DISH Network Corp v. Wistaria Trading Ltd

1. Case Identification

• Case #: IPR No. 2019-01449
• Patent #: 9,021,602
• Filed: August 1, 2019
• Petitioner(s): DISH Network Corporation, DISH Network L.L.C., and DISH Network Service L.L.C.
• Patent Owner(s): Wistaria Trading Ltd.
• Challenged Claims: 1, 5, 8, and 10

2. Patent Overview

• Title: Data Protection Method and Device
• Brief Description: The ’602 patent discloses a computer-based method for protecting and restricting access to licensed software on a user's computer. The method involves using a user-provided license code and computer configuration data to generate a decoding key, which is required to access encoded portions of the software.

3. Grounds for Unpatentability

Ground 1: Claims 1, 5, 8, and 10 are obvious over Cooper.

• Prior Art Relied Upon: Cooper (Patent 5,757,907).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Cooper, which relates to techniques for enabling trial-period use of software products, discloses every limitation of the challenged claims. Independent claim 1 recites a method for accessing software functionality. Petitioner asserted Cooper teaches this by disclosing a trial-mode software application (e.g., Lotus, WordPerfect) stored on a computer's non-transient memory.
  • The limitation of "prompting a user to enter... personalization information" was allegedly met by Cooper’s user-interface screens that gather customer information and a "temporary product key."
  • The core limitation of "storing... both computer configuration information... and a license code... in a personalization data resource" was allegedly taught by Cooper’s disclosure of storing a machine-specific "machine identification number" and a "temporary product key" together in a non-executable "key file."
  • The step of "generating a proper decoding key... using said license code" was allegedly disclosed in Cooper’s use of the temporary product key as a required input to a "real key generator" to produce a "real key" (a decryption key) used to unlock the software.
  • Finally, the limitation that the software "cannot access at least one encoded code resource... unless said license code is stored" was allegedly met by Cooper’s system. Cooper describes displacing a portion of the software to a separate "side file" and encrypting it. Access is denied unless the "key file" (containing the license code) exists and is validated, which then allows the system to decrypt and restore the displaced code portion for execution.
  • The arguments for independent claim 10 (a computer program product) and dependent claims 5 and 8 were asserted to follow the same logic as claim 1, mapping to corresponding features in Cooper.

4. Key Claim Construction Positions

• "personalization information": Petitioner proposed construing this term as "information that uniquely identifies the user, including a license code." This construction was argued to be supported by the claims, which link the information to a user prompt and a license code, and by the Patent Owner’s infringement contentions that included a user's zip code and account number.
• "license code": Petitioner proposed "a code required to be entered into the software application to activate the application, to enable the application to provide its specified functionality." This was based on an explicit definition provided by the applicant during the prosecution of the parent ’842 patent.
• "personalization data resource": Petitioner proposed "a non-executable file that stores personalization information." This was based on the Patentee’s statements during reexamination distinguishing a "data resource" as non-executable and distinct from executable "code resources."
• "encoded code resource of said application software": Petitioner proposed "a portion of executable code that has been removed and stored separately from the other portions of the executable code of the software application." This construction was based on the specification’s description of hiding or separately storing essential code resources and the Patentee’s arguments during reexamination that "code resources" are executable object code.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate because the primary reference, Cooper, is new and relevant. While a related patent with a common specification, Cooper ’416, was cited during prosecution of a great-grandparent application (the ’162 patent), the context was fundamentally different. During that prosecution, the applicant successfully argued that Cooper ’416 was irrelevant because its teachings on "access restriction" were "contrary to an object of the present invention" as then claimed. Petitioner asserted that because the challenged claims of the ’602 patent were added later and expressly recite elements of access restriction, Cooper ’907 is highly relevant in a way that Cooper ’416 was not to the earlier, different claims.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 5, 8, and 10 of the ’602 patent as unpatentable.