Microsoft Corp v. Uniloc 2017 LLC

1. Case Identification

• Case #: IPR2019-00976
• Patent #: 8,606,856
• Filed: April 16, 2019
• Petitioner(s): Microsoft Corporation
• Challenged Claims: 1, 2, 4, 7-10, 12, 15-18, 20, 23, 24

2. Patent Overview

• Title: Digital Media Asset Identification System and Method
• Brief Description: The ’856 patent discloses a system for identifying and tracking digital media assets. The core technology involves embedding a unique serial number within a portion of a digital asset each time an instance of that asset is created and transferred between computing devices.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kobata and Vestergaard - Claims 1, 7-9, 15-17, 23, and 24 are obvious over Kobata in view of Vestergaard.

• Prior Art Relied Upon: Kobata (Application # 2002/0077986) and Vestergaard (Patent 7,466,823).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kobata teaches a digital rights management (DRM) system that controls and manages digital assets. Kobata’s system creates a digital content file comprising both the content data and other portions, such as an "ID portion" and a "local digital rights database." Petitioner asserted that Kobata teaches embedding two key identifiers in these other portions: a unique "content instance ID" (the claimed asset identification) to track each individual copy of the asset, and "credential information" (the claimed customer identification) to authenticate the end-user. Petitioner contended that Kobata’s system tracks the transfer of these assets and includes a payment processing unit for purchasing digital rights, thereby teaching the core limitations of independent claim 1.
  • Motivation to Combine: Petitioner argued that while Kobata discloses a payment processing unit, it provides only high-level functionality. Vestergaard, which is in the same DRM field, discloses a detailed "digital wallet" e-commerce system that allows users to deposit funds into an account and debit that account to purchase digital content. A person of ordinary skill in the art (POSITA) would combine Vestergaard's well-understood digital wallet method with Kobata's system to implement the payment functionality, as it was a known technique for improving DRM systems by providing a predictable, convenient, and secure transaction process.
  • Expectation of Success: Petitioner asserted that combining Vestergaard's known e-commerce solution with Kobata's DRM framework was a simple substitution of a known element to improve a known system, which would have yielded predictable results with a reasonable expectation of success.

Ground 2: Obviousness over Kobata, Vestergaard, and Levy - Claims 2, 4, 10, 12, 18, and 20 are obvious over Kobata in view of Vestergaard and Levy.

• Prior Art Relied Upon: Kobata (Application # 2002/0077986), Vestergaard (Patent 7,466,823), and Levy (Patent 7,756,892).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the combination of Kobata and Vestergaard from Ground 1 and adds Levy to address dependent claims requiring the identifiers to be embedded in a specific "tag portion" or "title field" of the digital asset. Petitioner argued that Kobata discloses embedding identifiers in a non-content portion of the asset but does not specify the exact location or method. Levy explicitly remedies this by teaching various methods for embedding data within a digital file, including placing it "in the header or footer of the file, throughout the file such as within frame headers, or hidden in the content itself." Crucially, Levy discloses determining an MP3 file's identity and shareability from its "ID3 song title tag," directly teaching the limitations of the challenged dependent claims.
  • Motivation to Combine: Petitioner contended that a POSITA seeking to implement the embedding functionality described broadly in Kobata would have naturally looked to a reference like Levy for specific, known techniques. Levy explicitly discloses that embedding an ID in a file's header improves the efficiency of watermark detection. Therefore, a POSITA would combine Levy's specific embedding teachings with the DRM system of Kobata and Vestergaard to improve the system's efficiency and robustness, a known solution to a known problem.
  • Expectation of Success: Petitioner argued that applying Levy's known data embedding techniques to the Kobata/Vestergaard system would be a routine design choice for a POSITA and would be achieved with a reasonable expectation of success.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) and §325(d) would be inappropriate. Petitioner acknowledged a separate inter partes review (IPR), IPR2019-00480, filed against the ’856 patent but contended that it relies on an entirely different set of prior art. Furthermore, Petitioner asserted it is not a real party-in-interest to the earlier IPR and thus gained no advantage from that filing. Petitioner maintained that the grounds presented in its petition were not previously considered by the Examiner during prosecution and therefore warrant institution.

5. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1, 2, 4, 7-10, 12, 15-18, 20, 23, and 24 of the ’856 patent as unpatentable.