Unified Patents Inc. v. William Grecia, IPR2016-00789, Paper 1 (PTAB Mar. 22, 2016)

IPR201600789 Petition
U.S. Patent 8,402,555

DOCKET NO.: 0981730966641
Filed on behalf of Unified Patents Inc.
By: Paul C. Haughey, Reg. No. 31,836
Scott Kolassa, Reg. No. 55,337
Kilpatrick Townsend & Stockton LLP
Two Embarcadero Center, Eighth Floor
San Francisco, CA 941113834
Tel: (415) 5760200
Email: phaughey@kilpatricktownsend.com
Jonathan Stroud, Reg. No. 72,518
Unified Patents Inc.
1875 Connecticut Av. NW, Floor 10
Washington D.C., 20009
Tel: (202) 8058931
Email: jonathan@unifiedpatents.com
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
UNIFIED PATENTS INC.

Petitioner
v.
WILLIAM GRECIA
Patent Owner
IPR20160789
Patent 8,402,555
PETITION FOR INTER PARTES REVIEW OF
U.S. PATENT NO. 8,402,555
CHALLENGING CLAIMS 126
UNDER 35 U.S.C. 312 AND 37 C.F.R. 42.104
i
U.S. Patent 8,402,555
TABLE OF CONTENTS
I.
MANDATORY NOTICES ........................................................................ - 1 A.
Real PartyinInterest ...................................................................... - 1 -
B.
Related Matters................................................................................. - 1 -
C.
Counsels ........................................................................................... - 2 -
D.
Service Information, Email, Hand Delivery, and Postal .................. - 2 -
II.
CERTIFICATION OF GROUNDS FOR STANDING ............................. - 2 -
III.
OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ............... - 3 A.
B.
IV.
Prior Art Patents and Printed Publications ....................................... - 3 1.
U.S. Patent No. 6,891,953 (filed on June 27, 2000 and

issued on May 10, 2005) (DeMello (EX1005)), which
is prior art under 35 U.S.C. 102(b). .................................... - 3 -
2.
U.S. Pub. No. 2008/0313264 (filed on Jun. 12, 2007 and

published on Dec. 18, 2008) (Pestoni (EX1006)),
which is prior art under 35 U.S.C. 102(b). ......................... - 3 -
3.
U.S. Pat. 8,001,612, filed Aug. 12, 2005 and issued Aug.
16, 2011 (Wieder (EX1007)), which is prior art under
35 U.S.C. 102(e). Wieder is used to show the claimed
token database. ....................................................................... - 3 -
4.
U.S. Pat. 6,385,596 (filed Feb. 6, 1998 and issued May 7)

(Wiser (EX1008)), which is prior art under 35 U.S.C.
102(b). Wiser is used to show the customization module
and royalty scheme of claims 11, 16, 25 and 26. ............... - 4 -
Grounds for Challenge ..................................................................... - 4 -
OVERVIEW OF THE 555 PATENT ....................................................... - 4 A.
Priority Date of the 555 Patent........................................................ - 4 -
B.
Summary of the 555 Patent ............................................................. - 5 i
U.S. Patent 8,402,555
V.
VI.
C.
Summary of Relevant Prosecution File History ............................ - 10 -
D.
Person of Ordinary Skill in the Art ................................................ - 11 -
CLAIM CONSTRUCTION ..................................................................... - 11 A.
verified web service .................................................................... - 12 -
B.
metadata of the encrypted digital media ..................................... - 13 -
C.
two way data exchange ............................................................... - 13 -
PROPOSED REJECTIONS SHOWING THAT PETITIONER HAS A

REASONABLE LIKELIHOOD OF PREVAILING ............................... - 14 A.
Ground 1: Claims 110, 1215, and 1724 are unpatentable as

obvious over DeMello (EX1005) and Wieder (EX1007) in view
of the admitted prior art. ................................................................. - 14 -
B.
Ground 2: Claims 110, 1215, and 1724 are unpatentable as

obvious over Pestoni (EX1006) and Wieder (EX1007) in view
of the admitted prior art. ................................................................. - 14 -
C.
Ground 3: Claims 11, 16, and 25-26 are unpatentable over

DeMello (EX1005) in combination with Wieder (EX1007) and
Wiser (EX1008) and the admitted prior art. ................................... - 52 -
D.
Ground 4: Claims 11, 16 and 25-26 are unpatentable over

Pestoni (EX1006) and Wieder (EX1007) and the admitted prior
art in combination with Wiser (EX1008). ...................................... - 52 -
VII. CONCLUSION......................................................................................... - 60 -
ii
U.S. Patent 8,402,555
EXHIBIT LIST
Exhibit No.
Description
1001
U.S. Patent No. 8,402,555 to Grecia.
1002
Grecia v. Amazon.com, No. 2:14cv00530 (W.D. Wash. Dec.

22, 2014) (Joint claim construction statement by Patent Owner
and Amazon), and Ex. C
1003
Sony Network Entertainment Intl v. Grecia, IPR201500422,

Preliminary Response (PTAB Mar. 11, 2015)
1004
Notice of Allowability of U.S. Patent No. 8,402,555 to Grecia
1005
U.S. Patent No. 6,891,953 to DeMello et al., Prior Art under 35

U.S.C. 102(b)
1006
U.S. Pub. No. 20080313264 to Pestoni, Prior Art under 35

U.S.C. 102(b)
1007
U.S. Pat. 8,001,612 to Wieder, Prior Art under 35 U.S.C.

102(e)
1008
U.S. Pat. 6,385,596 to Wiser, Prior Art under 35 U.S.C. 102(b)
1009
Declaration of Ravi S. Cherukuri & Exhibits AD
1010
Unified Patents LLC Voluntary Interrogatories
iii
U.S. Patent 8,402,555
I.
MANDATORY NOTICES
A.
Real PartyinInterest
Pursuant to 37 C.F.R. 42.8(b)(1), Petitioner certifies that Unified is the real
partyininterest, 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. See EX1010, Unified Patents
LLC Voluntary Interrogatories.
B.
Related Matters
U.S. Patent No. 8,402,555 ( 555 Patent (EX1001)) is a parent of a
continuation U.S. Patent No. 8,533,860 ( 860 Patent), which has a continuation
U.S. Patent No. 8,887,308 ( 308 Patent), against which IPR petitions are being
concurrently filed. On Dec. 6, 2013 Grecia sued Microsoft, Google, Sony Network
Entertainment International and Apple for infringement of the 860 Patent.
Between Feb. 20, 2014 and Nov. 30, 2015, Grecia has sued the following for
infringement of different combinations of the three patents: Adobe Systems,
American Express, Visa, MasterCard, Charter Communications, Time Warner
Cable, AT&T Services, DirecTV, WideOpenWest Finance, RCN Telecom
Services, Network L.C.C., Charter Communications, Time Warner Cable,
Comcast, DISH Network, Amazon.com, Samsung Telecommunications America
and Vudu.
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U.S. Patent 8,402,555
A Petition for Inter Partes review of the 860 Patent was filed by Sony Network
Entertainment International LLC, IPR201500422, PTAB, December 14, 2014 and
dismissed by request of the parties. Petitioner filed IPR2016-00600 against the
860 Patent on Feb. 17, 2016. Petitioner filed IPR2016-00602 against the 308
Patent on March 3, 2016.
C.
Counsels
Lead Counsel for Petitioner is Paul C. Haughey (Reg. No. 31,836), of
Kilpatrick Townsend & Stockton LLP. Backup Counsel is Jonathan Stroud (Reg.
No. 72,518), of Unified, and Scott E. Kolassa (Reg. No. 55,337), of Kilpatrick
Townsend & Stockton LLP.
D.
Service Information, Email, Hand Delivery, and Postal

Unified
consents
phaughey@kilpatricktownsend.com,
to
electronic
service
at
jonathan@unifiedpatents.com,
and
SKolassa@kilpatricktownsend.com.
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 and inter partes review challenging the patent
claims on the grounds identified in this Petition.
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U.S. Patent 8,402,555
III.
OVERVIEW OF CHALLENGE AND RELIEF REQUESTED

Pursuant to Rules 42.22(a)(1) and 42.104(b(1)(2), Petitioner challenges
claims 126 of the 555 Patent.

A.
Prior Art Patents and Printed Publications

The following references are pertinent to the grounds of unpatentability
explained below:1
1.
U.S. Patent No. 6,891,953 (filed on June 27, 2000 and issued on May 10,
2005) (DeMello (EX1005)), which is prior art under 35 U.S.C. 102(b).
2.
U.S. Pub. No. 2008/0313264 (filed on Jun. 12, 2007 and published on Dec.
18, 2008) (Pestoni (EX1006)), which is prior art under 35 U.S.C.
102(b).
3.
U.S. Pat. 8,001,612, filed Aug. 12, 2005 and issued Aug. 16, 2011
(Wieder (EX1007)), which is prior art under 35 U.S.C. 102(e). Wieder
is used to show the claimed token database.
The 555 Patent issued from a patent application filed prior to enactment of
the America Invents Act (AIA). Accordingly, preAIA statutory framework

applies.
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U.S. Patent 8,402,555
4.
U.S. Pat. 6,385,596 (filed Feb. 6, 1998 and issued May 7) (Wiser
(EX1008)), which is prior art under 35 U.S.C. 102(b). Wiser is used to
show the customization module and royalty scheme of claims 11, 16, 25
and 26.
B.
Grounds for Challenge

This Petition, supported by the declaration of Ravi S. Cherukuri (Cherukuri
Decl. (EX1009)) requests cancellation of challenged claims 126 of the 555

Patent as unpatentable under 35 U.S.C. 103. Two main references are used, with
additional references for dependent claims.
IV.
OVERVIEW OF THE 555 PATENT
A.
Priority Date of the 555 Patent

The 555 Patent is a continuation of Application No. 12/985,351, filed on
Jan. 6, 2011, which is a continuation of Application No. 12/728,218, filed on Mar.

21, 2010, now abandoned. In the 11272012 response in the prosecution history
of the 555 Patent, Patent Owner claimed priority to his Provisional Application
No. 61/303,292 (filed Feb. 10, 2010) to swear behind Baiya U.S. Pub. No.
20110288946. Petitioner does not believe the 555 Patent is entitled to the Feb. 10,
2010 priority date, but assumes that is the effective date for the purposes of this
petition since all the prior art is more than a year earlier than this date.
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U.S. Patent 8,402,555
B.
Summary of the 555 Patent

The 555 Patent is directed to Digital Rights Management (DRM). The prior
art was alleged to tie media to a particular user or limited number of devices:
The current metadata writable DRM measures do not offer a
way to provide unlimited interoperability between different
machines. Therefore, a solution is needed to give consumers the
unlimited interoperability between devices . (555 Patent at
2:67 3:4).
DRM schemes for ebooks include embedding credit card
information and other personal information inside the metadata
area of a delivered file format and restricting the compatibility
of the file with a limited number of reader devices and
computer applications. Id. at 2:1822.
The alleged innovation of the 555 Patent is to obtain a membership
identification reference (e.g., Facebook ID) from a website providing membership
and write it into the metadata of the media. This allows anyone with the
membership reference ID to access the media on any device. The claim elements
of claim 1 and the other challenged claims correspond to the steps of Fig. 6 of the
555 Patent, copied below:
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U.S. Patent 8,402,555
Claim 1 of the 555 Patent is simple but lengthy, and is summarized below
with the letters corresponding to the elements in the claim charts below, and the
numbers corresponding to Fig. 6 above:
[A] Preamble: Authorizing media access for plural data processing devices
(multiple user devices).
[B] (602) Receive user request, with membership verification token (e.g.,
Amazon password), for content access and branding. Patent Owner admits
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U.S. Patent 8,402,555
that corresponding steps B and C of the 860 Patent are in the prior art (as
discussed below).
[C] (604) The verification token is authenticated.
[D] (606) Establish a connection with user communication console (with
GUI and API for a verified web service, e.g., Facebook)
[E] (608) An identification reference (e.g., Facebook login) is requested
from the user.
[F] (610) The identification reference is received.
[G] (612)The membership verification token and identification reference are
written into the content metadata. Patent Owner admits the corresponding step in
the 860 Patent is in the prior art.
With respect to the continuation 860 Patent, the Patent Owner has
suggested that the particular order set forth above is required, and that all
corresponding 6 modules of Fig. 1 must be present and separate. See Sony Network
Entertainment Intl v. Grecia, IPR201500422 at 34, 1718 (PTAB Mar. 11,
2015) (Preliminary Response) (Sony v. Grecia Preliminary Response (EX1003)).
However, the Provisional Application never mentioned the word module as used
in the claims, and did not have the module diagram of Fig. 1. The module term
was added to claim 12, and the order of the modules (e.g., first and second receipt
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U.S. Patent 8,402,555
modules in claim 12) and method steps (e.g., claim 1) is described in the 555
Patent as not limiting:
In this document, relational terms such as `first` and
second`, and the like may be used solely to distinguish
one entity or action from another entity or action without
necessarily requiring or implying any actual such
relationship or order between such entities or actions.
555 Patent, 4:6064.
Fig. 3 of the 555 Patent, copied below, shows an embodiment where a user
obtains content using GUI 301 on the left, using a verification token that is
authenticated (a membership verification token in the 555 Patent claims,
described in the application as having a list of options). This corresponds to the
first two steps, 602 and 603, which are admitted prior art in the continuation 860
Patent. Note the same described system performs both steps. Then, the user uses
GUI 307 on the right to contact a verified web service (e.g., Facebook) to verify
the user using an electronic ID (e.g., Facebook login). The same system performs
the last 3 steps.
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U.S. Patent 8,402,555
Petitioner notes that the term excelsior enabler as used in the specification
simply means user. Patent Owner characterized it as follows: authorized users
(excelsior enablers). June 12, 2012 response to office action for the 555 Patent.
The term enabler was also in the original claims of the 555 Patent, but was
replaced with user. Excelsior refers to the main, or first user: [T]he excelsior
enabler and secondary enablers defined comprises human beings or computerized
mechanisms programmed to process steps of the invention as would normally be
done manually by a human being. 555 Patent, 5:1216.
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U.S. Patent 8,402,555
C.
Summary of Relevant Prosecution File History

The claims in the parent 555 Patent were originally rejected as obvious
under 103 U.S. Pre-Grant Publication Number 2011/0288946 to Baiya (Baiya)

in view of U.S. Patent 7,526,650 to Wimmer (Wimmer).
The Examiners
reasons for allowance (EX1004) noted that Baiya and Wimmer taught the first and
last elements of claim 1. Neither of them show a users membership used to brand
digital content so it could be used on multiple devices. Baiya describes a content
management system for a group or a business, where libraries for documents and
other media are established and authorized users are given keys to access those
libraries. Wimmer describes branding video content with an end user's personal
identity information as a deterrent against unauthorized redistribution. Thus, the
Examiner found no reference where a users membership was used to brand digital
content so it could be used on multiple devices. This feature, however, is clearly
present in the prior art references discussed herein.
In the Certificate of Correction, the claim language obtained from a verified
web service was changed to related to a verified web service.
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U.S. Patent 8,402,555
D.
Person of Ordinary Skill in the Art

One of ordinary skill in the art at time of the earliest claimed effective filing
date of the 555 Patent (Feb. 10, 2010) would possess at least a university degree
or have equivalent professional experience related to electronics and/or software,
with some experience in digital rights management such as two years of work
experience. (See Cherukuri Decl. (EX1009), 2832, 5961.) The claims of the
555 Patent are directed to a DRM system used with standard computers
communicating over known network means. Thus, one of ordinary skill in the art
requires knowledge of DRM programs, generally. (Id., 22.)
V.
CLAIM CONSTRUCTION
Claim terms of a patent in inter partes review are normally given the
broadest reasonable construction in light of the specification. See 37 C.F.R.

42.100(b): see also In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 127981
(Fed. Cir. 2015).
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. The broadest reasonable interpretation of a
claim term may be the same as or broader than the construction under the standard
set forth in Phillips v. AWH Corp, 415 F.3d 1303 (Fed. Cir. 2005), but it cannot be
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U.S. Patent 8,402,555
narrower. See Facebook, Inc. v. Pramatus AV LLC, 2014 U.S. App. LEXIS 17678,
*11 (Fed. Cir. 2014). The constructions proposed below should be applied
regardless of whether the terms are interpreted under the Phillips standard or the
broadest reasonable interpretation standard.
There have been no claim construction orders yet in the District Court
litigations involving the 555 Patent. There has been a joint claim construction
statement by Patent Owner and Amazon. (See Grecia v. Amazon.com, No. 2:14
cv00530 (W.D. Wash. Dec. 22, 2014) (Joint claim construction statement by
Patent Owner and Amazon), and Ex. C (Grecia v. Amazon.com Claim
Construction (EX1002)); see also 37 C.F.R. 42.62 and F.R.E. 801(d)(2). See
also Cherukuri Decl. (EX1009) at 4355.
A.
verified web service

Outside the claims, this term only appears once in the 860 patent:
The web service equipped with the API is usually a well
known membership themed application in which the users must
use an authentic identification. Some example includes
Facebook . Other verified web services in which real member
names are required such as the LinkedIn API and the PayPal
API (555 Patent at 10:4251, emphasis added.)
In the Grecia v. Amazon litigation, Patent Owner proposed a web service
accessible with an authenticated credential and Amazon proposed a web service

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U.S. Patent 8,402,555
that is used to authenticate the identity of a user or device. See Grecia v.
Amazon.com Claim Construction (EX1002), Ex. C, p. 16. The Patent Owner term
of an authenticated credential does not appear in the 860 Patent and the identical
specification of the continuation 308 Patent, and the example is a Facebook login
name and password to authenticate the user, not authenticate the credential. Thus,
the Amazon proposal is correct: the proper construction is any web service that is
used to authenticate the identity of a user or a device, or, in other words, any web
service which verifies an identity, such as through a user name and password.
B.
metadata of the encrypted digital media

In the Grecia v. Amazon litigation, Patent Owner proposed data about the
digital content and Amazon proposed data that describes the digital content, in
the same media file as the digital content. Id. (EX1002), Ex. C, p. 1. Petitioner
submits it is well known that metadata doesnt just describe the digital content, and
thus Amazons construction is too narrow. Also, meta data is not necessarily in the
same media file. See Cherukuri Decl. 50. Petitioner, for the purposes of this
petition, submits the construction is data about the digital media.
C.
two way data exchange

In the Grecia v. Amazon litigation related to the continuation 860 Patent, a
similar term including session was construed (two way data exchange session).
Patent Owner proposed requesting the at least one identification reference from
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U.S. Patent 8,402,555
the at least one communications console and receiving the at least one
identification reference from the at least one communications console. Amazon
proposed transfer of information from a device to a server and from the server to
the device. Grecia v. Amazon.com (EX1002), Ex. C, p. 19. The Patent Owner
proposal adds in other limitations from the claim and is thus too detailed, and
Amazon adds a server and device limitation. In any event, without the term
session, the plain meaning appears clear. Petitioner submits the construction is
an exchange of data.
VI.
PROPOSED REJECTIONS SHOWING THAT PETITIONER HAS A

REASONABLE LIKELIHOOD OF PREVAILING
The references addressed below anticipate and/or render obvious the claimed
subject matter, and are corroborated by the opinion in the Cherukuri Decl.
(EX1009).
A.
Ground 1: Claims 110, 1215, and 1724 are unpatentable as obvious

over DeMello (EX1005) and Wieder (EX1007) in view of the admitted
prior art.
Grounds 1 and 2 are discussed together below in order use the same claim
charts and fit within the allowed page limits. Only independent claim 1 is
separately discussed.
B.
Ground 2: Claims 110, 1215, and 1724 are unpatentable as obvious

over Pestoni (EX1006) and Wieder (EX1007) in view of the admitted
prior art.
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U.S. Patent 8,402,555
Claim 1DeMello. DeMello describes a system for delivery of electronic books or
other media. Id. at 4:4149. A purchaser can link a book to a persona so that it
can be read on multiple user devices (readers) or shared with others associated
withthe same persona. The user provides PASSPORT credentials (a user ID and a
password PASSPORT is Microsofts single signon service). An activation
server authenticates the user using the PASSPORT credentials in communication
with the PASSPORT servers. The PASSPORT ID is associated with the
purchasers persona and written to an activation certificate. Id. at 13: 2135.
As shown in Fig. 4 of DeMello above, the user requests content at a retail

site 71 on the left, and there is user authentication, as noted below box 72. As
described below, user authentication can be performed by establishing a
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U.S. Patent 8,402,555
membership
using
authentication
credentials
(e.g.,
Amazon.com
logon
credentials), which is a verification token. A separate HTTPS connection 70 on

the right is used to establish a connection with an Activation Site 75, where a
users PASSPORT ID is used to verify the user and brand the metadata of the
content.
[A] Preamble. DeMello discloses a DRM system which monitors access to
encrypted content and facilitates interoperability between a plurality of processing
devices. The claim chart below shows the specific language from DeMello for
these limitations.
555 Patent
(emphasis
added)
[A] 1. A method
for monitoring
access to an
encrypted
digital
media, the
method
facilitating
interoperability
between a
plurality
of data
processing
devices, the
method
comprising:
Prior Art (emphasis added)
DeMello (EX1005)
A server architecture for a digital rights management
system that distributes and protects rights in content. Id. at
Abstract, ll. 12.
An encrypted digital media: source sealed and
individually sealed content is encrypted. Id. at 2:610.
Facilitating interoperability between a plurality of data
processing devices: The PASSPORT object 96 provides the
required interfaces into the PASSPORT.TM. servers that
authenticate the endusers using, for example, their hotmail
accounts (or other PASSPORT credentials). In accordance with
aspects of the present invention, this object advantageously
associates the activation certificate with a persona, instead
of a single PC, thus allowing each persona to utilize multiple
readers to read level 5 titles. Id. at 13:1724.
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U.S. Patent 8,402,555
activation quotas that allow users to activate readers on
multiple devices as well as allow them to activate new
devices as they upgrade their hardware, reformat their
hard disks, etc. Id. at 25:2936.
[B] This element (chart below) requires an encrypted digital media access
branding request (which eventually results in a metadata read/write) along with a
membership verification token [this was alleged vs. the Amazon Kindle logon, for
example] from a communications console (the user device). Patent Owner admits
the corresponding element in the continuation 860 Patent, and the corresponding
following element [C] are shown in the prior art:
communicating access rights over the Internet to a
license serverthe first and second steps of method claim
1 in the 860 patentwas well known in the digital rights
management field.
Sony v. Grecia Preliminary
Response at p. 14 (EX1003). See also p. 6, lines 67:

Clearly, many prior art systems taught the verification
of a token through a GUI interface.
Element [B] is nearly identical to the admitted prior art elements of the 860
Patent, except a membership verification token is used instead of the list of
possible tokens in the 860 Patent. That list includes items in claim 2 describing
types of membership tokens, such as a password or email address. This claim
also uses branding instead of write, which means the same thing. Also, another
difference is that the last part of this element says the request comprising a
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U.S. Patent 8,402,555
membership verification token provided by a first user, corresponding to the
encrypted digital media. This clearly means the request corresponds to the digital
media, since the membership verification token is not related to the media until the
branding is completed.
DeMello
teaches user authentication and establishing a membership
relationship with a retailer (left of Fig. 4), which inherently would include
providing a token, such as a retailer password and/or email (e.g., Amazon logon
credentials). User authentication and establishing a membership are obvious in
view of the admitted prior art. The admitted prior art steps are described in the
555 Patent as verifying membership to a site to buy content, and DeMello recites
establishing such a membership relationship. It would be obvious to use the
verification token of the admitted prior art to establish a membership relationship.
See Cherukuri Decl. (EX1009) 74 and Ex. C.
[B] receiving an encrypted
digital media access
branding
request from at least one
communications console of
the
plurality of data processing
devices, the branding request
being a read or write
request of meta data of the
encrypted digital media, the
request comprising a
The corresponding element in the 860 Patent is

admitted prior art.
DeMello (EX1005) Retail site (Fig. 4)
Bookstore servers 72 may communicate with
users via web browsing software (e.g., by
providing web pages for viewing with a
MICROSOFT INTERNET EXPLORER browser
or a NETSCAPE NAVIGATOR browser).
Through this communication [access request],
bookstore servers 72 may allow users to shop for
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U.S. Patent 8,402,555
membership
verification token provided
by a first user, corresponding
to the encrypted digital
media;
eBook titles, establish their membership

relationship with the retailer [verification token],
pay for their transactions, and access proofof
purchase pages (serveside receipts). Id. at 9:9
16.
[C] As described above, the corresponding element in the 860 Patent was
also admitted by Patent Owner to be in the prior art. The only differences is a
particular (membership) token is recited, and a token database is recited, which is
necessary to authenticate any token. DeMello shows authenticating the username
and other credentials (verification token) of this element as described in the chart
below. The authentication can be of the credit card or membership information by
the retail site (e.g., Amazon logon). It is inherent that a database is used for such
an authentication. These all correspond to the admitted prior art.
Wieder (EX1007) describes a usagerights repository 24 (Wieder Fig. 1)
for storing usagerights tokens (a token database) used for validation of user
ownership by different experience providers that allow custom playlists (e.g.,
Apple iTunes, Microsoft Windows Media). Wieder, 4:465:39; 8:2428; 15:14.
The database stores the tokens which include TokenOwner, UsageRights,
and PurchaseRecord. Id. at Fig. 13, 7:3031. It is inherent in DeMello that the
credit card data are authenticated using a database of membership records of
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U.S. Patent 8,402,555
customers of an online book store. It is obvious to combine DeMello with Wieder,
which shows authenticating a PurchaseRecord (verification token).
Because Wieder and DeMello both relate to Digital Rights Management, and
both relate to supporting multiple users or user devices, it would be obvious to
combine Wieder with DeMello to implement a database of user personas associated
with multiple user readers. Also, DeMello specifically refers to credit card
validation and requiring the users to authenticate themselves, thus referencing
the many standard ways of doing this, of which Wieder is just one example.
Because DeMello describes linking content to a PASSPORT ID instead of a device
ID, it would be obvious to add the PASSPORT ID to the token contents shown in
Fig. 13 of Wieder, thus providing a database of PASSPORT IDs. Additionally, it
would be obvious to include in the record of the database other information, such
as the username and other credentials identified in DeMello. The Wieder database
is also described as including other information, and it would be obvious to include
the other data of DeMello, and it would be obvious to do this in a single database
or multiple databases. Wieder thus shows more details of actions specifically
described in DeMello. See Cherukuri Decl. (EX1009) 75-85.
The corresponding element in the 860 Patent is admitted
[C]
authenticating prior art.
the
DeMello (EX1005) Retail site authentication:
membership
- 20 -
U.S. Patent 8,402,555
verification
token, the
authentication
being
performed in
connection
with a
token
database;
After the buying customer has selected the titles he/she wishes
to purchase and decides to complete an order, the merchant will
process the order according to their existing methods (e.g., credit
card validation, billing, etc.). This may include requiring the
users to authenticate themselves (for those which require a
membership record from their customers) id. at 40:2329.]
Wieder (EX1007):
There may also be one or more usage-rights repositories
(usage-rights authorities) 24 [token database]. The usage-right
repository utilizes a common "standard for usage-rights tokens"
25 so that a user's collection of compositions, represented by the
set of usage-rights tokens a user acquires, may be recognized and
usable with all experience-providers. Each usage-rights token
may be defined to limit use to only a specific individual user or a
group of specific users (e.g., a family). Wieder at 8:3747.
A secure database of all issued tokens may be maintained in
the usage-rights repository. Id. at 14:1112.
Usage-Rights Representations:
In one embodiment, the token may represent a receipt of
ownership or allowable usage that may be understood and
validated by any experience-provider 26. Id. at 15:14.
Token applicable to multiple devices:
In one preferred embodiment, the token may be defined to be
valid for all available (network interface-able) user-devices
and their corresponding formats. This is a major convenience for
user's since they no longer need to be concerned with the details
of user-device formats, format translations and compatibility
problems. The user is guaranteed that their token will be good for
use with all their user-devices. Id. at 15:1319.
- 21 -
U.S. Patent 8,402,555
[D] This element is establishing a connection with user communication
module which has a GUI and an API related to a verified web service (e.g.,
Facebook). Patent Owner admitted that such GUIs and APIs for verified web
services are known in the prior art:
The web service equipped with the API is usually a
wellknown membership themed application in which
the users must use an authentic identification. Some
example includes Facebook in which as a rule, members
are required to use their legal name identities. A
reference number or name with the Facebook Platform
API represents this information. Other verified web
services in which real member names are required such
as the LinkedIn API and the PayPal API and even others
could be used . 555 Patent at 10:4250
DeMello discloses the communications console of this element as the
reader. The reader provides access to a bookstore feature, which is the required
GUI. The user is prompted at the reader (e.g., a prompt in a GUI) to login using
PASSPORT credentials to authenticate the user at the PASSPORT server. The
reader then sends the login credentials to the PASSPORT server via the API of the
PASSPORT server to authenticate the user at the PASSPORT server. Id. at 9:6
14; 23:610, 23:1923. It is obvious that the reader in DeMello would formulate
its request according to the protocol specified by the API of the verified web
- 22 -
U.S. Patent 8,402,555
service (the PASSPORT server).
The PASSPORT server meets the claim
construction definition of a verified web service that authenticates the identity of a

user :
The PASSPORT object 96 provides the required
interfaces
into
the
PASSPORT.TM.
servers
that
authenticate the endusers using, for example, their

hotmail accounts (or other PASSPORT credentials). Id.
at 13:3135, 13:5461
The PASSPORT web service facilitates a two way data exchange session to
complete a verification process. Id. at 23:610, 23:1923; 24:3335. The data
exchange can include the activation certificate, which contains the PASSPORT ID,
and which corresponds to the account identifier in the list of options for the
electronic identification reference in element [E].
In addition to being admitted prior art, it is obvious that the browser of the
reader mentioned in DeMello includes a GUI, since browsers provide a GUI (See
Cherukuri Decl. (EX1009) Ex. C, claim 1[D]), and the 555 Patent acknowledges
the tie of a browser to a GUI:
a web browser interact with the API of a remote Internet
server system as desired. A Graphic User Interface (GUI) can
be installed for human interaction .
emphasis added.
- 23 -
Id. at 10:3037,
U.S. Patent 8,402,555
The PASSPORT API mentioned in DeMello facilitates communication of
PASSPORT credentials for authentication between the reader and the PASSPORT
server via the activation server.
The data exchange session is shown by the
exchange of the user name and password for the activation certificate.
Cherukuri Decl. Ex. C, claim 1[D].
- 24 -
See
U.S. Patent 8,402,555
[D]
establishing a
connection with
the at least one
communications
console wherein
the
communications
console is a
combination of
a graphic user
interface (GUI)
and an
Application
Programmable
Interface (API)
protocol,
wherein the API
is related to a
verified web
service, the
verified web
service capable
of facilitating a
two way data
exchange to
complete a
verification
process;
DeMello (EX1005)
At step 150, the reader client opens into the integrated
bookstore feature and connects, via secure sockets layer (SSL)
[establishing a connection], to the activation servers 94, where
users are prompted to login using, in this example, their
PASSPORT credentials (step 152). Id. at 23:517
Activation Server 94 includes a PASSPORT object 96 and an
activation server ISAPI Extension DLL 98. The PASSPORT
object 96 provides the required interfaces into the
PASSPORT.TM. servers that authenticate the endusers
using, for example, their hotmail accounts (or other
PASSPORT credentials). Id. at 13:3035.
Once user's PASSPORT.TM. credentials are authenticated
(step 156), a PASSPORT.TM. API is queried for the user
alias and email address (step 158).
The secure repository executable and activation certificate are
then downloaded [two way data exchange] to the client (steps
188 and 190). Id. at 24:3335.
Moreover, the activation server arrangement preferably
provides a given activation certificate [two way data
exchange] (that is, an activation certificate having a particular
key pair) only after authenticating credentials (e.g., a
username and password) associated with a persona. Id. at
2:5054.
the PASSPORT ID is contained in the activation certificate,
Id. at 15:6716:49.
- 25 -
U.S. Patent 8,402,555
[E] DeMello shows the electronic identification reference, specified as a
verified web service account identifier of this element is communicated by the
reader (also client or user computing device the communications console).
DeMello shows sending an activation certificate (which includes the account
identifier PASSPORT ID and other identifiers) by the activation server. The data
exchange is both explicitly described and is inherent, since the activation
certificate would not be communicated unless it was requested or understood to be
requested. See Cherukuri Decl. (EX1009) 64, Ex. C, claim 1[E].
[E] requesting at least
one electronic
identification reference
from the at least one
communications
console wherein the
electronic identification
reference comprises a
verified
web service account
identifier of the first
user;
DeMello (EX1005)
At step 150, the reader client opens into the integrated
bookstore feature and connects, via secure sockets layer
(SSL), to the activation servers 94, where users are
prompted to login [requesting] using, in this example,
their PASSPORT.TM. credentials (step 152). Id. at
23:611.
PASSPORT ID-The persona ID associated with the
user, which is provided by the user during activation.
Id. at 15:6516:51.
[F] The identification reference (PASSPORT ID in activation certificate)

is received from the communications console (the reader). This element is part of
element [E], since a requested element is clearly received.
- 26 -
U.S. Patent 8,402,555
[F] receiving the
at least one
electronic
identification
reference from
the at least one
communications
console; and
DeMello (EX1005)
At step 150, the reader client connects, via secure sockets
layer (SSL), to the activation servers 94, where users are
prompted to login [requesting] using, in this example, their
PASSPORT.TM. credentials (step 152). Id. at 23:610.
PASSPORT ID-The persona ID associated with the user,
which is provided by the user during activation.
Id. at 15:6516:51.
[G] This element requires that the verification token and identification
reference be written into metadata. Patent Owner admits this was shown in the
prior art for the verification token in the 860 Patent:
This disclosure corresponds to, for example, the first,
second, and sixth steps of claim 1 of the 860 patent as
illustrated in Figure 3 at 301, 303, and 305 (i.e., receiving
a write request and authentication) and 302 (i.e., writing
the verification token into the metadata). Wimmer stops
there, however, and critically lacks the third, fourth, and
fifth steps of claim 1 of the 860 patent .
Sony v. Grecia Preliminary Response (EX1003) at p. 13. See also Cherukuri
Decl. (EX1009) at 23.
DeMello discloses the writing of the identification reference (verified web
service account identifier) to metadata in two different ways. The PASSPORT ID
(an identification reference) is part of the activation certificate, as described above,
- 27 -
U.S. Patent 8,402,555
and the public key of the user's activation certificate is cryptographic hashed with
metadata. The PASSPORT ID is also written into (stores into) a registry (Id. at
16:4849), which constitutes additional metadata because it is associated with the
content. See Cherukuri Decl. 64, Ex. C, claim 1[G].
DeMello also discloses the writing of the membership verification token to
metadata.
The purchaser credit card and name (a verification token) are written
into the eBook title metadata. Id. at 5:4548.
See Cherukuri Decl. at 68 and
Ex. C, claim 1[G].

[G] branding
metadata of
the
encrypted
digital media
by writing
the
membership
verification
token and the
electronic
identification
reference
into the
metadata.
DeMello (EX1005)
PASSPORT ID as verification token written to metadata
stores the PASSPORT ID in the registry [metadata] on the
user's computing device, Id. at 16:4849.
the PASSPORT ID is contained in the activation certificate,
Id. at 15:6516:51. the key is a symmetric key 14A that is sealed
with a cryptographic hash of metadata 12 or, in the case of level
5 titles, with the public key of the user's activation certificate. Id.
at 6:4245.
Purchaser name as verification token written to metadata:
An "individually sealed" title is an eBook whose metadata
includes information related to the legitimate purchaser (e.g., the
user's name or credit card number, the transaction ID .. Id.
at 5:4548.
Claim 1Pestoni (EX1006). Pestoni discloses a networked system where a

user can obtain content from a content provider, which may refer the user to a
- 28 -
U.S. Patent 8,402,555
license server for a content license that is bound to the users domain membership
ID. Id. at Abstract; [0002]; [0012]. A separate domain administrator authenticates
the user, with a password, and provides the users device, as well as any another
other of the users devices, with a domain membership license to allow access to
the content based on the users domain membership. Id. The content license is
metadata with a domain membership ID.
Id.
Patent Owner admits that the
corresponding elements [B] and [C] of the 860 Patent are in the prior art (as
discussed above). See Cherukuri Decl. (EX1009) 86-102 and Ex. D, claim 1.
[A] Preamble. Pestoni discloses a method for facilitating digitalmedia
access rights between multiple user devices. Id. at [0013].
555 Patent
(emphasis added)
[A] 1. A method
for monitoring
access to an
encrypted digital
media, the method
facilitating
interoperability
between a
plurality
of data processing
devices, the
method
comprising:
Pestoni (EX1006) (emphasis added)

Pestoni (EX1006):
monitoring access to encrypted digital media by facilitating
interoperability between multiple devices . . .
. . . Management of a domain refers to . . . imposing
restrictions on members of the domain, including adding
devices to the domain, removing devices from the domain . .
.. When a device 112, 114 joins a domain, the device 112,
114 is given a domain membership license . . . [that] allows
the device to access and play back any protected content that
has been bound to that domain, as discussed in more detail
below. Pestoni at [0017]. The pieces of content provided to
devices 112, 114 are typically protected . . . through
encryption . . .. Id. at [0018].
- 29 -
U.S. Patent 8,402,555
[B] As noted, Patent Owner has admitted as prior art the corresponding
element, which requires an access branding request (which eventually results in a
metadata read/write) along with a membership verification token from a
communications console (the user device). Pestoni discloses this as a domain
membership license obtained with a joindomain request 220 which includes user
credentials such as a user id and password. Id. at [0041]. Pestoni discloses
concurrently submitting content and joindomain requests 240, 220. Id. at [0038].
The admitted prior art steps include the 555 Patents verifying membership at a
site to buy content, and Pestoni recites establishing a domain membership
relationship. It would be obvious to use the verification token of the admitted prior
art to establish a membership relationship.
[B] receiving
an encrypted
digital media
access
branding
request from at
least one
communication
s console of the
plurality of
data processing
devices, the
branding
request being a
read or write
request of
The corresponding element in the 860 Patent is admitted

prior art.
Pestoni (EX1006):
receiving an access request . . .
[0038] .To join a domain, device 202 issues a join-domain
request 220 to domain administrator 102.
[0067] Device 202 communicates with content provider 104 to
obtain pieces of protected content. Protected content can be
obtained by device 202 before it joins a domain, after it joins a
domain, or concurrently with joining a domain. The protected
content is bound to a particular domain via its content license, as
discussed in more detail below. Device 202 [apparatus with
CPU] submits a content request 240 to content provider 104,
requesting one or more pieces of protected content.
- 30 -
U.S. Patent 8,402,555
meta data of
the
encrypted
digital media,
the request
comprising a
membership
verification
token provided
by a first user,
corresponding
to the
encrypted
digital media;
the access request comprises verification data . . .

In Pestoni, the request for domain membership license includes a
user id and password, which constitutes verification data that
is recognized by the apparatus as a verification token. Id. at
[0039], [0041].
The joindomain request includes various parameters . . . [such
as] a device certificate, user credentials, and optionally a device
description. Id. at [0039]. The user credentials can take any of
a variety of different forms, such as a user id and password, a
digital certificate attesting to the users identity and digitally
signed by a trust authority, and so forth. Id. at [0041].
the branding request being a read or write request of meta data
...
The content license is . . . sent to the device . . . [which]
maintains the content license in its content license store [210].
Id. at [0096]; also see, id. at [0034].
[C] As noted, the corresponding element in the 860 Patent was admitted by
Patent Owner to be in the prior art. Pestoni does a similar authentication, as in the
admitted prior art, and thus it is the part of Pestoni is admitted to be obvious. In
Pestoni, for example, the user id/password [verification token] included in the
access branding request is authenticated using domain administer 102, which
compares against stored passwords.
Pestoni at [0038], [0041], [0045].
It is
obvious to combine Pestoni with the token database of Wieder, which shows
authenticating a PurchaseRecord (verification token).
Because Wieder and Pestoni both relate to Digital Rights Management, and
both relate to supporting multiple users or user devices, it would be obvious to
- 31 -
U.S. Patent 8,402,555
combine Wieder with Pestoni to implement a database of user domains associated
with multiple user readers. The Wieder database is also described as including
other information, and it would be obvious to include the other data of Pestoni, and
it would be obvious to do this in a single database or multiple databases. Wieder
thus shows more details of actions specifically described in Pestoni.
[C]
authenticating
the
membership
verification
token, the
authentication
being
performed in
connection
with a
token
database;
This element is admitted prior art

Pestoni (EX1006):
description. Id. at [0039]. The user credentials can take any of a
variety of different forms, such as a user id and password, a
Domain request approval module 224 [of domain administrator
102] obtains and verifies that the user credentials from
request 220 are correct. This verification can take different
forms, such as comparing a password (or hash thereof) against a
stored password (or hash thereof), accessing a remote service
(not shown) to verify that the received password matches the
received user id, . . . and so forth. Id. at [0045].
Wieder (EX1007): See element C under Ground 1, claim 1
above.
Elements [D][F], as described under Ground 1 above, set forth using a GUI
and an API to communicate with a verified web service to request [E] and receive
[F] a verified web service account identifier. As described above, the use of a
GUI and an API to access a verified web service is admitted prior art. In addition,
- 32 -
U.S. Patent 8,402,555
since both DeMello and Pestoni were assigned to Microsoft, and both relate to very
similar digital rights systems, the use of a GUI and API discussed in DeMello
above is evidence of the common practice of Microsoft programmers in
implementing these systems.
Element [D] requires a two way data exchange session to complete a
verification process. Pestoni describes completing the verification process by
establishing a connection with license server 106. To do so, the user device
sends to the license server a content license request 252 that includes a domain
certificate, which is verified web service account identifier. Pestoni teaches that
the license server 106 is a verified web service because the license server 106 is
accessible only with a domain ID, which can only be obtained after domain
administrator 102 authenticates the user credential, such as the user id/password.
Pestoni at [0038], [0041], [0045], [0072], [0073]. This meets the verified web
service claim construction above of any web service that authenticates the identity
of a user or a device , or, in other words, any web service which verifies an
identity, such as through a user name and password.
[D] establishing a
connection with the at
least one
communications
console wherein the
communications
Use of GUI & API are admitted prior art.

establishing a connection with the at least one
communications console . . .
Pestoni (EX1006): Device 202 communicates with
license server 106 to obtain content licenses for pieces
- 33 -
U.S. Patent 8,402,555
console is a
combination of a
graphic user interface
(GUI) and an
Application
Programmable Interface
(API) protocol, wherein
the API is related to a
verified web service, the
verified web service
capable of facilitating a
two way data exchange
to complete a verification
process;
of protected content . . . Device 202 sends a content

license request 252 . . . [that] includes various
parameters . . . [such as] a key ID, a domain ID, and a
domain certificate. Id. at [0072].
the verified web service capable of facilitating a two
way data exchange to complete a verification process;
In response to content license request 252, license
server 106 validates the domain certificate included in
request 252. Id. at [0075]. The content license 254,
bound to domain 204, is returned to device 202. Once
device 202 has the content license for a piece of
protected content, content playback module 214 is able
to access the protected content . Id. at [0084].
Element [E] sets forth requesting a verified web service account identifier,
while Pestoni describes the device 202 sending a domain ID [verified web service
account identifier] in content license request 252. Varying which side initiates the
request for the verified web service account identifier is an obvious matter of
design choice. One of skill in the art would recognize that the License Server
could request the domain ID in response to a license request, or the device could
simply supply the domain ID as part of the request.
- 34 -
U.S. Patent 8,402,555
[E] requesting at least one
electronic identification reference
communications console wherein
the electronic identification
reference comprises a verified web
service account identifier of the
first user;
Pestoni (EX1006): Device 202

communicates with license server 106 to
obtain content licenses for pieces of
protected content . . . Device 202 sends a
content license request 252 . . . [that]
includes various parameters . . . [such as] a
key ID, a domain ID, and a domain
certificate. Id. at [0072].
[F] The license server 106 receives from device 202 a content license
request 252, which includes various identification references, including a key ID, a
domain ID, and a domain certificate. This element is part of element [E], since a
requested element is clearly received.
[F] receiving the at
least one electronic
identification reference
communications
console; and
Pestoni (EX1006): Device 202 communicates with

license server 106 to obtain content licenses for pieces of
protected content . . . [License server 106 receives from
device 202] . . . a content license request 252 . . . [that]
includes various parameters . . . [such as] a key ID, a
domain ID, and a domain certificate. Id. at [0072].
Element [G] is shown. Pestoni shows the verified web service as License
Server 106, which requests and receives Domain ID and domain certificate.
See id. at par. 007274. A content license is generated, and bound to the domain
associated with the Domain ID. Id. at par. 007982. The content license 254,
bound to domain 204, is returned to device 202, which stores the license in content
license store 210. Once device 202 has the content license, it is able to access the
protected content. Id. at par. 0084. The content license 254, bound to domain 204
- 35 -
U.S. Patent 8,402,555
and stored in content license store 210 of device 202, obviously constitutes
metadata, since this is data is about the content stored in device content store 208
of the device 202. Additionally, Pestoni refers to the content metadata (par. 0071)
as including a key ID which identifies the content, which associates the content
license, which contains the domain ID, as set forth in the below claim chart.
The 555 Patent admits in the background that it was common to store credit
card and other personal information in metadata. It would be obvious to combine
this admitted prior art with Pestoni since both relate to DRM metadata, and one of
skill in the art would recognize that metadata would have many other components.
Pestoni mentions a joindomain request includes various parameters . . . [such
as] user credentials, and user credentials would obviously be personal
information as described in the admitted prior art. Id. at [0041].
Other embodiments. The verification token is also shown by user
credentials, such as a user id and password, a digital certificate and other
parameters in Pestoni, with the identification reference being shown by the
Domain ID, Domain Certificate or other parameters. Not only does the 555
Patent say the order of steps can be different, as noted above, but Pestoni says the
same in paragraph [0097].
- 36 -
U.S. Patent 8,402,555
[G] branding
metadata of the
encrypted digital
media
by writing
the membership
verification token and
the electronic
identification
reference into the
metadata.
Admitted prior art

555 Patent Background: DRM schemes for e-books
include embedding credit card information and other
personal information [membership verification token]
inside the metadata area of a delivered file format . Id.
at 3:18-20.
Pestoni (EX1006): Content license generator 260
generates a content license for the requested pieces of
content. The content license includes a content key, a
domain ID [identification reference], usage rights, [and]
verification information. Id. at [0079].
Claim 2. Claim 2 recites a list of possible verification tokens including a

email address, password or a redeemable instrument of trade which is equated with
a credit card (555 Patent 8:4551) and a credit card is listed as equivalent in claim
1 of the child 860 Patent (payment system, credit card, redeemable
instruments of trade, 860 Patent 14:47-49).
DeMello shows a UserName string
that includes a credit card number for verification by the retailer, and establishing a
membership relationship that one of skill in the art would recognize to mean
providing a log-on email and password.
Pestoni shows that the verification token
can take any of a variety of different forms, such as a user id and password, a
digital certificate attesting to the users identity and digitally signed by a trust
authority, and so forth. Pestoni at [0041].
555 Patent
2. The method
Prior Art (Emphasis added)

See claim 1, element [B] above.
- 37 -
U.S. Patent 8,402,555
according to
claim 1,
wherein the
membership
verification
token is one or
more of a
structured
password, a
random
password, e
mail address,
payment
system and
one or more
redeemable
instruments of
trade for
access rights
of the
encrypted
digital media.
DeMello (EX1005)
Through this communication [access request], bookstore servers
72 may allow users to shop for eBook titles, establish their
membership relationship with the retailer [email, password],
pay for their transactions, and access proofof purchase pages
(serveside receipts). Id. at 9:916.
UserNamea string containing ,,, credit card number . Id. at
16:16-38.
[I]ndividually sealed" content includes in the rights
management data information pertinent to the rightful owner
(e.g., the owner's name, credit card number, receipt number or
transaction ID for the purchase transaction, etc. [verification
token]), such that this information cannot be removed from a
working copy of the content. . . . Id. at 2:1217.
Pestoni (EX1006)
description. Pestoni at [0039]. The user credentials can take any
of a variety of different forms, such as a user id and password, a
Claims 36. Claim 3 is directed to a second user, who is validated by a

membership web service. This is shown by DeMellos PASSPORT membership
service and Pestonis domain membership, which both provide for validating
multiple members. See also Cherukuri Decl. (EX1009) Exhibits C & D.
Claim 4 is directed to users (e.g., a first user and a second user), who are
granted with access rights based on verification of the membership verification
- 38 -
U.S. Patent 8,402,555
token by a content provider (e.g., a bookstore).
Claim 4 merely recites the
verification function of the verification token shown above by DeMello and

Pestoni with respect to claim 1.
Claim 5 says digital media is shared among multiple users with membership
status, similar to claim 3, but depending from claim 1, and is also shown by
DeMello and Pestoni. The validation of the membership is done in DeMello by
authenticating the user. Pestoni similarly shows a validated domain.
Claim 6 sets forth that the users can be humans or computerized
mechanisms in a network, which is met by the user of DeMello and Pestoni. The
555 Patent doesnt describe any separate network of users, just the cloud/internet,
which is also shown in the below quoted sections of DeMello & Pestoni. Thus,
claims 26 are separately invalid as obvious over both DeMello and Pestoni.
555 Patent
3. The method according to
claim 1, wherein the branding
request being a request from
the first user through a data
processing device of the
plurality of data processing
devices, the first user
acquiring access rights to the
encrypted digital media;
or wherein the branding
request being a request from
one or more secondary users

DeMello (EX1005)
Thus, a user is unlikely to share his PASSPORT
ID and password with a large group of people,
thereby ensuring that the persona to which a
reader is activated is genuinely associated with
a particular user (or, possibly, a family that
shares a single PASSPORT account). Id. at
13:4954.
The PASSPORT object 96 authenticate the
endusers using, for example, their hotmail
accounts (or other PASSPORT credentials. Id. at
13:3035.
- 39 -
U.S. Patent 8,402,555
connected to the first user, the
one or more secondary users
comprising one or more of
human beings or programmed
computerized mechanisms in
network of the first user;
wherein the one or more
secondary users are validated
by a membership web
service.
Pestoni (EX1006)
[0016] Each domain 108 is associated with a
particular user or group of users [secondary
users]. Presoni at [0016]. The user can have
each device that he or she owns join his or her
domain . Alternatively, domain administrator
could employ a domain policy that allows
multiple users [secondary users]to share a
domain . Id. at [0041].
Claim 7. This claim simply refers to an ID of the media being cross

referenced to the user (token) in a database. It is obvious to link purchased media
to the purchaser. DeMello describes a bookstore database with book IDs that are
inherently associated with user membership information (verification token) during
a book purchase.
Wieder (EX1007) describes a usagerights repository 24 database that
stores the tokens which include TokenOwner, UsageRights, and Purchase
Record. Id. at Fig. 13, 7:3031. Thus, DeMello in combination with Wieder
teaches the limitations of claim 7. It is obvious to combine to provide the extra
items in the database listed in Wieder.
Pestoni discloses that the digital media is associated with domain
membership license (Pestoni at 0049) and that the domain membership license is
cross referenced with user details such as user credentials.
- 40 -
Pestoni at 0102.
U.S. Patent 8,402,555
Pestoni also discloses that the domain membership license is stored in Domain
license store, i.e., a database. Pestoni at 0034. In addition, one of skill in the art
would recognize that the user identity would be linked to the user credentials and
stored in a database. It would also be obvious to combine Pestoni with Wieder for
the reasons set forth above.
555 Patent
7. The method
according to
claim 1,
wherein the
encrypted
digital media
is associated
with an
identifier
stored in a
database, the
identifier
being cross
referenced
with a
corresponding
token from a
list of
associated
tokens stored
in the token
database for
verification.

DeMello (EX1005)
See claim 1, element [C].
A bookstore (retailer) database is populated with the Book IDs
[identifier] generated by a tool for managing the LIT files of a
particular content provider's data center. Id. at 28:34-36.
It will be recalled that individualized titles (e.g., level 3 and level

5) incorporate the user's name [verification token] into the LIT
file and bind [cross-reference] that name to the decryption key, so
that the origin of unauthorized distribution of content can be
detected. Id. at 16:16-38.
Pestoni (EX1006)
Domain membership license 300 includes a device ID 302, a
domain ID 304 [identifier], a domain private key 306, a domain
certificate 308, an integrity verification value 310, a certificate
revocation list 312, and a rights list 314 [digital media]. Id. at
0049.
[0080] . The domain ID is the identifier of the domain to
which the content is to be bound, as identified by the domain ID
in request 252. The usage rights describe the rights that are being
licensed to device 202.
A user [token] is associated with a particular domain, and each
of the user's media playback devices communicates with a
domain administrator to obtain a domain membership license.
- 41 -
U.S. Patent 8,402,555
Id. at 0012.
Content license generator 260 generates a content license for the
requested pieces of content [digital media]. The content license
includes [cross-referenced] a content key, a domain ID
[identifier], usage rights, verification information . Id. at
[0079].
Claim 8 recites a list of possible digital media including a video file, audio
file, etc. which are explicitly described in both DeMello and Pestoni.
555 Patent
8. The method
according to claim 1,
wherein the encrypted
digital media is one of
a video file, audio file,
container format,
document, metadata as
part of video game
software and other
computer based
apparatus in which
processed data is
facilitated.

DeMello (EX1005)
A preferred embodiment of the invention is described,
which is directed to the processing and delivery of
electronic books, however, the invention is not limited
to electronic books and may include all digital content
such as video, audio, software executables, data, etc.
4:4349.
Pestoni (EX1006)
The digital media can be any of a variety of types of
content, such as audio content, movie content, image
content, textual content, graphics content, and so forth,
as well as combinations of one or more of these
different types of content. Pestoni at [0015].
Claim 9 recites that the electronic identification reference of claim 1 is a

key file. Claim 1 specifies that the electronic identification reference is a
verified web service identifier. Thus, the key file is either the verified web
service identifier already shown above, or a version encrypted with a key, which
is also shown. The claim further says that the key file is uploaded by at least one
- 42 -
U.S. Patent 8,402,555
communications console for branding encrypted digital media for giving access to
the encrypted digital media. This is shown by DeMellos PASSPORT membership
service which exchanges an activation certificate including a key and a Passport ID
for credentials to authenticate a user at a reader. The reader stores [uploads] the
Passport ID to the registry on the reader. The activation certificate includes a key
which is used to protect the content (e.g., a key stored in an electronic Book file)
and to later enable the reader to open protected content. This is also shown by
Pestoni, which discloses that binding can be achieved by encrypting at least a
portion of the content license (e.g., at least the content key) with the public key
provided from the device 202 via request 252. Pestoni at [0082].
- 43 -
U.S. Patent 8,402,555
555 Patent
9. The
method
according to
claim 1,
wherein the
electronic
identification
reference is a
key file, the
key file
being
uploaded by
the at least
one
communicati
ons console
for branding
the
encrypted
digital
media;
thereby
giving access
to the
encrypted
digital
media.

See claim 1, element [G] above.
DeMello (EX1005)
In a preferred embodiment, the key is a symmetric key 14A that is
sealed with a cryptographic hash of metadata 12 or, in the case of
level 5 titles, with the public key of the user's activation
certificate. This key is stored either as a separate stream in a
substorage section of the eBook file (DRM Storage 14 in the
diagram) or, in the case of level 5 titles, in the license. Id. at 6:42
48.
In one example, the data includes an activation certificate having
a public key and an encrypted private key, and the "code" is a
program ( e.g., a "secure repository") that accesses the private key in
the activation certificate by applying, in a secure manner, the key
necessary to decrypt the encrypted private key. Id. at 2:3540.
Pestoni (EX1006)
Domain binding encryption module 258 binds the content license
generated by content license generator 260 to the domain identified
in request 252. This binding can be achieved in different manners.
In one or more embodiments, this binding is achieved by
encrypting at least a portion of the content license (e.g., at least the
content key) with the public key [key file] of the domain identified
in request 252. The public key of the domain identified in request
252 is included in request 252. Pestoni at [0082].
Claim 10. This claim spells out that the branding request of claim 1 is an
access request with a verification token and a rights token (which is a flag). This
claim also recites standard components of a system including a combination of
memory, CPU, server, database, and cloud system, all of which are disclosed by
- 44 -
U.S. Patent 8,402,555
DeMello. This claim simply recites more details of an element the Patent Owner
admitted element is shown in the prior art as discussed above.
DeMello describes the rights token/flag by the establish their membership
relationship with the retailer and access proof-of purchase pages (serve-side
receipts) [rights token]. One of skill in the art would recognize that it is obvious to
provide proof-of purchase only if the membership relationship is first successfully
implemented. Pestoni similarly shows authenticating a domain membership as
discussed above. Based on DeMello and Pestoni and the admitted prior art, it
would be obvious to send a verification token of the admitted prior art along with a
rights token (indicating that the verification token is successfully verified) in an
access request to establish a membership relationship.
(EX1009) Exs. C & D, claim 10.
- 45 -
See Cherukuri Decl.
U.S. Patent 8,402,555
555 Patent
10. The method of claim 1,
wherein the method facilitates
access rights authentication
for the encrypted digital
media, the branding request is
an access request, and
wherein the read or write
request of metadata is
performed in connection with
a combination of a memory,
CPU, server, database, and
cloud system; the access
request is generated by either
a human user, a machine, or a
human programmed
computerized device; the
access request further
comprises a membership
verification token and a rights
token wherein the rights
token is a flag indicating the
verification token is
successfully verified.

See claim 1, elements [A] and [B] above.
DeMello (EX1005)
As shown in FIG. 2, an exemplary system for
implementing the invention includes a general
purpose computing device in the form of a
conventional personal computer or network server
20 or the like, including a processing unit [CPU]
21, a system memory 22 . Id. at 7:14-18.
a cloud system : communications over the
wide area network 52, such as the Internet. Id.
at 8:2425. [Internet=cloud]
Through this communication, bookstore
servers 72 may allow users to shop for eBook
titles, establish their membership relationship with
the retailer, pay for their transactions, and access
proof-of purchase pages (serve-side receipts)
[rights token flag]. Id. at 9:9-16.]
Pestoni (EX1006): See claim 1, element [B]
Claim 12. This claim is nearly identical to claim 1, converting method

references to a system. The one addition is that the system works as a frontend
agent. The term frontend agent only appears in claim 9. There is one relevant
use of frontend in the body of the 555 Patent: As explained earlier, the system
we will discuss will work as a frontend to encrypted files as an authorization
agent for decrypted access. 555 Patent, 5:3739. The term frontend is also
used to describe the user GUI, which is a different use. Id., 11:1011. DeMello
- 46 -
U.S. Patent 8,402,555
describes the activation process being on frontend activation servers, and thus
shows this.
Pestoni also shows a system accessed over the Internet, and Pestoni
discloses that the devices can interact with the domain management system
directly; that is, as a frontend agent. See Cherukuri Decl. (EX1009) 86102 &
Ex. D, claim 9.
555 Patent
Marked to show
additions and
[deletions] compared
to claim 1.
[A] [1]12. A system
[method] for monitoring
access to an encrypted
digital media, the
system [method]
facilitating
interoperability between
a plurality of data
processing devices,
[A1] the system
working as a frontend
agent for access rights
authorization between a
plurality of data
processing devices, the
system [method]
comprising:

See claim 1, element [A] above.
[A1] DeMello (EX1005)
The activation server ISAPI Extension DLL 98 carries
out tasks associated with the activation process on the
frontend activation servers, . Id. at 13:6264.
Fully individualized content cannot be accessed in
the absence of a "activation certificate," which are
issued by the activation server. Id. at 2:2228.
Moreover, the activation server arrangement
preferably provides a given activation certificate (that is,
an activation certificate having a particular key pair)
only after authenticating credentials (e.g., a username
and password) associated with a persona. Id. at 2:50
54.
Pestoni (EX1006)
In accordance with one or more aspects, a device
accesses a domain administrator in order to obtain a
domain membership license. Pestoni at [0003].
- 47 -
U.S. Patent 8,402,555
Elements [B][G] are the same as claim 1 except as indicated by underlining
below.
[B] a first receipt module, the first receipt module receiving an
encrypted digital media access branding request ;
See claim 1,
element [B]
above
[C] an authentication module, the authentication module
See claim 1,
authenticating the membership verification token ;
element [C]
above.
[D] a connection module, the connection module establishing a
See claim 1,
connection ;
element [D]
above.
[E] a request module, the request module requesting the at least one See claim 1,
identification reference ;
element [E]
above.
[F] a secondary receipt module, the secondary receipt module
See claim 1,
receiving the at least one identification reference ; and
element [F]
above.
[G] a branding module, the branding module writing at least one of See claim 1,
the verification token or the identification reference into the
element [G]
metadata.
above.
references to a system, and is invalid for the same reasons.
555 Patent
Marked to show additions and [deletions] compared to claim 8.
[8] 13. The system [method] according to claim 12 [1], wherein the
encrypted digital media is . ;
- 48 -
Prior Art
See claim 8.
U.S. Patent 8,402,555
references to a system, and changing key file to key certificate file. Claim 14
is invalid for the same reasons as claim 9.
555 Patent
[9] 14. The system [method] according to claim [1] 12, wherein the
electronic identification reference is a key certificate file, the key
certificate file being uploaded by the at least one communications
console for branding the encrypted digital media; thereby giving
access to the encrypted digital media
Prior Art
See claim 9.
Claim 15. This is a program code claim corresponding to method claim 1,

converting method references of claim 1 to a program code for use with a
computer, where the computer program product comprises a nontransitory
computer usable medium having a computer readable program code stored therein
for performing the elements of claim 1. Elements [B][G] are the same as claim 1.
555 Patent
[A] [1]15. A [method] computer program product for use with a
computer, the computer program product comprising a non
transitory computer usable medium having a computer readable
program code stored therein for monitoring access to an encrypted
digital media, the method facilitating interoperability between a
plurality of data processing devices, the computer program product
performing the steps of [method comprising]:
[B] receiving an encrypted digital media access branding request
;
[C] authenticating the membership verification token ;
- 49 -
Prior Art
See claim 1,
element [A]
above.
See claim 1,
element [B].
See claim 1,
element [C].
U.S. Patent 8,402,555
[D] establishing a connection ;
[E] requesting the at least one identification reference ;
[F] receiving the at least one identification reference ; and
[G] writing at least one of the verification token or the
identification reference into the metadata.
See claim 1,
element [D].
See claim 1,
element [E].
See claim 1,
element [F].
See claim 1,
element [G].
references to a computer program product, and is invalid for the same reasons.
555 Patent
Prior Art
Marked to show additions and [deletions] compared to claim 10. See claim
[10] 17. The [method] computer program product of claim [1] 15, 10.
;
Claims 1822. These claims recite language similarly recited in claims 36,
respectively as shown below, with the method references converted to a computer
program product in each of the claims. Thus, each of claims 1822 are invalid for
the same reasons as each of claims 36, respectively.
Claims 18 and 19 include a combination of the subject matter of claim 3,
reciting language similarly recited in claim 3.
The method references are
converted to a computer program product in claims 18 and 19, and are invalid for
the same reasons as claim 3.
- 50 -
U.S. Patent 8,402,555
555 Patent
[3] 18. The [method] computer program product according to claim
[1] 15, wherein the branding request [being] is a request from the
first user providing a credential to a membership web service
through a data processing device of the plurality of data processing
devices, the first user being a human user acquiring access rights to
the encrypted digital media . ;
[3] 19. The [method] computer program product according to claim [1]
18, or wherein the branding request [being] is a request from one or
more secondary users asked to participate in providing a credential to
the membership web service connected to the first user, the credential
being one generated manually or generated automatically by the
membership web service, the [plurality] one or more secondary users
comprising one or more of human beings or a programmed
computerized mechanism[s] in the network of the first user[; wherein
the one or more secondary users are validated by a membership web
service].
19, wherein the membership verification token represents verification
from content provider to grant access rights to the first user and the one
or more secondary users.
18, wherein the encrypted digital media is shared with one or more
users according to a membership status.
21, wherein the one or more secondary users [are a network of
recognized human beings using machines or recognized] is a
programmed and automated machine hosting an operating system that
is operated by the first user [computerized mechanisms programmed
by human beings, the recognition of the users being validated by the
membership status of a membership web service].
- 51 -
Prior Art
See claim 3.
See claim 3.
See claim 4.
See claim 5.
See claim 6.
U.S. Patent 8,402,555
references to a computer program product, and is invalid for the same reasons.
555 Patent
Prior Art
Marked to show additions and [deletions] compared to claim 7. See claim 7.
15, wherein the encrypted digital media is associated with an identifier
stored in a database, the identifier being crossreferenced with a
corresponding token from a list of associated tokens stored in the token
database for verification.
Claim 24. These claims are nearly identical to claim 10, converting the
method reference to a system, and is invalid for the same reasons.
555 Patent
Prior Art
Marked to show additions and [deletions] compared to claim 10. See claim
[10] 24. The [method] system of claim [1] 12, wherein the [method]
10.
system facilitates access rights authentication for the encrypted digital
media, the branding request is an access request, and wherein the read
or write request of metadata is performed in connection with a
combination of a memory, CPU, server, database, and cloud system;
the access request is generated by either a human user, a machine, or a
human programmed computerized device; the access request further
comprises a membership verification token and a rights token wherein
the rights token is a flag indicating the verification token is
successfully verified.
C.
Ground 3: Claims 11, 16, and 25-26 are unpatentable over DeMello
(EX1005) in combination with Wieder (EX1007) and Wiser (EX1008)
and the admitted prior art.
D.
Ground 4: Claims 11, 16 and 25-26 are unpatentable over Pestoni

(EX1006) and Wieder (EX1007) and the admitted prior art in
combination with Wiser (EX1008).
- 52 -
U.S. Patent 8,402,555
Claim 11 says the verification token represents a purchase, rental or

membership permission, as indicated by any one of the laundry list of a letter,
number, etc. The DeMello BookID is a purchase permission, which is verified and
written to metadata. See DeMello at 11:3343. This is similar to the content code
entered in the KODEKEY GUI of Fig. 3 of the 555 Patent. DeMello also shows
establishing a membership relationship, which is a membership permission (see
claim 1 [B] discussion). This is also shown by the Pestoni user credentials for
joining a domain with a domain membership license, which allows access (e.g.,
purchase) of content. See Cherukuri Decl. (EX1009) 103119.
Claim 11 further describes coupled to a royalty scheme, which only
appears in this claim, but 9:4810:2 of the 555 Patent describes automatic royalty
billing. Tracking royalties is a basic, wellknown concept for DRM distribution.
DeMello and Wiser both show these elements.
DeMello describes paying royalties, and including a verification token
(purchaser name, PASSPORT ID) in metadata.
Royalties are described as a
common payment in the Background: This type of illicit document distribution

may deprive the author or content provider of royalties and/or income. DeMello at
1:3436. Pestoni describes a content license, which is dependent on paying for the
content, and the content provider would obviously pay any royalties. Providing the
- 53 -
U.S. Patent 8,402,555
ability to track purchases of media for royalties is notoriously well known, and
identifying the media with a unique identifier is the obvious way to do this.
Wiser shows a royalty scheme tied to a DRM system, and in particular to a
certificate ID and voucher ID in a log file (metadata) associated with the content.
A digital content provider provides copyright
protected digital content data and a metadata file . The
electronic distribution metadata describes the royalty,
and the redistribution parameters (Wiser Abstract).
It would be obvious to combine DeMello or Pestoni with Wiser because both
relate to copyrightprotected digital content data with metadata, and both refer to
royalties for such content data. A POSA looking to implement the royalty fees
referred to in DeMello would thus look to Wiser for the details of such a system.
Pestoni only describes a portion of a commercial system, and it would be obvious
to look to the royalty scheme of Wiser to add the needed royalty tracking. It would
be obvious to combine because both relate to DRM systems, and both use metadata
for permission information.
555 Patent
(emphasis
added)
11. The method
of claim 2,
wherein the
membership
DeMello (EX1005)
Verification token:
Through this communication, bookstore servers 72 may allow
- 54 -
U.S. Patent 8,402,555
verification token
comprises at least
one token
selected from a
group consisting
of a purchase
permission, a
rental
permission, or
membership
permission
coupled to a
royalty scheme;
wherein the
permission is
represented by
one or more of a
letter, number,
combination of
letters and
numbers,
phrase,
authorization, list,
interface button
or an instrument
of trade for
access rights of
the encrypted
digital media.
users to shop for eBook titles, establish their membership

relationship with the retailer [verification token], pay for
their transactions, and access proofof purchase pages (serve
side receipts). Id. at 9:1216.
As used herein, a "persona" is a unique identifier that can be
tied to a user and can be securely authenticated by an outof
band processe.g., a username and password form on a web
browser for use over a secure socket layer (SSL) is an example
embodiment of such a process. Id. at 2: 4550.
It is also preferable that activation servers 94 rely on the
MICROSOFT.RTM. PASSPORT.TM. membership system
for associating activation certificates to enduser personas, as
will be described below (although PASSPORT is merely
exemplary of a namespace authority that may be used for this
purpose). Id. at 10: 5863.
This type of illicit document distribution may deprive the
author or content provider of royalties and/or income. Id. at
1:3436.
Pestoni (EX1006): see claim 1 [B]
Wiser (EX1008)
Rights Reporting:. This uploaded information describes
the number of times various media data files have been used to
allow for accurate reporting of such usage for the purpose of
royalty payments and other fees to the artists, owners, record
labels and so forth. These mechanisms allow music industry
participants to protect their copyrights [DRM] and could be
used by rights reporting agencies to bill distributors for
royalties associated with the volume of electronic distribution
of the media data files. Wiser at 11:4962.
Rights Reporting .
This logging protocol is used for making entries each time a
media data file is completely downloaded by the media player
116. The log entry includes a timestamp, the track title, the
- 55 -
U.S. Patent 8,402,555
artist name, the track authors, the song length, the sale price,
the certificate ID from the media player 116, the voucher
ID, the media data file name and a descriptor for which audio
image was downloaded. The logs are uploaded to the media
licensing center 110 on a periodic basis and validated offline
by a batch process. Once validated, the purchase information
can be processed (e.g., totaled by artist, track, and the like) to
determine proper royalty or other payments based on sales
and previews. Id. at 20:946.
Claims 16 and 25. These claims are nearly identical to claim 11, converting
method references to a computer program product for claim 16 and a system for
claim 25, and are invalid for the same reasons as claim 11.
555 Patent
[11] 16. The [method] computer program product of claim [2] 15, ;
[11] 25. The [method] system of claim [2] 12, ;
Prior Art
See claim
11.
See claim
11.
Claim 26 depends on claim 12 and recites an authoring system with

multiple modules shown in Fig. 2 for the steps of Fig. 7. Those modules/steps
are selecting content, entering a password, customizing the media through a user
access panel (e.g., add a logo), connect to the verification token database and
encrypt the media. As discussed above, the word module as used in the claims is
never used in the Provisional Application and was added to describe method steps
of the 555 Patent. The recitation of modules is not limiting, being used to solely
to distinguish an entity or an action from others.
- 56 -
U.S. Patent 8,402,555
The steps of selecting content, connecting to the token database and
encrypting have been shown above by DeMello or Pestoni in combination with
Wieder and the admitted prior art.
That leaves entering a password and
customizing as new (e.g., a master password so a seller can customize the media).
Customization is a wellknown concept for DRM distribution, and
applications and video are common types of content. DeMello, Wieder, and Wiser
are all directed to digital media content.
Wiser discloses an online music
distribution system with media player related details and a voucher ID provided as
part of a purchase request, similar to DeMello and Pestoni. Also similarly, there is
authentication and payment, and a transaction ID is added to the media data file
(metadata) that is delivered to the purchaser. The media data file (metadata) also
includes descriptive data such as cover art image and a promotional graphics image
(media items). Wiser teaches an authoring system that enables selecting one or
more media items (e.g., an image and media content (e.g., music), which form the
digital media that is encrypted and delivered to a purchaser. Wiser at 11:6413:2.
An authoring system including a customization module is described as
follows in the 555 Patent:
According to an embodiment of the present invention, the
customization module 206 facilitates adding one or more of a
banner, a logo, an image, an advertisement, a tag line, a header
- 57 -
U.S. Patent 8,402,555
message and textual information to the user access panel of the
encrypted digital media. Id. at 6: 2633.
From the context of allowing adding a logo or advertisement, it is clear the
user access panel is intended for the content provider as the user, not the enduser.
A customizing user access panel in the claim simply means any software or
interface that allows modification of software or media by a user. This is inherent
if a user is able to modify the media by adding a tag or an image.
Wiser
customizes the media descriptive data (metadata) using an authoring tool and
database access module, which constitute the claimed customization module.
A person of ordinary skill in the art (POSA) looking to do additional
tagging in DeMello or Pestoni would look to Wiser, and viceversa. (see also
Cherukuri Decl. (EX1009), 115, 118).
- 58 -
U.S. Patent 8,402,555
555 Patent (emphasis added)
26. The system of claim 12, wherein the
DeMello (EX1005) & Pestoni (EX1006):
encrypted digital media capable of
See claim 12.
interoperability between a plurality of data
processing devices, is further authored by Wiser (EX1008)
an authoring system comprising:
The artist then uses the authoring tool
a selection module, the selection module
102 [authorization system] to perform
selecting one or more media items to form any desired digital signal processing, and
the encrypted digital media;
editing on the digitally recorded audio
data. The authoring tools also provide
a password module, the password module for compression of the audio images,
entering a master password which
watermarking, and encryption.
provides access to the encrypted digital
The authoring tool 102 is also used by
media for editing;
the artist to enter the media descriptive
data 204, such as the artist's name, song
a customization module, the customization
title, lyrics, and the like, as previously
module customizing user access panel of
described. Id. at 12:411.
the encrypted digital media;
a database module, the database module
connecting the encrypted digital media to
a database of membership verification
token required for decrypting the
encrypted digital media; and
an encryption module, the encryption
module encrypting the one or more media
items to create the encrypted digital media.
Database access module 1002: This

module manages all requests for data
from the master media file 120 and media
information database 106. The various
other modules interface with this
module to retrieve, update, create, or
delete media data file 200, media
descriptive data 204. Id. at 20:5761.
- 59 -
U.S. Patent 8,402,555
VII. CONCLUSION
The Office is requested to find there is a reasonable likelihood that
Petitioners will prevail and initiate an inter partes review of Claims 126. The
USPTO is authorized to charge any fees or credit any overpayments to Deposit
Account No. 201430.
Respectfully submitted,
By: /Paul C. Haughey/
Paul C. Haughey
Registration No. 31,836
Lead Counsel for Petitioner
Lead Counsel
Paul C. Haughey
phaughey@kilpatricktownsend.com
BackUp Counsel
Jonathan Stroud
Reg. No. 72,518
jonathan@unifiedpatents.com
Postal and HandDelivery Address:

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Unified Patents, Inc.
1875 Connecticut Ave. NW, Floor 10
Washington, D.C., 20009
Telephone: (202) 8058931
Fax: (650) 8870349
Scott E. Kolassa
Reg. No. 55,337
SKolassa@kilpatricktownsend.com
1080 Marsh Road
Menlo Park, CA 94025
Telephone: (650) 3246349
Fax: (650) 6181544
- 60 -
U.S. Patent 8,402,555
CERTIFICATE OF SERVICE
The undersigned hereby certifies that a copy of this Petition for Inter Partes
Review of U.S. Patent No. 8,402,555, including its supporting Exhibits (1001
1010) and Powers of Attorney has been served via Express Mail on March 22,
2016, upon the following:
The STR3EM Team
2885 Sanford Ave SW #13208
Grandville, MI 49418
Patent Owners correspondence address
of record for U.S. Patent No. 8,533,860
With a courtesy copy served on March 22, 2016 upon Grecias lead litigation
counsel via Express Mail.
Matthew M. Wawrzyn
Wawrzyn LLC
233 S. Wacker Dr., 84th Floor
Chicago, IL 60606
matt@wawrzynlaw.com
Dated: March 22, 2016
Respectfully
By: /Paul C. Haughey/
Paul C. Haughey
Counsel for Petitioner
68310987V.1
- 61 -

Unified Patents Inc. v. William Grecia, IPR2016-00789, Paper 1 (PTAB Mar. 22, 2016)

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IPR201600789 Petition

U.S. Patent 8,402,555

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNIFIED PATENTS INC.

MANDATORY NOTICES ........................................................................ - 1 A.

Real PartyinInterest ...................................................................... - 1 -

Service Information, Email, Hand Delivery, and Postal .................. - 2 -

CERTIFICATION OF GROUNDS FOR STANDING ............................. - 2 -

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

Prior Art Patents and Printed Publications ....................................... - 3 1.

U.S. Patent No. 6,891,953 (filed on June 27, 2000 and

U.S. Pub. No. 2008/0313264 (filed on Jun. 12, 2007 and

U.S. Pat. 6,385,596 (filed Feb. 6, 1998 and issued May 7)

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

OVERVIEW OF THE 555 PATENT ....................................................... - 4 A.

Priority Date of the 555 Patent........................................................ - 4 -

Summary of the 555 Patent ............................................................. - 5 i

Summary of Relevant Prosecution File History ............................ - 10 -

Person of Ordinary Skill in the Art ................................................ - 11 -

CLAIM CONSTRUCTION ..................................................................... - 11 A.

verified web service .................................................................... - 12 -

metadata of the encrypted digital media ..................................... - 13 -

two way data exchange ............................................................... - 13 -

PROPOSED REJECTIONS SHOWING THAT PETITIONER HAS A

Ground 1: Claims 110, 1215, and 1724 are unpatentable as

Ground 2: Claims 110, 1215, and 1724 are unpatentable as

Ground 3: Claims 11, 16, and 25-26 are unpatentable over

Ground 4: Claims 11, 16 and 25-26 are unpatentable over

U.S. Patent No. 8,402,555 to Grecia.

Grecia v. Amazon.com, No. 2:14cv00530 (W.D. Wash. Dec.

Sony Network Entertainment Intl v. Grecia, IPR201500422,

Notice of Allowability of U.S. Patent No. 8,402,555 to Grecia

U.S. Patent No. 6,891,953 to DeMello et al., Prior Art under 35

U.S. Pub. No. 20080313264 to Pestoni, Prior Art under 35

U.S. Pat. 8,001,612 to Wieder, Prior Art under 35 U.S.C.

U.S. Pat. 6,385,596 to Wiser, Prior Art under 35 U.S.C. 102(b)

Declaration of Ravi S. Cherukuri & Exhibits AD

Unified Patents LLC Voluntary Interrogatories

partyininterest, and further certifies that no other party exercised control or

Service Information, Email, Hand Delivery, and Postal

CERTIFICATION OF GROUNDS FOR STANDING

OVERVIEW OF CHALLENGE AND RELIEF REQUESTED

claims 126 of the 555 Patent.

Prior Art Patents and Printed Publications

the America Invents Act (AIA). Accordingly, preAIA statutory framework

Grounds for Challenge

Decl. (EX1009)) requests cancellation of challenged claims 126 of the 555

OVERVIEW OF THE 555 PATENT

Priority Date of the 555 Patent

Jan. 6, 2011, which is a continuation of Application No. 12/728,218, filed on Mar.

Summary of the 555 Patent

Summary of Relevant Prosecution File History

under 103 U.S. Pre-Grant Publication Number 2011/0288946 to Baiya (Baiya)

Person of Ordinary Skill in the Art

broadest reasonable construction in light of the specification. See 37 C.F.R.

verified web service

accessible with an authenticated credential and Amazon proposed a web service

metadata of the encrypted digital media

two way data exchange

PROPOSED REJECTIONS SHOWING THAT PETITIONER HAS A

Ground 1: Claims 110, 1215, and 1724 are unpatentable as obvious

Ground 2: Claims 110, 1215, and 1724 are unpatentable as obvious

As shown in Fig. 4 of DeMello above, the user requests content at a retail

credentials), which is a verification token. A separate HTTPS connection 70 on