Dolby Laboratories Inc v. Intertrust Technologies Corp

1. Case Identification

• Case #: IPR2020-00665
• Patent #: 8,931,106
• Filed: July 14, 2020
• Petitioner(s): Dolby Laboratories, Inc.
• Patent Owner(s): Intertrust Technologies Corporation
• Challenged Claims: 17

2. Patent Overview

• Title: Managing the Use of Electronic Content
• Brief Description: The ’106 patent discloses a digital rights management (DRM) framework for controlling access to and usage of electronic content. The system packages content with rules and certificates, which are evaluated by a rights management engine on a user device to determine if a rendering application is permitted to access the content, based on whether the application has been certified to meet a predefined level of security.

3. Grounds for Unpatentability

Ground 1: Claim 17 is obvious over Peinado

• Prior Art Relied Upon: Peinado (Patent 6,772,340).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Peinado disclosed a complete DRM architecture that meets all limitations of claim 17. Peinado described a system where a user’s computing device receives digital content and a separate license containing usage rules. This license specified security requirements, including that the rendering application must possess a certificate from a trusted certifying authority. The authority in Peinado assessed the security level of the rendering application (e.g., on a letter scale) and issued a corresponding certificate. The DRM system then compared the application's certificate against the requirements in the license to grant or deny access.
  • Motivation to Combine (Implicit Modification): To the extent Peinado was argued not to explicitly disclose generating a certificate based on a determination that the application meets a predefined level of security, Petitioner contended this modification would have been obvious. Peinado already taught assessing security levels. A POSITA would combine this with the well-known practice of conditional certification (i.e., only issuing a certificate if a minimum threshold is met) to improve system efficiency and security. This would reduce computational resources by allowing a simple binary check for a valid certificate rather than comparing specific security values, and would mitigate risks by excluding low-security applications from the system.
  • Expectation of Success: A POSITA would have a high expectation of success because the certifying authority in Peinado already assessed security values; modifying the process to simply not issue a certificate below a certain threshold was presented as a matter of routine skill.

Ground 2: Claim 17 is obvious over Hurtado in view of Peinado

• Prior Art Relied Upon: Hurtado (Patent 6,611,812) and Peinado (Patent 6,772,340).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Hurtado disclosed a DRM system where an "End-User Device" rendered content using a "Player Application." This application was assigned a unique "Application ID" by an "Electronic Digital Content Store" to certify its compliance with the security specifications of the distribution system. Petitioner argued this Application ID, generated by an authority based on the application's compliance with security standards, functioned as the claimed "first digital certificate." Peinado was then used to supply teachings for improving Hurtado's system with a more formal, scalable, and open certificate-based security model.
  • Motivation to Combine: A POSITA would combine Peinado's teachings with Hurtado's system to enhance its scalability and flexibility. Petitioner characterized Hurtado's Application ID system as proprietary and "closed," limiting content to applications distributed by specific content stores. In contrast, Peinado taught a certificate-based approach that allowed content to be rendered on applications from various vendors in an open ecosystem. A POSITA would have been motivated to adopt Peinado's model to allow content providers to expand their reach and revenue by making content available across a wider range of rendering applications.
  • Expectation of Success: Success was predictable because both references were in the DRM field and addressed similar security concerns. Hurtado's system was described as inherently flexible (allowing "any business rules deemed necessary"), making the integration of Peinado's certificate verification—a known method for ensuring application security—a straightforward and logical improvement.

• Additional Grounds: Petitioner asserted that claim 17 is further obvious over Peinado in view of Shear (WO 1998/010381) and over Hurtado in view of Peinado and Shear. Shear was primarily used to provide an express teaching of a certifying authority issuing a certificate to a computer attesting that it has a "certain level of security," bolstering the obviousness arguments for the "predefined level of security" limitation.

4. Key Claim Construction Positions

• "digital certificate" (claim 17): Petitioner proposed that this term should be construed as "an electronic credential of an authority." This construction was based on the specification's interchangeable use of "certificate" and "credential." This interpretation was central to the ground involving Hurtado, as it allowed Petitioner to argue that Hurtado's "Application ID"—an electronic credential issued by an authority (the Content Store) to certify security compliance—met the claim limitation even though Hurtado did not explicitly label it a "certificate."

5. Arguments Regarding Discretionary Denial

• §325(d) - Same or Substantially Same Art/Arguments: Petitioner argued institution was proper because the primary reference, Peinado (Patent 6,772,340), was new and substantively different from the Peinado ’655 patent (Patent 6,775,655) considered during prosecution. Petitioner provided a redline comparison to show that the Peinado reference cited in the petition contained critical teachings—such as a certifying authority determining an application's security level and issuing an appropriate certificate—that were absent from the Peinado ’655 patent and thus were never before the Examiner.
• §314(a) - Fintiv Factors: Petitioner argued against discretionary denial based on co-pending district court litigation. Key reasons included that Petitioner intended to seek a stay in the litigation, the court had not yet set a trial date and it was expected to be well after the FWD deadline, and the litigation involved different invalidity grounds not at issue in the IPR.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claim 17 of the ’106 patent as unpatentable under 35 U.S.C. §103.