PTAB

IPR2025-00723

Transcend Information Inc v. Truesight Communications LLC

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: High-Speed Secure Content Transfer to SD Card from Kiosk
  • Brief Description: The ’783 patent discloses a kiosk-based system for securely selecting, purchasing, and transferring digital media content to a Secure Digital (SD) card. The system purports to improve transfer speed and security through various software modules that manage the customer interface, transactions, and the writing of data to both secure and unsecure areas of the SD card.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1-3, 5-8, 10-13, 15, and 16 over Thompson and Kasahara

  • Prior Art Relied Upon: Thompson (Application # 2009/0113116) and Kasahara (Application # 2007/0116268).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of Thompson and Kasahara renders the claims obvious under 35 U.S.C. §103. Thompson was asserted to teach the core kiosk system of independent claims 1, 7, and 12, including a kiosk with a customer interface (touch-screen), modules for requesting and receiving media files from a server, a transaction module for payment, and programming circuits that function as an SD card writer. Petitioner contended that Thompson’s sales optimization algorithms inherently teach or make obvious the pre-allocation of space on a memory card (claim 1[g]). For writing encrypted content to a secure area and other data to an unsecure area (claim 1[e]), Petitioner argued Thompson teaches this by describing programming encrypted keys into a restricted region while other data is stored elsewhere. The benefit of writing larger media files to the faster unsecure area before writing smaller key files to the slower secure area (claim 1[h]) was argued to be an obvious design choice to avoid delay, a problem Thompson acknowledges. Kasahara was introduced to supplement Thompson's teachings, particularly by disclosing a detailed Content Protection for Recordable Media (CPRM) framework for SD cards. Kasahara explicitly teaches writing encrypted content to a user (unsecure) area and key data to a protection (secure) area, and it discloses the two-tier encryption scheme recited in claim 1[i], where media files are encrypted by a content key that is itself encrypted by a user key.
    • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would combine Thompson and Kasahara to improve the security and functionality of a media distribution kiosk. A POSITA would have looked to a reference like Kasahara, which details a robust encryption and content management system for SD cards, to enhance the security of the general kiosk system disclosed in Thompson. The combination was presented as a predictable integration of known technologies to achieve a more secure and efficient system.
    • Expectation of Success: Petitioner argued a POSITA would have had a high expectation of success because Kasahara's encryption framework is designed for SD cards and is highly compatible with the type of kiosk-based distribution platform described by Thompson.

Ground 2: Obviousness of Claim 4 over Thompson and Kasahara in view of Wagner

  • Prior Art Relied Upon: Thompson (Application # 2009/0113116), Kasahara (Application # 2007/0116268), and Wagner (Application # 2010/0205023).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground adds Wagner to the primary combination to teach the limitation of dependent claim 4: "a software player update module for transferring a software player update to the SD card." Petitioner argued that Wagner explicitly discloses a kiosk that can download required software and update the programming on a flash card, including adding or removing digital rights management functionality, which directly corresponds to the claimed module.
    • Motivation to Combine: A POSITA would combine Wagner's teaching with the Thompson/Kasahara system as a natural extension of its functionality. Adding a software update capability would allow the kiosk to maintain compatibility with evolving content protection standards and playback requirements, which is a predictable improvement for such a distribution system.

Ground 3: Obviousness of Claims 9 and 14 over Thompson and Kasahara in view of Ishihara

  • Prior Art Relied Upon: Thompson (Application # 2009/0113116), Kasahara (Application # 2007/0116268), and Ishihara (a 2001 article titled Secure MultiMediaCard for Content Protection).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground adds Ishihara to teach the limitation of dependent claims 9 and 14: an SD card that is "pre-configured with the user key stored in the secure area." Petitioner asserted that Ishihara discloses a content protection system where secure memory cards can come pre-programmed with certain keys stored in a tamper-resistant, secure portion of the device.
    • Motivation to Combine: Petitioner argued a POSITA would be motivated to incorporate Ishihara’s teaching of pre-configuring keys to streamline the user experience in the Thompson/Kasahara system. Pre-installing a user key on the SD card would simplify the authentication and decryption process by eliminating the need for additional key transfers at the time of media download, enhancing convenience and efficiency.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 17 and 18 over Thompson and Kasahara in view of Ponceleon (a 2006 conference paper). Ponceleon was cited for its disclosure of high-speed downloads and kiosk-based systems that use pre-cached content to achieve the download of a full-length movie in under 20 seconds, thereby teaching the claim limitation of downloading a media file in "substantially 2 minutes."

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under the Fintiv factors would be inappropriate. The petition asserted that the co-pending litigation in the Eastern District of Texas is in its early stages, with a trial date far in the future and no claim construction or significant discovery yet completed. Petitioner stated its intent to request a stay of the district court case if the inter partes review (IPR) is instituted. Furthermore, Petitioner committed to filing a stipulation that it will not pursue in the parallel litigation any invalidity ground that was raised or could have been reasonably raised in the IPR, a factor that weighs strongly in favor of institution.

5. Relief Requested

  • Petitioner requests institution of an IPR for claims 1-18 of Patent 8,977,783 and cancellation of all challenged claims as unpatentable under 35 U.S.C. §103.