Takeaway: A petitioner must fully explain how every element of the claim is disclosed in the reference to succeed on a ground of unpatentability based on anticipation. A claim chart with citations to certain portions of the reference is not enough.
In its Decision, the Board found that Petitioner had not shown a reasonable likelihood that it would prevail as to the unpatentability of any of the challenged claims (1-11 and 13-21) of the ’409 Patent. Therefore, it denied the Petition. The ’409 Patent relates to methods, devices, and systems for controlling access to, and use, distribution, and secondary distribution of data.
The Board began with claim construction, noting that the claims are construed in the broadest reasonable interpretation in light of the specification. Although the parties proposed constructions for several terms, the Board determined that none of the disputed claim terms required an explicit construction, and that all remaining claim terms would be given their ordinary and customary meanings.
The Board then turned to the contention that claims 1-6, 8-11, 13, and 21 are anticipated by Cooper. The Board first found that Petitioner failed to “explain sufficiently how Cooper discloses rules defining access rights to the data, and how Cooper discloses rules defining access to the decrypted software object . . . is limited in accordance with the rules as enforced by the file management program . . . .” Further, the Board determined that the Petition did not explain sufficiently how Cooper’s general statement that the “file management system preferably prevents copying operations” discloses rules defining access rights to the data, and how Copper discloses each and every access to the decrypted software object is limited.
The Board next examined the contention that claims 1-6, 8-11, 13, and 21 are anticipated by Digibox, which described that DigiBox is a foundation technology within InterTrust Virtual Distribution Architecture. The Board agreed with Patent Owner that the Petition only addressed limited or controlled access to protected forms of the data, and did not explain how Digibox discloses limited or controlled access to unprotected forms of the protected data as enforced by an access mechanism, as required in claims 1 and 21.
Then, the Board reviewed the two separate contentions that claims 7 and 14-20, which depend from claim 1, are obvious over Digibox and Stefik and over Cooper and Stefik. The Board found that Stefik did not remedy the deficiencies of Digibox and Cooper with regard to the limitations of claim.
International Business Machines (IBM) Corp. v. Intellectual Ventures II LLC, IPR2014-00672
Paper 12: Decision Denying Institution of Inter Partes Review
Dated: September 22, 2014
Patent: 6,314,409 B2
Before: Kristen L. Droesch, Jennifer S. Bisk, and Justin Busch
Written by: Droesch
Related Proceedings: IPR2014-00673; IPR2014-00719; IPR2014-00722; and CBM2014-00157