Unified Patents Inc. v. Uniloc USA, Inc., IPR2016-01271, Paper 1 (June 29, 2016) (Petition)

IPR2016-01271 Petition
Patent 8,566,960
Filed on behalf of Unified Patents Inc.
By: Vincent J. Galluzzo, Reg. No. 67,830
Teresa Stanek Rea, Reg. No. 30,427
CROWELL & MORING LLP
1001 Pennsylvania Avenue, N.W.
Washington, D.C. 20004
Tel: (202) 624-2781
Email: vgalluzzo@crowell.com
Jonathan Stroud, Reg. No. 72,518
Unified Patents Inc.
1875 Connecticut Avenue, N.W., Floor 10
Washington, D.C. 20009
Tel: (202) 805-8931
Email: jonathan@unifiedpatents.com
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________________________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________________________________
UNIFIED PATENTS INC.
Petitioner
v.
UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.
Patent Owners
IPR2016-01271
Patent 8,566,960
PETITION FOR INTER PARTES REVIEW OF
U.S. PATENT 8,566,960
CHALLENGING CLAIMS 125
UNDER 35 U.S.C. 312 AND 37 C.F.R. 42.104
Patent 8,566,960
TABLE OF CONTENTS
I.
MANDATORY NOTICES ......................................................................................... 1

A.
Real Party-in-Interest ................................................................................................ 1
B.
Related Matters .......................................................................................................... 1
C.
Counsel ......................................................................................................................... 2
D.
Service Information, Email, Hand Delivery, and Postal.................................. 3
II.
CERTIFICATION OF GROUNDS FOR STANDING ....................................... 3
III.
OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ....................... 3
A.
Prior Art Patents and Printed Publications .......................................................... 3
B.
Grounds for Challenge ............................................................................................. 4
IV.
INTRODUCTION ......................................................................................................... 4
V.
TECHNOLOGY BACKGROUND........................................................................... 6
A.
License Management and DRM in General........................................................ 6
B.
Validation of License Requests.............................................................................. 7
C.
Enforcement of License Consumption Rules ..................................................... 8
D.
Transmission, Validation, and Registration of Device Identity ................... 11
VI.
OVERVIEW OF THE 960 PATENT ................................................................... 13
A.
Summary of the Alleged Invention ..................................................................... 13
B.
Level of Ordinary Skill in the Art ....................................................................... 16
C.
Prosecution History ................................................................................................. 16
VII. CLAIM CONSTRUCTION ...................................................................................... 17

VIII. SPECIFIC GROUNDS FOR PETITION .............................................................. 20
A.
Ground I: Claims 1, 35, 8, 1822, and 25 are anticipated

by Abburi ................................................................................................................... 21
1.
Overview of Abburi .............................................................................................. 21
2.
Claims 1, 22, and 25 are anticipated by Abburi........................................... 24
3.
Claim 3 is anticipated by Abburi ...................................................................... 35
4.
5.

i
Patent 8,566,960
6.
7.
Claim 18 is anticipated by Abburi ................................................................... 37
8.
9.
10.
B.
IX.
Ground II: Claims 119 and 2225 are obvious over Gilder
in view of Hu and Goringe.................................................................................... 39
1.
Overview of Gilder ............................................................................................... 39
2.
Overview of Hu ..................................................................................................... 42
3.
Overview of Goringe ............................................................................................ 43
4.
Claims 1, 22, and 25 are obvious over Gilder in view of Hu .................... 45
5.
Claim 2 is obvious over Gilder in view of Hu ............................................... 53
6.
7.
8.
9.
10.
11.
12.
Claim 18 is obvious over Gilder in view of Hu ............................................. 59
13.
Claim 19 is obvious over Gilder in view of Hu ............................................. 61
14.
Claims 9 and 23 are obvious over Gilder in view of

Hu and Goringe ..................................................................................................... 61
15.

Hu and Goringe ..................................................................................................... 64
16.
Claims 10, 11, and 15 are obvious over Gilder in view of

Hu and Goringe ..................................................................................................... 66
17.

Hu and Goringe ..................................................................................................... 67
18.

Hu and Goringe ..................................................................................................... 68
CONCLUSION ............................................................................................................ 68
ii
Patent 8,566,960
I.
MANDATORY NOTICES
A.
Real Party-in-Interest
Pursuant to 37 C.F.R. 42.8(b)(1), Unified Patents Inc. (Unified or
Petitioner) certifies that Unified is the real party-in-interest, and further certifies
that no other party exercised control or could exercise control over Unifieds
participation in this proceeding, the filing of this petition, or the conduct of any
ensuing trial. In this regard, Unified has submitted voluntary discovery. See
EX1046 (Petitioners Voluntary Interrogatory Responses).
B.
Related Matters
U.S. Patent 8,566,960 (the 960 Patent (EX1001)) is owned by Uniloc
Luxembourg S.A. and exclusively licensed to Uniloc USA, Inc. (collectively,

Uniloc or Patent Owners). See EX1047 (Complaint), at 7.
On May 30, 2016, Uniloc filed multiple lawsuits in the Eastern District of
Texas:
Uniloc USA, Inc., et al v. Amazon.com, Inc. et al, No. 2:16-cv-00570 (E.D.
Tex. filed May 30, 2016);
Uniloc USA, Inc., et al v. Google Inc., No. 2:16-cv-00571 (E.D. Tex. Filed
May 30, 2016);
Uniloc USA, Inc., et al v. Home Box Office, Inc., No. 2:16-cv-00572 (E.D.
Tex. May 30, 2016);
Patent 8,566,960
Uniloc USA, Inc., et al v. Hulu, LLC, No. 2:16-cv-00573 (E.D. Tex. Filed
May 30, 2016);
Uniloc USA, Inc., et al v. Netflix, Inc., No. 2:16-cv-00574 (E.D. Tex. Filed
May 30, 2016); and
Uniloc USA, Inc., et al v. Valve Corp., No. 2:16-cv-00575 (E.D. Tex. Filed
May 30, 2016).
Uniloc filed against, inter alia, Amazon.com, Inc., Google Inc., Home Box
Office, Inc., Hulu, LLC, Netflix, Inc., and Valve Corporation, claiming that certain
of these companies products or services infringe the 960 Patent. It is the sole
patent raised. The cases are in their early stages and no schedule or trial date has
been set. Uniloc also filed an earlier lawsuit on November 20, 2015 against
Electronic Arts Inc. related to the 960 Patent in Uniloc USA, Inc., et al v.
Electronic Arts Inc., No. 6:15-cv-01009 (E.D. Tex. Nov. 20, 2015). That lawsuit
was dismissed with prejudice on January 12, 2016.
C.
Counsel
Vincent J. Galluzzo (Reg. No. 67,830) will act as lead counsel; Teresa
Stanek Rea (Reg. No. 30,427) and Jonathan Stroud (Reg. No. 72,518) will act as
back-up counsel.
D.
Patent 8,566,960
Service Information, Email, Hand Delivery, and Postal
Unified consents to electronic service at vgalluzzo@crowell.com and
jonathan@unifiedpatents.com. Petitioner can be reached at Crowell & Moring

LLP, 1001 Pennsylvania Avenue, N.W., Washington, DC 20004, Tel.: (202) 6242781, Fax: (202) 628-8844 and Unified Patents Inc., 1875 Connecticut Avenue,
N.W., Floor 10, Washington, D.C. 20009, Tel.: (650) 999-0899.
II.
CERTIFICATION OF GROUNDS FOR STANDING

Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
review is sought is available for inter partes review and that Petitioner is not
barred or estopped from requesting an inter partes review challenging the patent
claims on the grounds identified in this Petition.
III.
OVERVIEW OF CHALLENGE AND RELIEF REQUESTED

Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)(2), Petitioner challenges
claims 125 of the 960 Patent.

A.
Prior Art Patents and Printed Publications

The following references are pertinent to the grounds of unpatentability
explained below:1
The 960 Patent issued from a patent application filed prior to enactment of the
America Invents Act (AIA). Accordingly, pre-AIA statutory framework applies.
1.
Patent 8,566,960
U.S. Patent 7,203,966 (filed on June 27, 2001; published on April 10,
2007) (Abburi) (EX1002), which is prior art under 35 U.S.C.
102(a) and 102(e).
2.
U.S. Patent Application Publication 2008/0148363 (filed on

December 15, 2006; published on June 19, 2008) (Gilder)
(EX1003), which is prior art under 35 U.S.C. 102(e).
3.
U.S. Patent 7,752,139 (filed on December 27, 2005; published on July

6, 2010) (Hu) (EX1004), which is prior art under 35 U.S.C.
102(e).
4.
U.S. 7,707,115 (filed on July 25, 2002; published on April 27, 2010)
(Goringe) (EX1005), which is prior art under 35 U.S.C. 102(e).
B.
Grounds for Challenge

This Petition, supported by the Declaration of Ivan Zatkovich (Zatkovich
Declaration (EX1031)), requests cancellation of challenged claims 125 as

unpatentable under 35 U.S.C. 102 or 103. See 35 U.S.C. 314(a)
IV.
INTRODUCTION
The inventor of the 960 Patent suggests that he invented DRM license
limitations in 2007, but DRM had been a well-researched and widely implemented
technology, both here and abroad, well before 2007. That was particularly true for
early versions of commercially available software. Early software companies
Patent 8,566,960
like Microsoft, IBM, and Hewlett-Packardneeded to figure out how to limit the
number of people who could copy a purchased software program. See EX1002
(Abburi); EX1021 (Baratti); EX1024 (Harter); EX1025 (Cox); EX1010 (May);
EX1011 (Herington). That was also true for music, video, and text files, articles,
and many other forms of digital content, and was well understood by the
companies selling that digital contentlike Sony Pictures Entertainment. See
EX1014 (Singer); EX1015 (Singer Assignments Data).
As companies worked to manage and monetize digital content while
restricting or limiting piracy, they began to exercise simple rules-based limits on
the number of authorized devices on which software or content was available, well
before the critical date. See, e.g., EX1021 (Baratti) at 1:1033 (discussing how the
advent of wide spread computer networks disrupted the traditional software
licensing model, and discussing the IBM License Use Management product
available in 1996).
One of the more widely known examples was implemented in Microsoft
Windows XP at least as early as 2001.
See EX1059 (Technical Details on
Microsoft Product Activation), at 1. At the time, when a user desired to activate a

retail boxed copy of Windows XP, the user needed to provide two things: a
product ID and a hardware hash. Id. at 2. The product ID should be familiar to
anyone who installed software in the 2000s, taking the form, for example, 12345-
Patent 8,566,960
123-1234567-12345. Id. The hardware hash was an 8-byte value automatically
created by running 10 different pieces of information from the [users] PCs
hardware components through a one-way mathematical transformation. Id. The
Microsoft servers then used these two values to process the users activation
request. Id. at 23. Other Microsoft examples prior to 2007 include copy-limited
licenses in, for example, Microsoft Windows Vista.
See EX1060 (Volume
Activation 2.0 Guide), at 12.

Myriad other DRM and license management schemes resulted, many of
which included the basic abstract concepts claimed by the 960 Patent, both alone
and in combination. The 960 Patent was not novel, and was obvious in November
2007, in light of at least these myriad schemes. Claims 125 of the 960 Patent are
unpatentable in light of at least the grounds presented herein.
V.
TECHNOLOGY BACKGROUND
A.
License Management and DRM in General

The technology discussed in this Petition generally relates to systems and
methods to enable the monitoring and adjusting of software usage under a software
license. EX1001 (960 Patent), at 1:1620. This is known as digital rights
management, or DRM, representing simple, abstract rules governing who can
access certain digital content.
More specifically, the Petition discusses the
concepts of digital product license systems and how those systems (a) validate a
Patent 8,566,960
license authorization request from a user and (b) control the number of devices
allowed to be used with a given product license at any given time.
DRM in its most general sense is a collection of technologies that enable
technically enforced licensing of digital information. EX1006 (Koenen), at 883.
At a minimum, a well-designed DRM system at the filing date of the 960 Patent
included three things: (1) control, or governance, via the use of programming
language methods executed in a secure environment; (2) secure association of
usage rules with the digital content throughout the lifecycle of the content; and (3)
persistent protection of the digital content throughout the contents commercial
lifecycle. Id. In laymans terms, that meant computer-coded rules limiting who
could use the product, in a secure environment, lasting the life of the product.
B.
Validation of License Requests

In a general DRM scheme well before the 2007 filing date of the 960
Patent, license servers managed and distributed licenses for digital content to users
who requested them. Id. These license severs had to process license requests,
validate credentials from the requesting party, associate or bind the licenses
accordingly, deliver associated licenses to the requesting entities, and manage and
enforce license usage and subscription data.
Id.
Part of the validation of
credentials from the requesting party included validating information about the
requesting
system
environment
and
user
contextincluding
possibly
Patent 8,566,960
personalization data, locale, system capabilities, security level or evidence of
current certification, and information about the content. Id.
A DRM scheme at that time would also generally validate the identity of
the requesting system (e.g., using a fingerprint based on characteristic attributes of
the specific system, or an indelible identifier or key). Id. Other information that
could be used for validation included device information such as a unique
identity, the unique identity of any removable secure memory or media associated
with it, . . . other functional and/or security-related capabilities of the device, as
well as device or removable storage hardware IDs. Id. at 889.
C.
Enforcement of License Consumption Rules

The license server would also enforce any consumption rules, such as
limitations on the number of plays or time-based usage or expiration. Id. at

888. To do this, a DRM system must support device interfaces and nonvolatile
state (such as copy and check-in/check-out counts) used to maintain compliance
with the rules. Id. DRM systems with such license consumption rules, including
count limits, were well-known in the art much earlier than 2007.
For instance, OConnor discloses a flexible licensing arrangement from
2001 that uses tokens to track the uses of a licensed software product. EX1007
(OConnor), at [0005], [0008]. A user has a maximum number of tokens that
the user can consume, which corresponds to the users license consumption. Id. at
[0008].
Patent 8,566,960
When a user requests authorization to use a software product, a
monitoring system grants or denies permission based on the remaining available

tokens. Id. at [0009], [0021][0023], [0032]. If there are sufficient tokens, the
balance is reduced by the number of tokens consumed and permission is granted.
Id. at [0022]. If there are insufficient tokens remaining, permission is denied. Id.
The monitoring process also logs the user, computer, time, and other defining
characteristics for later use by the system. Id. at [0009].
Even earlier examples of count- or time-limited DRM systems developed
and patented by practicing entities include one from the Hewlett-Packard Company
in 1996, more than a decade before the filing date of the 960 Patent. EX1010
(May), at 9:5811:30. Hewlett-Packard developed another count-limited DRM
system roughly a decade laterstill prior to the date in question.
EX1011
(Herington). Fuji Xerox Co., Ltd. also developed a count-limited DRM system at
least as early as 2006. EX1012 (Saito); see EX1013 (Saito Assignments Data).
Sony Pictures Entertainment Inc. developed a similar system at least as early as
2003. EX1014 (Singer); see EX1015 (Singer Assignments Data). A plethora of
other count- and time-limited DRM systems are disclosed in Andersson (EX1016),
Kley (EX1009), Lenard (EX1017), Muller (EX1018), Bourdev (EX1019), and
Takahashi (EX1020).
In short, most modern systems are atavistic in their
Patent 8,566,960
reversion to simple, abstract, long-practiced rules governing use and time limits
like a contract limiting resale.
It was also known in the art well before the 960 Patent was filed to have
flexible time- and count-limited consumption rules in DRM systems. Johnson
discloses one such solution from 2001 wherein a license monitoring and
authorization system allots a certain number of excess licenses to a user that is
used as needed. EX1008 (Johnson), at Abstract. The system of Johnson includes
a License Allowance Component that maintains a count of the number of
available licenses compared to the number of purchased licenses, the allowance of
excess licenses permitted, and the number of licenses used from the allowance. Id.
at [0015].
When a user exceeds the license count, the License Allowance Component
sends a warning notification to the user and permits an additional number of
temporary licenses up to a second specified maximum license count.
Id. at
[0019]. If a user meets that second specified maximum of temporary licenses,

the License Allowance Component refuses to grant any further licenses to the user.
Id. at [0020]. These temporary licenses are time-limited. If a user does not
submit payment for these temporary licenses before a specified period of time
ends, the License Allowance Component revokes allowance of those temporary
10
Patent 8,566,960
licenses through a time bomb and suspends all temporary licenses. Id. at
[0023].
Still other DRM systems with flexible consumption rules were developed by
IBM Corp. at least as early as 1999, EX1021 (Baratti), and Avaya Inc. at least as
early as 2002, EX1005 (Goringe). Additional disclosures include Zunke (EX1022)
and Ferrante (EX1023).
D.
Transmission, Validation, and Registration of Device Identity

When the 960 Patent was filed, it was known to transmit unique device
identification information, including physical parameters, to a license authority

as part of a user request for license authorization. Two of these solutions were
developed by IBM Corp. at least as early as 1998. See EX1024 (Harter), at 3:59
4:6; EX1025 (Cox), at Abstract, 5:814, 7:4965, 13:2414:4.
Kley, another such solution, discloses an automated system for upgrading a
hardware device and recovering a software license already registered with the
users previous hardware device.
EX1009 (Kley), at Abstract.
When a user
requests license authorization, the user provides license registration information

and identification, which is recorded for future use. Id. at 2:717, 3:5859. Part of
the identification information that the user provides is device-specific data unique
to the device such as a device fingerprint that is unique to a particular device.
Id. at 3:37, 3:3841. Kley provides several other examples of such device-
11
Patent 8,566,960
specific data: a unique processor identification code; properties of the device
such as active ports and microprocessor type number; or any other types of
device-specific data. Id. at 3:822. The user then receives an unlock code that is
generated using that device-specific data. Id. at 1:5961.
Still other solutions in the art well before the 2007 filing date of the 960
Patent involved activating a user software license based on a globally unique
identifier generated from arbitrary pieces of the computers hardware (called a
hardware hash). EX1004 (Hu), at 1:2435. It was also well known to register
this hardware hash in combination with a software ID on a DRM server and to
compare future requests for license authorization to that software ID/hardware
hash unique combination to combat piracy.
Id. at 1:2437.
Some proposed
solutions similarly involved verification of an accessing users devices

microprocessor serial number, EX1026 (Cohen), at [0079], Media Access
Control (MAC) address, EX1014 (Singer), at [0078], or unique computer
serial number that is specific only to that computer, EX1023 (Ferrante), at 1:51
57.
Yet other relevant DRM and license management methods include Endoh
(EX1027) and Nusser (EX1028).
12
Patent 8,566,960
VI.
OVERVIEW OF THE 960 PATENT
A.
Summary of the Alleged Invention

The 960 Patent recognizes that digital product license systems commonly
control how many devices are allowed to be used according to the product license
sold to an individual customer or company. EX1001 (960 Patent), at 1:2225.
The 960 Patent also recognizes that various prior art solutions existed in
November 2007 for allocating a relatively high device to license ratio and
requiring users to turn off license rights on certain devices to free up licenses rights
for other devices. Id. at 1:4960. The 960 Patent states that these solutions
allegedly do not take in to consideration the normal attrition that occurs with the
purchase and upgrade of personal computing devices or the like. Id. at 1:6165.
The 960 Patent further discounts these solutions as plac[ing] an expectation on
the user to go through a number of involved steps to retain their rights to use the
software. Id. at 1:6567.
To address this purported problem, the 960 Patent describes a method for
allowing for a changing number of device installations on a per license basis over
time. Id. at 1:672:2. This method combines no more than the steps of (1)
verifying a license based on a device identity associated with the given device
and (2) setting a maximum number of devices authorized for use with the digital
product, otherwise known as a copy count or a device count. Id. at 2:1542.
13
Patent 8,566,960
These steps, however, were already well known in the prior art, both separately
and in combination.
The 960 Patent describes a process where a device requesting license
authorization collects and sends unique device identifying information to an
authorization authority that checks that the license information is valid. Id. at
4:5662. If the license information is valid, the authorization authority determines
if the device exists in a database of prior authorizations. Id. at 5:15. If the device
identity exists in the database, the authorization authority authorizes the software
to run on the requesting device. Id. at 5:513. Figure 2 of the 960 Patent
illustrates this decision tree:
The 960 Patent consults a copy count when a device identity does not
exist in the database of prior authorizations. There, the authorization authority
queries how many successful authorizations for new devices have been allowed.
Id. at 5:1423. If the returned count is less than the maximum number of devices
14
Patent 8,566,960
allowed, the authorization authority authorizes the software to run on the
requesting device. Id. at 5:2325. If the returned count is more than the maximum
number of devices allowed, the authorization authority denies authorization. Id. at
3335. Figure 2 of the 960 Patent illustrates this decision tree, which supplements
the decision tree depicted above:
As the prior art repeatedly demonstrates, however, the purported problems

solved by the 960 Patent were well known and studied, and the solutions to that
problem recited in the claims of the 960 Patent were well-known prior to the 960
Patent, including the concepts of DRM rules based on device identity and device
count, both individually and in combination.
15
Patent 8,566,960
B.
Level of Ordinary Skill in the Art

A person of ordinary skill in the art (POSA) for the 960 Patent would
have at least a bachelors degree in computer engineering, computer science, or a

related subject, and at least three years of experience working with digital rights
management, the access and distribution of licensed digital content, or the
equivalent. EX1031 (Zatkovich Declaration), at 23.
C.
Prosecution History
The 960 Patent issued from U.S. Patent Application 12/272,570, which was
filed on November 17, 2008, EX1032 (File History, Application (11/17/2008)),

and claims priority to U.S. Provisional Application 60/988,778, which was filed on
November 17, 2007, EX1001 (960 Patent), at 1:711. The Examiner allowed the
claims in light of applicants arguments and amendment[2] filed 11/16/2012.
EX1045 (File History, Notice of Allowability (9/3/2013)), at 3. The Examiner
appeared persuaded by the four arguments that the applicant presented in that
November 16, 2012 filing.3
EX1042 (File History, Response to Final Office
The applicant did not file any amendment on November 16, 2012. Petitioner
assumes this reference to amendment was a typo.

3
Petitioner notes that only the first of these arguments relates to a limitation
included in the independent claims of the 960 Patent. See EX1042 (File History,
(Continued...)
16
Action (11/16/2012)), at 9.
Patent 8,566,960
But as described in detail below, each of these
arguments relates to limitations (and indeed entire claims) that were well known at
the time that the 960 Patent was filed.
VII. CLAIM CONSTRUCTION
Claim terms of a patent in inter partes review are normally given the
broadest reasonable construction in light of the specification.
37 C.F.R.
42.100(b); Cuozzo Speed Techs., LLC v. Lee, 579 S. Ct. ____, 2016 WL
3369425, at *10 (June 20, 2016). The following discussion proposes constructions
and support for those constructions. Any claim terms not included in the following
discussion should be given their ordinary meaning in light of the specification, as
commonly understood by those of ordinary skill in the art.
physical parameters
The phrase physical parameters should be interpreted to mean identifying
characteristics of the machine or its component parts. The phrase physical
________________________
Response to Final Office Action (11/16/2012)), at 27. The other three arguments
made by the applicant relate to limitations in dependent claims 9 and 23, dependent
claim 20, and dependent claim 21, respectively. Id.
17
Patent 8,566,960
4
parameters was not included in the specification or claims as originally filed, but
was introduced by an amendment to claims 1, 22, and 25 to overcome a rejection
that the claim was obvious over Ahmad (EX1029) in view of Takano (EX1030).
EX1040 (File History, Amendment (8/5/2011)), at 2, 59.
The 960 Patent does not define the term physical parameters, but
describes that generating the device identity may also be described as generating a
device fingerprint and may entail the sampling of physical, non-user configurable
properties. EX1001 (960 Patent), at 9:3234. The 960 Patent then goes on to
provide non-limiting examples of such physical, non-user configurable
properties, including unique manufacturer characteristics, carbon and silicone
degradation and small device failures, chip benchmarking, degradation
measurements, physical, non-user-configurable characteristics of disk drives and
solid state memory devices, [d]evice parameter sampling, and damage
The terms used in the specification are physical, non-user configurable
properties, physical device parameters, physical, non-user configurable

characteristics, device parameter[s], machine or device parameters, and
machine parameters. EX1001 (960 Patent), at 9:3434, 3637, 5657, 63,
10:35, 11, 16, 21, 25, 31, 36, 41, 45, 49, 53, 57, 61, 65.
18
Patent 8,566,960
measurement. Id. at 9:3639, 5457, 63; see id. at 9:3637 (Physical device
parameters available for sampling may include . . . . (emphasis added)).
The 960 Patent describes that those examples make up just a part of device
fingerprinting technologies described herein and provides a plethora of examples
of physical parameters, which the 960 patent describes in those examples as
machine or device parameters. Id. at 10:367. These examples range from
machine details to memory details to chassis serial number, among others.
Id. The proposed construction is consistent with the specification and the ordinary
use of the term physical parameters.
It would be improper to narrowly limit the term physical parameters to
require that the physical parameters be unique device identifying information
or non-user configurable.
Claim 1 recites a device identity generated by
sampling physical parameters of the given device. Id. at 12:24. Claim 18

depends from claim 1 and recites where the device identity comprises unique
device identifying information. Id. at 13:1819.
The principle of claim differentiation presumes that a construction of
physical parameters requiring unique device identifying information is
improper. See Enzo Biochem Inc. v. Applera Corp., 780 F.3d 1149, 115657 (Fed.
Cir. 2015); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir.
2004); see also HM Elecs., Inc. v. 3M Innovative Properties Co., IPR2015-00491,
19
Patent 8,566,960
Paper 35, at 19 (April 18, 2016) (routine). This presumption is not overcome here,
because there is no contrary construction dictated by the specification or
prosecution history, and the proposed construction is reasonable. See Seachange
Intl, Inc. v. C-COR, Inc., 413 F.3d 1361, 1369 (Fed. Cir. 2005). The prosecution
history discussion of the phrase physical parameters is limited to the applicants
argument that a random number generated by a server cannot produce a device
identity generated by sampling physical parameters of the given device.
EX1040 (File History, Amendment (8/5/2011)), at 10.
Similarly, claim 19 depends from claim 18 and recites wherein the unique
device identifying information comprises . . . at least one non-user-configurable
parameter of the given device. EX1001 (960 Patent), at 13:2023. For similar
reasons, due to principles of claim differentiation, it is presumed that limiting the
physical parameters of claim 1 to non-user-configurable parameters would be
improper, and the presumption is not overcome here by the specification or
prosecution history. See Seachange, 413 F.3d at 1369.
VIII. SPECIFIC GROUNDS FOR PETITION
Pursuant to Rule 42.104(b)(4)(5), the following sections detail the grounds
of unpatentability, the limitations of the challenged claims of the 960 Patent, and
how these claims were therefore anticipated or obvious in view of the prior art.
20
A.
Patent 8,566,960
Ground I: Claims 1, 35, 8, 1822, and 25 are anticipated by Abburi
1.
Overview of Abburi
Abburi discloses a DRM system developed by Microsoft Corp. at least as
early as 2001 that includes an enforcement architecture and method for

implementing roaming digital rights management. EX1002 (Abburi), at Abstract.
Figure 6 of Abburi illustrates the basic concepts of that DRM system:
21
Patent 8,566,960
In the Abburi DRM scheme, a user must request a digital content license
from a license server. Id. at 2:633:3, 3:3842; id. at 20:1721:6. The license
server only issues a license to a trusted machine, i.e., one that can authenticate
itself. Id. at 3:1719. The license server will thereafter issue a license to the user
only if the user provides a valid license signature. Id. at 3:3842; id. at 21:722.
The user must also provide other validating information by a Digital Rights
License, or DRL. Id at 22:6023:2, Fig. 8.
The license server uses the information in the DRL to validate the license
and allow or disallow access to the digital content by the user based on the given
license terms. Id. at 22:6023:2, 27:3947. This includes information about the
user and the users device, including computer and personal information and
identifiers.
Id. at 30:4066.
With this information, the license is
cryptographically bound to the requesting device by the license server. Id. at

3:674:3, 58:1215.
The DRM system of Abburi also includes a roaming service that allows a
license holder to access digital content across a number of computers. A user
enrolls with a license synchronization server and provides the synchronization
server with device identification for the desired roaming devices. Id. at 3:614:10.
The license synchronization server then provides copies of the users licenses to
the users registered devices and cryptographically binds those copy/replacement
22
Patent 8,566,960
licenses to the users respective devices. Id. at 4:310. But there are limits on the
number of devices that can be licensed at any given time. Id. at 4:1115. The
DRM system of Abburi also limits those copy/replacement licenses by setting a
relatively short-term expiration date that is different from the original
expiration date. Id. at 4:1928. Abburi calls this a decay. Id.
Many of the features disclosed in Abburi were implemented in, for instance,
the 2006 licensing program Windows Vista Volume Activation 2.0 related to the
Microsoft Windows Vista product. See EX1060 (Volume Activation 2.0 Guide).
Like Abburi, that licensing scheme allowed licenses limited to a specific number
of computers, mapped authorized computers to a specific licensing scheme and
activation, added a client machine ID (CMID) to a protected table upon
activation, included a first 180-day period wherein license renewal was required,
and included a second 30-day period wherein not renewing the license caused the
client machine ID to be removed from the protected table. Id. at 4, 8, 23.
On November 17, 2008, the applicant of the 960 Patent filed an Information
Disclosure Statement, which disclosed 22 prior art references, one of which was
Abburi. EX1033 (File History, Information Disclosure Statement (11/17/2008)), at
3.
The applicant thereafter filed five Information Disclosure Statements,
disclosing 73 additional prior art references, before the Examiner acknowledged

receipt and consideration of Abburi.
See EX1034EX1038.
23
The Examiner
Patent 8,566,960
acknowledged receipt and consideration of every one of these 95 prior art
references on the same day, April 20, 2011.
EX1039 (File History, List of
References Cited and Considered (4/20/2011)). The applicant thereafter submitted

three more Information Disclosure Statements, disclosing an additional 148
references. See EX1041, EX1043, EX1044.
2.
Claims 1, 22, and 25 are anticipated by Abburi

Independent claims 1, 22, and 25 of the 960 Patent recite essentially the
same invention. Claim 1 of the 960 Patent recites an apparatus claim (a system
for adjusting a license) while claim 22 recites a method claim (a method for
adjusting a license). Claim 1 also contains additional limitations directed to the
communications module, processor, and memory of the apparatus. These
are not substantive differences in claim scope. Therefore, Petitioner considers the
patentability of claims 1 and 22 together for purposes of this Petition, except where
noted for those additional limitations.
Likewise, claim 25 recites a computer program for implementing the
apparatus and method recited in claims 1 and 22. Claim 25 simply adds the
limitation after an initial authorization of the digital product in the fourth clause
after the preamble. EX1001 (960 Patent), at 14:3541 (emphasis added). Apart
from that limitation, there are no substantive differences in claim scope.
Accordingly, Petitioner considers the patentability of claim 25 together with claims
24
Patent 8,566,960
1 and 22 for purposes of this Petition, except where noted for that additional
limitation.
a)
A system[/method] for adjusting a license for a digital product over time

Abburi discloses a DRM system and method for implementing roaming
DRM whereby a license is distributed to a user but may be rebound to other

devices of the user. EX1002 (Abburi), at Abstract. Those copy/replacement
licenses are distributed by a synchronization server that sets the license to decay
over time. Id. at 4:1928.
In other words, each of those copy/replacement licenses has a second,
relatively
short-term
copy/replacement
expiration
licenses
can
date.
expire
Id.
in
For
30
example,
days
while
permanent
temporary
copy/replacement licenses can expire in two days. Id. at 63:2430. Any suitable
expiration may be chosen. Id. at 63:3031. Thus, Abburi discloses this limitation.
b)
the license comprising at least one allowed copy count corresponding to a

maximum number of devices authorized for use with the digital product
Abburi discloses a limit on the number of devices that may register to
receive copies of the license at any given time. Id. at 4:1113, 63:610. Abburi
also discloses multiple device counts. For example, there can be a maximum
number of temporary devices and a maximum number of permanent devices,
the counts of which may be enforced separately or together. Id. at 63:1123.
25
Patent 8,566,960
These maximum numbers can be any suitable number of devices. Id. at 60:4649.
Thus, Abburi discloses this limitation.
c)
[a communication module] for receiving a request for authorization to

use the digital product from a given device
Figure 24 of Abburi illustrates the communications network of the disclosed
DRM system, including the license synchronization server connected to the

communications network:
26
Patent 8,566,960
Id. at Fig. 24; see also id. at 57:6558:1; 59:1113; Fig. 12. Through this
communications network, the synchronization server receives licensing requests.
Id. at 59:4163:32. Thus, Abburi discloses this limitation.
d)
a processor module in operative communication with the communication

module (claim 1)
Figure 12 of Abburi illustrates the general purpose computing system that
can be used to implement the DRM system disclosed in Abburi:
This general purpose computing system includes a processing unit 121 that
is coupled to the network I/F 153. Id. at 7:1315. Thus, Abburi discloses this
limitation.
27
e)
Patent 8,566,960
a memory module in operative communication with the processor module
and comprising executable code for the processor module (claim 1) / a
computer program product, comprising: a non-transitory computerreadable medium (claim 25)
Figure 12 of Abburi illustrates the general purpose computing system that
can be used to implement the DRM system disclosed in Abburi. Id. at Fig. 12.
This general purpose computing system includes a system memory unit 122 and
hard drive 127 coupled to processing unit 121. Id. at 7:1318. Abburi discloses
that a number of programs, including application programs, program modules, and
program data for running the disclosed DRM system may be stored on the hard
drive 127 or system memory 122. Id. at 7:5054. Thus, Abburi discloses these
limitations.
f)
verify[ing] that license data associated with the digital product is valid
based at least in part on a device identity generated by sampling physical
parameters of the given device
The license that a user receives in the Abburi DRM system includes a
Digital Rights License, or DRL (red annotation added):
28
Patent 8,566,960
Id. at Fig. 8; see also id. at 22:6023:2. The DRL includes information about the
users machine, including machine type, machine ID, name, authorization type,
authorization data, and details about the application requesting the license. Id. at
30:4558. The details of the DRL are illustrated in columns 3032 of Abburi, but
particularly column 30 (red annotations added):
The Abburi system uses this DRL in conjunction with other parameters, such as the
digital signature, to validate the license. Id. at 23:1526, 27:3947, Fig. 10.
29
Patent 8,566,960
The DRL is made up of both physical parameters as well as information
that does not qualify as physical parameters. EX1031 (Zatkovich Declaration),
at 44, 45, 47, 48. Machine type is a characteristic of the users machine
because it is inherent in the users machine, the example in the excerpt above is set
to x86Computer. Id. at 48. Similarly, Machine ID is a characteristic of the
users machine because it is a designation of the users machine, the example in the
excerpt above is set to 3939292939d9e939. Id. at 45, 48. Both of these items
thus qualify as physical parameters as claimed in the 960 Patent. Id. at 44,
45, 47, 48. The DRL also contains additional information, such as application
name (set to Windows Media Player in the example above), application ID (set
to 2939495939292 in the example above), user name (set to Arnold Blinn in
the example above), and user ID (set to 39299482010 in the example above).
After initially acquiring the license, and the license being determined valid
by the DRM system of Abburi, a user can activate a roaming service to allow that
license to be used on machines other than the machine initially authorized for use.
EX1002 (Abburi), at 57:4358:49.
This roaming service uses a license
synchronization server that utilizes two databases to verify license requests: a user
account device store and a user account license store. Id. at 58:5658, Fig. 25.
The user account device store tracks a list of devices registered in the
roaming service, each device identified by a unique machine identification number.
30
Patent 8,566,960
Id. at 58:5963. This is otherwise known as the machine ID, and may include
identifying information concerning each device, whether the device is a permanent
or temporary computing device, and a user-friendly shorthand name such as home
office or laptop. Id. at 59:6167. This machine ID, like the Machine ID in
the DRL, is a characteristic of the users machine because it is a designation of the
users machine. Therefore, this machine ID, like the Machine ID in the DRL,
qualifies as a physical parameter as claimed in the 960 Patent.
When a user activates the roaming service on a device, the user must provide
this unique identifying information for the computing device to the
synchronization server, whereby the synchronization server processes this
information for authorization.
Id. at 59:3367.
This unique identifying
information includes a unique machine ID of the device the user is using, id. at
68:1926, as the licenses of the Abburi DRM system are cryptographically
bound to the device for which the license is obtained. Id. at 3:674:3, 58:1215.
g)
in response to the device identity already being on a record, allow[ing]

the digital product to be used on the given device
After the synchronization server of Abburi verifies the license data and the
information about the users machine, the synchronization server checks for the
machine ID of the device in the user account device store. Id. at 61:6164; id. at
68:1929. If the user is connecting from a device that has already been registered
31
Patent 8,566,960
with the synchronization server (and therefore already has a device record in the
user account device store, id. at 58:5963), the synchronization server provides
updated copy/replacement licenses to the users device. Id. at 61:3142. These
copy/replacement licenses can now be used by the users machine. Id. at 60:31
35. Thus, Abburi discloses this limitation.
h)
in response to the device identity not being on the record, set[ting] the
allowed copy count to a first upper limit for a first time period, the allowed
copy count corresponding to a maximum number of devices authorized to
use the digital product (claims 1 and 22)
When the requesting user device has not previously registered with the
synchronization server of Abburi and requests license authorization, the

synchronization server recognizes that this is a new device by checking for the
machine ID of the new device in the user account device store. Id. at 61:4652.
At this point, the synchronization server checks to see if the maximum number of
devices is exceeded. Id. at 61:5253. Abburi discloses doing this by use of a
limit on the number of devices that may register to receive copies of the license at
any given time. Id. at 4:1113, 63:610. Abburi also discloses doing this by using
multiple device counts, id. at 63:1123, any of which can be set to a maximum
number equal to any suitable number of devices. Id. at 60:4649. Thus, Abburi
discloses this limitation.
32
i)
Patent 8,566,960
in response to the device identity not being on the record, set the allowed
copy count to a first upper limit for a first time period after an initial
authorization of the digital product, the allowed copy count corresponding
to a maximum number of devices authorized to use the digital product
(claim 25)
Abburi discloses that a user may initially request a license from a license
server. Id. at 2:633:3, 3:3842; id. at 20:1721:6. After that initial license
authorization, the user may activate the roaming service disclosed by Abburi
whereby the license obtained by the user can be shared among any number of
devices of the user. Id. at 57:4358:49. After activation of the roaming service,
the user can request licenses from the synchronization server of Abburi on new
user devices. Id. at 59:4360:63.
As discussed in the Section immediately above, when the requesting user
device has not previously registered with the synchronization server of Abburi and
requests license authorization, the synchronization server checks to see if the
maximum number of devices is exceeded based on a device limit in effect at the
time of the license request. Id. at 4:1113, 61:4653, 63:610. Because the
request is through the roaming service, the time of the license request and the given
device limit are necessarily after the initial authorization of the original license. Id.
33
j)
Patent 8,566,960
calculat[e/ing] a device count corresponding to total number of devices
already authorized for use with the digital product
This roaming service of Abburi keeps track of registered devices by a user
account device store. Id. at 58:5658, Fig. 25. Each of these registered devices
has already been authorized to use the licenses activated in the roaming service.
Id. at 59:4363. The user account device store tracks a list of devices registered in
the roaming service, each device identified by a unique machine identification
number. Id. at 58:5963. When the synchronization server needs to calculate the
number of devices that have been registered, it references the user account device
store. Id. at 61:6562:1. Thus, Abburi discloses this limitation.
k)
when the calculated device count is less than the first upper limit,
allow[ing] the digital product to be used on the given device
When the calculated device count of the DRM system of Abburi is less than
the maximum number of devices allowed, the synchronization server adds the
requesting device to the user account device store.
Id. at 61:6562:3.
Synchronization then proceeds, id. 61:5758, and the synchronization server

provides licenses and authorization to use the licensees to the requesting device.
Id. at 58:2144, 60:4463. Thus, Abburi discloses this limitation.
34
Patent 8,566,960
3.
Claim 3 is anticipated by Abburi

wherein the license data comprises information that may be used to verify
whether the license for the digital product is valid
The Abburi license server only issues a license to a trusted machine, i.e.,
one that can authenticate itself. Id. at 3:1719. The license server will thereafter
issue a license to the user only if the user provides a valid license signature. Id.
at 3:3842, 21:722. The user must also provide other validating information by a
DRL. Id at 22:6023:2, Fig. 8. The DRL contains the license terms negotiated
with the user, id., and is used by the DRM system to validate the license and allow
or disallow access to the digital content by the user. Id. at 27:3947, Fig. 10.
4.

wherein the record comprises an authorization database
The license synchronization server of the Abburi DRM system utilizes two
databases that the server uses to verify license requests: a user account device
store and a user account license store. Id. at 58:5658, Fig. 25. Thus, Abburi
5.

wherein the first time period comprises a defined number of days after an
initial authorization of the digital product
The DRM system of Abburi allows a user to roam licenses after initial
authorization of those licenses. Id. at 58:1249. These roamed licenses fall into
35
Patent 8,566,960
one of two categories: permanent device copy/replacement licenses or temporary
device copy/replacement licenses.
Id. at 63:2426.
Permanent device
copy/replacement licenses are set to expire in 30 days (although any suitable

period of time may be chosen for expiry) and temporary device copy/replacement
licenses are set to expire in two days (although any suitable period of time may be
chosen for expiry). Id. at 63:2630, 64:616. Because these roaming licenses are
granted through the roaming service, the given date of expiry is necessarily after an
initial authorization of the original license.
Id.
Thus, Abburi discloses this
limitation.
6.

wherein the processor module is adapted to, in response to the calculated
device count exceeding the first upper limit, deny the request for
authorization
When a user of the roaming service of the DRM system of Abburi requests
license authorization, the synchronization server checks to see if the maximum

number of devices has been exceeded. Id. at 62:1926. If the maximum number
of devices is exceeded, the synchronization server does not allow access to the
requested digital content. Instead, the synchronization server gives the user a
choice to wait until one of the utilized licenses expires or to actively revoke the
licenses on another device. Id. at 62:2634. This protocol is run and enforced by
the general purpose computing system that can be used to implement the DRM
36
Patent 8,566,960
system disclosed in Abburi, which includes processing unit 121. Id. at Fig. 12.
7.

wherein the device identity comprises unique device identifying
information
When a user connects to the roaming service synchronization server, the
user must provide a unique identifier, such as a unique Machine ID of the device
the user is using and a unique Signer Name and Signer ID of the user signing the
license. Id. at 32:3637, 68:1926. Thus, Abburi discloses this limitation.
8.

wherein the unique device identifying information comprises at least one
user-configurable parameter and at least one non-user-configurable
parameter of the given device
When a user of the roaming service of Abburi first connects to the
synchronization server, the user provides a unique Machine ID of the device the
user is using and a unique Signer Name and Signer ID. Id. at 32:3637, 68:2329.
If the synchronization server does not find the user in its user account database, the
synchronization server creates a new account for the user with the users Machine
ID and the users Signer Name and Signer ID. Id. Thus, Abburi discloses this
limitation.
37
Patent 8,566,960
9.

wherein the device identity is generated by utilizing a cryptographic hash
function on the at least one user-configurable and the at least one nonuser-configurable parameters of the given device
When a user of the roaming service of Abburi first connects to the
synchronization server, the user provides a unique Machine ID of the device the
user is using and a unique Signer Name and Signer ID. Id. at 32:3637, 68:2329.
These parameters are part of the DRL, which is used by the Abburi DRM system to
validate the license. Id. at 27:3947, 30:4050, 31:1120, 32:3637. The DRL
also includes authentication data (AUTHDATA) for the unique Machine ID that
utilizes the SHA-1 cryptographic hash function on that Machine ID. Id. at
30:4550 (setting AUTHTYPE as Intel Authenticated Boot PC SHA-1
DSA512); EX1061 (SHA-1), at 1.
The DRL also utilizes the MD5
cryptographic hash function on the Signer Name and Signer ID. EX1002 (Abburi),
at 31:1120, 32:4445; EX1062 (MD5), at 1.
Thus, Abburi discloses this
limitation.
10.

wherein the device identity is generated by utilizing at least one
irreversible transformation of the at least one user-configurable and the at
least one non-user configurable parameters of the given device
As discussed immediately above, the DRM system of Abburi uses the SHA-
1 cryptographic hash function on the Machine ID and the MD5 cryptographic hash
38
Patent 8,566,960
function on the Signer Name and Signer ID. Abburi discloses that these hash
functions are one-way hash function[s]. EX1002 (Abburi), at 44:1422. Thus,
Abburi discloses this limitation.
B.
Ground II: Claims 119 and 2225 are obvious over Gilder in view of
Hu and Goringe
1.
Overview of Gilder
Gilder discloses a DRM system developed by NBC Universal, Inc. at least
as early as 2006 that allows a user to share digital content with other devices so
long as the number of devices authorized to use the digital content does not exceed
a maximum preset limit. EX1003 (Gilder), at Abstract, [0007], [0008], [0010].
Gilder does this by using a registry of content and devices enabled to play the
content. Id. This license registry database stores a device identity of licensed
and active devices, which ties the digital content and license to a particular device.
Id. at [0037].
39
Patent 8,566,960
The general flow of the DRM system of Gilder is as illustrated in Figure 17:
40
Patent 8,566,960
In a more detailed sense:
(1) the users client application gathers account information including user
identification and information on the users device, id. at [0066];
(2) the DRM system takes that user account and user device information and
checks the license registry database to make sure that the digital content license for
that user account and user device is valid, id. at [0066], [0067], [0071];
(3) the DRM system determines the license rights associated with the
requested digital content based on information about both the user and the device,
id. at [0066], [0067];
(4) if the license is valid, the requesting device is allowed to play the
requested digital content, id. at [0067];
(5) if the license is not valid (because there is no record in the license
registry for the given user account and user device identities), the DRM system of
Gilder initiates additional logic to verify whether to issue a license anyway,
including whether the user has exceeded the maximum permitted number of
authorized devices per the particular license restrictions at issue, id. at [0052],
[0055], [0067], [0068];
(6) if the number of copies does not exceed the maximum permitted number
of authorized devices, the user and device identifying information is added to the
41
Patent 8,566,960
license registry and the requesting device is permitted to play the content or
otherwise access the digital content, id. at [0052], [0055], [0067], [0068]; and
(7) if the current device count exceeds the maximum number of devices
authorized to use the digital content, the DRM system will not issue a license to the
user for the content or the device, id. at [0067], [0069].
2.
Overview of Hu
Hu discloses a DRM system that allows a user to move a digital content
license from one computer to another over time. EX1004 (Hu), at Abstract. Hu
does this by maintaining a database of user account information and identifiers of
computers licensed to use the software. Id. at Abstract, 3:513, 4:1217. In Hu,
when a user requests a license by providing account authentication information and
computer identification information to a license management server. Id. at 3:15
17, 4:2022. The license management server takes that information, authenticates
the license request, and makes a policy decision on the users license request. Id at
3:1721, 4:2226, 6:5561. That policy decision may be based on a maximum
number of computers or licenses that can use the software product at one time. Id.
at 6:647:16. The server then allows or allows or denies the license authorization
request from the user based on that policy decision. Id. at 3:2127, 4:2634, 7:19
27.
42
Patent 8,566,960
Figure 2 of Hu is illustrative of the DRM system at a high level:
3.
Overview of Goringe
Goringe discloses a DRM licensing system developed by Avaya Inc. that
allows a number of different license time periods with differing maximum number
of concurrent devices allowed during each license time period. EX1005 (Goringe)
at Abstract. Like the problem allegedly solved by the 960 Patent, the DRM
scheme of Goringe sought to solve the problem that arose when a customers usage
requirements vary periodically, yet sought to ensure that the customer did not
exceed the concurrent use restrictions set by the seller. Id. at 1:1830, 2:4655.
Goringe accomplishes this by using a Software License Schedule maintained on
a license server and stored in memory. Id. at 3:3147, Figs. 1, 2. An example of
that Software License Schedule is illustrated in Figure 2:
43
Patent 8,566,960
The DRM system of Goringe implements the Software License Schedule

and periodic licensing scheme and restrictions by the general steps in Figure 4:
44
Patent 8,566,960
As shown in Figure 4, when a user requests a license from the license server,
the license server determines which time period in the Software License Schedule
currently applies.
Id. at 4:5660.
The license server then determines the
maximum number of concurrent users authorized during the applicable time

period. Id. at 4:6064. As the DRM system of Goringe authorizes licenses, the
license server records and maintains the number of authorized concurrent users.
Id. at 4:6466. Thus, upon a license request, the license server determines whether
there is any remaining usage allowance for the request and grants, queues, or
denies the request based on a comparison of the current number of concurrent users
and the maximum allowed for the given time period. Id. at 4:665:25.
4.
Claims 1, 22, and 25 are obvious over Gilder in view of Hu

For the same reason as above with Abburi, Petitioner considers the
patentability of claims 1, 22, and 25 together for purposes of this Petition, except
where noted for the additional limitations in claims 1 and 25.
a)
A system[/method] for adjusting a license for a digital product over time

Gilder discloses a DRM system that allows a user to access licensed digital
content and share that digital content across a number of devices as long as a total
number of simultaneously accessible copies is below a certain limit. EX1003
(Gilder), at Abstract. The local registry of Gilder keeps track of the devices
45
Patent 8,566,960
licensed to use the digital content over time. Id. Thus, Gilder discloses this
limitation.
b)
the license comprising at least one allowed copy count corresponding to a

maximum number of devices authorized for use with the digital product
The DRM system of Gilder limits the number of devices permitted to share
digital content to a total number of devices on which the content can be

simultaneously accessed. Id. at [0007], [0008]. Similarly, Gilder allows users
to create a copy of digital content so long as a total number of copies made by the
user remains below a desired limit. Id. at [0010]. The particular maximum
number of devices authorized can be any number desired. Id. at [0049]. Thus,
Gilder discloses this limitation.
c)
[a communication module for] receiving a request for authorization to

use the digital product from a given device
A user in the Gilder DRM system requests permission from a license
registry to access, play, or copy digital content. Id. at [0010], [0066]. The user
contacts the license registry server by a network, which the license registry server
uses to stay in contact with the user. Id. at [0034], [0036]. Thus, Gilder
d)
a processor module in operative communication with the communication

module (claim 1)
The DRM system of Gilder includes one or more processors to receive
content, execute instructions for playing content, and process instructions and
46
Patent 8,566,960
convey data. Id. at [0036], [0041]. These one or more processors interact with
the communications modules of the DRM system of Gilder to receive that content
and convey the necessary data.
Id. at [0036].
Thus, Gilder discloses this
limitation.
e)
a memory module in operative communication with the processor module

and comprising executable code for the processor module to (claim 1) /
a computer program product, comprising: a non-transitory computerreadable medium (claim 25)
Along with the communications module and processor module, the Gilder
DRM system includes memory circuitry that communicates with the processor and
stores both configuration data for the device as well as content and applications for
execution by the processor. Id. at [0037], [0041]. Particularly, the memory
circuitry stores applications capable of executing the DRM schemes outlined in
Gilder, and may be provided by various sources. Id. at [0037]. Thus, Gilder
discloses these limitations.
f)
verify[ing] that license data associated with the digital product is valid
based at least in part on a device identity generated by sampling physical
parameters of the given device
The license registry database of Gilder stores information related to user
accounts, licensed or active devices, and other metrics used by the DRM system.
Id. at [0037]. This license registry database stores information related to licensed
or active devices by a device identity. Id. When a user of the Gilder DRM
system requests authorization to use the digital product, the users client
47
Patent 8,566,960
application gathers account information including user identification and
information on the users device.
Id. at [0066].
The DRM system then
determines the license rights associated with the requested digital product based on
that information about both the user and the device. Id. at [0066][0067].
Part of that includes an authentication process, in which the rights of the user
are verified.
Id. at [0071].
More specifically, the users license rights are
verified by reviewing, among other things, device-identifying information, noted in

Figure 8 as DeviceID. Id. at [0071], Fig. 8. Thus, Gilder discloses this
limitation.
To the extent a narrow interpretation of the term physical parameters is
taken, and to the extent one could argue that Gilder does not disclose this
limitation, this limitation was well known at the time the 960 Patent was filed.
For example, Hu discloses that a user requests license authorization by sending
account identification information to the licensing server along with a
computer_id (computer identification information) that uniquely identifies the
computer on which the software is run. EX1004 (Hu), at 6:3135, 6:5561. Hu
discloses that the computer_id may be as simple as the MAC address of the
Ethernet card or more complex like, for example, a basket of hardware
identifiers such as motherboard and hard drive serial numbers. Id. at 6:3539.
48
Patent 8,566,960
Given that the limitation was well known, it would have been obvious to a
POSA at the time the 960 Patent was filed to modify the DRM system of Gilder to
provide a computer_id including a MAC address or a basket of hardware
identifiers, such as motherboard and hard drive serial numbers, with a client
license authorization request to the licensing server such as taught by Hu. EX1031
(Zatkovich Declaration), at 6065. A POSA would have looked to both Gilder
and Hu as related art in a known, limited field of license management and DRM.
Id. at 5356, 60. Therefore, A POSA would have been motivated to incorporate
Hus computer_id into the user license rights verification process of Gilder to
add greater security and anti-piracy protections to Gilder over the machine ID
disclosed therein. Id. at 6062, 64.
Further, adding Hus computer_id to the DRM system of Gilder would
have been based on well-known concepts of adding increased security and antipiracy protections to DRM systems and does not involve modification of the
novel portions of Gilder. Id. at 6365. Thus, to the extent that Gilder falls
short, Hu discloses this limitation.
g)
in response to the device identity already being on a record, allow[ing]

the digital product to be used on the given device
The license registry of Gilder includes a database that stores information
related to user accounts, licensed or active devices, licensed or active content, and
the number of copies currently authorized for play by the user, among other things.
49
Patent 8,566,960
EX1003 (Gilder), at [0037]. When a user requests license authorization by, for
example, initiating playing of content, the DRM system of Gilder reviews that
license registry to determine whether a valid license is associated with the content
and the user and device:
Id. at Fig. 6, [0067]. If there is a valid license on the license registry, the device
is allowed to play the requested digital content. Id. at [0067], Fig. 6. Thus,
h)
in response to the device identity not being on the record, set[ting] the
allowed copy count to a first upper limit for a first time period, the allowed
copy count corresponding to a maximum number of devices authorized to
use the digital product (claims 1 and 22)
If the DRM system of Gilder does not find a valid license in the license
registry for the given user and device identifying information, the DRM system of
Gilder initiates additional logic to verify whether to issue a license. Id. at [0067],
Fig. 6. That additional logic determines if the user has exceeded the maximum
permitted number of authorized devices per the particular license restrictions at
issue at the given time. Id. at [0052], [0055], [0061], Figs. 3, 6. For example,
50
Patent 8,566,960
Gilder discloses limiting the allowable number of float copy licenses if the user
has not synchronized with the license registry within a set amount of time. Id. at
[0061]. Thus, Gilder discloses this limitation.
l)
in response to the device identity not being on the record, set the allowed
copy count to a first upper limit for a first time period after an initial
authorization of the digital product, the allowed copy count corresponding
to a maximum number of devices authorized to use the digital product
(claim 25)
In addition to the disclosures of Gilder discussed immediately above in
relation to claims 1 and 22 of the 960 Patent, Gilder further allows for float
copies, which are copies in excess of the permitted number of licenses per the
given license restrictions. Id. at [0052]. These float copies allow a user to at
least temporarily, transfer content to additional devices without having the device
that is relinquishing the license be on-line to give up its license for this
transaction.
Id. at [0052], [0068].
The additional logic of Gilder that
determines if the user has exceeded the maximum permitted number of authorized
devices can also determine whether the user has also exceeded its maximum
number of float copies in excess of the maximum permitted number of
authorized devices. Id. The DRM system of Gilder does that by maintaining a
parameter called floatCount, which is variable and equal to the number of float
copies that currently have license authorization to access the digital content. Id. at
[0052].
51
Patent 8,566,960
These float copies authorized in the DRM system of Gilder as well as the
float copy limit enforced at the given time, are necessarily after an initial
authorization of a very first copy of the digital content for that user. EX1031
(Zatkovich Declaration), at 51.
Therefore, the maximum number of float
copies in excess of the maximum permitted number of authorized devices is a

first upper limit for a first time period after an initial authorization of the digital
product as recited in claim 25 of the 960 Patent. See id. Thus, Gilder discloses
this limitation.
i)
calculat[e/ing] a device count corresponding to total number of devices

already authorized for use with the digital product
To determine if a user has exceeded the maximum permitted number of
authorized devices or the maximum number of float copies in excess of those

permitted copies, the DRM system of Gilder checks the number of copies of the
content made by the user on different devices in the local license registry.
EX1003 (Gilder), at [0055]. Thus, Gilder discloses this limitation.
j)
when the calculated device count is less than the first upper limit,
allow[ing] the digital product to be used on the given device
The DRM system of Gilder compares the maximum permitted number of
authorized devices against the current number of devices authorized to use the
digital product. Id. at [0055]. If the number of copies does not exceed the
maximum permitted number of authorized devices, the user and device identifying
52
Patent 8,566,960
information is added to the license registry and the users device is permitted to
play the content or otherwise access the digital content. Id. at [0055], [0067],
Figs. 3, 6.
The DRM system of Gilder also compares the maximum number of float
copies with the current number of float copies designated by the parameter
floatCount, if the user is permitted float copies per the given license restrictions
Id. at [0052]. If floatCount does not exceed the maximum number of float
copies authorized, the user and device identifying information is added to the
license registry and the users device is permitted to play the content or otherwise
access the digital content. Id. at [0052], [0068], Fig. 6.
Thus, Gilder discloses this limitation.
5.
Claim 2 is obvious over Gilder in view of Hu

wherein the digital product comprises software
Gilder discloses a DRM system that allows a user to purchase, license or
otherwise obtain digital content and to play the content on a variety of devices. Id.
at Abstract. One of skill in the art at the time the 960 Patent was filed would have
understood that the digital content referred to in Gilder includes software.
EX1031 (Zatkovich Declaration), at 57. Thus, Gilder discloses this limitation.
To the extent one could argue that Gilder does not disclose this limitation,
this limitation was well known at the time the 960 Patent was filed. For example,
53
Patent 8,566,960
Hu discloses a method and system for software license management that allows a
user to access a software license and move that software license from one
computer to another over time. EX1004 (Hu), at Abstract. The digital content or
digital product in Hu is software. Id.
also manage digital products that are software. EX1031 (Zatkovich Declaration),
at 5759. A POSA would have looked to both Gilder and Hu as related art in a
known, limited field of license management and DRM.
Id. at 57, 58.
Therefore, a POSA would have been motivated to modify the DRM system of
Gilder to manage software digital products. Id. at 59. Further, adding Hus
management of software digital products to the DRM system of Gilder would have
been based on well-known concepts and does not involve modification of the
6.

wherein the license data comprises information that may be used to verify
whether the license for the digital product is valid
the number of copies currently authorized for play by the user. EX1003 (Gilder),
54
Patent 8,566,960
at [0037]. When a user requests license authorization by initiating playing of
content, the DRM system of Gilder reviews that license registry to determine
whether a valid license is associated with the content and the user and device. Id.
at [0067], Figs. 6, 7, 17. If there is a valid license on the license registry, the
device is allowed to play the requested digital content. Id. at [0067], Figs. 6, 7,
17. Thus, Gilder discloses this limitation.
7.

wherein the record comprises an authorization database
the number of copies currently authorized for play by the user. Id. at [0037].
When a user requests license authorization by, for example, initiating playing of
content, the DRM system of Gilder reviews that license registry to determine
whether a valid license is associated with the content and the user and device. Id.
at [0046], [0047], [0067], Figs. 6, 7, 17. Gilder also discloses that a simple
database or data structure could be established for reference when the user requests
licenses, additional copies, and so forth, with different parameters for different
levels of rights being established by reference to the database or data structure.
Id. at [0059]. Thus, Gilder discloses this limitation.
55
Patent 8,566,960
8.

wherein the first time period comprises a defined number of days after an
initial authorization of the digital product
The DRM system of Gilder can limit the number of float copies allowed to a
particular user if the license registry has not been updated within a particular
timeframe, such as thirty days. Id. at [0061]. These float copies authorized in
the DRM system of Gilder necessarily can be performed within a time period
relative to when an initial authorization occurred for a very first copy of the
content for that user. EX1031 (Zatkovich Declaration), at 51. The particular
timeframe of the float copies is necessarily in relation to a period after an initial
authorization of the digital product as recited in claim 5 of the 960 Patent. See
id. Thus, Gilder discloses this limitation.
9.

wherein the defined number of days comprises six days since the initial
authorization, and wherein the first upper limit comprises five authorized
devices
As discussed above, Gilder discloses the first time period comprises a
defined number of days after an initial authorization of the digital product. It

would have been well within the skill of a POSA in November 2007 to set that
defined number of days to any number of days, such as six. As also discussed
above, Gilder discloses setting the allowed copy count to a first upper limit for a
first time period, the allowed copy count corresponding to a maximum number of
56
Patent 8,566,960
devices authorized to use the digital product. It would have been well within the
skill of a POSA in November 2007 to set that maximum number of devices to any
number of devices, such as five.
Selecting the number of days for the first time period is the result of routine
optimization, and thus is not a patentably distinguishing claim element. Similarly,
selecting the maximum number of devices is the result of routine optimization and
thus the maximum number of devices is not a patentably distinguishing claim
element. Further, neither the prosecution history nor the specification indicate that
there is any criticality assigned to the designation of six days since the initial
authorization or five authorized devices. Indeed, the 960 Patent discloses
exactly the opposite: that any other allowed copy counts, the maximum number
of devices for a given time period, or the like can be used and that the
embodiments disclosed therein can include any number of evaluation periods.
EX1001 (960 Patent), at 4:3541, 6:2124. Therefore, claim 6 is obvious over
Gilder in view of Hu.
10.

deice count equaling the first upper limit, send a warning regarding the
allowed copy count to the given device
When a user requests license authorization from the DRM system of Gilder
and the number of copies already made by the user is equal to the maximum
57
Patent 8,566,960
number of devices authorized to use the digital product, the DRM system of Gilder
sends a message prompt to the user. EX1003 (Gilder), at [0055]. In other words,
the DRM system will not allow the user to copy the license to the requested device
unless the user first disables or removes the content from one of the device sin
which a copy has been made. Id.
The DRM system of Gilder may also send a message to the user that no
license can be issued for the desired content or device because the users current
request would exceed the maximum number of devices authorized to use the
digital product if the content were authorized to be played. Id. at [0067]. In
general, if the copy rules of the DRM system are not met, the DRM system of
Gilder will process an exception and notify the user of the same. Id. at Figs. 6, 11
13, 15, 16, 18. Thus, Gilder discloses this limitation.
11.

device count exceeding the first upper limit, deny the request for
authorization
If the DRM system of Gilder calculates that the current device count
exceeds the maximum number of devices authorized to use a digital product, the
DRM system will not issue a license to the user for the content or the device. Id. at
[0067], [0069], Figs. 6, 11. The DRM system then indicates the same to the
58
Patent 8,566,960
user and disables the requested content from playing. Id. at [0067], Figs. 6, 11,
17. Thus, Gilder discloses this limitation.
12.

wherein the device identity comprises unique device identifying
information
The license registry database of Gilder stores information related to user
accounts, licensed or active devices, and other metrics used by the DRM system.
Id. at [0037]. This license registry database stores information related to licensed
or active devices by a device identity. Id. When a user of the Gilder DRM
system requests authorization to use the digital product, the users client
application gathers account information including user identification and
information on the users device. Id. at [0066].
The DRM system then determines the license rights associated with the
requested digital product based on that information about both the user and the
device. Id. at [0066][0067]. Part of that includes an authentication process in
which the rights of the user are verified. Id. at [0071]. More specifically, the
users license rights are verified by reviewing, among other things, device
identifying information, noted in Figure 8 as DeviceID. Id. at [0071], Fig. 8.
59
Patent 8,566,960
Hu discloses that a user requests license authorization by sending account
identification information to the licensing server along with a computer_id
(computer identification information) that uniquely identifies the computer on
which the software is run. EX1004 (Hu), at 6:3135, 6:5561.
provide a computer_id that uniquely identifies the computer requesting the
license with a client license authorization request to the licensing server such as
taught by Hu. EX1031 (Zatkovich Declaration), at 6065. A POSA would
have looked to both Gilder and Hu as related art in a known, limited field of
license management and DRM. Id. at 5356, 60. Therefore, a POSA would
have been motivated to incorporate Hus unique computer_id into the user
license rights verification process of Gilder to add greater security and anti-piracy
protections to Gilder over the machine ID disclosed therein. Id. at 6062, 64.
Further, adding Hus computer_id to the DRM system of Gilder would
have been based on well-known concepts of adding increased security and antipiracy protections to DRM systems and does not involve modification of the
60
Patent 8,566,960
13.

wherein the unique device identifying information comprises at least one
user-configurable parameter and at least one non-user-configurable
parameter of the given device
When a user of the Gilder DRM system requests a license, the DRM system
requests user account information that may include the user name, any required
passwords, [and] any required authenticating keys and may include the user
identification. EX1003 (Gilder) at [0042], [0071]. The DRM system also
requests device identifying information in a DeviceID. Id. at [0071], Fig. 8.
14.
Claims 9 and 23 are obvious over Gilder in view of Hu and Goringe
a)
wherein the processor module is adapted to: in response to the device

identity not being on the record, after the first time period has expired,
set[ting] the allowed copy count to a second upper limit for a second time
period
Gilder allows for float copies, which are copies in excess of the permitted
number of licenses per the given license restrictions.

[0052].
EX1003 (Gilder) at
These float copies allow a user to at least temporarily, transfer
content to additional devices without having the device that is relinquishing the
license be on-line to give up its license for this transaction. Id. at [0052],
[0068]. The DRM system of Gilder can limit the number of float copies allowed
to a particular user if the license registry has not been updated within a particular
61
timeframe, such as thirty days.
Id. at [0061].
Patent 8,566,960
Thus, Gilder discloses this
limitation.
Goringe discloses a license management system that includes a Software License
Schedule database that maintains various licensing time periods and
corresponding maximum numbers of concurrent users permitted to use a license
during those time periods.
EX1005 (Goringe), at 3:3742, 3:4447.
This
disclosure includes maximum concurrent usage restrictions after a first time period
has expired. Id. at Fig. 2 (illustrating, for example, a first time period as row 220
with a maximum concurrent usage restriction of 4 and a second time period as
row 240 with a maximum concurrent usage restriction of 3).
add, in response to the device identity not being on the record of Gilder, a
Software License Schedule that maintains various time periods and associated
maximum usage constraints for those time periods such as taught by Goringe.
EX1031 (Zatkovich Declaration), at 6874. A POSA would have looked to
both Gilder and Goringe as related art in a known, limited field of license
management and DRM. Id. at 6769. Therefore, A POSA would have been
62
Patent 8,566,960
motivated to incorporate Goringes Software License Schedule and timechecking steps into the license authorization process of Gilder to achieve an
extension of Gilder that provides for a more robust periodic licensing scheme. Id.
at 6873.
Further, adding Goringes Software License Schedule and time-checking
steps to the DRM system of Gilder would have been based on well-known
concepts of enforcing usage restrictions based on conditions from the users license
request (such as the time of the request) and restrictions set in a database and does
not involve modification of the novel portions of Gilder. Id. at 74. Indeed, the
license authorization process of Goringe has substantial overlap with the license
authorization process of Gilder at a high level. Id. at 71, 72. Thus, to the extent
that Gilder falls short, Goringe discloses this limitation.
b)
recalculat[e/ing] the device count; and when the recalculated device

count is less than the second upper limit, allow[ing] the digital product to
be used on the given device
digital product. EX1003 (Gilder) at [0055]. If the number of copies does not
exceed the maximum permitted number of authorized devices, the user and device
identifying information is added to the license registry and the users device is
permitted to play the content or otherwise access the digital content.
63
Id. at
Patent 8,566,960
[0055], [0067], Figs. 3, 6. The process of Gilder is the same for float copies
with regard to the floatCount parameter. Id. at [0052], [0068], Fig. 6. Thus,
15.
a)
wherein the processor module is adapted to: in response to the device

identity not being on the record, after the second time period has expired,
set[ting] the allowed copy count to a third upper limit
Petitioner makes reference to Section VIII(B)(14)(a), supra. For the same
reasons as discussed therein, Goringe discloses a Software License Schedule

database that maintains various licensing time periods and corresponding
maximum numbers of concurrent users permitted to use a license during those time
periods, and the steps of enforcing those restrictions. EX1005 (Goringe), at 3:37
42, 3:4447, 4:5664.
This disclosure includes maximum concurrent usage
restrictions after a first and second time period have expired.
Id. at Fig. 2
(illustrating, for example, a first time period as row 220 with a maximum
concurrent usage restriction of 4, a second time period as row 240 with a
maximum concurrent usage restriction of 3, and a third time period as row 250
with a maximum concurrent usage restriction of 0).
add, in response to the device identity not being on the record of Gilder, a
64
Patent 8,566,960
Software License Schedule that maintains various time periods and associated
maximum usage constraints for those time periods such as taught by Goringe.
EX1031 (Zatkovich Declaration), at 6874. A POSA would have looked to
both Gilder and Goringe as related art in a known, limited field of license
management and DRM. Id. at 6769. Therefore, A POSA would have been
motivated to incorporate Goringes Software License Schedule and timechecking steps into the license authorization process of Gilder to achieve an
extension of Gilder that provides for a more robust periodic licensing scheme. Id.
at 6873.
Further, adding Goringes Software License Schedule and time-checking
steps to the DRM system of Gilder would have been based on well-known
concepts of enforcing usage restrictions based on conditions from the users license
request (such as the time of the request) and restrictions set in a database and does
not involve modification of the novel portions of Gilder. Id. at 74. Indeed, the
license authorization process of Goringe has substantial overlap with the license
authorization process of Gilder at a high level. Id. at 71, 72. Thus, Goringe
65
b)
Patent 8,566,960
recalculat[e/ing] the device count; and when the recalculated device
count is less than the third upper limit, allow[ing] the digital product to be
used on the given device
digital product. EX1003 (Gilder) at [0055]. If the number of copies does not
exceed the maximum permitted number of authorized devices, the user and device
identifying information is added to the license registry and the users device is
permitted to play the content or otherwise access the digital content.
Id. at
[0055], [0067], Figs. 3, 6. The process of Gilder is the same for float copies
with regard to the floatCount parameter. Id. at [0052], [0068], Fig. 6. Thus,
16.
Claims 10, 11, and 15 are obvious over Gilder in view of Hu and Goringe
wherein the second time period comprises a defined number of days since
the initial authorization (claim 10) / wherein the defined number of
days comprises thirty-one days since the initial authorization, and wherein
the second upper limit comprises seven authorized devices (claim 11) /
wherein the third upper limit comprises eleven authorized devices
(claim 15)
Petitioner makes reference to Sections VIII(B)(8) and VIII(B)(9), supra.
For the same reasons as discussed therein, it would have been well within the skill
of a POSA in November 2007 to set a defined number of days to any suitable
period and to set an upper limit of devices to any suitable number.
66
Patent 8,566,960
Selecting the number of days for the second or third time period and
selecting the number of devices for the second or third upper limit are the result of
routine optimization, and thus are not patentably distinguishing claim elements.
Neither the prosecution history nor the specification indicate that there is any
criticality assigned to the values recited in claims 10, 11, and 15. Indeed, the 960
Patent discloses exactly the opposite: that any other allowed copy counts, the
maximum number of devices for a given time period, or the like can be used and
that the embodiments disclosed therein can include any number of evaluation
periods. EX1001 (960 Patent), at 4:3541; id. at 6:2124. Therefore, claims 10,
11, and 15 are obvious over Gilder in view of Hu and Goringe.
17.

device count equaling the second [third] upper limit, send a warning
regarding the allowed copy count to the given device
Petitioner makes reference to Section VIII(B)(10), supra. For the same
reasons as discussed therein, Gilder discloses the processor module is adapted to,
in response to the calculated device count equaling an upper limit, send a warning
regarding the allowed copy count to the given device.
EX1003 (Gilder), at
[0055], [0067], Figs. 6, 1113, 15, 16, 18. Therefore, claims 12 and 16 are
obvious over Gilder in view of Hu and Goringe.
67
18.
Patent 8,566,960
device count exceeding the second [third] upper limit, deny the request for
authorization
Petitioner makes reference to Section VIII(B)(11), supra. For the same
reasons as discussed therein, Gilder discloses the processor module is adapted to,
in response to the calculated device count exceeding an upper limit, deny the
request for authorization. Id. at [0067], [0069], Figs. 6, 11, 17. Therefore,
claims 13 and 17 are obvious over Gilder in view of Hu and Goringe.
IX.
CONCLUSION
Based on the foregoing, the challenged claims of the 960 Patent recite
subject matter that is unpatentable. Petitioner respectfully requests institution of

inter partes review to cancel these claims.
Respectfully submitted,
/Vincent J. Galluzzo/
Vincent J. Galluzzo
Registration No. 67,830
Teresa Stanek Rea
Jonathan Stroud
68
Patent 8,566,960
Table of Exhibits for U.S. Patent 8,566,960 Petition for Inter Partes Review
Exhibit
Description
1001
U.S. Patent 8,566,960
1002
U.S. Patent 7,203,966 to Abburi, et al. (Abburi) (filed on June 27,

2001; published on April 10, 2007)
1003
U.S. Patent Publication 2008/0148363 to Gilder, et al. (Gilder) (filed

on December 15, 2006; published on June 19, 2008)
1004
U.S. Patent 7,752,139 to Hu (Hu) (filed on December 27, 2005;

published on July 6, 2010)
1005
U.S. Patent 7,707,115 to Goringe, et al. (Goringe) (filed on July 25,

2002; published on April 27, 2010)
1006
Koenen, et al., The Long March to Interoperable Digital Rights

Management (June 2004) (Koenen)
1007
U.S. Patent Publication 2002/0128976 to OConnor, et al.

(OConnor) (filed on October 1, 2001; published on September 12,
2002)
1008
U.S. Patent Publication 2007/0050301 to Johnson (Johnson) (filed on

June 7, 2001; published on March 1, 2007)
1009
U.S. Patent 8,694,434 to Kley (Kley) (claims priority to January 17,

2003; filed on January 14, 2004; published on April 8, 2014)
1010
U.S. Patent 5,809,251 to May, et al. (May) (filed on October 9, 1996;

published on September 15, 1998)
1011
U.S. Patent Publication 2007/0245423 to Herington (Herington)

(filed on April 18, 2006; published on October 18, 2007)
1012
U.S. Patent Publication 2007/0174205 to Saito (Saito) (filed on

August 29, 2006; published on July 26, 2007)
1013
Saito Assignments Data
Patent 8,566,960
Exhibit
Description
1014
U.S. Patent Publication 2004/0117440 to Singer, et al. (Singer) (filed

on October 15, 2003; published on June 17, 2004)
1015
Singer Assignments Data
1016
U.S. Patent 9,349,248 to Andersson (Andersson) (filed on June 4,

2007; published on May 24, 2016)
1017
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2002; published on October 18, 2011)
1018
U.S. Patent 9,009,076 to Muller, et al. (Muller) (filed on December

18, 2006; published on April 14, 2015)
1019
U.S. Patent 7,818,741 to Bourdev (Bourdev) (filed on May 17, 2005;

published on October 19, 2010)
1020
U.S. Patent 7,139,737 to Takahashi, et al. (Takahashi) (claims

priority to February 8, 2000; filed on February 2, 2001; published on
November 21, 2006)
1021
U.S. Patent 6,574,612 to Baratti, et al. (Baratti) (claims priority to

February 19, 1999; filed on June 29, 1999; published on June 3, 2003)
1022
U.S. Patent Publication 2004/0073517 to Zunke, et al. (Zunke) (filed

on July 7, 2003; published on April 15, 2004)
1023
U.S. Patent 6,915,278 to Ferrante, et al. (Ferrante) (claims priority to

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1024
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1025
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1026
U.S. Patent Publication 2003/0097331 to Cohen (Cohen) (filed on

September 18, 2001; published on May 22, 2003)
ii
Patent 8,566,960
Exhibit
Description
1027
U.S. Patent 8,175,978 to Endoh (Endoh) (claims priority to October

15, 2002; filed on March 14, 2005; published on May 8, 2012)
1028
U.S. Patent 7,712,146 to Nusser, et al. (Nusser) (claims priority to

January 18, 2002; filed on August 15, 2006; published on May 4, 2010)
1029
U.S. Patent 5,925,127 to Ahmad (Ahmad) (filed on April 9, 1997;

published on July 20, 1999)
1030
U.S. Patent Publication 2006/0282511 to Takano, et al. (Takano)

(claims priority to June 14, 2005; filed on June 14, 2006; published on
December 14, 2006)
1031
Declaration of Ivan Zatkovich (Zatkovich Declaration)
1032
File History, Application (11/17/2008)
1033
File History, Information Disclosure Statement (11/17/2008)
1034
1035
1036
1037
1038
1039
File History, List of References Cited and Considered (4/20/2011)
1040
File History, Amendment (8/5/2011)
1041
1042
File History, Response to Final Office Action (11/16/2012)
1043
1044
iii
Patent 8,566,960
Exhibit
Description
1045
File History, Notice of Allowability (9/3/2013)
1046
Petitioners Voluntary Interrogatory Responses
1047
Original Complaint for Patent Infringement in Uniloc USA, Inc., et al.

v. Google Inc., No. 2:16-cv-571 (E.D. Tex. filed May 30, 2016)
(Complaint)
1048
Digital Transmission Content Protection, available at

https://en.wikipedia.org/wiki/Digital_Transmission_Content_Protection
(Digital Transmission Content Protection)
1049
Advanced Access Content System, available at

https://en.wikipedia.org/wiki/Advanced_Access_Content_System
(Advanced Access Content System)
1050
Digital Millennium Copyright Act, available at

https://en.wikipedia.org/wiki/Digital_Millennium_Copyright_Act
(Digital Millennium Copyright Act)
1051
WIPO Copyright Treaty, available at

https://en.wikipedia.org/wiki/WIPO_Copyright_Treaty (WIPO
Copyright Treaty)
1052
Copyright Directive, available at

https://en.wikipedia.org/wiki/Copyright_Directive (Copyright
Directive)
1053
Copy Protection, available at

https://en.wikipedia.org/wiki/Copy_protection (Copy Protection)
1054
PrPMC800/800ET Processor Install Guide, June 2006 Edition

(PrPMC800/800ET Install Guide)
1055
CPUID, available at https://en.wikipedia.org/wiki/CPUID (CPUID)
1056
How to Check Motherboard Model Number, available at

http://www.howtogeek.com/208420/how-to-check-your-motherboardmodel-number-on-your-windows-pc/ (How to Check Motherboard
Model Number)
iv
Patent 8,566,960
Exhibit
Description
1057
Windows Media DRM 10 for Network Devices Reference (Windows

CE 5.0), available at https://msdn.microsoft.com/enus/library/aa456421(d=printer).aspx (Windows Media DRM 10)
1058
Windows Media DRM, available at

https://en.wikipedia.org/wiki/Windows_Media_DRM (Windows
Media DRM)
1059
Technical Details on Microsoft Product Activation for Windows XP,

available at https://technet.microsoft.com/enus/library/bb457054(d=printer).aspx (Microsoft Product Activation)
1060
Windows Vista: Volume Activation 2.0 Step-By-Step Guide,

Microsoft Corporation (published October 2006; last updated
November 29, 2006) (Volume Activation 2.0 Guide)
1061
SHA-1, available at https://en.wikipedia.org/wiki/SHA-1 (SHA-1)
1062
MD5, available at https://en.wikipedia.org/wiki/MD5 (MD5)
Patent 8,566,960
CERTIFICATE OF COMPLIANCE
Pursuant to 37 C.F.R. 42.24(d), I hereby certify that this Petition complies
with the type-volume limitation of 37 C.F.R. 42.24(a)(1)(i) because it contains
13,706 words as determined by the Microsoft Office Word 2010 word-processing
system used to prepare the brief, excluding the parts of the brief exempted by 37
C.F.R. 42.24(a)(1).
Vincent J. Galluzzo
Patent 8,566,960
CERTIFICATE OF SERVICE
I hereby certify that on June 29, 2016, I caused a true and correct copy of the
foregoing materials:
Petition for Inter Partes Review of U.S. Patent 8,566,960 Challenging
Claims 125 under 35 U.S.C. 312 and 37 C.F.R. 42.104
Exhibits to Petition for Inter Partes Review of U.S. Patent 8,566,960
(EX1001EX1062)
to be served via Federal Express on the following correspondent of record as listed
on PAIR:
Sean Burdick, Reg. No. 51,513
Dianoosh Salehi, Reg. No. 46,352
Uniloc USA Inc.
Legacy Town Center
7160 Dallas Parkway
Suite 380
Plano, TX 75024
Tel.: (972) 905-9580 EXT. 22
Vincent J. Galluzzo

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Unified Patents Inc. v. Uniloc USA, Inc., IPR2016-01271, Paper 1 (June 29, 2016) (Petition)

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IPR2016-01271 Petition

MANDATORY NOTICES ......................................................................................... 1

Real Party-in-Interest ................................................................................................ 1

Related Matters .......................................................................................................... 1

Service Information, Email, Hand Delivery, and Postal.................................. 3

CERTIFICATION OF GROUNDS FOR STANDING ....................................... 3

OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ....................... 3

Prior Art Patents and Printed Publications .......................................................... 3

Grounds for Challenge ............................................................................................. 4

License Management and DRM in General........................................................ 6

Validation of License Requests.............................................................................. 7

Enforcement of License Consumption Rules ..................................................... 8

Transmission, Validation, and Registration of Device Identity ................... 11

OVERVIEW OF THE 960 PATENT ................................................................... 13

Summary of the Alleged Invention ..................................................................... 13

Level of Ordinary Skill in the Art ....................................................................... 16

Prosecution History ................................................................................................. 16

VII. CLAIM CONSTRUCTION ...................................................................................... 17

Ground I: Claims 1, 35, 8, 1822, and 25 are anticipated

Overview of Abburi .............................................................................................. 21

Claims 1, 22, and 25 are anticipated by Abburi........................................... 24

Claim 3 is anticipated by Abburi ...................................................................... 35

Claim 4 is anticipated by Abburi ...................................................................... 35

Claim 5 is anticipated by Abburi ...................................................................... 35

Claim 8 is anticipated by Abburi ...................................................................... 36

Claim 18 is anticipated by Abburi ................................................................... 37

Claim 19 is anticipated by Abburi ................................................................... 37

Claim 21 is anticipated by Abburi ................................................................... 38

Claim 20 is anticipated by Abburi ................................................................... 38

Overview of Gilder ............................................................................................... 39

Overview of Goringe ............................................................................................ 43

Claims 1, 22, and 25 are obvious over Gilder in view of Hu .................... 45

Claim 2 is obvious over Gilder in view of Hu ............................................... 53

Claim 3 is obvious over Gilder in view of Hu ............................................... 54

Claim 4 is obvious over Gilder in view of Hu ............................................... 55

Claim 5 is obvious over Gilder in view of Hu ............................................... 56

Claim 6 is obvious over Gilder in view of Hu ............................................... 56

Claim 7 is obvious over Gilder in view of Hu ............................................... 57

Claim 8 is obvious over Gilder in view of Hu ............................................... 58

Claim 18 is obvious over Gilder in view of Hu ............................................. 59

Claim 19 is obvious over Gilder in view of Hu ............................................. 61

Claims 9 and 23 are obvious over Gilder in view of

Claims 14 and 24 are obvious over Gilder in view of

Claims 10, 11, and 15 are obvious over Gilder in view of

Claims 12 and 16 are obvious over Gilder in view of

Claims 13 and 17 are obvious over Gilder in view of

Luxembourg S.A. and exclusively licensed to Uniloc USA, Inc. (collectively,

jonathan@unifiedpatents.com. Petitioner can be reached at Crowell & Moring

CERTIFICATION OF GROUNDS FOR STANDING

OVERVIEW OF CHALLENGE AND RELIEF REQUESTED

claims 125 of the 960 Patent.

Prior Art Patents and Printed Publications

America Invents Act (AIA). Accordingly, pre-AIA statutory framework applies.

U.S. Patent Application Publication 2008/0148363 (filed on

U.S. Patent 7,752,139 (filed on December 27, 2005; published on July

Grounds for Challenge

Declaration (EX1031)), requests cancellation of challenged claims 125 as

See EX1059 (Technical Details on

Microsoft Product Activation), at 1. At the time, when a user desired to activate a

See EX1060 (Volume

Activation 2.0 Guide), at 12.

License Management and DRM in General

More specifically, the Petition discusses the

Validation of License Requests