer identification (a "UID") within a header portion of a digital file ("Sealed-COIN"). While Narasimhalu taught a general asset ID ("IID"), Leung taught the claimed concept of creating multiple unique "instances" of digital content, each with a unique asset identification ("package ID") specifically for tracking distribution. Boykin taught the remaining transactional steps: detecting the transfer of a file to a new user, modifying a transaction record based on the transfer, and tracking the file's distribution history. Finally, Wiser and Pollak were cited as teaching the well-known practice of debiting a customer's account (via debit card, e-wallet, or balance system) to pay for the digital content.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Narasimhalu and Leung by substituting Leung’s instance-specific "package ID" for Narasimhalu’s more generic "IID" to gain the benefit of tracking individual copies of the same content, which was an improvement over Narasimhalu’s system. A POSITA would add Boykin’s teachings to implement a system that could track file distribution and incentivize users to share content legally. The addition of Wiser or Pollak was motivated by the simple desire to incorporate a conventional payment mechanism for the distributed content.
  • Expectation of Success: Petitioner asserted a POSITA would have had a reasonable expectation of success, as the combination involved the predictable substitution of one known identifier type for another and the application of known transactional and payment methods to an existing digital distribution framework.

Ground 2: Obviousness over Leung, Boykin, and Wiser/Pollak - Claims 1, 5, 7-9, 13, 15-17, 21, and 23-24 are obvious over Leung in view of Boykin and either Wiser or Pollak.

• Prior Art Relied Upon: Leung (Patent 7,010,808), Boykin (Application # 2001/0042048), Wiser (Patent 6,385,596), and Pollak (Application # 2003/0004833).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented an alternative combination starting with Leung as the primary reference. Leung taught the core concept of creating multiple instances of a digital asset ("packages"), each with a unique asset identification ("package ID") for tracking. Boykin was then added to teach embedding a customer identification into the file to associate it with a specific user. The combination of Leung's asset ID and Boykin's customer ID met the core embedding limitations of the claims. As in the first ground, Boykin also supplied the teachings for detecting transfers and updating transaction records, while Wiser or Pollak taught debiting a customer account.
  • Motivation to Combine: Petitioner argued a POSITA would combine Leung and Boykin to enhance Leung’s tracking system. While Leung tracked the package, Boykin provided additional tracking based on the user, enabling features like awarding points or credit for distribution. This combination would achieve the benefits of both references.
  • Expectation of Success: Success would be expected because the combination merely required extending the data structure of Leung's digital content package to include Boykin's user identifier, which was a straightforward software programming task for a POSITA.

Ground 3: Obviousness over Core Combination plus Nilsson - Claims 2-3, 10-11, and 18-19 are obvious over the combinations of Grounds 1 and 2, further in view of Nilsson.

• Prior Art Relied Upon: The references from the grounds above, plus Nilsson (an informal standard document for the "ID3 tag version 2").

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed dependent claims requiring the embedded identification to be in a "tag portion" of the digital asset. Petitioner asserted Nilsson taught a standardized way of storing information about an audio file within the file itself using an "ID3 tag." Nilsson disclosed that the ID3 tag contains various frames for data, including a "Comments" frame for storing text. This ID3 tag is the claimed "tag portion," and the Comments frame is the claimed "comments section."
  • Motivation to Combine: A POSITA would be motivated to incorporate Nilsson's ID3 tag into the systems of the primary combinations (e.g., Narasimhalu/Leung or Leung/Boykin) to replace a proprietary header with a standardized method for storing metadata. Using a standardized tag would improve interoperability, allowing any device that recognized the ID3 standard to read the tracking data, which was an obvious advantage.
  • Expectation of Success: A POSITA would expect success in using a well-known, standardized tagging structure (ID3) to store the identifying data, as it was a known technique used to improve data accessibility in digital files.

• Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 7-8) by combining Leung, Boykin, Wiser/Pollak, and Nilsson, which relied on the same fundamental theories presented above.

4. Key Claim Construction Positions

• Petitioner proposed a construction for the term "an instance of a digital asset," which appears in all challenged claims.
• Based on the patent’s specification, Petitioner argued the term should be construed to mean "a version of a digital asset with a unique identifier for tracking." This construction was critical to Petitioner's arguments because it directly aligned with the teachings of references like Leung, which explicitly described creating unique "packages" of digital content, each with its own ID, for the express purpose of tracking.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under §314(a) or §325(d).
• The argument was based on the fact that none of the prior art references asserted in the petition were the basis for any rejection during the original prosecution of the ’856 patent. Petitioner contended there was no "overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art." Furthermore, the ’856 patent had not been challenged in any previous inter partes review (IPR) petition.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-3, 5, 7-11, 13, 15-19, 21, and 23-24 of the ’856 patent as unpatentable.