PTAB

IPR2019-00480

Unified Patents Inc. v. Uniloc 2017 LLC

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1. Case Identification

2. Patent Overview

  • Title: Tracking and Marking Digital Assets
  • Brief Description: The ’856 patent relates to a system for identifying and tracking digital assets distributed over a network. The system creates unique instances of a digital asset by embedding customer and asset identification data into a portion of the asset separate from the digital content itself to facilitate tracking.

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 and Leung in combination with Boykin, and further in view of 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 Narasimhalu taught a system for controlling digital information dissemination by embedding a customer identifier (a UID) in a header portion of a digital asset. To supply the claimed "asset identification associated with an instance," Petitioner relied on Leung, which taught creating multiple unique packages of digital content, each with a unique package ID for tracking. The combination of Narasimhalu and Leung was argued to teach embedding both customer and unique instance identifiers. Boykin was cited to teach detecting transfers and modifying transaction records, while Wiser or Pollak were cited to supply the well-known step of debiting a customer account for a digital purchase.
    • Motivation to Combine: A POSITA would combine Narasimhalu and Leung to improve tracking, as Leung's unique instance-specific ID provides better tracking capabilities than Narasimhalu's more general asset ID. A POSITA would incorporate Boykin to add known e-commerce features like tracking transfers to incentivize users. Finally, a POSITA would integrate the payment processing systems of Wiser or Pollak as a known, necessary feature for any commercial digital distribution system.
    • Expectation of Success: Success was expected because the combination involved substituting one known type of identifier (Leung's package ID) for another (Narasimhalu's IID) and adding conventional e-commerce and payment functionalities (Boykin, Wiser, Pollak) to a base system using standard and well-understood programming techniques.

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, further in view of 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 base system for distributing unique, trackable instances of a digital asset (teaching the asset ID). Petitioner argued a POSITA would modify Leung's system to include a customer identifier as taught by Boykin, which disclosed writing a user ID into a media file to track distribution. The remaining limitations regarding detecting transfers, modifying records, and debiting accounts were taught by Boykin and Wiser/Pollak, consistent with the first ground.
    • Motivation to Combine: A POSITA would enhance Leung's instance-based tracking system with Boykin's user-based tracking to achieve the benefits of both, such as enabling an award system for user distribution. The motivation to add the payment functionalities from Wiser or Pollak was to implement a complete, commercially viable system.
    • Expectation of Success: Success was expected because it involved extending Leung's existing digital content package structure to include an additional known data field (a user ID from Boykin), which was a straightforward modification for a person of ordinary skill.

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

  • Prior Art Relied Upon: The combinations from the grounds above, plus Nilsson (an informal standard document for the ID3 tag, publicly accessible Aug. 23, 2000).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Nilsson taught a standardized way of storing information within an audio file using an ID3 tag. This tag structure, with its defined frames (including a "Comments" frame), taught the limitations of the dependent claims requiring the identifying information to be in a "tag portion" or a "comments section" of that tag.
    • Motivation to Combine: A POSITA implementing the systems of the primary grounds would be motivated to use the standardized ID3 tag format from Nilsson instead of a proprietary header. This would improve interoperability, allowing any standard-compliant device to read the embedded tracking information.
    • Expectation of Success: Success was highly predictable because it involved using a well-known, standardized data storage method (ID3 tags) for its intended purpose. Placing the tracking information into the "Comments" frame was an obvious design choice from a finite number of available, predictable options within the ID3 standard.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on the combination of Leung, Boykin, and Wiser/Pollak, further in view of Nilsson, but relied on similar design modification theories.

4. Key Claim Construction Positions

  • Petitioner argued that the term "an instance of a digital asset," which appears in all challenged claims, should be construed to mean "a version of a digital asset with a unique identifier for tracking." Petitioner contended this construction was supported by the patent's specification and was crucial for applying prior art like Leung, which teaches creating unique, trackable versions of content.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued the Board should not exercise discretionary denial under §314(a) or §325(d). The reasons provided were that none of the asserted prior art was the basis for rejection during prosecution, and there was no overlap between the arguments made during examination and the arguments in the petition. Furthermore, the ’856 patent had not been challenged in any prior IPR petition.

6. Relief Requested

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