ContentGuard Holdings, Inc. v. Amazon.com Inc. et al

Filing 459

MEMORANDUM OPINION AND ORDER. Signed by Judge Rodney Gilstrap on 03/20/2015. (nkl, )

THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
CONTENTGUARD HOLDINGS, INC.,
Plaintiff,
v.
AMAZON.COM, INC., et al.,
Defendants.
___________________________________
CONTENTGUARD HOLDINGS, INC.,
Plaintiff,
v.
GOOGLE, INC.,
Defendant.

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CASE NO. 2:13-CV-1112-JRG

CASE NO. 2:14-CV-61-JRG

MEMORANDUM OPINION AND ORDER
Before the Court are Plaintiff ContentGuard Holdings, Inc.’s Opening Claim
Construction Brief (Dkt. No. 304),1 the response of Defendants Amazon.com, Inc. (“Amazon”),
Apple Inc., DirecTV, LLC, HTC Corporation, HTC America, Inc., Huawei Technologies Co.,
Ltd., Huawei Device USA, Inc., Motorola Mobility LLC, Samsung Electronics Co., Ltd.,
Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC
(collectively, “Defendants”) (Dkt. No. 331), Defendant Amazon.com, Inc.’s Separate Responsive
Claim Construction Brief (Dkt. No. 336), Plaintiff’s replies (Dkt. Nos. 344 & 345), and
Defendants’ sur-reply (Dkt. No. 353).
The Court held a claim construction hearing on February 6, 2015.

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References to docket numbers herein are to Civil Action No. 2:13-CV-1112 unless otherwise
indicated.
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Table of Contents
I. BACKGROUND ....................................................................................................................... 4 
II. LEGAL PRINCIPLES ........................................................................................................... 4 
III. CONSTRUCTION OF AGREED TERMS ........................................................................ 9 
IV. CONSTRUCTION OF DISPUTED TERMS IN THE STEFIK PATENTS ................. 10 
A. “repository” and “trusted”................................................................................................... 10 
B. “physical integrity” ............................................................................................................. 16 
C. “communications integrity” ................................................................................................ 18 
D. “behavioral integrity”.......................................................................................................... 19 
E. “content” and “digital content” ........................................................................................... 21 
F. “rights,” “usage rights,” and “usage rights information” .................................................... 23 
G. “usage rights” (‘160 Patent) ................................................................................................ 33 
H. “digital work”...................................................................................................................... 35 
I. “digital document” and “document” .................................................................................... 37 
J. “requester mode of operation” and “server mode of operation” .......................................... 40 
K. “manner of use” .................................................................................................................. 43 
L. “render” and “rendering”..................................................................................................... 45 
M. “authorization object” ........................................................................................................ 48 
N. “identification certificate” and “digital certificate” ............................................................ 51 
O. “nonce” and “random registration identifier” ..................................................................... 53 
P. “distributed repository” ....................................................................................................... 56 
Q. “document platform” .......................................................................................................... 61 
R. “validating” ......................................................................................................................... 65 
S. “determining, by the document platform” ........................................................................... 68 
T. “grammar” ........................................................................................................................... 72 
U. “description structure” ........................................................................................................ 75 
V. “means for communicating with a master repository for obtaining an identification
certificate for the repository” .............................................................................................. 76 
W. “means for processing a request from the means for requesting”...................................... 80 
X. “means for checking whether the request is for a permitted rendering of the digital
content in accordance with rights specified in the apparatus” ............................................ 85 

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Y. “means for receiving the authorization ob[j]ect when it is determined that the request
should be granted” .............................................................................................................. 88 
Z. “means for requesting a transfer of the digital content from an external memory to the
storage” ............................................................................................................................... 91 
AA. “means for processing the request to make the digital content available to the
rendering engine for rendering when the request is for a permitted rendering of the
digital [content],” “means for authorizing the repository for making the digital content
available for rendering, wherein the digital content can be made available for rendering
only by an authorized repository,” and “means for making a request for an
authorization object required to be included within the repository for the apparatus to
render the digital content”................................................................................................... 95 
V. CONSTRUCTION OF DISPUTED TERMS IN THE NGUYEN PATENTS ................ 98 
A. “repository” ......................................................................................................................... 99 
B. “license” .............................................................................................................................. 99 
C. “meta-right”....................................................................................................................... 102 
D. “usage rights” .................................................................................................................... 106 
E. “manner of use” ................................................................................................................. 108 
F. “state variable” .................................................................................................................. 109 
G. “the at least one state variable identifies a location where a state of rights is tracked” .... 114 
H. “specifying, in a first license, . . . at least one usage right and at least one meta-right for
the item, wherein the usage right and the meta-right include at least one right that is
shared among one or more users or devices” ................................................................... 116 
I. “means for obtaining a set of rights associated with an item” ........................................... 119 
J. “means for determining whether the rights consumer is entitled to the right specified by
the meta-right” .................................................................................................................. 122 
K. “means for exercising the meta-right to create the right specified by the meta-right” ..... 125 
L. “means for generating a license including the created right, if the rights consumer is
entitled to the right specified by the meta-right” .............................................................. 128 
VI. CONSTRUCTION OF DISPUTED TERMS IN THE DUNKELD PATENT ............ 130 
A. “detect[ing] a transfer” ...................................................................................................... 131 
B. “instance” .......................................................................................................................... 133 
C. “other portion” .................................................................................................................. 136 
D. “over said network between user devices” ....................................................................... 140 
VII. CONCLUSION ................................................................................................................ 143 

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I. BACKGROUND
Plaintiff brings suit alleging infringement of United States Patents No. 6,963,859 (“the
‘859 Patent”), 7,523,072 (“the ‘072 Patent”), 7,225,160 (“the ‘160 Patent”), 7,269,576 (“the ‘576
Patent”), 8,370,956 (“the ‘956 Patent”), 8,393,007 (“the ‘007 Patent”) (collectively, the “Trusted
Repository Patents” or “Stefik Patents”), 7,774,280 (“the ‘280 Patent”), 8,001,053 (“the ‘053
Patent”) (collectively, the “Meta Rights Patents,” “Nguyen/Chen Patents,” or “Nguyen Patents”),
and 8,583,556 (“the ‘556 Patent,” also referred to as the “Transaction Tracking Patent” or the
“Dunkeld Patent”) (all, collectively, “the patents-in-suit”). (Dkt. No. 304, Exs. A-I.)
The parties have presented the patents-in-suit as three distinct groups, as set forth above,
and the Court addresses those three groups in turn, below.
The Court heard oral arguments on February 6, 2015. The parties did not present oral
argument as to all disputed terms. Instead, “[g]iven the large number of disputed claim terms,”
the parties chose to present oral arguments on terms identified in the parties’ January 23, 2015
Joint Notice Regarding Markman Hearing. (Dkt. No. 365.) The parties also presented oral
argument regarding one additional group of terms identified by the Court, namely “nonce” and
“random registration identifier” in the Stefik Patents. The parties did not present oral arguments
regarding any other disputed terms and instead submitted those disputes on the briefing.
II. LEGAL PRINCIPLES
It is understood that “[a] claim in a patent provides the metes and bounds of the right
which the patent confers on the patentee to exclude others from making, using or selling the
protected invention.” Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed.
Cir. 1999). Claim construction is clearly an issue of law for the court to decide. Markman v.

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Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370
(1996).
To ascertain the meaning of claims, courts look to three primary sources: the claims, the
specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must
contain a written description of the invention that enables one of ordinary skill in the art to make
and use the invention. Id. A patent’s claims must be read in view of the specification, of which
they are a part. Id. For claim construction purposes, the description may act as a sort of
dictionary, which explains the invention and may define terms used in the claims. Id. “One
purpose for examining the specification is to determine if the patentee has limited the scope of
the claims.” Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
Nonetheless, it is the function of the claims, not the specification, to set forth the limits of
the patentee’s invention. Otherwise, there would be no need for claims. SRI Int’l v. Matsushita
Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own
lexicographer, but any special definition given to a word must be clearly set forth in the
specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).
Although the specification may indicate that certain embodiments are preferred, particular
embodiments appearing in the specification will not be read into the claims when the claim
language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc.,
34 F.3d 1048, 1054 (Fed. Cir. 1994).
This Court’s claim construction analysis is substantially guided by the Federal Circuit’s
decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips,
the court set forth several guideposts that courts should follow when construing claims. In
particular, the court reiterated that “the claims of a patent define the invention to which the

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patentee is entitled the right to exclude.” 415 F.3d at 1312 (quoting Innova/Pure Water, Inc. v.
Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To that end, the words
used in a claim are generally given their ordinary and customary meaning. Id. The ordinary and
customary meaning of a claim term “is the meaning that the term would have to a person of
ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date
of the patent application.” Id. at 1313. This principle of patent law flows naturally from the
recognition that inventors are usually persons who are skilled in the field of the invention and
that patents are addressed to, and intended to be read by, others skilled in the particular art. Id.
Despite the importance of claim terms, Phillips made clear that “the person of ordinary
skill in the art is deemed to read the claim term not only in the context of the particular claim in
which the disputed term appears, but in the context of the entire patent, including the
specification.” Id. Although the claims themselves may provide guidance as to the meaning of
particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315
(quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as
being the primary basis for construing the claims. Id. at 1314-17. As the Supreme Court stated
long ago, “in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive
portions of the specification to aid in solving the doubt or in ascertaining the true intent and
meaning of the language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In
addressing the role of the specification, the Phillips court quoted with approval its earlier
observations from Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed.
Cir. 1998):
Ultimately, the interpretation to be given a term can only be determined and
confirmed with a full understanding of what the inventors actually invented and
intended to envelop with the claim. The construction that stays true to the claim

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language and most naturally aligns with the patent’s description of the invention
will be, in the end, the correct construction.
Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the
specification plays in the claim construction process.
The prosecution history also continues to play an important role in claim interpretation.
Like the specification, the prosecution history helps to demonstrate how the inventor and the
United States Patent and Trademark Office (“PTO”) understood the patent. Id. at 1317. Because
the file history, however, “represents an ongoing negotiation between the PTO and the
applicant,” it may lack the clarity of the specification and thus be less useful in claim
construction proceedings. Id. Nevertheless, the prosecution history is intrinsic evidence that is
relevant to the determination of how the inventor understood the invention and whether the
inventor limited the invention during prosecution by narrowing the scope of the claims. Id.; see
Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that “a
patentee’s statements during prosecution, whether relied on by the examiner or not, are relevant
to claim interpretation”).
Phillips rejected any claim construction approach that sacrificed the intrinsic record in
favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court
condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193
(Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through
dictionaries or otherwise) before resorting to the specification for certain limited purposes.
Phillips, 415 F.3d at 1319-24. According to Phillips, reliance on dictionary definitions at the
expense of the specification had the effect of “focus[ing] the inquiry on the abstract meaning of
words rather than on the meaning of claim terms within the context of the patent.” Id. at 1321.

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Phillips emphasized that the patent system is based on the proposition that the claims cover only
the invented subject matter. Id.
Phillips does not preclude all uses of dictionaries in claim construction proceedings.
Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the
court emphasized that claim construction issues are not resolved by any magic formula. The
court did not impose any particular sequence of steps for a court to follow when it considers
disputed claim language. Id. at 1323-25. Rather, Phillips held that a court must attach the
appropriate weight to the intrinsic sources offered in support of a proposed claim construction,
bearing in mind the general rule that the claims measure the scope of the patent grant.
In general, prior claim construction proceedings involving the same patents-in-suit are
“entitled to reasoned deference under the broad principals of stare decisis and the goals
articulated by the Supreme Court in Markman, even though stare decisis may not be applicable
per se.” Maurice Mitchell Innovations, LP v. Intel Corp., No. 2:04-CV-450, 2006 WL 1751779,
at *4 (E.D. Tex. June 21, 2006) (Davis, J.); see TQP Development, LLC v. Inuit Inc., No. 2:12CV-180, 2014 WL 2810016, at *6 (E.D. Tex. June 20, 2014) (Bryson, J.) (“[P]revious claim
constructions in cases involving the same patent are entitled to substantial weight, and the Court
has determined that it will not depart from those constructions absent a strong reason for doing
so.”); see also Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 839-40 (2015) (“prior
cases will sometimes be binding because of issue preclusion and sometimes will serve as
persuasive authority”) (citation omitted).
The Court nonetheless conducts an independent evaluation during claim construction
proceedings. See, e.g., Texas Instruments, Inc. v. Linear Techs. Corp., 182 F. Supp. 2d 580,
589-90 (E.D. Tex. 2002); Burns, Morris & Stewart Ltd. P’ship v. Masonite Int’l Corp., 401 F.

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Supp. 2d 692, 697 (E.D. Tex. 2005); Negotiated Data Solutions, Inc. v. Apple, Inc., No. 2:11CV-390, 2012 WL 6494240, at *5 (E.D. Tex. Dec. 13, 2012).
III. CONSTRUCTION OF AGREED TERMS
The Court hereby notes the Parties’ agreed constructions:

Stefik Patents
Agreed Construction

Term
“rendering engine”

“a processor and associated software that renders”

“master device”

“A special type of device which issues
identification certificates and distributes lists of
repositories whose integrity has been compromised
and which should be denied access to digital works
(referred to as repository ‘hotlists’).”

“master repository”

“A special type of repository which issues
identification certificates and distributes lists of
repositories whose integrity have been
compromised and which should be denied access to
digital works (referred to as repository ‘hotlists’.)”

“session key”

“a cryptographic key for encryption of messages
during a single session”

“means for requesting use of the digital
content stored in the storage”

“a user interface which is the mechanism by which
a user interacts with a repository in order to invoke
transactions to gain access to digital content, or
exercise usage rights”

Nguyen/Chen Patents
Agreed Construction

Term
“rights”

“The term ‘right’ in the claims of the ‘280 and ‘053
patents means a ‘meta-right’ or a ‘usage right,’
depending on context”

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(Dkt. No. 292, 11/17/2014 Joint Claim Construction and Prehearing Statement, at 2; see Dkt.
No. 366, Ex. B, 1/23/2015 Joint Claim Construction Chart.)
IV. CONSTRUCTION OF DISPUTED TERMS IN THE STEFIK PATENTS
The earliest issued of the Stefik Patents is the ‘859 Patent. The ‘859 Patent is titled
“Content Rendering Repository” and issued on November 8, 2005. The Abstract states:
A rendering system adapted for use in a system for managing use of content and
operative to rendering [sic] content in accordance with usage rights associated
with the content. The system includes a rendering device configured to render the
content and a repository coupled to the rendering device and operative to enforce
usage rights associated with the content and permit the rendering device to render
the content in accordance with a manner of use specified by the usage rights.
Four of the six Stefik Patents have been the subject of Inter Partes Review (“IPR”)
proceedings at the PTO’s Patent Trial and Appeal Board (“PTAB”). (See Dkt. No. 331,
Exs. 1-4).
The Stefik Patents all claim priority to an application filed on November 23, 1994.
Defendants submit that the specifications of the Stefik Patents are “largely identical” except that,
Defendants argue, “the ‘160 patent specification is critically different from the other Stefik
specifications,” as discussed further below. (Dkt. No. 331, at 1 n.1.)
The present Memorandum Opinion and Order cites only the specification of the ‘859
Patent unless otherwise indicated.
A. “repository” and “trusted”
“repository”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“a trusted system in that it maintains physical,
communications, and behavioral integrity in
the support of usage rights”

“a trusted system, which maintains physical,
communications and behavioral integrity, and
supports usage rights”

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“trusted”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“maintains physical, communications, and
behavioral integrity in the support of usage
rights”

“maintains physical, communications and
behavioral integrity”

(Dkt. No. 304, at 1; Dkt. No. 331, at 2.) The parties submit that “repository” appears in Claims
1, 15, 21, 24, 58, 71, and 81 of the ‘859 Patent, Claims 1 and 18 of the ‘576 Patent, and Claims 1
and 10 of the ‘072 Patent. (Dkt. No. 292-1, at 7; Dkt. No. 331, at 2.) The parties submit that
“trusted” appears in Claims 1, 7, and 13 of the ‘956 Patent and Claims 1, 6, and 11 of the ‘007
Patent. (Dkt. No. 292-1, at 8; Dkt. No. 331, at 2.)
(1) The Parties’ Positions
Plaintiff argues that its proposed construction for “repository” “adopts th[e] language
from the [specification’s] glossary verbatim while Defendants’ proposed construction introduces
ambiguities by replacing ‘in that it’ with ‘which’” and “by replacing ‘in the support of usage
rights’ with ‘and supports usage rights.’” (Dkt. No. 304, at 2.) Plaintiff submits that although
Defendants rely on the construction by the PTAB during an IPR, “[t]he PTAB based its
construction on the same glossary definition [Plaintiff] relies on, but provided no reason to
depart from the language from the glossary.” (Id.)
Defendants respond that “Defendants’ proposed construction of ‘repository’ follows the
PTAB’s construction verbatim; and Defendants’ construction of the related term ‘trusted,’ which
the PTAB did not construe, mirrors this construction.” (Dkt. No. 331, at 2 (citing, id., Ex. 2,
at 8).) Defendants submit that Plaintiff “actually rearranged pieces of the [specification
glossary’s] definition to alter the meaning of ‘repository.’” (Dkt. No. 331, at 3.) Defendants

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explain that “[u]nder [Plaintiff’s] construction, instead of the three integrities being required at
all times, as taught by the Stefik patents and required by the PTAB’s construction, the three
integrities only need to be present when supporting usage rights.” (Id.)
In an additional, separate responsive brief, Defendant Amazon argues that because the
specification defines “repository” and “trusted” in “purely functional language,” those terms are
indefinite. (Dkt. No. 336, at 3.) Defendant Amazon cites Halliburton Energy Services, Inc. v.
M-I LLC, 514 F.3d 1244 (Fed. Cir. 2008), which found indefinite the term “fragile gel.” (See id.,
at 3-5.)
Plaintiff replies that Defendants’ argument that a repository must “maintain the three
integrities at all times” “is not found in the PTAB construction and directly contradicts the Stefik
patents’ specification . . . .” (Dkt. No. 345, at 1.) Plaintiff concludes that “[t]here is simply no
basis for defining ‘repository’ as something that maintains the three integrities at all times, even
while conducting transactions that do not support usage rights.” (Id.)
Plaintiff also replies, as to Amazon’s separate brief, that “Amazon’s arguments should be
rejected because they reflect an elementary misunderstanding of the applicable law and are not
supported by any evidence.” (Dkt. No. 344, at 1.) Plaintiff notes that Amazon submits no expert
opinions on this issue, and Plaintiff submits that “there is ample support in the specification that
describes the boundaries of the three integrities that define [Mr.] Stefik’s concept of ‘trust.’”
(Id., at 3-5 (citing 11:62-12:50).)
In sur-reply, Defendants argue that, “[l]ogically, [Mr.] Stefik must have intended for
repositories and trusted systems to require the three integrities at all times, otherwise his
inventions would not solve the digital piracy problem.” (Dkt. No. 353, at 1.) Defendants also
note that a “restoration file,” which is used to restore a back-up file, “would be held in [a]

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repository,” and “[i]f a repository cannot verify that it is communicating with another trusted
repository, then ‘the registration transaction terminates in an error.’” (Id., at 3 (citing ‘859 Patent
at 27:3-5 & 36:57-58).)
At the February 6, 2015 hearing, Defendants reiterated that “in support of” is broader
than how the PTAB construed the term and injects ambiguity into the claims.
(2) Analysis
The parties disagree as to whether the disputed terms refer to supporting usage rights or
merely being “in the support of usage rights,” as well as whether the three “integrities” must be
present at all times.
On one hand, the PTAB construed “repository” to mean “a trusted system which
maintains physical, communications and behavioral integrity, and supports usage rights.” (Dkt.
No. 304, Ex. J, 6/26/2014 Final Written Decision, at 10-11.). This prior construction is entitled
to some deference. See Maurice Mitchell, 2006 WL 1751779, at *4; see also TQP, 2014 WL
2810016, at *6; Teva, 135 S. Ct. at 839-40.
On the other hand, the “Glossary” section of the specification explicitly states:
Repository:
Conceptually a set of functional specifications defining core functionality in the
support of usage rights. A repository is a trusted system in that it maintains
physical, communications and behavioral integrity.
‘859 Patent at 50:47-51.
On balance, the Court finds that by setting forth an explicit definition in a “Glossary,” the
patentee acted as lexicographer and expressly defined the term “repository.” See Intellicall, 952
F.2d at 1388; see also C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)
(“[T]he inventor’s written description of the invention . . . is relevant and controlling insofar as it

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provides clear lexicography . . . .”); Abbott Labs. v. Syntron Bioresearch, Inc., 334 F.3d 1343,
1354 (Fed. Cir. 2003) (“patentee’s lexicography must, of course, appear with reasonable clarity,
deliberateness, and precision”) (citation and internal quotation marks omitted).
This lexicography finding is supported by other disclosures in the specification, such as
the discussion of “Repositories”:
Repositories
Many of the powerful functions of repositories—such as their ability to “loan”
digital works or automatically handle the commercial reuse of digital works—are
possible because they are trusted systems. The systems are trusted because they
are able to take responsibility for fairly and reliably carrying out the commercial
transactions. That the systems can be responsible (“able to respond”) is
fundamentally an issue of integrity. The integrity of repositories has three parts:
physical integrity, communications integrity, and behavioral integrity.
‘859 Patent at 11:51-61; see also 6:29-31 (“the digital work genie only moves from one trusted
bottle (repository) to another”). The specification also discloses that a repository may
communicate with a non-repository and that not all communications between repositories are
secure. See id. at 25:37-52, 26:30-67 (“registration transaction”) & 37:12-21 (“non-repository
archive storage”).
To whatever extent Defendant Amazon maintains that Plaintiff’s construction is
improperly functional rather than structural, that argument is rejected. See, e.g., Hill-Rom Servs.,
Inc. v. Stryker Corp., 755 F.3d 1367, 1374-75 (Fed. Cir. 2014) (“defining a particular claim term
by its function is not improper”); Funai Elec. Co. v. Daewoo Elecs. Corp., 616 F.3d 1357, 1366
(Fed. Cir. 2010) (“The use of comparative and functional language to construe and explain a
claim term is not improper. A description of what a component does may add clarity and
understanding to the meaning and scope of the claim.”); Microprocessor Enhancement Corp. v.

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Texas Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008) (“claims are not necessarily
indefinite for using functional language”).
As to extrinsic evidence, Defendants have also cited an article in which named inventor
Mark Stefik stated that a “trusted system” “could always be counted on to follow the rules of the
trust,” and “[i]n the case of digital works on repositories, the requirement for trust is that the
repositories follow—at all times and in every instance—the rules about how digital works are
used.” (Dkt. No. 331, Ex. 5, Mark Stefik, Letting Loose the Light: Igniting Commerce in
Electronic Publication 12, 24 (1996).) This extrinsic evidence is of insufficient weight,
however, to override the explicit lexicography in the specification, as set forth above. See
Phillips, 415 F.3d at 1317 (“[W]hile extrinsic evidence can shed useful light on the relevant art,
we have explained that it is less significant than the intrinsic record in determining the legally
operative meaning of claim language.”) (citations and internal quotation marks omitted).
That lexicography, on its face, requires only that the integrities be maintained “in support
of” usage rights. Defendants have failed to adequately support their proposed “at all times”
interpretation. (See Dkt. No. 353, at 1.)
The Court accordingly hereby construes these disputed terms as set forth in the following
chart:
Construction

Term
“repository”

“a trusted system in that it maintains
physical, communications, and behavioral
integrity in the support of usage rights”

“trusted”

“maintains physical, communications, and
behavioral integrity in the support of usage
rights”

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B. “physical integrity”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“prevents access to content by a non-trusted
system”

“preventing access to information by a nontrusted system”

(Dkt. No. 304, at 1; Dkt. No. 331, at 4.) Defendants submit that this disputed term appears in
Claims 1, 15, 21, 24, 58, 71, and 81 of the ‘859 Patent, Claims 1 and 18 of the ‘576 Patent,
Claims 1 and 10 of the ‘072 Patent, Claims 1, 7, and 13 of the ‘956 Patent, and Claims 1, 6,
and 11 of the ‘007 Patent. (Dkt. No. 331, at 4.)
(1) The Parties’ Positions
Plaintiff argues that whereas its proposal is supported by the specification and “clarifies
for the jury that the relevant ‘information’ is the ‘content,’ as described by the specification,”
“Defendants’ proposed construction does not identify what ‘information’ the physical integrity
applies to.” (Dkt. No. 304, at 3.)
Defendants argue that “[Plaintiff] attempts to broaden the PTAB’s construction, so that
repositories and trusted systems need only prevent non-trusted systems from accessing ‘content’”
rather than “information.” (Dkt. No. 331, at 4.) Defendants explain that the PTAB used the
word “information” to encompass “data,” “content,” and “digital works.” (Id. (citing id., Ex. 2,
at 10; citing ‘859 Patent at 11:62-12:20).)
Plaintiff replies that Defendants’ proposal is contrary to the PTAB decision, and “a
repository cannot determine whether it is communicating with another trusted repository without
first exchanging at least some preliminary, unprotected information . . . .” (Dkt. No. 345, at 1.)
At the February 6, 2015 hearing, Plaintiff emphasized that the PTAB found that the terms
“content,” “data,” “digital work,” and “information” were used interchangeably. (See Dkt.

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No. 304, Ex. J, 6/26/2014 Final Written Decision (‘576 Patent), at 12; Dkt. No. 331, Ex. 2,
7/1/2014 Final Written Decision (‘859 Patent), at 10.)
(2) Analysis
On one hand, the specification refers to protecting “works.” ‘859 Patent at 12:1-5
(“[T]he repository design protects access to the content of digital works. . . . [R]epositories never
allow non-trusted systems to access the works directly.”) & 11:63-64 (“Physical integrity applies
both to the repositories and to the protected digital works.”). Further, the specification discloses
that unsecured communications may be used as part of a “registration process.” See id.
at 26:30-67 (“registration transaction”).
Also, the PTAB noted that the specification “appears to use” the terms “information” and
“content” “interchangeably.” (Dkt. No. 304, Ex. J, 6/26/2014 Final Written Decision (‘576
Patent),2 at 12 (emphasis added); see Dkt. No. 331, Ex. 2, 7/1/2014 Final Written Decision (‘859
Patent), at 10 (same).)
On the other hand, the PTAB construed “physical integrity” to mean “preventing access
to information by a non-trusted system.” (Dkt. No. 304, Ex. J, 6/26/2014 Final Written Decision
(‘576 Patent), at 12 (emphasis added); see Dkt. No. 331, Ex. 2, 7/1/2014 Final Written Decision
(‘859 Patent), at 10 (same).)
The specification supports such a reading of “physical integrity” by disclosing the
importance of protecting the repository itself:
Physical integrity refers to the integrity of the physical devices themselves.
Physical integrity applies both to the repositories and to the protected digital
works. Thus, the higher security classes of repositories themselves may have
sensors that detect when tampering is attempted on their secure cases. In addition
2

For convenience, the present Memorandum Opinion and Order in some instances uses
parentheticals to identify the patent that is related to a particular exhibit.

17

to protection of the repository itself, the repository design protects access to the
content of digital works. In contrast with the design of conventional magnetic and
optical devices—such as floppy disks, CD-ROMs, and videotapes—repositories
never allow non-trusted systems to access the works directly. A maker of generic
computer systems cannot guarantee that their platform will not be used to make
unauthorized copies. The manufacturer provides generic capabilities for reading
and writing information, and the general nature of the functionality of the general
computing device depends on it. Thus, a copy program can copy arbitrary data.
This copying issue is not limited to general purpose computers. It also arises for
the unauthorized duplication of entertainment “software” such as video and audio
recordings by magnetic recorders. Again, the functionality of the recorders
depends on their ability to copy and they have no means to check whether a copy
is authorized. In contrast, repositories prevent access to the raw data by general
devices and can test explicit rights and conditions before copying or otherwise
granting access. Information is only accessed by protocol between trusted
repositories.
‘859 Patent at 11:62-12:20 (emphasis added).
The Court accordingly hereby construes “physical integrity” to mean “preventing
access to information in a repository by a non-trusted system.”
C. “communications integrity”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“only communicates with other devices that are
able to present proof that they are trusted
systems, for example, by using security
measures such as encryption, exchange of
digital certificates, and nonces”

“only communicates with other devices that are
able to present proof that they are trusted
systems, e.g., by using security measures such
as encryption, exchange of digital certificates,
and nonces”

(Dkt. No. 304, at 1; Dkt. No. 292-2, at 1.)
Defendants submit that “[t]he parties do not differ substantively about the definition of
communications integrity, so the Defendants have not addressed that term in [their response]
brief.” (Dkt. No. 331, at 2 n.2.) At the February 6, 2015 hearing, the parties did not address this
term.
The Court accordingly hereby construes “communications integrity” to mean “only
communicates with other devices that are able to present proof that they are trusted
18

systems, for example, by using security measures such as encryption, exchange of digital
certificates, and nonces.”
D. “behavioral integrity”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“requires software that is to be installed in the
repository to include a digital certificate, in
other words, an assurance that the software
comes from a source known to the repository”

“requiring software to include a digital
certificate in order to be installed in the
repository”

(Dkt. No. 304, at 1; Dkt. No. 331, at 4-5.) Defendants submit that this disputed term appears in
Claims 1, 15, 21, 24, 58, 71, and 81 of the ‘859 Patent, Claims 1 and 18 of the ‘576 Patent,
Claims 1 and 10 of the ‘072 Patent, Claims 1, 7, and 13 of the ‘956 Patent, and Claims 1, 6,
and 11 of the ‘007 Patent. (Dkt. No. 331, at 4-5.)
(1) The Parties’ Positions
Plaintiff argues that its proposed construction is supported by the specification as well as
by the PTAB’s construction and understanding. (Dkt. No. 304, at 3.)
Defendants respond that “[t]he PTAB rejected essentially the same argument” that
Plaintiff has presented here, namely “to redefine the term ‘digital certificate’ to encompass any
‘assurance that the software comes from a source known to the repository.’” (Dkt. No. 331,
at 5.) Defendants argue that “[h]aving survived the IPRs based on [the PTAB’s] construction
[(requiring the use of a digital certificate)], [Plaintiff] now makes a second attempt at eliminating
the digital certificate requirement.” (Id.)
Plaintiff replies that Defendants’ attempt to “limit ‘digital certificate’ . . . to an exemplary
form” “is contrary to the PTAB’s decisions.” (Dkt. No. 345, at 2.)
(2) Analysis
On one hand, the specification discloses:
19

The integrity of the software is generally assured only by knowledge of its source.
Restated, a user will trust software purchased at a reputable computer store but
not trust software obtained off a random (insecure) server on a network.
Behavioral integrity is maintained by requiring that repository software be
certified and be distributed with proof of such certification, i.e. a digital
certificate. The purpose of the certificate is to authenticate that the software has
been tested by an authorized organization, which attests that the software does
what it is supposed to do and that it does not compromise the behavioral integrity
of a repository. If the digital certificate cannot be found in the digital work or the
master repository which generated the certificate is not known to the repository
receiving the software, then the software cannot be installed.
‘859 Patent at 12:36-50 (emphasis added). The PTAB also “credit[ed] the testimony of
[Plaintiff’s] expert, Dr. Goodrich, that ‘a person of ordinary skill in the art [in 1994] would [have
understood] a digital certificate to be an assurance that downloaded software comes from a
reputable source, including a measure of tamper resistance.’” (Dkt. No. 331, Ex. 2, 7/1/2014
Final Written Decision (‘859 Patent), at 26 (square brackets PTAB’s).)
On the other hand, the PTAB construed “behavioral integrity” as “requiring software to
include a digital certificate in order to be installed in the repository.” (Dkt. No. 304, Ex. J,
6/26/2014 Final Written Decision (‘576 Patent), at 13; see Dkt. No. 331, Ex. 2, 7/1/2014 Final
Written Decision (‘859 Patent), at 11 (same).) The PTAB also found:
We do not credit the testimony of the expert witness of [Plaintiff], Dr. Goodrich,
that “a person of ordinary skill in the art of 1994 would [have understood] that the
’859 patent specification refers to the use of digital certificates as only an
exemplary method of preserving the behavioral integrity of a repository.” The
testimony is unexplained and conclusory; it does not account for the various
factors we have considered and discussed above.
(Dkt. No. 331, Ex. 2, 7/1/2014 Final Written Decision (‘859 Patent), at 20 (citation omitted).)
Defendants also object to Plaintiff’s citation of Dr. Goodrich’s statement made in the IPR as
hearsay. (Dkt. No. 331, at 6 n.6 (citing Fed. R. Evid. 801(c)).)
On balance, Plaintiff has failed to justify departing from the PTAB’s construction, which
is entitled to “reasoned deference.” Maurice Mitchell, 2006 WL 1751779, at *4; see TQP, 2014
20

WL 2810016, at *6; see also Teva, 135 S. Ct. at 839-40. Plaintiff’s proposed construction,
which includes additional language that would tend to broaden the scope of the disputed term, is
therefore rejected.
The Court accordingly hereby construes “behavioral integrity” to mean “requiring
software to include a digital certificate in order to be installed in the repository.”
E. “content” and “digital content”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“any work that has been reduced to a digital
representation”

“the digital information (i.e., raw bits)
representing a digital work”

(Dkt. No. 304, at 4; Dkt. No. 331, at 13-14.) The parties submit that these disputed terms appear
in Claims 1 and 58 of the ‘859 Patent, Claims 1, 4, 5, 7, 10, 11, 13, 16, and 17 of the ‘956 Patent,
Claims 1, 3, 4, 6, 8, 9, 11, and 13 of the ‘007 Patent, Claims 1, 4, 7, 18, 21, 24, and 34 of the
‘576 Patent, and Claims 1, 9, and 10 of the ‘160 Patent. (Dkt. No. 292-1, at 2; Dkt. No. 331,
at 13.)
(1) The Parties’ Positions
Plaintiff argues that Defendants are attempting to “bootstrap ‘digital work’ and their
corresponding interpretation into claims that do not contain the term.” (Dkt. No. 304, at 4.)
Plaintiff urges that “[t]he final sentence of the ‘digital work’ glossary definition injects an
optional feature of the preferred embodiment, and represents a departure from the plain and
ordinary meaning of ‘content.’” (Dkt. No. 304, at 5.) “[T]he patentee chose to use ‘content’
rather than ‘digital work’ in the claims,” Plaintiff emphasizes. (Id., at 6.) Finally, Plaintiff
submits that “in distinguishing over prior art in a related application, the patentee cited only the
first two sentences from the glossary entry as the definition for ‘digital work.’” (Id.)

21

Defendants respond that their proposals for “content” and “digital work” are consistent
with one another because, as defined in the specification, “‘digital work’ and ‘content’ are
closely related, interdependent terms, with content referring to the ‘digital information (i.e. raw
bits)’ that make up a digital work, and digital work referring to encapsulating that ‘digital
information.’” (Dkt. No. 331, at 14.)
Plaintiff replies that “[t]here is no basis to rewrite the claims as Defendants propose.”
(Dkt. No. 345, at 6.)
(2) Analysis
The parties have not submitted any previous construction, by the PTAB or otherwise, for
these disputed terms.
The specification sets forth two definitions for “content.” First, the specification states:
“Herein the terms ‘digital work,’ ‘work’ and ‘content’ refer to any work that has been reduced to
a digital representation.” ‘859 Patent at 5:64-66. Second, the “Glossary” section of the
specification states:
Content:
The digital information (i.e. raw bits) representing a digital work.
Id. at 49:52-54.
The term “digital work,” in turn, is defined in the “Glossary” as follows:
Digital Work (Work):
Any encapsulated digital information. Such digital information may represent
music, a magazine or book, or a multimedia composition. Usage rights and fees
are attached to the digital work.
Id. at 50:8-12. Fees, however, are optional. Id. at 18:19-29 (“In the currently preferred
embodiment . . . no fee is required.”).

22

The definition of “digital work” is probative, particularly given that the first of the abovequoted definitions for “content” purports to define not only “content” but also “digital work.” In
light of this, the “Glossary” definition proposed by Defendants is more appropriate.
The Court accordingly hereby construes “content” and “digital content” to mean “the
digital information (i.e., raw bits) representing a digital work.”
F. “rights,” “usage rights,” and “usage rights information”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“an indication of the manner in which a [digital
work / digital content / content / a digital
document] may be used or distributed as well
as any conditions on which use or distribution
is premised”

“statements in a language for defining the
manner in which a digital work may be used or
distributed, as well as any conditions on which
use or distribution is premised. Usage rights
must be permanently attached to the digital
work”3

(Dkt. No. 304, at 4 (square brackets Plaintiff’s); Dkt. No. 331, at 7.) The parties submit that
these disputed terms appear in Claims 1 and 58 of the ‘859 Patent, Claims 1, 15, 18, and 32 of
the ‘576 Patent, Claims 1, 7, and 13 of the ‘956 Patent, Claims 1, 6, and 11 of the ‘007 Patent,
and Claims 1, 8, 10, and 16 of the ‘072 Patent. (Dkt. No. 292-1, at 8; Dkt. No. 331, at 7.)
(1) “language”
(a) The Parties’ Positions
Plaintiff submits:
In the preferred embodiment, the usage rights are expressed in a usage rights
language, but are not themselves a language. Incongruously, the glossary entry
for “usage rights” recites “a language for defining the manner in which a digital
work may be used or distributed, as well as any conditions on which use or
distribution is premised.” The glossary incorrectly purports to define “usage

3

Defendants previously proposed: “A language for defining the manner in which a digital work
may be used or distributed, as well as any conditions on which use or distribution is premised.
Rights must be attached to the digital work.” (Dkt. No. 292-2, at 9.)

23

rights” while actually defining “usage rights language.” . . . This error in the
glossary definition was corrected in the ’160 patent.
(Dkt. No. 304, at 8-9 (citing ‘859 Patent at 16:63-66 & 51:7-10; citing ‘160 Patent at 48:24-26).)
Defendants respond that “[i]n the twenty years of multiple of [sic] patent applications
prosecuted since it filed the parent application, [Plaintiff] has never suggested that the ‘usage
rights’ definition appearing across [the] Stefik patent family contains an error or ambiguity.”
(Dkt. No. 331, at 8.)
Plaintiff replies: “[i]f interpretable code expresses a usage right and thus qualifies as a
‘statement in a language,’ then Defendants’ proposal adds nothing. The claims already require
computer implementation, and all data recorded, read, or communicated by a computer is
encoded. On the other hand, if a code or number interpreted to express a usage right does not
meet Defendants’ ‘statement in a language’ limitation, then Defendants’ construction excludes a
preferred embodiment.” (Dkt. No. 345, at 6.)
In sur-reply, Defendants reply that the disclosure of a “right code” (quoted below)
“merely explains that each right will have a designated right code ‘assigned to’ correspond to it
in a descriptor block, not that this code itself constitutes the right.” (Dkt. No. 353, at 3.)
(b) Analysis
The “Glossary” section of the specification of the Stefik Patents (except for the ‘160
Patent) states:
Usage Rights:
A language for defining the manner in which a digital work may be used or
distributed, as well as any conditions on which use or distribution is premised.
‘859 Patent at 51:7-10. The specification of one of the Stefik Patents, the ‘160 Patent, includes a
“Glossary” section that defines “usage rights” as an “indication” rather than as a language:

24

Usage Rights—An indication of the manner of use by which a digital work may
be used or distributed, as well as any conditions on which manner of use is
premised.
‘160 Patent at 48:24-26. As to this disclosure of “indication,” the specification also discloses
that “[a] right 1450 [in Fig. 14] has a label (e.g. COPY or PRINT) which indicate[s] the use or
distribution privileges that are embodied by the right.” ‘859 Patent at 17:25-28 (emphasis
added).
The specification includes disclosures of usage rights as being in “a language.” See id.
at 16:63-25:35 & 51:4-6; see also id. at Fig. 15. In particular, the specification discloses:
The present invention uses statements in a high level “usage rights language” to
define rights associated with digital works and their parts. Usage rights
statements are interpreted by repositories and are used to determine what
transactions can be successfully carried out for a digital work and also to
determine parameters for those transactions. For example, sentences in the
language determine whether a given digital work can be copied, when and how it
can be used, and what fees (if any) are to be charged for that use. Once the usage
rights statements are generated, they are encoded in a suitable form for accessing
during the processing of transactions.
Defining usage rights in terms of a language in combination with the hierarchical
representation of a digital work enables the support of a wide variety of
distribution and fee schemes.
Id. at 16:63-17:12 (emphasis added).
The specification also discloses that a usage right can be specified by merely a “right
code.” ‘859 Patent at 9:47-57 (“The right code field 1001 will contain a unique code assigned to
a right. . . . The rights as stored in the rights portion 304 may typically be in numerical order
based on the right code.”).
These disclosures are consistent with reading the definition in the “Glossary” section of
the specification as indicating that a “usage right” can be either expressed in a language or with a
code. Further, the specification of one of the Stefik Patents, the ‘160 Patent, includes a

25

“Glossary” section that defines “usage rights” as an “indication” rather than in terms of a
language, as set forth above. ‘160 Patent at 48:24-26; see Aventis Pharm. Inc. v. Amino
Chemicals Ltd., 715 F.3d 1363, 1380 (Fed. Cir. 2013) (“[W]e presume, unless otherwise
compelled, that the same claim term in the same patent or related patents carries the same
construed meaning.”) (quoting Omega Eng’g v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir.
2003)).
Defendants’ proposal of requiring a “language” is therefore hereby expressly rejected.
(2) “permanently attached”
(a) The Parties’ Positions
Plaintiff argues that Defendants import a “permanently attached” limitation from a
preferred embodiment. (Dkt. No. 304, at 4.) Plaintiff submits that “the agreed portion of the
parties’ constructions for the rights terms already encompasses the ‘attachment’ contemplated by
the patent.” (Id., at 7.) Plaintiff also argues, for example, that “the content associated with the
right may exist both before and after the term or life of the right.” (Id., at 8.)
Defendants respond by citing “the unequivocal statement in the specification that, ‘A key
feature of the present invention is that usage rights are permanently ‘attached’ to the digital
work.’ [‘859 Patent at] 6:11-12.” (Dkt. No. 331, at 8 (emphasis omitted).) Defendants also
submit: “the ‘description tree’ is different and distinct from the actual ‘usage rights’ for a digital
work (which are merely ‘described’ by the description tree), and the fact that the ‘description
tree’ file can be stored separately from the ‘contents’ file of a work does not, and cannot, negate
the patents’ explicit requirement that ‘usage rights are permanently ‘attached’ to the digital
work.’” (Id., at 10.) Finally, Defendants argue that “[Plaintiff’s] efforts to eliminate the
‘attachment’ of usage rights teachings, and, instead, to inject ‘associated with’ teachings into the

26

‘160 patent specification, demonstrate that [Plaintiff], itself, recognizes the difference between
‘attachment’ and mere ‘association’ of usage rights and content, and that [Plaintiff] did not view
the ‘859, ‘576, ‘072, ‘956 and ‘007 patents as teaching mere ‘association.’” (Id., at 11.)
Plaintiff replies that Defendants’ proposal “modifies the glossary definition of ‘usage
rights’ and misinterprets the specification’s teachings concerning how usage rights are
permanently ‘attached.’” (Dkt. No. 345, at 2.) Plaintiff submits that “‘attachment’ is a metaphor
to explain that rights should be associated with content, while ‘permanent’ attachment means that
that association persists for the term or life of the right.” (Id., at 2-3.) Plaintiff concludes that
“Defendants’ attempt to import the undefined requirement of permanent ‘attachment’ into the
claims could only mislead a jury into believing that usage rights must physically be a part of the
content file(s) that comprise a digital work.” (Id., at 3.) Finally, Plaintiff argues that the
“description tree” disclosure cited by Defendants does not establish that “the description tree
structure describes a single location of content and usage rights (akin to a table of contents).”
(Id., at 5.)
In sur-reply, Defendants argue that “[g]iven that ‘attachment’ is a specific type of
association, it comes as no surprise that the Stefik patents occasionally use the phrase ‘associated
with.” (Dkt. No. 353, at 4.) Defendants also argue that “[d]escription trees are not the same as
usage rights, which [Plaintiff] itself recognized by claiming the two as separate and distinct
elements in the ‘160 patent.” (Id., at 5 (citing ‘160 Patent at 48:31-51 [Claim 1]).)
At the February 6, 2015 hearing, Plaintiff urged that Defendants’ proposal of
“permanent” attachment must be rejected because a usage right is associated with a work only
for the life of the usage right. In other words, Plaintiff argued, the life of the usage right may be

27

shorter than the life of the work. Defendants responded that the specification consistently
discloses that works are inseparable from usage rights.
(b) Analysis
Claim 1 of the ‘859 Patent, for example, recites “usage rights associated with the
content.”
The specification discloses, however, that “[a] key feature of the present invention is that
usage rights are permanently ‘attached’ to the digital work.” ‘859 Patent at 6:11-12; see id.
at 3:50-52 (“It would be desirable to have a distribution system where the means for billing is
always transported with the work”) & 6:25-32 (“the present invention never separates the fee
descriptions from the work”). Similarly, the specification also discloses:
Attaching Usage Rights to a Digital Work
It is fundamental to the present invention that the usage rights are treated as part
of the digital work. As the digital work is distributed, the scope of the granted
usage rights will remain the same or may be narrowed. For example, when a
digital work is transferred from a document server to a repository, the usage rights
may include the right to loan a copy for a predetermined period of time (called the
original rights). When the repository loans out a copy of the digital work, the
usage rights in the loaner copy (called the next set of rights) could be set to
prohibit any further rights to loan out the copy. The basic idea is that one cannot
grant more rights than they have.
The attachment of usage rights into a digital work may occur in a variety of ways.
If the usage rights will be the same for an entire digital work, they could be
attached when the digital work is processed for deposit in the digital work server.
In the case of a digital work having different usage rights for the various
components, this can be done as the digital work is being created. An authoring
tool or digital work assembling tool could be utilized which provides for an
automated process of attaching the usage rights.
Id. at 10:44-65 (emphasis added); see id. at 6:14-16 (“[T]he usage rights and any associated fees
assigned by a creator and subsequent distributor will always remain with a digital work.”); see
also id. at 6:22-23 (“[t]he combination of attached usage rights and repositories enable distinct

28

advantages over prior systems”) & 18:13-17 (“The set of rights attached to a digital work define
how that digital work may be transferred, used, performed or played. A set of rights will attach
to the entire digital work and in the case of compound digital works, each of the components of
the digital work.”).
Further, the “Glossary” section of the specification defines “digital work” and “composite
digital work” as requiring that usage rights are “attached”:
Digital Work (Work):
Any encapsulated digital information. Such digital information may represent
music, a magazine or book, or a multimedia composition. Usage rights and fees
are attached to the digital work.
Id. at 50:8-12 (emphasis added).
Composite Digital Work:
A digital work comprised of distinguishable parts. Each of the distinguishable
parts is itself a digital work which have usage rights attached.
Id. at 49:48-51 (emphasis added).
The specification also appears to suggest that usage rights and their associated content
can be stored in separate “descriptor” and “contents” files, respectively. ‘859 Patent at 8:46-54
(“The description tree file makes it possible to examine the rights and fees for a work without
reference to the content of the digital work.”); see id. at Fig. 12 (illustrating “Descriptor Storage
1203” distinct from “Content Storage 1204”). The storage can even be on separate devices:
The description tree storage 1203 and content storage 1204 need not be of the
same type of storage medium, nor are they necessarily on the same physical
device. So for example, the descriptor storage 1203 may be stored on a solid state
storage (for rapid retrieval of the description tree information), while the content
storage 1204 may be on a high capacity storage such as an optical disk.

29

Id. at 13:41-47; see also id. at 9:10-25 (regarding “rights portion 704” of description tree,
illustrated in Figure 7). Further, the specification discloses that “usage rights” can be “associated
with” content. See ’859 Patent at 3:53-60, 6:52-53, 16:64-66, 18:39-41, 30:8-9 & 30:13-16.
On the whole, however, the specification refers to a “description tree” as containing
descriptions of usage rights rather than usage rights themselves:
Description Tree:
A structure which describes the location of content and the usage rights and usage
fees for a digital work. A description tree is comprised of description blocks.
Each description block corresponds to a digital work or to an interest (typically a
revenue bearing interest) in a digital work.
See ‘859 Patent at 50:1-7 (appearing in “Glossary” section of the specification; emphasis added).
Defendants’ proposal of “attached” is thus adequately supported by the explicit glossary
definitions as well as the above-quoted discussions of “the present invention.” See Intellicall,
952 F.2d at 1388; see also Regents of the Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 936
(Fed. Cir. 2013) (“When a patent . . . describes the features of the ‘present invention’ as a whole,
this description limits the scope of the invention.”) (quoting Verizon Servs. Corp. v. Vonage
Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007)); Honeywell Int’l, Inc. v. ITT Indus., Inc.,
452 F.3d 1312, 1318 (Fed. Cir. 2006) (construing term in light of description of “the present
invention”).
As for the prosecution history, during prosecution of the ‘072 Patent the patentee
distinguished a prior art reference in part on the basis that the prior art reference at issue required
the alleged usage rights to be stored in the same file, and necessarily the same device, as the
alleged content:
Independent claim 26, recites, in relevant part, . . . the at least one of the at least
one usage rights is stored separately from the digital document.

30

In contrast, as is shown in the diagram below, Perritt is directed to a digital library
system, wherein permissions header (PH) is attached to a work (W) . . . .
(Dkt. No. 304, Ex. M, 5/23/2008 Amendment After Final (‘072 Patent) at 8 (emphasis
modified).)
[C]ontrary to present independent claims 1, 14 and 26, since the permissions
header and the work of Perritt are attached to one another, the permissions header
must be stored in the same file as the work.
(Id., Ex. N, 10/15/2008 Response to Office Action (‘072 Patent) at 11-12.)
As to extrinsic evidence, Plaintiff submits the opinion of its expert, Dr. Goodrich, that the
Stefik Patents teach that “usage rights” and their associated “digital works” exist independently.
(See Dkt. No. 304, 11/25/2014 Goodrich Decl. at ¶¶ 46-51).
Defendants submit an article authored by one of the named inventors, Mark Stefik,
stating as follows under the heading “Attached Usage Rights”:
We start with an analogy. When we go to a store to buy a shirt, there are various
tags attached to it. One kind of tag is a price tag. If we want to buy the shirt, we
must pay the amount on the tag. Another tag gives cleaning instructions: for
example, wash by hand in cold water or dry clean only. Still another tag might
say something about the style of the shirt or the history of the shirt company.
This is roughly the idea of usage rights on digital works. Digital works come with
tags on them. * * * [T]he tags are not removable.
(Dkt. No. 331, Ex. 5, Mark Stefik, Letting Loose the Light: Igniting Commerce in Electronic
Publication 14 (1996) (emphasis added).)
Defendants also cite prosecution history of a European Patent Office application that
names Mark Stefik as inventor:
A skilled person readily knows several ways of how to associate two digital
objects (such as a rights object and a content object), for instance by physically
attaching both, inserting a unique identifier for one object in the header of the
other object, specifying in the header of the first object address or access
information for the second object, providing a look-up table linking both objects

31

together, or storing both objects in different files that have the same unique file
name.
(Dkt. No. 353, Ex. 2, 10/25/2004 Response, at 3.)
Further, Plaintiff submits that in Smartflash LLC v. Apple Inc., et al., No. 6:13-cv-447
(E.D. Tex.), Defendant Apple Inc. has described another patent (which also names Mark Stefik
as an inventor) as teaching separately stored content and rights information. (Dkt. No. 345,
Ex. AB, at 3.)
Finally, Plaintiff has noted that the prosecuting attorney for the ‘160 Patent has testified
that the changes made to the specification of the ‘160 Patent were intended to remove all
possible doubt that “attached” and “associated” mean the same thing. (Dkt. No. 345, Ex. AC,
Kaufman Dep. at 171:25-172:14 (“The Stefik application used the terms ‘attached’ and
‘associated’ interchangeably. And as I’ve stated earlier, we think the correct construction was
that neither of those terms requires a direct physical coupling. But to a layman that caused some
confusion, and we decided to make that consistent. . . . That was our intent.”).
Such prosecutor testimony, however, is of minimal if any weight during claim
construction proceedings. See Markman, 52 F.3d at 983 (“[T]he testimony of Markman and his
patent attorney on the proper construction of the claims is entitled to no deference.”), aff’d, 517
U.S. 370 (1996); see also Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d
1337, 1346 (Fed. Cir. 2008) (finding that a letter from prosecuting attorney to inventor, reporting
the results of an examiner interview, was “of no value” because the letter was not part of the
prosecution history and did not “help educate the court regarding the field of the invention . . .
[or] help the court determine what a person of ordinary skill in the art would understand claim
terms to mean”) (quoting Phillips, 415 F.3d at 1319).

32

On balance, nothing in the prosecution history or the extrinsic evidence cited by the
parties warrants departing from the lexicography and descriptions of the invention in the
specification, set forth above, which support Defendants’ proposal of requiring that usage rights
are “attached” to digital works.
Defendants’ proposal of permanent attachment, however, lacks sufficient support in the
intrinsic evidence. Instead, for example, the specification contemplates “mak[ing] a copy of the
digital work in a place outside of the protection of usage rights.” ‘859 Patent at 35:64-36:3.
(3) Construction
Based on the foregoing analysis of Defendants’ proposals of “language” and of
“permanently attached,” the Court hereby construes “rights,” “usage rights,” and “usage rights
information” to mean “indications that are attached, or treated as attached, to [a digital
work / digital content / content / a digital document] and that indicate the manner in which
the [digital work / digital content / content / digital document] may be used or distributed
as well as any conditions on which use or distribution is premised.”
G. “usage rights” (‘160 Patent)
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“an indication of the manner in which a [digital
work / digital content / content / a digital
document] may be used or distributed as well
as any conditions on which use or distribution
is premised”4

“an indication of the manner of use by which a
digital work may be used or distributed, as well
as any conditions on which manner of use is
premised”

(Dkt. No. 304, at 9; Dkt. No. 331, at 11; Dkt. No. 366, Ex. B, at 15.) Defendants submit that this
disputed term appears in Claims 1, 2, 3, 9, and 10 of the ‘160 Patent. (Dkt. No. 331, at 11.)
4

Plaintiff previously proposed: “Same as in Stefik Patents, i.e., ‘an indication of the manner in
which a [digital work / digital content / content / a digital document] may be used or distributed
as well as any conditions on which use or distribution is premised.’” (Dkt. No. 292-1, at 12.)

33

(1) The Parties’ Positions
Plaintiff argues that “[i]n their proposal, Defendants repeat features already in the claims
as well as optional features (e.g., conditions) in a way that differs in form but not in substance
from their proposal for the other patents. Defendants’ form over substance approach would only
confuse the jury.” (Dkt. No. 304, at 10.)
Defendants respond that the ‘160 Patent is different than the other Stefik Patents because
“the ‘160 patent undeniably changed the glossary definition and corresponding teachings of the
specification.” (Dkt. No. 331, at 12.) In particular, Defendants urge that “[b]ecause the ’160
specification eliminated all references to, and requirement of, ‘attachment,’ Defendants propose
that the Court adopt a construction of ‘usage rights’ for the ‘160 patent (and only that patent) that
does not contain the ‘permanently attached’ requirement.”
Plaintiff replies that having a separate construction for the ‘160 patent “would result in
unnecessary jury confusion.” (Dkt. No. 345, at 17.)
Generally, “we presume, unless otherwise compelled, that the same claim term in the
same patent or related patents carries the same construed meaning.” See Aventis, 715 F.3d
at 1380 (quoting Omega Eng’g, 334 F.3d at 1334).
(2) Analysis
Here, however, the ‘160 Patent does not contain the same definitive statements cited
above as to the other Stefik Patents. The Court therefore does not include an “attached”
requirement in the construction of “usage rights” in the ‘160 Patent.
The Court accordingly hereby construes “usage rights” in the ‘160 Patent to mean “an
indication of the manner of use by which a digital work may be used or distributed, as well
as any conditions on which manner of use is premised.”

34

H. “digital work”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

‘859 Patent, ‘576 Patent, ‘072 Patent,
‘956 Patent, and ‘007 Patent:
No construction

‘859 Patent, ‘576 Patent, ‘072 Patent,
‘956 Patent, and ‘007 Patent:
“Any encapsulated digital information.
Such digital information may represent music,
a magazine or book, or a multimedia
composition. Usage rights and fees are
attached to the digital work.”

‘160 Patent:
No construction necessary. Alternatively:
“any work that has been reduced to a
digital representation”

‘160 Patent:
“Digital content with any associated usage
rights. Such digital content may represent
music, a magazine or book, or a multimedia
composition.”
(Dkt. No. 304, at 9; Dkt. No. 331, at 12-13; Dkt. No. 366, Ex. B, at 15.) The parties submit that
this disputed term appears in Claims 1, 2, 3, 6, 9, and 10 of the ‘160 Patent. (Dkt. No. 292-1,
at 2; Dkt. No. 331, at 13.)
(1) The Parties’ Positions
Plaintiff argues “[t]he claims already recite the contents and structure of the claimed
digital work, so no separate construction of that term is necessary.” (Dkt. No. 304, at 9.)
Defendants argue: “Although the claims of the ‘859, ‘576, ‘956, ‘007, and ‘072 patents
do not explicitly recite the term ‘digital work,’ the glossary defines other terms recited in the
claims, such as ‘content,’ ‘description structure,’ ‘requester mode,’ ‘server mode,’ and ‘usage
rights,’ in terms of their relationship to a ‘digital work.’ So the jury will need to understand this
term.” (Dkt. No. 331, at 12-13.)
As to the ‘160 Patent, Defendants argue: “[Plaintiff] asks the Court to ignore the glossary
definition and offers an alternative construction cherry-picked from the specification. Again, the
Court should adopt the express definitions provided in the glossary.” (Dkt. No. 331, at 13.)

35

Plaintiff replies that the term “digital work” appears in the claims of only the ‘160 Patent.
(Dkt. No. 345, at 6.)
(2) Analysis
The specification sets forth two definitions for “digital work.” First, the specification
states: “Herein the terms ‘digital work,’ ‘work’ and ‘content’ refer to any work that has been
reduced to a digital representation.” ‘859 Patent at 5:64-66.
Second, the “Glossary” section of the specification defines “digital work” and “composite
digital work” as requiring that usage rights are “attached”:
Digital Work (Work):
Any encapsulated digital information. Such digital information may represent
music, a magazine or book, or a multimedia composition. Usage rights and fees
are attached to the digital work.
Id. at 50:11-12.
Composite Digital Work:
A digital work comprised of distinguishable parts. Each of the distinguishable
parts is itself a digital work which have usage rights attached.
Id. at 49:49-51 (emphasis added). Also of note, the specification discloses that a “ticket” can be
used for “one-time usage rights,” and “[t]ickets are digital works.” ‘859 Patent at 22:20; ‘160
Patent at 21:42.
But although the specifications present these definitions, the term “digital work” appears
in the claims of only the ‘160 Patent. The meaning of “digital work” is addressed by the claim
language itself (emphasis added):
1. A computer readable medium having embedded thereon a digital work adapted
to be distributed within a system for controlling use of digital works, said digital
work comprising:
a digital content portion that is renderable by a rendering device;

36

a usage rights portion associated with said digital content portion and
comprising one or more computer readable instructions configured to permit or
prohibit said rendering device to render said digital content portion, said usage
rights portion being expressed as statements from a usage rights language having
a grammar defining a valid sequence of symbols, and specifying a manner of use
relating to one or more purposes for which the digital work can be used by an
authorized party; and
a description structure comprising a plurality of description blocks, each
of said description blocks comprising address information for at least one part of
said digital work, and a usage rights part for associating one or more usage rights
portions.
The Court therefore hereby expressly rejects the parties’ proposed constructions. No
further construction is necessary. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568
(Fed. Cir. 1997) (“Claim construction is a matter of resolution of disputed meanings and
technical scope, to clarify and when necessary to explain what the patentee covered by the
claims, for use in the determination of infringement. It is not an obligatory exercise in
redundancy.”); see also O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351,
1362 (Fed. Cir. 2008) (“[D]istrict courts are not (and should not be) required to construe every
limitation present in a patent’s asserted claims.”); Finjan, Inc. v. Secure Computing Corp., 626
F.3d 1197, 1207 (Fed. Cir. 2010) (“Unlike O2 Micro, where the court failed to resolve the
parties’ quarrel, the district court rejected Defendants’ construction.”).
The Court accordingly hereby construes “digital work” to have its plain meaning.
I. “digital document” and “document”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“any work that has been reduced to a digital
representation”

“a type of digital work that is written in or
viewable as text, for example a book, magazine
article, or a message”

(Dkt. No. 304, at 10; Dkt. No. 331, at 15.) The parties submit that this disputed term appears in
Claims 1, 8, 10, and 16 of the ‘072 Patent. (Dkt. No. 292-1, at 1; Dkt. No. 331, at 15.)

37

(1) The Parties’ Positions
Plaintiff argues claim differentiation as to Claims 3, 11, and 19 of the ‘072 Patent. (Dkt.
No. 304, at 10.) Plaintiff also notes that the specification refers to “documents” as including
“movies” as well as content that can be “execut[ed].” (Id.)
Defendants respond: “the specification defines the terms ‘digital work’ and ‘digital
content’ broadly, to encompass not only documents (such as magazines and books), but also
video, audio and other material. In using the term ‘digital document,’ the patentees intended to
refer not to any form of digital content or digital work, but only to documents.” (Dkt. No. 331,
at 16.)
Plaintiff replies that “Defendants fail to rebut [Plaintiff’s] showing that the Stefik patents
contemplated using a document repository for movies, software, and other forms of content, not
just written works.” (Dkt. No. 345, at 7.)
(2) Analysis
Claims 1 and 3 of the ‘072 Patent are representative and recite (emphasis added):
1. A method for securely rendering digital documents, comprising:
retrieving, by a document platform, a digital document and at least one
usage right associated with the digital document from a document repository, the
at least one usage right specifying a manner of use indicating the manner in which
the digital document can be rendered;
storing the digital document and the at least one usage right in separate
files in the document platform;
determining, by the document platform, whether the digital document may
be rendered based on the at least one usage right; and
if the at least one usage right allows the digital document to be rendered
on the document platform, rendering the digital document by the document
platform.
***
3. The method as recited in claim 1, wherein at least a portion of the digital
document is a software program.

38

Because dependent Claim 3 limits the “digital document” to being “a software program,”
which presumably is much broader than “text,” Claim 3 weighs against Defendants’ proposal
that the term “digital document” is limited to text. See Phillips, 415 F.3d at 1315 (“[T]he
presence of a dependent claim that adds a particular limitation gives rise to a presumption that
the limitation in question is not present in the independent claim.”); see also Liebel-Flarsheim
Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004) (“[W]here the limitation that is sought to
be ‘read into’ an independent claim already appears in a dependent claim, the doctrine of claim
differentiation is at its strongest.”); Wenger Mfg., Inc. v. Coating Mach. Sys., Inc., 239 F.3d
1225, 1233 (Fed. Cir. 2001) (“Claim differentiation, while often argued to be controlling when it
does not apply, is clearly applicable when there is a dispute over whether a limitation found in a
dependent claim should be read into an independent claim, and that limitation is the only
meaningful difference between the two claims.”).
Turning to the specification, on one hand the specification discloses that a “DocumentDescr[iption]” can be a “string containing various identifying information about a document,”
“such as a publisher name, author name, ISBN number, and so on.” ‘859 Patent at 10:17-20.
On the other hand, the specification uses the term “document” in contexts other than text.
See ‘072 Patent at 14:43-54 (referring to security levels of “document repositories” shortly after
noting the importance of security for “some digital works such as a digital copy of a first run
movie”) & 26:25-27 (“document playback platform (e.g., for executing or viewing)”).
On balance, nothing in the intrinsic evidence warrants reading the seemingly generic term
“document” as being limited to text. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d
1362, 1367 (Fed. Cir. 2012) (“The patentee is free to choose a broad term and expect to obtain

39

the full scope of its plain and ordinary meaning unless the patentee explicitly redefines the term
or disavows its full scope.”).
Defendants’ proposed construction is therefore hereby expressly rejected. In particular,
Defendants have failed to demonstrate that the disputed terms cannot encompass content beyond
merely text, such as audio, video, or software.
No further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2
Micro, 521 F.3d at 1362; Finjan, 626 F.3d at 1207.
The Court accordingly hereby construes “digital document” and “document” to have
their plain meaning.
J. “requester mode of operation” and “server mode of operation”
“requester mode of operation”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary in view of language
already in the claims

“a mode of a repository where it is requesting
access to a digital work”

“server mode of operation”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary in view of language
already in the claims

“a mode of a repository where it is processing
an incoming request to access the digital work”

(Dkt. No. 304, at 11; Dkt. No. 331, at 14.) The parties submit that these disputed terms appear in
Claims 1 and 58 of the ‘859 Patent. (Dkt. No. 292-1, at 9; Dkt. No. 331, at 14.)
(1) The Parties’ Positions
Plaintiff argues that Defendants “wish to insert their construction for ‘digital work’ into
claims not already reciting that term.” (Dkt. No. 304, at 11.) Further, Plaintiff submits, “[t]he
40

asserted claims of the ‘859 patent already recite the features of both the ‘server mode of
operation’ and the ‘requester mode of operation’ with greater detail than is supplied by
Defendants’ proposed constructions.” (Id.)
Defendants respond that Plaintiff “offers no legitimate reason to reject or modify the
decisions of the patentees in creating these glossary definitions.” (Dkt. No. 331, at 14.)
Plaintiff replies: “The claims already positively recite that the requester and server modes
of operation apply to ‘digital content.’ Thus, Defendants’ proposed construction would add
confusion by having the same claim use two different terms, ‘digital content’ and ‘digital work,’
to reference the same thing.” (Dkt. No. 345, at 7.)
At the February 6, 2015 hearing, the parties did not address these disputed terms.
(2) Analysis
The “Glossary” section of the specification states:
Requester Mode:
A mode of repository where it is requesting access to a digital work.
***
Server Mode:
A mode of a repository where it is processing an incoming request to access a
digital work.
‘859 Patent at 50:53-62.
Claims 1 and 58 of the ‘859 Patent recite:
1. A rendering system adapted for use in a distributed system for managing use of
content, said rendering system being operative to rendering [sic] content in
accordance with usage rights associated with the content, said rendering system
comprising:
a rendering device configured to render the content; and
a distributed repository coupled to said rendering device and including a
requester mode of operation and server mode of operation,
41

wherein the server mode of operation is operative to enforce usage rights
associated with the content and permit the rendering device to render the content
in accordance with a manner of use specified by the usage rights,
the requester mode of operation is operative to request access to content
from another distributed repository, and
said distributed repository is operative to receive a request to render the
content and permit the content to be rendered only if a manner of use specified in
the request corresponds to a manner of use specified in the usage rights.
***
58. A computer readable medium including one or more computer readable
instructions embedded therein for use in a distributed system for managing use of
content, and operative to render content in accordance with usage rights
associated with the content, said computer readable instructions configured to
cause one or more computer processors to perform the steps of:
configuring a rendering device to render the content;
configuring a distributed repository coupled to said rendering device to
include a requester mode of operation and server mode of operation;
enforcing usage rights associated with the content and permitting the
rendering device to render the content in accordance with a manner of use
specified by the usage rights, when in the server mode of operation;
requesting access to content from another distributed repository, when in
the requester mode of operation; and
receiving by said distributed repository a request to render the content and
permitting the content to be rendered only if a manner of use specified in the
request corresponds to a manner of use specified in the usage rights.
On balance, the surrounding claim language addresses the meaning of the disputed terms
such that no construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro,
521 F.3d at 1362. Although the specification contains a “Glossary” section that defines
“requester mode” and “server mode,” the explicit claim language overrides the specification in
this regard. See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 977 (Fed. Cir. 2014) (“In
claim construction, this court gives primacy to the language of the claims, followed by the
specification.”).
The Court accordingly hereby construes “requester mode of operation” and “server
mode of operation” to have their plain meaning.

42

K. “manner of use”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“a way in which [a digital work / digital
content / content / a digital document] may be
used”

“a defined way of using or distributing a digital
work (for example, PLAY, COPY, or PRINT),
as distinct from conditions which must be
satisfied before that way of using or
distributing the digital work is allowed”

(Dkt. No. 304, at 12 (square brackets Plaintiff’s); Dkt. No. 331, at 16.) The parties submit that
this disputed term appears in Claims 1, 19, 20, 58, 75, and 76 of the ‘859 Patent, Claims 1 and 3
of the ‘160 Patent, and Claims 1 and 10 of the ‘072 Patent. (Dkt. No. 292-1, at 3; Dkt. No. 331,
at 16.)
(1) The Parties’ Positions
Plaintiff argues that “[t]he specification teaches that conditions can be included in a
‘manner of use’—not that they are distinct.” (Dkt. No. 304, at 12.) “Further,” Plaintiff argues,
“Defendants’ construction is improper because it seeks to import Defendants’ construction of the
term ‘digital work’ into claims that do not include this term.” (Id.)
Defendants argue that “Defendants’ proposed construction preserves th[e] distinction
between the two categories of information that can be conveyed by usage rights,” namely
“(1) the manner in which a digital work may be used or distributed and (2) the conditions, if any,
on which use or distribution is premised.” (Dkt. No. 331, at 16.)
Plaintiff replies that Defendants’ proposal “is made out of whole cloth” and is
inconsistent with disclosures showing that “if and when they are defined, conditions are a part of
the ‘manner of use.’” (Dkt. No. 345, at 8.)
In sur-reply, Defendants reiterate that “[t]he patents describe ‘manner of use’ (e.g., play,
copy, or print) as separate and distinct from conditions that must be satisfied prior to use (e.g.,

43

copy count, fees, or time), not as one common category as [Plaintiff] argues.” (Dkt. No. 353,
at 5 (discussing Figures 14 and 15 of the Stefik Patents).) Finally, Defendants cite Claim 23 of
the ‘859 Patent. (Dkt. No. 353, at 5.)
At the February 6, 2015 hearing, Plaintiff argued that the line between manners of use
and conditions of use is blurry, so to speak, because the patents-in-suit do not clearly distinguish
them from one another. Defendants responded that the distinction is clear and should be set forth
in the Court’s construction because Plaintiff may later attempt to argue that a manner of use can
be expressed as merely a condition.
(2) Analysis
Claim 23 of the ‘859 Patent recites:
23. A rendering system as recited in claim 1, wherein the usage rights include at
least one condition that must be satisfied to exercise the manner of use, and
wherein the system further comprises means for communicating with an
authorization repository for authorizing a condition.
This distinct, separate recital of a “condition” and a “manner of use” weighs against Plaintiff’s
argument that a “manner of use” can include a condition. See Phillips, 415 F.3d at 1314 (“Other
claims of the patent in question, both asserted and unasserted, can also be valuable sources of
enlightenment as to the meaning of a claim term.”).
The specification also discloses that a “grammar element” can provide a condition. Id.
at 20:15-16 (“Grammar element 1510 . . . provides a condition . . . .”), 20:34-36 (“Grammar
element 1511 . . . provides a condition . . . .”) & 20:47-50 (“Grammar element 1512 . . . provides
for specification of time conditions . . . .”). Such disclosures do not demonstrate, however, that a
condition is part of a manner of use.
Finally, Defendants have also cited the prosecution of related United States Patent
No. 6,708,157, which claims priority to the same application as the Stefik Patents here in suit.
44

See Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1314-15 (Fed. Cir. 2007) (prosecution
history of parent application having specification with “the same content” found to be “relevant
in construing the claims” of related patents); see also Chimie v. PPG Indus., Inc., 402 F.3d 1371,
1384 (Fed. Cir. 2005) (“The purpose of consulting the prosecution history in construing a claim
is to exclude any interpretation that was disclaimed during prosecution.”) (citation and internal
quotation marks omitted). The applicability of this prosecution history is disputed. (See Dkt.
No. 345, at 8). Even if considered, this prosecution has no impact on the Court’s analysis.
On balance, the intrinsic evidence, especially above-quoted Claim 23 of the ‘859 Patent,
is consistent with Defendants’ proposal that a “manner of use” is distinct from a “condition.”
The Court accordingly hereby construes “manner of use” to mean “a way in which [a
digital work / digital content / content / a digital document] may be used, as contrasted with
a condition that must be satisfied before such use is allowed.”
L. “render” and “rendering”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“converting into an ephemeral, transitory, or
non[-]digital form, such as for playing digital
movies, playing digital music, playing a video
game, running a computer program, or
displaying a document on a display”

“play, print, display, or execute [a digital work]
[digital content / content] [a digital document]”

(Dkt. No. 304, at 12; Dkt. No. 331, at 17 (square brackets Defendants’).) The parties submit that
these disputed terms appear in Claims 1, 13, 19, 20, 21, 24, 58, 69, and 71 of the ‘859 Patent,
Claim 1 of the ‘160 Patent, Claims 1 and 18 of the ‘576 Patent, Claims 1 and 10 of the ‘072
Patent, Claims 1, 7, and 13 of the ‘956 Patent, and Claims 1, 3, 6, 8, 11, and 13 of the ‘007
Patent. (Dkt. No. 292-1, at 7; Dkt. No. 331, at 17.)

45

(1) The Parties’ Positions
Plaintiff submits that its proposal “is taken from the description of rendering in the
patents” and “provides examples to guide the jury in understanding that rendering includes, for
example, conversion for playing digital movies and displaying a document on a display.” (Dkt.
No. 304, at 12-13.) Plaintiff argues that “Defendants’ construction is unduly narrow because it
only accounts for specific forms of conversion (i.e. ‘play, print, display, or execute’), while the
specification allows for conversion into any ephemeral, transitory, or non-digital form.” (Id.,
at 13.)
Defendants respond that “[a]lthough the specifications do not explicitly define ‘render,’
their description of types of rendering systems supports Defendants’ construction.” (Dkt.
No. 331, at 18.) Further, Defendants argue, “[t]he specification never compares rendering to
‘converting.’ In fact, the words ‘convert’ and ‘converting’ never appear in the patents.” (Id.)
Defendants conclude: “[Plaintiff’s] construction contains terms that may be difficult for a jury to
apply and it is so open-ended that it risks being read to encompass almost any transformation of
data, including acts like decryption that persons of skill in the art would not consider to be
‘rendering.’” (Id.)
Plaintiff replies that “while the specification defines ‘render’ as any conversion into any
‘ephemeral, transitory, or non-digital’ form, Defendants propose a narrow construction that
accounts only for specific types of conversion, i.e., ‘play, print, display, or execute.’” (Dkt.
No. 345, at 9.)
(2) Analysis
The “Glossary” section of the specification states:
Rendering System:

46

The combination of a rendering repository and a rendering device. Examples of
rendering systems include printing systems, displaying systems, general purpose
computer systems, video systems or audio systems.
Id. at 50:42-46. Other portions of the specification, however, address the meaning of
“rendering” in greater detail:
Rendering Systems
A rendering system is generally defined as a system comprising a repository and
a rendering device which can render a digital work into its desired form.
Examples of a rendering system may be a computer system, a digital audio
system, or a printer.
***
Grammar element 1504 “Render-Code:=[Play:{Player: Player-ID} |
Print:{Printer:Printer-ID}]” lists a category of rights all involving the making of
ephemeral, transitory, or non-digital copies of the digital work. After use the
copies are erased.
Play[:] A process of rendering or performing a digital work on some processor.
This includes such things as playing digital movies, playing digital music, playing
a video game, running a computer program, or displaying a document on a
display.
Print[:] To render the work in a medium that is not further protected by usage
rights, such as printing on paper.
‘859 Patent at 7:50-54 & 18:44-53 (emphasis added). “Printing,” which is disclosed as an
example of a type of rendering, is further disclosed as “mak[ing] a copy of the digital work”:
The Print Transaction
A Print transaction is a request to obtain the contents of a work for the purpose of
rendering them on a “printer.” We use the term “printer” to include the common
case of writing with ink on paper. However, the key aspect of “printing” in our
use of the term is that it makes a copy of the digital work in a place outside of the
protection of usage rights.
Id. at 35:64-36:3.

47

Plaintiff’s proposal of “ephemeral, transitory, or non[-]digital form” is rejected as vague
and as tending to confuse rather than clarify the scope of the claims.
Defendants’ proposal, however, is too narrow because it limits the disputed term to four
specific types of operation.
Based on the above-quoted disclosures, particularly the disclosure of “rendering or
performing,” construction of this disputed term as “presenting,” together with the above-quoted
examples set forth in the specification, will be more accurate and of greater help to the finder of
fact than either Plaintiff’s or Defendants’ proposal.
The Court accordingly hereby construes “render” and “rendering” to mean
“present[ing] a digital work, such as by playing a digital movie, playing digital music,
playing a video game, running a computer program, displaying a document on a display, or
printing on paper.”
M. “authorization object”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“digital information that must be possessed to
gain access to digital content”

“a digital work that can be moved between
repositories and, when specified by a usage
right attached to another digital work, must be
obtained to exercise the usage right”

(Dkt. No. 304, at 13; Dkt. No. 331, at 18.) The parties submit that this disputed term appears in
Claims 1 and 18 of the ‘576 Patent, Claims 4, 10, and 16 of the ‘956 Patent, and Claims 3, 8,
and 13 of the ‘007 Patent. (Dkt. No. 292-1, at 9; Dkt. No. 331, at 18.)
(1) The Parties’ Positions
Plaintiff argues that its proposed construction “clarifies the role of the ‘authorization
object’ set forth in the claims in that it must be possessed to gain access to digital content.” (Dkt.
No. 304, at 13.) Plaintiff further argues that Defendants’ proposal “could apply to any ‘digital
48

work’ that can be moved between repositories” and “imports the term ‘digital work’ into claims
that do not use this term.” (Id., at 14.)
Defendants respond that “[t]he specification explains with clarity that an authorization
object is a type of ‘digital work,’” and “[b]y stating that authorization objects are only required
‘when specified by a usage right attached to another digital work,’ [Defendants’] construction
explains when authorization objects are necessary and that they are separate from the digital
content.” (Dkt. No. 331, at 18-19.)
Plaintiff replies, in full: “Defendants’ construction is improper because it attempts to
import Defendants’ construction for the term ‘digital work’ into claims that do not use this term.
Defendants’ construction is also confusing because it defines the ‘authorization object’ as a
‘digital work,’ even though Defendants concede that ‘authorization objects’ are ‘separate from
the digital content.’” (Dkt. No. 345, at 7 (citing Dkt. No. 331, at 19).)
At the February 6, 2015 hearing, the parties did not address this disputed term.
(2) Analysis
Claim 4 of the ‘956 Patent, for example, discloses:
4. The method of claim 1, wherein the receiving the digital content comprises:
requesting an authorization object for the at least one recipient computing
device to make the digital content available for use, the authorization object being
required to receive the digital content and to use the digital content; and
receiving the authorization object if it is determined that the request for
the authorization object should be granted.
The specification discloses:
Communication with an authorization repository 202 may occur when a digital
work being accessed has a condition requiring an authorization. Conceptually, an
authorization is a digital certificate such that possession of the certificate is
required to gain access to the digital work. An authorization is itself a digital
work that can be moved between repositories and subjected to fees and usage
rights conditions. An authorization may be required by both repositories involved
in an access to a digital work.
49

‘859 Patent at 7:18-26 (emphasis added).
In a transaction involving a repository and a document server, some usage rights
may require that the repository have a particular authorization, that the server
have some authorization, or that both repositories have (possibly different)
authorizations. Authorizations themselves are digital works (hereinafter referred
to as an authorization object) that can be moved between repositories in the same
manner as other digital works. Their copying and transferring is subject to the
same rights and fees as other digital works. A repository is said to have an
authorization if that authorization object is contained within the repository.
Id. at 21:57-67 (emphasis added); id. at 40:50-51 (“an authorization object (a digital work in a
file of a standard format)”).
These consistent, explicit disclosures of authorization objects as being digital works
should be given effect in the Court’s construction. See Nystrom v. TREX Co., Inc., 424 F.3d
1136, 1144-45 (Fed. Cir. 2005) (construing term “board” to mean “wood cut from a log” in light
of the patentee’s consistent usage of the term; noting that patentee “is not entitled to a claim
construction divorced from the context of the written description and prosecution history”); see
also Am. Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d 1324, 1333 (Fed. Cir. 2011) (“[T]he
consistent reference throughout the specification to the ‘eccentric weight portion’ as structure
extending from the face of the gear makes it apparent that it relates to the invention as a whole,
not just the preferred embodiment.”). Further, the above-quoted reference to authorization for
usage rights demonstrates that an authorization object may be required for usage rights other than
merely accessing.
Nonetheless, Defendants have failed to adequately justify their proposal that an
authorization object is necessarily separate from the digital work for which authorization is
required. Indeed, the “Glossary” section of the specification states that a digital work can itself
include other digital works:

50

Composite Digital Work:
A digital work comprised of distinguishable parts. Each of the distinguishable
parts is itself a digital work which have usage rights attached.
Id. at 49:49-51 (emphasis added).
The Court accordingly hereby construes “authorization object” to mean “a digital
work that can be moved between repositories and that must be possessed in order to
exercise a usage right.”
N. “identification certificate” and “digital certificate”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“a signed digital message that attests to the
identity of the possessor”

“a signed digital message that attests to the
identity of the possessor. Digital certificates
are encrypted in the private key of a wellknown master repository.”

(Dkt. No. 304, at 14 (Plaintiff addressed only “identification certificate”); Dkt. No. 331,
at 14-15.) Defendants submit that “identification certificate” appears in Claims 24 and 81 of the
‘859 Patent, Claims 5, 11, and 17 of the ‘956 Patent, and Claims 4, 5, 9, 10, 14, and 15 of the
‘007 Patent. (Dkt. No. 331, at 14.) Defendants submit that “digital certificate” appears in
Claims 1, 15, 21, 24, 58, 71, and 81 of the ‘859 Patent, Claims 1 and 18 of the ‘576 Patent,
Claims 1 and 10 of the ‘072 Patent, Claims 1, 7, and 13 of the ‘956 Patent, and Claims 1, 6,
and 11 of the ‘007 Patent. (Dkt. No. 331, at 14-15.)
(1) The Parties’ Positions
The parties agree that “identification certificate” and “digital certificate” are used
synonymously in the Stefik Patents. (See Dkt. No. 331, at 5 n.4.)

51

Plaintiff submits that this term is defined in the specification’s glossary and that
Defendants “seek to import an additional requirement from the second sentence of the glossary
by removing the word ‘typically.’” (Dkt. No. 304, at 14.)
Defendants respond that the specification, as well as the testimony of Plaintiff’s expert,
Dr. Goodrich, in IPR proceedings, emphasize “the ‘extremely important’ requirement of tamper
resistance, which is provided by encrypting the digital certificate in the private key of a master
repository.” (Dkt. No. 331, at 15.)
Plaintiff replies that by ignoring the word “typically,” Defendants improperly limit the
construction to a preferred embodiment. (Dkt. No. 345, at 9.) Plaintiff also submits that in an
IPR proceeding, Defendant Apple Inc. has proposed a construction of “identification certificate”
that omits the second sentence from the “Glossary” definition. (Id., Ex. AE, 12/22/2014 Petition
for Inter Partes Review of U.S. Patent No. 8,370,956 (IPR2015-00446), at 14.)
(2) Analysis
The “Glossary” section of the specification states:
Identification (Digital) Certificate:
A signed digital message that attests to the identity of the possessor. Typically,
digital certificates are encrypted in the private key of a well-known master
repository.
‘859 Patent at 50:16-19 (emphasis added).
Defendants submit that the specification “make[s] clear that identification certificates
(also referred to as ‘digital certificates’) are generated by a ‘master repository’ and that
‘[c]ommunication with a master repository . . . occurs in connection with obtaining an
identification certificate.’” (Dkt. No. 331, at 15 (citing ‘859 Patent at 7:32-33 & 12:34-50).)

52

Defendants have also cited disclosure regarding an “install transaction” that ends with an error if
a master repository is not recognized. See id. at 41:28-42:6.
On balance, the portions of the specification cited by Defendants do not override the
patentee’s use of the word “typically” in the above-quoted “Glossary” definition. See Abbott
Labs., 334 F.3d at 1354 (“patentee’s lexicography must, of course, appear with reasonable
clarity, deliberateness, and precision”) (citation and internal quotation marks omitted); cf.
MasterObjects, Inc. v. Yahoo!, Inc., No. C 11-02539-JSW, 2013 WL 6185475, at *7 (N.D. Cal.
Nov. 26, 2013) (“The patentee uses the glossary to describe one particular embodiment . . . .
Yahoo! seeks to import a specific limitation from a glossary which is expressly limited to a
preferred embodiment. This is not permitted.”).
The Court accordingly hereby construes “identification certificate” and “digital
certificate” to mean “a signed digital message that attests to the identity of the possessor.”
O. “nonce” and “random registration identifier”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“random or variable information generated to
establish a cryptographic connection”5

“nonce”:
“random and variable information used
only once to establish a cryptographic
connection”
“random registration identifier”:
Same as “nonce”; Alternatively, indefinite.

(Dkt. No. 304, at 15; Dkt. No. 331, at 20.) The parties submit that “nonce” appears in Claims 6,
12, and 18 of the ‘956 Patent and Claims 5, 10, and 15 of the ‘007 Patent. (Dkt. No. 292-1,

5

Plaintiff previously proposed: “nonce” means “Random or variable information for determining
whether a system can correctly perform a cryptographic operation”; and “random registration
identifier” means “Random or variable information for identifying a communication session.”
(Dkt. No. 292-1, at 3-4.)

53

at 3-4; Dkt. No. 331, at 20.) The parties submit that “random registration identifier” appears in
Claims 5, 11, and 17 of the ‘956 Patent and Claims 4, 9, and 14 of the ‘007 Patent. (Dkt.
No. 292-1, at 4; Dkt. No. 331, at 20.)
(1) The Parties’ Positions
Plaintiff argues that the specification describes a “nonce” as being random or variable.
(Dkt. No. 304, at 15.) Also, Plaintiff argues, “[b]oth the ‘random registration identifier’ and the
‘nonce’ are used several times in different ways during the registration procedure for repositories
. . . .” (Id.; see id. at 15-16 (citing ‘956 Patent at Figure 16).) Plaintiff further argues:
Any random number of finite length used as part of such a procedure would with
some probability repeat a previously generated random number. That is why the
specification does not rely on the random registration identifier alone to secure the
message: the repository using the registration identifier also uses the time and the
names of the repositories to verify the session.
(Id., at 16 (citing ‘956 Patent at 27:37-45 & 27:52-57).)
Defendants respond that “[i]f they [(nonces and random registration identifiers)] were
used more than once, a counterparty could fool a repository into creating a connection by using
an unencrypted nonce or identifier from an earlier session.” (Dkt. No. 331, at 20.) Defendants
also submit that “[b]oth parties to a transaction do use them, but that is a single use of the
nonce.” (Id.) Finally, Defendants urge that “although it is theoretically possible that a number
could be randomly generated more than once, that remote possibility is unlikely to confuse a
jury.” (Id.)
Plaintiff replies that “Defendants thus admit that their ‘only once’ limitation is
scientifically incorrect” (Dkt. No. 345, at 9 (citing Dkt. No. 331, at 20)), and Defendants’
proposal of “random and variable” “would exclude the two examples provided in the

54

specification (time and temperature), both of which are ‘variable only’ nonces.” (Dkt. No. 345,
at 9-10 (citing Dkt. No. 304 at 15).)
(2) Analysis
The specification discloses a “random registration identifier” as being unique to a
“session”:
A registration message is comprised of an identifier of a master repository, the
identification certificate for the repository-1 and an encrypted random
registration identifier. * * * The registration identifier is a number generated by
the repository for this registration. The registration identifier is unique to the
session and is encrypted in repository-1’s private key. The registration identifier
is used to improve security of authentication by detecting certain kinds of
communications[-]based attacks.
‘859 Patent at 26:51-66 (emphasis added). The specification also discloses a “nonce” as follows:
When a sending repository transmits a message to a receiving repository, the
sending repository encrypts all of its data using the public writing key of the
receiving repository. The sending repository includes its name, the name of the
receiving repository, a session identifier such as a nonce (described below), and a
message counter in each message. In this way, the communication can only be
read (to a high probability) by the receiving repository, which holds the private
checking key for decryption. The auxiliary data is used to guard against various
replay attacks to security. If messages ever arrive with the wrong counter or an
old nonce, the repositories can assume that someone is interfering with
communication and the transaction [is] terminated.
***
A nonce is a generated message based on some random and variable information
(e.g., the time or the temperature.) The nonce is used to check whether
repository-1 can actually exhibit correct encrypting of a message using the private
keys it claims to have, on a message that it has never seen before.
‘859 Patent at 26:14-26 & 27:45-50 (emphasis added).
This explicit definition of a “nonce” as being based on random and variable information
should be given effect in the Court’s construction. See Intellicall, 952 F.2d at 1388; see also
C.R. Bard, 388 F.3d at 862; Abbott Labs., 334 F.3d at 1354. Also, the above-quoted disclosures

55

explain that a “nonce” or “random registration identifier” is “unique” to a particular “session.”
‘859 Patent at 26:62-63.
Such a construction is also consistent with the extrinsic dictionary submitted by
Defendants, which defines “nonce” as meaning “occurring, used, or made only once or for a
special occasion.” (Dkt. No. 331, Ex. 12, The Merriam-Webster Dictionary 355 (1998).)
The Court accordingly hereby construes “nonce” and “random registration identifier”
to mean “random and variable information unique to a cryptographic session.”
P. “distributed repository”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary apart from
construction of the term “repository”

Indefinite

Alternatively:
“a repository adapted for use in a
distributed system”
(Dkt. No. 304, at 16; Dkt. No. 331, at 23.) The parties submit that this disputed term appears in
Claims 1 and 58 of the ‘859 Patent. (Dkt. No. 292-1, at 3; Dkt. No. 331, at 23.)
(1) The Parties’ Positions
“In view of the lack of uncertainty regarding ‘distributed’ before the PTAB, [Plaintiff]
submits that ‘distributed repository’ cannot be indefinite.” (Dkt. No. 304, at 16.) Plaintiff also
argues that “[t]he repositories described in the specification are connected as a part of a
distributed network or system such as the internet.” (Id. at 16-17 (citing ‘859 Patent at Fig. 2).)
Defendants argue that because the intrinsic evidence contains no basis for determining
what it means for a repository to be “distributed,” “[Plaintiff] . . . urges the Court to rewrite the
claim so that ‘distributed’ modifies the system as a whole, rather than the repository.” (Dkt.
No. 331, at 23.) Defendants urge that such rewriting would be improper because “(1) courts
56

cannot rewrite claims and (2) it is inconsistent with the claim language, which recites both a
‘distributed repository’ and a ‘distributed system.’” (Id.)
Plaintiff replies that its proposal is supported by the claims and that the prosecution
history contains no disclaimer. (Dkt. No. 345, at 12.)
At the February 6, 2015 hearing, Defendants argued that because the preambles of the
claims at issue use the phrase “adapted for use in a distributed system,” the patentee knew how to
set forth such a description but did not do so as to the term “distributed repository.” Defendants
concluded that the term “distributed repository” must refer to the repository itself being
“distributed” rather than merely being adapted for use in a distributed system.
(2) Analysis
The PTAB did not construe “distributed repository” apart from its construction of
“repository.” (See Dkt. No. 304, Ex. Q, 7/1/2014 Final Written Decision (‘859 Patent),
at 22-23.)
Claims 1 and 58 of the ‘859 Patent recite (emphasis added):
1. A rendering system adapted for use in a distributed system for managing use of
content, said rendering system being operative to rendering [sic] content in
accordance with usage rights associated with the content, said rendering system
comprising:
a rendering device configured to render the content; and
a distributed repository coupled to said rendering device and including a
requester mode of operation and server mode of operation,
wherein the server mode of operation is operative to enforce usage rights
associated with the content and permit the rendering device to render the content
in accordance with a manner of use specified by the usage rights,
the requester mode of operation is operative to request access to content
from another distributed repository, and
said distributed repository is operative to receive a request to render the
content and permit the content to be rendered only if a manner of use specified in
the request corresponds to a manner of use specified in the usage rights.
***

57

58. A computer readable medium including one or more computer readable
instructions embedded therein for use in a distributed system for managing use of
content, and operative to render content in accordance with usage rights
associated with the content, said computer readable instructions configured to
cause one or more computer processors to perform the steps of:
configuring a rendering device to render the content;
configuring a distributed repository coupled to said rendering device to
include a requester mode of operation and server mode of operation;
enforcing usage rights associated with the content and permitting the
rendering device to render the content in accordance with a manner of use
specified by the usage rights, when in the server mode of operation;
requesting access to content from another distributed repository, when in
the requester mode of operation; and
receiving by said distributed repository a request to render the content and
permitting the content to be rendered only if a manner of use specified in the
request corresponds to a manner of use specified in the usage rights.
Figure 2 of the ‘859 Patent, cited by Plaintiff, is reproduced here:

During prosecution of the ‘859 Patent, Defendants argue, the patentee distinguished
United States Patent No. 5,260,999 (“Wyman”) as disclosing a “centralized” system rather than a
“distributed repository” as claimed by the patentee:
Wyman discloses a centralized license management system used to account for
software product usage, wherein each licensed product upon start-up makes a call
to a license server to check on whether usage is permitted (Abstract). However,
“the purpose of the license management facility” of Wyman “is not that of

58

enforcement, nor that of ‘copy protection’, but instead is merely that of license
management” (col. 14, lines 9-11). Moreover, the license management system of
Wyman is centralized (see, e.g., Wyman Fig. 1). Accordingly, Wyman fails to
disclose, teach or suggest rights that are enforced by a distributed repository, as
recited in the independent claims.
(Dkt. No. 331, Ex. 16, 3/8/2005 Response, at 13-14 (emphasis modified).)
Defendants argue that Plaintiff’s proposed construction must fail because the patentee
“distinguish[ed] [Wyman] by arguing that a license server connected with other devices in a
distributed network is not a distributed repository.” (Dkt. No. 331, at 23.)
Plaintiff replies that “whether Wyman discloses a repository, let alone one that is
distributed, was never discussed during prosecution.” (Dkt. No. 345, at 12.) Plaintiff submits
that in the Office Action to which the above-quoted Response was directed, the Examiner cited a
different reference, Risberg, that allegedly taught a repository. (Id., Ex. AH, 9/8/2004 Office
Action, at 4.) Also, at the February 6, 2015 hearing, Plaintiff emphasized that the Wyman
reference was not concerned with enforcement of rights.
On balance, the prosecution history submitted by Defendants is not sufficiently clear to
warrant finding any disclaimer. See Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1332
(Fed. Cir. 2004) (“Because the statements in the prosecution history are subject to multiple
reasonable interpretations, they do not constitute a clear and unmistakable departure from the
ordinary meaning of the term ‘rotating.’”); see also Omega Eng’g, 334 F.3d at 1324 (“As a basic
principle of claim interpretation, prosecution disclaimer promotes the public notice function of
the intrinsic evidence and protects the public’s reliance on definitive statements made during
prosecution.”) (emphasis added); id. at 1325-26 (“[F]or prosecution disclaimer to attach, our
precedent requires that the alleged disavowing actions or statements made during prosecution be
both clear and unmistakable”) (emphasis added); id. at 1330 (“[T]here is more than one

59

reasonable basis for the amendment, rendering the intent underlying the amendment ambiguous
and thus negating the possibility of the disclaimer being unmistakable.”).
As to extrinsic evidence, Plaintiff’s expert, Dr. Goodrich, opines that “[a] person of
ordinary skill in the art at the time of the patent would understand a distributed repository to be
capable of communicating with other repositories over a network, such as the Internet.” (Dkt.
No. 304, Ex. K, 11/25/2014 Goodrich Decl. at ¶ 55.)
Defendants’ expert, Dr. Grimes, responds that although “[i]n computer science, the term
‘distributed’ is used to refer to systems that include a number of separate devices working in a
cooperative manner, as opposed to a single device at a single location,” “[t]here is no description
in the specification of any repository that is distributed over different nodes of the network.”
(Dkt. No. 331, 12/22/2004 Grimes Decl., at ¶¶ 59-60.)
Finally, Plaintiff submits that in a recent IPR petition, Defendant Apple Inc. described a
“distributed repository” as “a type of repository that must be able to interact with other
repositories over a network, i.e., in a distributed system.” (Dkt. No. 345, Ex. AG, 12/22/2014
Petition for Inter Partes Review (‘859 Patent), at 19-20.)
On balance, the Court finds no prosecution disclaimer (as set forth above), and the Court
finds the opinions of Plaintiff’s expert more credible as to this disputed term. In particular, the
Court finds more credible Plaintiff’s expert’s opinion that a person of ordinary skill in the art
would be able to understand the constituent term “distributed” in the context of a repository. The
Court therefore hereby expressly rejects Defendants’ indefiniteness argument.
As for the proper construction, the claim language and the above-quoted prosecution
history are consistent with reading “distributed” as referring to the relative location of a
repository on a network rather than the nature of the repository itself.

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The Court accordingly hereby construes “distributed repository” to mean “a repository
adapted for use in a distributed system.”
Q. “document platform”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“any computing system that holds a digital
document, such as software”6

Indefinite.
Alternatively:
“a repository for rendering a digital
document”

(Dkt. No. 304, at 17; Dkt. No. 331, at 21.) Defendants submit that this disputed term appears in
Claims 1, 8, 10, and 16 of the ‘072 Patent. (Dkt. No. 331, at 21.)
(1) The Parties’ Positions
Plaintiff argues that “[a]s the PTAB found, the specification provides sufficient context
for this term.” (Dkt. No. 304, at 17.)
“First and foremost,” Defendants respond, “[Plaintiff’s] proposed construction would
inject an inconsistency into the claims by failing to require the document platform to be a
repository even though it communicates with a ‘document repository.’” (Dkt. No. 331, at 22.)
“Second,” Defendants argue, “[Plaintiff’s] proposed construction conflates ‘document
repository’ and ‘document platform.’” (Id.) “Third,” Defendants argue that “[Plaintiff’s]
proposed construction incorrectly uses ‘software’ as an example of a ‘digital document,’ as
explained more fully above [as to the term “digital document].” (Id., at 23.) Defendants
conclude: “While a ‘document platform’ must at least be a repository, [Plaintiff] chose to claim
its alleged invention using a term that is otherwise without meaning. Given the lack of any

6

Plaintiff previously proposed: “a repository for rendering a digital document.” (Dkt. No. 292-1,
Pl.’s P.R. 4-3 Disclosures, at 1.)

61

definition in the specification, [Plaintiff’s] own difficulty discerning its meaning, and the
problems with [Plaintiff’s] latest construction, the term ‘document platform’” is indefinite.” (Id.)
Plaintiff replies, “[f]irst, the fact that [Plaintiff’]s construction of ‘document platform’
does not include the limitation ‘repository’ is irrelevant given that the surrounding claim
language already requires the claimed document platform to include a repository.” (Dkt.
No. 345, at 11.) “Second, Defendants’ argument that a document platform cannot also be used to
render the digital documents it holds is nonsensical given that Defendants accept that the claimed
document platform must include a repository that renders content.” (Id.) Third, Plaintiff argues
claim differentiation as to Claim 3 of the ‘072 Patent. (Id.) Finally, as to the change in
Plaintiff’s proposed construction, Plaintiff replies that “[Plaintiff] should not be penalized for
attempting to work with Defendants to arrive at an agreed construction for this term.” (Id.,
at 11-12 n.13.)
At the February 6, 2015 hearing, Defendants urged that a “document platform” must be a
repository, as Plaintiff itself previously proposed (as footnoted above), because use of a
repository is fundamental to the Stefik Patents. Plaintiff responded that it does not dispute that a
“document platform” must include a repository. Plaintiff submitted that the change in its
proposed construction (so as to propose the PTAB construction) was an effort to reach a
compromise, but Plaintiff expressed that the construction Plaintiff previously proposed would be
acceptable.
(2) Analysis
Claim 1 of the ‘072 Patent is representative and recites:
1. A method for securely rendering digital documents, comprising:
retrieving, by a document platform, a digital document and at least one
usage right associated with the digital document from a document repository, the

62

at least one usage right specifying a manner of use indicating the manner in which
the digital document can be rendered;
storing the digital document and the at least one usage right in separate
files in the document platform;
determining, by the document platform, whether the digital document may
be rendered based on the at least one usage right; and
if the at least one usage right allows the digital document to be rendered
on the document platform, rendering the digital document by the document
platform.
As discussed regarding the terms “digital document” and “document,” above, Claim 3 of
the ‘072 Patent weighs against limiting the term “document” to text.
As to whether a “document platform” should be construed as being a repository, the
specification discloses:
Transactions occur between two repositories (one acting as a server), between a
repository and a document playback platform (e.g. for executing or viewing),
between a repository and a credit server or between a repository and an
authorization server.
‘859 Patent at 25:48-52 (emphasis added).
The PTAB, in its Decision instituting an IPR of the ‘072 Patent, cited this above-quoted
passage and found:
In our view, the discussion of “a document playback platform” set forth above
provides sufficient context for construing the claim term “document platform.”
Accordingly, applying the broadest reasonable interpretation consistent with the
specification, we construe the claim term “document platform” as “any computing
system that holds a digital document, such as software.” For example, a
“document platform” may be a computing system that executes or views software.
(Dkt. No. 304, Ex. R, 7/1/2013 Decision (‘072 Patent), at 17.)
The specification also states that “repositories will only communicate with other devices
that are able to present proof that they are certified repositories.” ‘859 Patent at 12:25-27.
Because a “document platform” is disclosed as communicating with repositories, this passage

63

suggests that a document platform must itself be a repository. Plaintiff, however, does not
appear to contend that a document platform need not at least include a repository.
Further, the specification discloses that a repository can be used for rendering content:
Rendering Repository:
A special type of repository which is typically coupled to a rendering system.
The rendering repository will be typically be [sic] embodied within the secure
boundaries of a rendering system.
‘859 Patent at 50:37-41.
As for the prosecution history, the patentee stated:
Applicants respectfully submit that newly amended independent claims 1, 14
and 26 recite various steps being performed by “a document platform”. The
document platform is the client[-]side engagement that controls the document.
(Dkt. No. 331, Ex. 14, 10/15/2008 Response to Office Action, at 12.)
Finally, Plaintiff’s expert, Dr. Goodrich, has opined:
The claims of the ‘072 patent require the recited document platform to also be a
rendering repository, as it receives access to content from a repository, receives
usage rights from a repository, interprets and enforces usage rights, and renders
content when permitted by the usage rights.
(Dkt. No. 304, Ex. K, 11/25/2014 Goodrich Decl. at ¶ 56.)
On balance, the intrinsic evidence, as well as the opinions of Plaintiff’s expert, are
persuasive that “document platform” would be readily understandable to a person of ordinary
skill in the art. The Court hereby expressly rejects Defendants’ indefiniteness argument.
In light of Plaintiff’s statement at the February 6, 2015 hearing that Plaintiff’s prior
proposed construction (which is the same as Defendants’ alternative proposed construction)
would be acceptable to Plaintiff, the Court adopts that agreed-upon construction.

64

The Court therefore hereby expressly rejects Defendants’ indefiniteness argument and
hereby construes “document platform” to mean “a repository for rendering a digital
document.”
R. “validating”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

The phrase “The method of claim 1, wherein
the validating comprises:” should be corrected
to read: “The method of claim 4, wherein the
validating comprises:”

Indefinite

(Dkt. No. 304, at 17; Dkt. No. 331, at 25.) The parties submit that this disputed term appears in
Claim 5 of the ‘007 Patent. (Dkt. No. 292-1, at 9-10; Dkt. No. 331, at 25.)
(1) The Parties’ Positions
Plaintiff argues that “[t]his obvious error should be corrected so that claims 4-5 parallel
their mirror image claims 9-10 and 14-15” in the ‘007 Patent. (Dkt. No. 304, at 18.) Plaintiff
also submits that “Defendants have not offered an alternative plausible construction, and the
prosecution history does not suggest an alternate interpretation of the claims.” (Id.)
Defendants respond that because the requested correction is “subject to reasonable
debate,” judicial correction would be inappropriate. (Dkt. No. 331, at 25.)
Plaintiff replies “Defendants’ proposed alternative correction (replacing the term
‘validating’ with ‘determining’ to correct the misstated claim dependency, instead of changing
claim 5 to depend from claim 4, as [Plaintiff] proposes) is not reasonable.” (Dkt. No. 345, at 13.)
Further, Plaintiff argues, “Defendants also misinterpret the prosecution history—the dependency
of claim 5 was originally to application claim 10, an apparatus claim similar to claim 5. Claim 5
is a method that adds steps to claim 4, which in turn depends on claim 1. This is consistent with
the patentee’s remarks.” (Id., at 13 n.14.)
65

At the February 6, 2015 hearing, the parties did not address this disputed term.
(2) Analysis
Judicial correction of an error in a patent may be available “if (1) the correction is not
subject to reasonable debate based on consideration of the claim language and the specification
and (2) the prosecution history does not suggest a different interpretation of the claims.” Novo
Indus. v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003); see LG Elecs., Inc. v.
Quanta Computer Inc., 566 F. Supp. 2d 910, 913 (W.D. Wis. 2008) (noting the “nearly
impossible standard for judicial correction of a patent” and citing Novo, 350 F.3d 1348, which
“refus[ed] to correct ‘a’ to ‘and’ because other possibilities for correction existed”).
Claims 1, 4, and 5 of the ‘007 Patent recite (emphasis added):
1. A computer-implemented method of distributing digital content to at least one
recipient computing device to be rendered by the at least one recipient computing
device in accordance with usage rights information, the method comprising:
determining, by at least one sending computing device, if the at least one
recipient computing device is trusted to receive the digital content from the at
least one sending computing device;
sending the digital content, by the at least one sending computing device,
to the at least one recipient computing device only if the at least one recipient
computing device has been determined to be trusted to receive the digital content
from the at least one sending computing device; and
sending usage rights information indicating how the digital content may be
rendered by the at least one recipient computing device, the usage rights
information being enforceable by the at least on [sic, one] recipient computing
device.
4. The method of claim 1, wherein the determination of trust comprises:
receiving a registration message from the at least one recipient device, the
registration message including an identification certificate of the recipient
computing device and a random registration identifier, the identification
certificate being certified by a master device;
validating the authenticity of the at least one recipient device;
exchanging messages including at least one session key with the at least
one recipient device, the session key to be used in communications; and
conducting a secure transaction using the session key, wherein the secure
transaction includes sending the digital content to the at least one recipient device.

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5. The method of claim 1, wherein the validating comprises:
verifying the identification certificate of the at least one recipient device;
generating a message to test the authenticity of the at least one recipient
device, the generated message including a nonce;
sending the generated message to the at least one recipient device; and
verifying if the at least one recipient device correctly processed the
generated message.
Defendants suggest that the error could be corrected by replacing “validating” with
“determining,” and Defendants cite Claims 6 and 8-10 of the ‘007 Patent.
Plaintiff replies that Defendants’ proposed alternative correction “would break the
parallel structure of the three claim families of the ’007 patent and would generate additional
antecedent basis problems. For example, the term ‘the identification certificate’ in claim 5 lacks
antecedent basis in claim 1, but has antecedent basis in claim 4.” (Dkt. No. 345, at 13.)
Nonetheless, during prosecution, the patentee amended claim 5 of the ’007 Patent and
expressly explained:
Claim 5 stands objected to as incorrectly stating a dependency on claim 10 rather
than claim 1. Claim 5 is amended herein to correctly depend on claim 1. Thus,
this objection should be withdrawn.
(Dkt. No. 331, Ex. 17, 11/5/2012 Response to Office Action, at 7.)
On balance, the correction sought by Plaintiff is “subject to reasonable debate.” Novo,
350 F.3d at 1354. Plaintiff’s request for judicial correction is therefore denied. Novo, 350 F.3d
at 1354; see LG, 566 F. Supp. 2d at 913; see also Allen Eng’g Corp. v. Bartell Indus., Inc., 299
F.3d 1336, 1349 (Fed. Cir. 2002) (“It is not our function to rewrite claims to preserve their
validity . . . .”).
Thus, based on the lack of antecedent basis, the Court hereby finds that “validating” in
Claim 5 of the ‘007 Patent is indefinite.

67

S. “determining, by the document platform”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“determining by the document platform”
should be corrected to: “determining, by the
document repository”

Indefinite

(Dkt. No. 304, at 18; Dkt. No. 331, at 24.) The parties submit that this disputed term appears in
Claim 10 of the ‘072 Patent. (Dkt. No. 292-1, at 1; Dkt. No. 331, at 24.)
(1) The Parties’ Positions
Plaintiff argues that “[t]he claim itself makes both the error and its correction apparent,
and the prosecution history suggests no alternate interpretation.” (Dkt. No. 304, at 18.) Plaintiff
explains that “[t]he error was introduced when other determining steps involving client-side
activity were clarified to indicate that those determinations were being performed on the client.”
(Dkt. No. 304, at 19 (citing id., Ex. N, 10/15/2008 Response to Office Action at 2 & 9-10).)
Defendants respond that “[Plaintiff] cannot establish that the requested correction is ‘not
subject to reasonable debate.’” (Dkt. No. 331, at 24.)
Plaintiff replies that “Defendants argue that the patentee intentionally wrote and
prosecuted an indefinite claim. That is nonsense . . . .” (Dkt. No. 345, at 13.) Plaintiff further
explains:
Defendants admit that the asserted claims of the ’072 patent recite a document
repository (the server-side engagement) and a document platform (the client-side
engagement). Dkt. 331 at 23. With this understanding, the error of having the
client device (the “document platform”) decide whether to grant its own request is
clear, and thus susceptible to correction. Dkt. 304 at 18-19; Goodrich Reply Decl.
¶¶ 39-42. It is equally clear from the claim language that the server-side device
(the document repository) must perform the step of determining if the client is
authorized to receive the content.
(Dkt. No. 345, at 13.)
At the February 6, 2015 hearing, the parties did not address this disputed term.
68

(2) Analysis
Judicial correction of an error in a patent may be available “if (1) the correction is not
subject to reasonable debate based on consideration of the claim language and the specification
and (2) the prosecution history does not suggest a different interpretation of the claims.” Novo,
350 F.3d at 1354; see LG, 566 F. Supp. 2d at 913 (noting the “nearly impossible standard for
judicial correction of a patent” and citing Novo, 350 F.3d 1348, which “refus[ed] to correct ‘a’ to
‘and’ because other possibilities for correction existed”).
Claim 10 of the ‘072 Patent recites (emphasis added):
10. A method for securely rendering digital documents, comprising:
storing a digital document and at least one usage right in separate files in a
document repository, wherein the at least one usage right is associated with the
digital document;
receiving a request from a document platform for access to the digital
document;
determining, by the document platform, whether the request may be
granted based on the at least one usage right, the determining step including
authenticating the document platform and determining whether the at least one
usage right includes a manner of use that allows transfer of the digital document
to the document platform;
if the at least one usage right allows the transfer of the digital document to
the document platform, transferring the digital document and the at least one
usage right associated with the digital document to the document platform;
storing the digital document and the at least one usage right in the
document platform, wherein the at least one usage right is stored in a separate file
from the digital document; and
rendering the digital document by the document platform.
Plaintiff’s expert, Dr. Goodrich, opines:
A person of ordinary skill in the art would recognize an error in claim 10 of the
‘072 patent where the document platform of the claim is required to determine
whether a request the document platform made in the previous step should be
granted. When the determining step is performed, the request subject to the
determining step has just been received from the document platform. The
determining step requires the determining entity (document platform or document
repository) to determine whether a usage right includes a manner of use that
allows a digital document to be transferred to the document platform. The
document platform does not possess the subject usage right until, later in the
69

claim, only after the determining step has been resolved in favor of granting the
request; the usage right is transferred to the document platform with the digital
document. Prior to the “receiving” step, claim 10 introduces the digital document
and the usage right as being stored by the document repository. Accordingly, one
having ordinary skill in the art would understand that the determining step should
be performed by the document repository (which is storing the right used to
perform the determining step) and not the document platform (which cannot store
the usage right until after the determining step).
(Dkt. No. 304, Ex. K, 11/25/2014 Goodrich Decl. at ¶ 57.)
On balance, the correction sought by Plaintiff is “subject to reasonable debate.” Novo,
350 F.3d at 1354. For example, as argued by Defendants, Claim 10 of the ‘072 Patent could be
corrected by deleting the entire phrase “by the document platform” or by moving the phrase “by
the document platform” to after the word “request.”
Moreover, during prosecution the patentee relied upon the phrase “determining, by the
document platform” when distinguishing a prior art reference:
. . . Perritt fails to disclose, teach or suggest the steps of determining, by the
document platform, whether the request may be granted based on the at least one
usage right, and storing the digital document and the at least one usage right in the
document platform, wherein the at least one usage right is stored in a separate file
from the digital document, as recited in independent claim 14.
(Dkt. No. 331, Ex. 14, 10/15/2008 Response to Office Action, at 10 (emphasis in original).)
Plaintiff replies that “[n]owhere in their response to the Office Action do applicants
attempt to explain how the ‘document platform’ makes a determination about whether it is
authorized to receive the requested content.” (Dkt. No. 345, at 13.) Nonetheless, this
prosecution history weighs against finding that the claim contains an error for which the proper
correction is not “subject to reasonable debate.” Novo, 350 F.3d at 1354.
Plaintiff’s request for judicial correction is therefore denied. Novo, 350 F.3d at 1354; see
LG, 566 F. Supp. 2d at 913. This finding also comports with the principle that “[c]ourts do not
rewrite claims; instead, we give effect to the terms chosen by the patentee.” K-2 Corp. v.
70

Salomon S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999); see Chef Am., Inc. v. Lamb-Weston, Inc.,
358 F.3d 1371, 1374 (Fed. Cir. 2004) (“courts may not redraft claims, whether to make them
operable or to sustain their validity”); see also Allen Eng’g, 299 F.3d at 1349 (“It is not our
function to rewrite claims to preserve their validity . . . .”).
The remaining issue is whether the disputed term renders the uncorrected claim invalid as
indefinite.
Defendants have failed to demonstrate any inconsistency that would preclude a person of
ordinary skill in the art from understanding the meaning of the disputed term. Instead, the parties
simply seem to submit that the claim, as written, does not reflect what the patentee intended to
claim. Defendants have not established that this is an appropriate basis for finding
indefiniteness.
Defendants’ indefiniteness argument is therefore hereby expressly rejected. No further
construction is required. See PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed.
Cir. 1998) (“[A]fter the court has defined the claim with whatever specificity and precision is
warranted by the language of the claim and the evidence bearing on the proper construction, the
task of determining whether the construed claim reads on the accused product is for the finder of
fact.”); see also U.S. Surgical, 103 F.3d at 1568; O2 Micro, 521 F.3d at 1362.
The Court accordingly hereby construes “determining, by the document platform” to
have its plain meaning.

71

T. “grammar”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“a manner of defining a valid sequence of
symbols for a language”

“a manner of defining a valid sequence of
symbols consisting of brackets, bars and braces
used to describe the language of usage rights
sentences, parentheses used to group items
together in lists, keywords followed by colons
used to indicate a single value, typically an
identifier or list of identifiers, and the suffix
‘ID’”
Alternatively, indefinite.

(Dkt. No. 304, at 19; Dkt. No. 331, at 19.) The parties submit that this disputed term appears in
Claim 1 of the ‘160 Patent. (Dkt. No. 292-1, at 4; Dkt. No. 331, at 19.)
(1) The Parties’ Positions
Plaintiff argues that “Defendants seek to shoehorn additional limitations into the term
‘grammar’ from a subsequent portion of the specification that discusses a particular ‘notation’
that can be used ‘[i]n describing the grammar’ of the preferred embodiment.” (Dkt. No. 304,
at 19.)
Defendants respond that “[t]he patentees did not use ‘grammar’ in the ’160 patent as a
generic term but rather a specifically disclosed sequence of symbols used to create the ‘usage
rights language.’” (Dkt. No. 331, at 19.) Defendants further explain: “There are many ways to
use and arrange the grammar elements, but the grammar used to describe ‘usage rights’ must be
the particular grammar described by the specification. If not, then grammar does not give any
meaning to the claims in which it is used, and it would be indefinite.” (Id., at 19-20.)
Plaintiff replies that “[t]he claim . . . is directed to the statements generated in accordance
with a grammar to express usage rights (‘statements from a usage rights language’), not a
notation used to express a grammar.” (Dkt. No. 345, at 10.)
72

(2) Analysis
Claim 1 of the ‘160 Patent recites (emphasis added):
1. A computer readable medium having embedded thereon a digital work adapted
to be distributed within a system for controlling use of digital works, said digital
work comprising:
a digital content portion that is renderable by a rendering device;
a usage rights portion associated with said digital content portion and
comprising one or more computer readable instructions configured to permit or
prohibit said rendering device to render said digital content portion, said usage
rights portion being expressed as statements from a usage rights language having
a grammar defining a valid sequence of symbols, and specifying a manner of use
relating to one or more purposes for which the digital work can be used by an
authorized party; and
a description structure comprising a plurality of description blocks, each
of said description blocks comprising address information for at least one part of
said digital work, and a usage rights part for associating one or more usage rights
portions.
The specification discloses:
The usage rights language is based on the grammar described below. A grammar
is a convenient means for defining valid sequence [sic] of symbols for a language.
In describing the grammar the notation “[a|b|c]” is used to indicate distinct
choices among alternatives. In this example, a sentence can have either an “a”,
“b” or “c”. It must include exactly one of them. The braces { } are used to
indicate optional items. Note that brackets, bars and braces are used to describe
the language of usage rights sentences but do not appear in actual sentences in the
language.
’859 Patent at 17:41-50 (emphasis added; square brackets in “[a|b|c]” as in original); see id.
at 17:57-60 (regarding “keywords”) & 28:4-8 (regarding how to specify “things” that “need to be
identified”).
As to extrinsic evidence, Plaintiff has cited the following definitions: “grammar” in the
context of “computing” means “a set of rules governing what strings are valid or allowable in a
language or text” (Dkt. No. 304, Ex. S, “Google.com Dictionary”); “grammar” means “[a]
normative or prescriptive set of rules setting forth a standard of usage” (id., Ex. T, American
Heritage College Dictionary 602 (2002)); and “language” in the context of computer science
73

means “[a] system of symbols and rules used for communication with or between computers”
(id., Ex. U, “thefreedictionary.com”).
Plaintiff also submits the opinion of is expert, Dr. Goodrich, that:
The term “grammar” in computer science has been well understood for decades to
comprise a set of rules for a language that govern what constitutes valid or
permissible strings or sequences of symbols in that language. * * * [T]o a person
of ordinary skill in the art, the claim element requiring that statements be
expressed from a “language having a grammar” would be well understood to
require that statements in that language be generated and interpreted according to
a set of rules making up the grammar, which as noted above could be represented
using a variety of notational techniques, and would not include the limitation of a
particular notation “consisting of brackets, bars and braces,” or the like.
(Dkt. No. 304, Ex. K, 11/25/2014 Goodrich Decl. at ¶¶ 65 & 67.)
Defendants’ expert, Dr. Grimes, responds that “[t]he term [‘grammar’] is deprived of any
real meaning until it is applied to a particular computer language,” and the specification “defines
the term ‘grammar’ by distinguishing it from any computer language” as set forth above. (Dkt.
No. 331, Ex. 11, 12/22/2014 Grimes Decl. at ¶¶ 56-57.)
On balance, the surrounding claim language, the specification, the extrinsic dictionary
definitions, and Plaintiff’s expert’s opinion, together, are persuasive evidence that grammar is a
generic term that should not be limited to the specific features proposed by Defendants.
Defendants’ proposal imports limitations from preferred embodiments and is therefore rejected.
See Electro Med., 34 F.3d at 1054.
The Court accordingly hereby construes “grammar” to mean “a manner of defining a
valid sequence of symbols for a language.”

74

U. “description structure”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“a structure which describes the location of
content and the usage rights for a digital work
that is comprised of description blocks, each of
which corresponds to a digital work or to an
interest in a digital work”

“any acyclic structure that represents the
relationship between the components of a
digital work”

(Dkt. No. 304, at 20; Dkt. No. 292-2, at 15-16.) Plaintiff submits that this term appears in
Claim 1 of the ‘160 Patent. (Dkt. No. 292-1, at 4; Dkt. No. 292-2, at 15-16.)
Plaintiff argues that “Defendants ignore the glossary and rely on a portion of the detailed
description of a preferred embodiment . . . .” (Dkt. No. 304, at 20.)
Defendants’ response brief does not address this disputed term. (See Dkt. No. 331.)
Plaintiff replies that “Defendants have dropped their proposal (which improperly includes
an ‘acyclic’ limitation) and agreed to a modified version of [Plaintiff’s] construction,” namely:
“A structure which describes the location of content and the usage rights and usage fees, if any
such usage fees are required, for a digital work that is comprised of description blocks, each of
which corresponds to a digital work or to an interest in a digital work.” (Dkt. No. 345, at 10 &
n.10). The parties’ January 23, 2015 Joint Claim Construction Chart confirms that the parties
have reached agreement as to this term (Dkt. No. 366, Ex. B, at 16), and the parties did not
address this disputed term otherwise at the February 6, 2015 hearing.

75

The Court accordingly hereby construes “description structure” to mean “a structure
which describes the location of content and the usage rights and usage fees, if any such
usage fees are required, for a digital work that is comprised of description blocks, each of
which corresponds to a digital work or to an interest in a digital work.”
V. “means for communicating with a master repository for obtaining an identification
certificate for the repository”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“Corresponding Structure:
an external interface that provides for a
signal connection with another device
described at 13:52-59”7

Indefinite

(Dkt. No. 304, Ex. K, 11/25/2014 Goodrich Decl. at p. 16; Dkt. No. 331, at 25; Dkt. No. 366,
Ex. B, at 6.) The parties submit that this disputed term appears in Claim 24 of the ‘859 Patent.
(Dkt. No. 292-1, at 5; Dkt. No. 331, at 25.)
(1) The Parties’ Positions
Plaintiff’s expert submits that the cited structure “is identical to those [sic] given by the
PTAB for these means in the ‘859 patent.” (Dkt. No. 304, Ex. K, 11/25/2014 Goodrich Decl. at
¶ 35 (citation omitted).)
Defendants argue that “[t]he recited function is indefinite because ‘the repository’ could
refer to the ‘distributed repository,’ the ‘another distributed repository,’ or the ‘master
repository.’” (Dkt. No. 331, at 25.)
Plaintiff replies that because “[m]aster repositories issue identification certificates to
other ‘distributed repositories,’” “the reference to communicating with a master repository to
7

Plaintiff previously proposed: “Corresponding Structure: algorithm/structure necessary for
performing the recited function set forth in the ‘859 Spec., including from the following portions:
7:16-17; 13:52-59, Fig. 2, Fig. 12, and equivalents thereof.” (Dkt. No. 292-1, at 5.)

76

obtain a certificate can only be attributed to the previously recited ‘distributed repository.’”
(Dkt. No. 345, at 14.)
At the February 6, 2015 hearing, the parties did not address this disputed term.
(2) Analysis
In a Decision instituting an IPR of the ‘859 Patent, the PTAB found:
Claim 23 recites “means for communicating with an authorization repository for
authorizing a condition.” Claim 24 recites “means for communication with a
master repository for obtaining an identification certificate.”
For corresponding structure, [Petitioner] ZTE contends the following:
Claim 23 requires means for communicating with an
authorization repository for authorizing a condition, and claim
24 requires means for communication with a master repository
for obtaining an identification certificate. The corresponding
structure for performing the claimed function of means for
communicating is external interface 1206 (Fig. 12; 13:52-59:
“The external interface means 1206 provides for the signal
connection to other repositories.”).
(Pet. 7) We agree. Each of the “means for communicating . . .” covers an
external interface that provides for a signal connection with another device and
equivalents thereof.
(Dkt. No. 304, Ex. K, 11/25/2014 Goodrich Decl., Ex. 2, 7/1/2013 Decision (IPR2013-00137)
at 16 (p. 102 of 204 of Ex. K) (citation omitted).)
The parties’ present dispute boils down to whether a reasonably clear antecedent basis
exists for “the repository” in Claim 24 of the ‘859 Patent. Claims 1 and 24 of the ‘859 Patent
recite (emphasis added):
1. A rendering system adapted for use in a distributed system for managing use of
content, said rendering system being operative to rendering [sic] content in
accordance with usage rights associated with the content, said rendering system
comprising:
a rendering device configured to render the content; and
a distributed repository coupled to said rendering device and including a
requester mode of operation and server mode of operation,
77

wherein the server mode of operation is operative to enforce usage rights
associated with the content and permit the rendering device to render the content
in accordance with a manner of use specified by the usage rights,
the requester mode of operation is operative to request access to content
from another distributed repository, and
said distributed repository is operative to receive a request to render the
content and permit the content to be rendered only if a manner of use specified in
the request corresponds to a manner of use specified in the usage rights.
***
24. A rendering system as recited in claim 1, further comprising means for
communicating with a master repository for obtaining an identification certificate
for the repository.
The specification discloses:
As a prerequisite to operation, a repository will require possession of an
identification certificate. Identification certificates are encrypted to prevent
forgery and are issued by a Master repository. A master repository plays the role
of an authorization agent to enable repositories to receive digital works.
Identification certificates must be updated on a periodic basis. Identification
certificates are described in greater detail below with respect to the registration
transaction.
‘859 Patent at 13:1-9.
Communications integrity refers to the integrity of the communications channels
between repositories. Roughly speaking, communications integrity means that
repositories cannot be easily fooled by “telling them lies.” Integrity in this case
refers to the property that repositories will only communicate with other devices
that are able to present proof that they are certified repositories, and furthermore,
that the repositories monitor the communications to detect “impostors” and
malicious or accidental interference.
Id. at 12:21-29; see id. at 26:43-57 (disclosing a “registration transaction between two
repositories”).
Plaintiff also submits that in a recent IPR petition, Defendant Apple Inc. stated:
Claim 24 specifies the rendering system of claim 1 comprises “means for
communicating with a master repository for obtaining an identification certificate
for the repository.” In IPR2013-00137, the Board construed this means “to be the
external interface 1206, which provides a signal connection with another device.”

78

. . . This conclusion is supported by the ’859 disclosure. See Ex. 1001 [(‘859
Patent)] at 13:20-22, 13:52-59.
(Dkt. No. 345, Ex. AG, 12/22/2014 Petition for Inter Partes Review (‘859 Patent), at 22.)
Finally, Plaintiff’s expert, Dr. Goodrich, opines that a person of ordinary skill in the art
would understand from the intrinsic evidence that “a master repository is the issuer of an
identification certificate, not the recipient . . . . That is, the line of communication for obtaining
an identification certificate always goes from a master repository to a recipient repository.”
(Dkt. No. 345, Ex. AA, 1/9/2015 Goodrich Decl., at ¶ 23.) Plaintiff’s expert concludes that “it is
clear from [the specification and the claims] that to someone with ordinary skill in the art ‘the
repository’ referenced in claim 24 must be the ‘distributed repository’ referenced in claim 1.”
(Id.)
On balance, the Court finds credible Plaintiff’s expert’s assessment of how a person of
ordinary skill in the art would understand Claim 24 in light of the intrinsic evidence.
The Court therefore hereby finds that the antecedent basis for “the repository” in
Claim 24 of the ‘859 Patent is “a distributed repository” in Claim 1 of the ‘859 Patent.
Defendants’ indefiniteness argument is accordingly hereby expressly rejected.
The parties do not appear to otherwise dispute the claimed function, and Defendants have
not proposed any alternative corresponding structure. Further, the Court affords “reasoned
deference” to the above-quoted finding of the PTAB. Maurice Mitchell, 2006 WL 1751779,
at *4; see TQP, 2014 WL 2810016, at *6; see also Teva, 135 S. Ct. at 839-40.
The Court accordingly hereby finds that for the “means for communicating with a
master repository for obtaining an identification certificate for the repository,” the function
is “communicating with a master repository for obtaining an identification certificate for

79

the repository,” and the corresponding structure is “the external interface means 1206
described in the ‘859 Patent at 13:52-59; and equivalents thereof.”
W. “means for processing a request from the means for requesting”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Corresponding Structure:
“One or more processors that implement
the following algorithm: Processing begins
when a requester repository has sent a message
to initiate a request. (36:35-40, 37:9-13.)”8

“Processing begins when a requester repository
has sent a message to initiate a request. First,
the server repository checks the compatibility
of the requester repository and the validity of
the requester’s identification. Second, the
requester and server repositories perform the
common opening transaction steps of
determining whether authorization is needed,
and whether the requested transaction is
permitted given the usage rights. Third,
requester and server repositories perform a
transmission protocol to read and write blocks
of data, and then the requester repository
renders the digital work. Fourth, the contents
are removed from the rendering device and the
requester repository. Finally, the requester and
server repositories perform the common
closing transaction steps of updating the usage
rights and billing information.”9

8

Plaintiff previously proposed: “Corresponding Structure: algorithm/structure necessary for
performing the recited function set forth in the ‘576 Spec., including from the following portions:
30:25-30, 30:59-31:49, 32:20-31, 36:35-54, 37:9-26, and equivalents thereof; see also, e.g., ‘576
PTAB Decision at 21-22.” (Dkt. No. 292-1, at 6.) Plaintiff also previously proposed:
“processing begins when a requester repository has sent a message to initiate a request (36:3540, 37:9-13.)” (Dkt. No. 304, Ex. K, 11/25/2014 Goodrich Decl. at p. 7.)
9

Defendants previously proposed: “A computer processor and processor memory containing
software that, sequentially, instructs the server repository to check the compatibility of the
requester repository and the validity of the requester’s identification, instructs the requester and
server repositories to perform the common opening transaction steps of determining whether
authorization is needed and whether the requested transaction is permitted given the usage rights,
instructs the requester and sever [sic, server] repositories to perform a transmission protocol to
read and write blocks of data and then instructs the requester repository to render the digital
work, instructs the rendering device and the requester repositories to remove the contents, and
instructs the requester and server repositories to perform closing transaction steps of updating the
usage rights and billing information. Alternatively, indefinite.” (Dkt. No. 292-2, at 27-28.)

80

(Dkt. No. 366, Ex. B, at 21; Dkt. No. 331, at 26; Dkt. No. 366, Ex. B, at 21.) The parties submit
that this disputed term appears in Claim 1 of the ‘576 Patent. (Dkt. No. 292-1, at 6; Dkt.
No. 331, at 26.)
(1) The Parties’ Positions
Plaintiff’s expert opines: “A person of ordinary skill in the art would identify the
algorithm described by the PTAB as ‘processing begins when a requester repository has sent a
message to initiate a request’ as being clearly linked or associated to the recited function. This
algorithm is described in the specification at 36:35-40 and 37:9-13, which includes the contents
of the requesting message, as cited by the PTAB on page 21. . . . The remaining portions of the
algorithm included in the Defendants’ proposed construction are not necessary to perform the
recited function.” (Dkt. No. 304, Ex. K, 11/25/2014 Goodrich Decl. at ¶¶ 18-19.)
Defendants argue that Plaintiff’s proposal “only describes prerequisites for the processing
to ‘begin[]’ and not how it is carried out,” which is set forth by the five-step algorithm that
appears in the PTAB’s construction. (Dkt. No. 331, at 26.) Defendants also argue that the
passages cited by Plaintiff “at most restate the function without explaining the steps conducted to
implement it.” (Id., at 27 (citing Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d
1328, 1335 (Fed. Cir. 2008) (rejecting an alleged “algorithm” that was “at best, a description of
the claimed function of the means-plus-function claim”)).) Finally, Defendants argue that rather
than merely citing passages from the specification, “that text should actually be reproduced in
the construction, to avoid burdening jurors with the need to look up each citation in the patent or
confusing them as to whether the cited text is required structure.” (Dkt. No. 331, at 27.)
Plaintiff replies that Defendants have proposed “numerous steps that are not necessary to
perform the recited function,” and “[b]ecause the ‘means for processing’ requires no more than
81

merely processing, a general-purpose computer processor is sufficient structure.” (Dkt. No. 345,
at 14.)
At the February 6, 2015 hearing, the parties did not address this disputed term.
(2) Analysis
Claim 1 of the ‘576 Patent recites (emphasis added):
1. An apparatus for rendering digital content in accordance with rights that are
enforced by the apparatus, said apparatus comprising:
a rendering engine configured to render digital content;
a storage for storing the digital content;
means for requesting use of the digital content stored in the storage; and
a repository coupled to the rendering engine,
wherein the repository includes:
means for processing a request from the means for requesting,
means for checking whether the request is for a permitted rendering of the
digital content in accordance with rights specified in the apparatus,
means for processing the request to make the digital content available to
the rendering engine for rendering when the request is for a permitted rendering
of the digital [sic]; and
means for authorizing the repository for making the digital content
available for rendering, wherein the digital content can be made available for
rendering only by an authorized repository, the repository comprising:
means for making a re[q]uest for an authorization ob[j]ect required to be
included within the repository for the apparatus to render the digital content; and
means for receiving the authorization ob[j]ect when it is determined that
the request should be granted.
In instituting an IPR of the ‘576 Patent, the PTAB found as to this disputed term:
Processing begins when a requester repository has sent a message to initiate a
request. (Ex. 1001 [(‘576 Patent)], 36:35-40, 37:9-13.) First, the server
repository checks the compatibility of the requester repository and the validity of
the requester’s identification. (Ex. 1001, 36:41-44, 37:14-17.) Second, the
requester and server repositories perform the common opening transaction steps
of determining whether authorization is needed, and whether the requested
transaction is permitted given the usage rights. (Ex. 1001, 36:45-46, 37:18-19,
30:59-31:49.) Third, requester and server repositories perform a transmission
protocol to read and write blocks of data, and then the requester repository renders
the digital work. (Ex. 1001, 36:47-50, 37:20-22.) Fourth, the contents are
removed from the rendering device and the requester repository. (Ex. 1001,
36:51-52, 37:23-24.) Finally, the requester and server repositories perform the

82

common closing transaction steps of updating the usage rights and billing
information. (Ex. 1001, 36:53-54, 37:25-26, 32:20-31.)
The above-noted description constitutes a sufficiently disclosed algorithm,
expressed in prose, which, in combination with processor 1200, constitutes a
corresponding structure for the claimed “means for processing a request from the
means for requesting.”
(Dkt. No. 331, Ex. 18, 7/9/2013 Decision (‘576 Patent), at 21-22.)
On one hand, the PTAB Decision is entitled to some deference. See Maurice Mitchell,
2006 WL 1751779, at *4; see also TQP, 2014 WL 2810016, at *6; Teva, 135 S. Ct. at 839-40.
On the other hand, this Court conducts an independent review of claim construction
disputes. See, e.g., Texas Instruments, 182 F. Supp. 2d at 589-90; Burns, Morris, 401 F. Supp.
at 697; Negotiated Data Solutions, 2012 WL 6494240, at *5.
“[A] means-plus-function claim element for which the only disclosed structure is a
general purpose computer is invalid if the specification fails to disclose an algorithm for
performing the claimed function.” Net MoneyIN Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367
(Fed. Cir. 2008); see WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir.
1999) (“In a means-plus-function claim in which the disclosed structure is a computer, or
microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general
purpose computer, but rather the special purpose computer programmed to perform the disclosed
algorithm.”); see also Noah Sys. v. Intuit Inc., 675 F.3d 1302, 1319 (Fed. Cir. 2012) (“Computerimplemented means-plus-function claims are indefinite unless the specification discloses an
algorithm to perform the function associated with the limitation.”).
There is, however, an exception to the general rule requiring an algorithm. Specifically,
when the corresponding structure is a general purpose computer, an algorithm is required unless
the recited function can be achieved by any general purpose computer without special

83

programming. In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and
‘storing,’ . . . those functions can be achieved by any general purpose computer without special
programming. As such, it was not necessary to disclose more structure than the general purpose
processor that performs those functions.”); accord Ergo Licensing, LLC v. CareFusion 303, Inc.,
673 F.3d 1361, 1365 (Fed. Cir. 2012) (“In In re Katz, we held that ‘[a]bsent a possible narrower
construction’ of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ the disclosure of a generalpurpose computer was sufficient. . . . In other words, a general-purpose computer is sufficient
structure if the function of a term such as ‘means for processing’ requires no more than merely
‘processing,’ which any general-purpose computer may do without any special programming.”)
(citations omitted); but see id. (“It is only in the rare circumstances where any general-purpose
computer without any special programming can perform the function that an algorithm need not
be disclosed.”).
The claimed function of “processing a request from the means for requesting” does not
include anything beyond merely generic “processing.” As found in Katz, this function “can be
achieved by any general purpose computer without special programming.” In re Katz, 639 F.3d
at 1316.
The Court accordingly hereby finds that for the “means for processing a request from
the means for requesting,” the function is “processing a request from the means for
requesting,” and the corresponding structure is “a general-purpose computer; and
equivalents thereof.”

84

X. “means for checking whether the request is for a permitted rendering of the digital
content in accordance with rights specified in the apparatus”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“Corresponding Structure:
One or more processors that implement the
following algorithm: ‘the server repository
determines whether the right is granted and
whether any specified time, security, and
access based conditions are satisfied
(31:13-33.)’”10

“First, the requester repository determines
whether an authorization certificate or a digital
ticket is needed. Second, the server repository
generates a transaction identifier. Third, the
server repository determines whether the right
is granted and whether time, security, and
access based conditions are satisfied. Finally,
the server repository determines whether there
are sufficient copies of the work to
distribute”11

(Dkt. No. 304, Ex. K, 11/25/2014 Goodrich Decl. at p. 10; Dkt. No. 331, at 27; Dkt. No. 366,
Ex. B, at 22.) The parties submit that this disputed term appears in Claim 1 of the ‘576 Patent.
(Dkt. No. 292-1, at 5; Dkt. No. 331, at 27.)
(1) The Parties’ Positions
Plaintiff’s expert opines: “A person of ordinary skill in the art would identify the
algorithm described by the PTAB as ‘the server repository determines whether the right is
granted and whether time, security, and access based conditions are satisfied’ as being clearly
linked or associated to the recited function. This algorithm is described in the ‘576 patent at

10

Plaintiff previously proposed: “Corresponding Structure: algorithm/structure necessary for
performing the recited function set forth in the ‘576 Spec., including from the following portions:
30:59-31:49, 31:3-49, 36:45-46, 37:18-19, and equivalents thereof; see also, e.g., ‘576 PTAB
Decision at 22-23.” (Dkt. No. 292-1, at 5.)
11

Defendants previously proposed: “A computer processor and processor memory containing
software that, sequentially, instructs the requester repository to determine whether an
authorization certificate or a digital ticket is needed, instructs the server repository to generate a
transaction identifier, instructs the server repository to determine whether the right is granted and
whether time, security, and access based conditions are satisfied, and instructs the server
repository to determine whether there are sufficient copies of the work to distribute.
Alternatively, indefinite.” (Dkt. No. 292-2, at 28.)

85

31:13-33, which describes in prose the functions shown in the flowchart of Figure 18 boxes 1804
through 1807, inclusive.” (Dkt. No. 304, Ex. K, 11/25/2014 Goodrich Decl. at ¶ 26 (citation
omitted).)
Defendants argue that Plaintiff’s proposal “does little more than restate the function” and
“wrongly dismisses the PTAB’s other corresponding steps.” (Dkt. No. 331, at 28.)
Plaintiff replies that “[o]nly the second step [proposed by Defendants] is necessary to
check whether the request is for a permitted rendering of the digital content.” (Dkt. No. 345,
at 14.)
At the February 6, 2015 hearing, the parties did not address this disputed term.
(2) Analysis
Claim 1 of the ‘576 Patent recites (emphasis added):
1. An apparatus for rendering digital content in accordance with rights that are
enforced by the apparatus, said apparatus comprising:
a rendering engine configured to render digital content;
a storage for storing the digital content;
means for requesting use of the digital content stored in the storage; and
a repository coupled to the rendering engine,
wherein the repository includes:
means for processing a request from the means for requesting,
means for checking whether the request is for a permitted rendering of the
digital content in accordance with rights specified in the apparatus,
means for processing the request to make the digital content available to
the rendering engine for rendering when the request is for a permitted rendering
of the digital [sic]; and
means for authorizing the repository for making the digital content
available for rendering, wherein the digital content can be made available for
rendering only by an authorized repository, the repository comprising:
means for making a re[q]uest for an authorization ob[j]ect required to be
included within the repository for the apparatus to render the digital content; and
means for receiving the authorization ob[j]ect when it is determined that
the request should be granted.
In instituting an IPR of the ‘576 Patent, the PTAB found as to this disputed term:

86

First, the requester repository determines whether an authorization certificate or a
digital ticket is needed. (Ex. 1001 [(‘576 Patent)], 31:3-9.) Second, the server
repository generates a transaction identifier. (Ex. 1001, 31:10-13.) Third, the
server repository determines whether the right is granted and whether time,
security, and access based conditions are satisfied. (Ex. 1001, 31:13-33.) Finally,
the server repository determines whether there are sufficient copies of the work to
distribute. (Ex. 1001, 31:34-49.) The above-noted description constitutes a
sufficiently disclosed algorithm, expressed in prose, which, in combination with
processor 1200, constitutes a corresponding structure for the claimed “means for
checking whether the request is for a permitted rendering of the digital content in
accordance with rights specified in the apparatus.”
(Dkt. No. 331, Ex. 18, 7/9/2013 Decision (‘576 Patent), at 22-23.)
The parties’ experts dispute whether the steps of the PTAB’s construction are necessary
to perform the claimed function. (Dkt. No. 304, Ex. K, 11/25/2014 Goodrich Decl. at ¶¶ 27-29;
Dkt. No. 331, Ex. 11, Grimes Decl. at ¶¶ 16-24.) On balance, the Court finds Defendants’ expert
more persuasive. In particular, Plaintiff’s expert has failed to persuasively demonstrate that the
additional steps identified by the PTAB are not part of the algorithm disclosed for performing the
claimed function. See ‘859 Patent at 30:16-62. Finally, the Court affords “reasoned deference”
to the PTAB Decision. Maurice Mitchell, 2006 WL 1751779, at *4; see TQP, 2014 WL
2810016, at *6; see also Teva, 135 S. Ct. at 839-40.
The Court accordingly hereby finds that for the “means for checking whether the
request is for a permitted rendering of the digital content in accordance with rights
specified in the apparatus,” the function is “checking whether the request is for a permitted
rendering of the digital content in accordance with rights specified in the apparatus,” and
the corresponding structure is “a processor configured to perform the following algorithm
and equivalents thereof: first, the requester repository determines whether an
authorization certificate or a digital ticket is needed; second, the server repository
generates a transaction identifier; third, the server repository determines whether the right

87

is granted and whether time, security, and access based conditions are satisfied; and finally,
the server repository determines whether there are sufficient copies of the work to
distribute; and equivalents thereof.”
Y. “means for receiving the authorization ob[j]ect when it is determined that the request
should be granted”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“Corresponding Structure:
One or more processors that implement the
following algorithm: The remote repository
transmits a block of data to the server
repository and waits for an acknowledgement,
which the server provides when the block of
data has been completely received. (33:9-15.)
Unless a communications failure terminates the
transaction, that process repeats until there are
no more blocks to transmit. (33:16-38, 33:4649.) Finally, the server repository sends a
completion acknowledgement to the remote
repository. (33:39-45.)”12

“[T]he server repository transmits a block of
data to the requester repository and waits for an
acknowledgement, which the requester
provides when the block of data has been
completely received. Unless a
communications failure terminates the
transaction, that process repeats until there are
no more blocks to transmit. Finally, the
requester repository sends a completion
acknowledgement to the server repository.
In that regard, the specification states: “The
key property is that both the server and the
requester cancel a transaction if it is interrupted
before all of the data blocks are delivered, and
commits to it if all of the data blocks have been
delivered.”13

12

Plaintiff previously proposed: “Corresponding Structure: algorithm/structure necessary for
performing the recited function set forth in the ‘576 Spec., including from the following portions:
32:33, 33:9-49, 36:47-50, 41:50-65, and equivalents thereof; see also, e.g., ‘576 PTAB Decision
at 26.” (Dkt. No. 292-1, at 6.)
13

Defendants previously proposed: “A computer processor and processor memory containing
software that, sequentially, instructs the server repository to transmit a block of data to the
requester repository and to wait for an acknowledgment from the requester that the block of data
has been completely received, instructs the server repository to repeat that transmission and
waiting for acknowledgment until there are no more blocks to transmit, instructs the requester
repository to send a completion acknowledgment to the server repository, and instructs both the
server and the requester to cancel a transaction if it is interrupted before all the data blocks are
delivered, and instructs both the server and the requester to commit to the transaction if all the
data blocks have been delivered. Alternatively, indefinite.” (Dkt. No. 292-2, at 30-31.)

88

(Dkt. No. 304, Ex. K, 11/25/2014 Goodrich Decl. at p. 14; Dkt. No. 331, at 28; Dkt. No. 366,
Ex. B, at 26.) The parties submit that this disputed term appears in Claim 1 of the ‘576 Patent.
(Dkt. No. 292-1, at 6; Dkt. No. 331, at 28.)
(1) The Parties’ Positions
Plaintiff’s expert opines:
The PTAB construction incorrectly referred to the “server repository” and
“requester repository.” However, the PTAB construction[] . . . for the “means for
authorizing the repository for making the digital content available for rendering”
makes clear that the “authorization object” is transmitted from the “remote
repository” to the “server repository.” In fact, the PTAB stated that “It is
described in the specification that the authorization process invokes a ‘play’
transaction to acquire an authorization object from a remote repository.”
Accordingly, I have corrected this apparent clerical error in the PTAB
construction.
(Dkt. No. 304, Ex. K, 11/25/2014 Goodrich Decl. at ¶ 33 (citation omitted).)
Defendants argue that the PTAB’s construction should be adopted because “[t]he
PTAB’s terminology . . . comes straight from the cited passages of the patent.” (Dkt. No. 331,
at 28 (citing ‘576 Patent at 33:9-10).)
Plaintiff replies that “Defendants’ construction fails to account for the ‘remote
repository.’” (Dkt. No. 345, at 15; see id., Ex. AA, 1/9/2015 Goodrich Decl., at ¶ 17.)
At the February 6, 2015 hearing, the parties did not address this disputed term.
(2) Analysis
Claim 1 of the ‘576 Patent recites (emphasis added):
1. An apparatus for rendering digital content in accordance with rights that are
enforced by the apparatus, said apparatus comprising:
a rendering engine configured to render digital content;
a storage for storing the digital content;
means for requesting use of the digital content stored in the storage; and
a repository coupled to the rendering engine,
wherein the repository includes:
89

means for processing a request from the means for requesting,
means for checking whether the request is for a permitted rendering of the
digital content in accordance with rights specified in the apparatus,
means for processing the request to make the digital content available to
the rendering engine for rendering when the request is for a permitted rendering
of the digital [sic]; and
means for authorizing the repository for making the digital content
available for rendering, wherein the digital content can be made available for
rendering only by an authorized repository, the repository comprising:
means for making a re[q]uest for an authorization ob[j]ect required to be
included within the repository for the apparatus to render the digital content; and
means for receiving the authorization ob[j]ect when it is determined that
the request should be granted.
In instituting an IPR of the ‘576 Patent, the PTAB found as to this disputed term:
[T]he server repository transmits a block of data to the requester repository and
waits for an acknowledgement, which the requester provides when the block of
data has been completely received. (Ex. 1001, 33:9-15.) Unless a
communications failure terminates the transaction, that process repeats until there
are no more blocks to transmit. (Ex. 1001, 33:16-38, 33:46-49.) Finally, the
requester repository sends a completion acknowledgement to the server
repository. (Ex. 1001, 33:39-45.) In that regard, the specification states
(Ex. 1001, 33:45-48): “The key property is that both the server and the requester
cancel a transaction if it is interrupted before all of the data blocks are delivered,
and commits to it if all of the data blocks have been delivered.” The above-noted
description constitutes a sufficiently disclosed algorithm, expressed in prose,
which, in combination with processor 1200, constitutes a corresponding structure
for the claimed “means for receiving the authorization object when it is
determined that the request should be granted.”
(Dkt. No. 331, Ex. 18, 7/9/2013 Decision (‘576 Patent), at 26.)
The PTAB’s construction is consistent with the context of the claim because the “means
for receiving” is part of the rendering apparatus that is recited as requesting access to the content.
The Court therefore affords “reasoned deference” to the PTAB Decision. Maurice Mitchell,
2006 WL 1751779, at *4; see TQP, 2014 WL 2810016, at *6; see also Teva, 135 S. Ct.
at 839-40.
The Court accordingly hereby finds that for the “means for receiving the authorization
ob[j]ect when it is determined that the request should be granted,” the function is “receiving
90

the authorization object when it is determined that the request should be granted,” and the
corresponding structure is “a processor configured to perform the following algorithm and
equivalents thereof: the server repository transmits a block of data to the requester
repository and waits for an acknowledgement, which the requester provides when the
block of data has been completely received; unless a communications failure terminates the
transaction, that process repeats until there are no more blocks to transmit; finally, the
requester repository sends a completion acknowledgement to the server repository; both
the server and the requester cancel a transaction if it is interrupted before all of the data
blocks are delivered, and commits to it if all of the data blocks have been delivered; and
equivalents thereof.”
Z. “means for requesting a transfer of the digital content from an external memory to the
storage”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“Corresponding Structure:
user interface 1305 described at
16:35-44”14

Indefinite

(Dkt. No. 304, Ex. K, 11/25/2014 Goodrich Decl. at p. 15; Dkt. No. 331, at 29.) The parties
submit that this disputed term appears in Claim 4 of the ‘576 Patent. (Dkt. No. 292-1, at 6-7;
Dkt. No. 331, at 29.) “The PTAB did not construe this claim term.” (Dkt. No. 331, at 29.)
(1) The Parties’ Positions
Plaintiff’s expert opines: “A person of ordinary skill in the art would understand that a
user interface is necessary for a user to request a transfer of the digital content from an external
14

Plaintiff previously proposed: “Corresponding Structure: algorithm/structure necessary for
performing the recited function set forth in the ’576 Spec., including from the following portions:
30:25-30, 30:59-31:49, 32:20-31, 36:35-54, 37:9-26, and equivalents thereof; see also, e.g., ’576
PTAB Decision at 20-22.” (Dkt. No. 292-1, at 6-7.)

91

memory to the storage and clearly linked to that function.” (Dkt. No. 304, Ex. K, 11/25/2014
Goodrich Decl. at ¶ 34.)
Defendants argue that “[Plaintiff] fails to include an algorithm because there is none, thus
the term is indefinite.” (Dkt. No. 331, at 29.)
Plaintiff replies that “[n]o algorithm is required because the specification discloses the
precise structure (i.e., a user interface) used for performing the function.” (Dkt. No. 345, at 15.)
At the February 6, 2015 hearing, the parties did not address this disputed term.
(2) Analysis
“[A] means-plus-function claim element for which the only disclosed structure is a
general purpose computer is invalid if the specification fails to disclose an algorithm for
performing the claimed function.” Net MoneyIN, 545 F.3d at 1367; see WMS Gaming, 184 F.3d
at 1349; see also Noah, 675 F.3d at 1319.
If an algorithm is required, that algorithm may be disclosed in any understandable form.
See Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1386 (Fed. Cir. 2011) (“Indeed, the
mathematical algorithm of the programmer is not included in the specification. However, as
precedent establishes, it suffices if the specification recites in prose the algorithm to be
implemented by the programmer.”); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d
1323, 1340 (Fed. Cir. 2008) (noting that “a patentee [may] express th[e] algorithm in any
understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any
other manner that provides sufficient structure”) (citation omitted); TecSec, Inc. v. Int’l Bus.
Machs., 731 F.3d 1336, 1348 (Fed. Cir. 2013) (quoting Finisar).
Nonetheless, the purported algorithm cannot “merely provide[] functional language” and
must provide a “step-by-step procedure” for accomplishing the claimed function. Ergo

92

Licensing, 673 F.3d at 1365. Further, “[i]t is well settled that simply disclosing software,
however, without providing some detail about the means to accomplish the function, is not
enough.’” Finally, when citing sections of the specification, a patentee should demonstrate “how
these sections explain to one of ordinary skill in the art the manner in which the claimed
functions are implemented.” Personalized Media Commc’n, LLC v. Motorola, Inc., No. 2:08CV-70-CE, 2011 WL 4591898, at *38 (E.D. Tex. Sept. 30, 2011); see Function Media, L.L.C. v.
Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013).
Claim 4 of the ‘576 Patent recites: “4. The apparatus as recited in claim 1, further
comprising means for requesting a transfer of the digital content from an external memory to the
storage.”
The specification discloses:
Repository User Interface
A user interface is broadly defined as the mechanism by which a user interacts
with a repository in order to invoke transactions to gain access to a digital work,
or exercise usage rights. As described above, a repository may be embodied in
various forms. The user interface for a repository will differ depending on the
particular embodiment. The user interface may be a graphical user interface
having icons representing the digital works and the various transactions that may
be performed. The user interface may be a generated dialog in which a user is
prompted for information.
The user interface itself need not be part of the repository. As a repository may
be embedded in some other device, the user interface may merely be a part of the
device in which the repository is embedded. For example, the repository could be
embedded in a “card” that is inserted into an available slot in a computer system.
The user interface may be combination of a display, keyboard, cursor control
device and software executing on the computer system.
At a minimum, the user interface must permit a user to input information such as
access requests and alpha numeric data and provide feedback as to transaction
status. The user interface will then cause the repository to initiate the suitable
transactions to service the request. Other facets of a particular user interface will
depend on the functionality that a repository will provide.

93

‘859 Patent at 15:44-16:2.
Defendants’ expert, Dr. Grimes, opines that “[t]he ‘user interface 1305, shown in
Figure 13’ consists of a rectangle containing the text ‘User Interface 1305.’ This is not an
algorithm or even a block diagram, only a block.” (Dkt. No. 331, Ex. 11, 12/22/2014 Grimes
Decl. at ¶ 31.) Further, Dr. Grimes opines that the specification disclosure cited by Plaintiff,
which is quoted above, “is not a description of an algorithm for the claimed function.” (Id., at
¶ 32.)
On balance, the disclosure set forth in the above-quoted “Repository User Interface”
section of the specification is sufficient for performing the claimed function. The Court finds
Plaintiff’s expert’s opinion credible in that regard. (Dkt. No. 304, Ex. K, 11/25/2014 Goodrich
Decl. at ¶ 34.)
The Court accordingly hereby finds that for the “means for requesting a transfer of the
digital content from an external memory to the storage,” the function is “requesting a
transfer of the digital content from an external memory to the storage,” and the
corresponding structure is “user interface 1305, as described in the ‘576 Patent at 16:20-46;
and equivalents thereof.”

94

AA. “means for processing the request to make the digital content available to the
rendering engine for rendering when the request is for a permitted rendering of the digital
[content],” “means for authorizing the repository for making the digital content available
for rendering, wherein the digital content can be made available for rendering only by an
authorized repository,” and “means for making a request for an authorization object
required to be included within the repository for the apparatus to render the digital
content”
“means for processing the request to make the digital content available to the rendering
engine for rendering when the request is for a permitted rendering of the digital [content]”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“Corresponding Structure:
One or more processors that implement the
following algorithm: First, transaction
information is provided to the server repository
by the requester repository. (33:3-8.) Second,
the server repository transmits a block of data
to the requester repository and waits for an
acknowledgement provided by the requester
when the block of data has been received.
(33:9-15.) Unless a communications failure
terminates the transaction, that process repeats
until there are no more blocks to transmit.
(33:16-38, 33:46-49.) Finally, the requester
repository commits the transaction and sends
an acknowledgement to the server repository.
(33:39-45.)”

“One or more processors that implement the
following algorithm: First, transaction
information is provided to the server repository
by the requester repository. Second, the server
repository transmits a block of data to the
requester repository and waits for an
acknowledgement provided by the requester
when the block of data has been received.
Unless a communications failure terminates the
transaction, that process repeats until there are
no more blocks to transmit. Finally, the
requester repository commits the transaction
and sends an acknowledgement to the server
repository.”

95

“means for authorizing the repository for making the digital content available for
rendering, wherein the digital content can be made available for rendering only by an
authorized repository”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“Corresponding Structure:
One or more processors that implement the
following algorithm: First, a communication
channel is set up between the server and the
remote repository. (41:52-54.) Second, the
server repository performs a registration
process with the remote repository.
(41:55-57.) Third, the server repository
invokes a “play” transaction to acquire the
authorization object. (41:58-64.) Finally, the
server repository performs tests on the
authorization object or executes a script before
signaling that authorization has been granted
for rendering content. (41:65-42:16.)”

“One or more processors that implement the
following algorithm: First, a communication
channel is set up between the server and the
remote repository. Second, the server
repository performs a registration process with
the remote repository. Third, the server
repository invokes a “play” transaction to
acquire the authorization object. Finally, the
server repository performs tests on the
authorization object or executes a script before
signaling that authorization has been granted
for rendering content.”

“means for making a re[q]uest for an authorization ob[j]ect required to be included within
the repository for the apparatus to render the digital content”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“Corresponding Structure:
One or more processors that implement the
following algorithm: First, a communications
channel is set up between the server repository
and the remote repository. (41:52-54.)
Second, the server repository performs a
registration process with the remote repository.
(41:55-57.) Third, the server repository
invokes a “play” transaction to request the
authorization object. (41:58-64.)”

“One or more processors that implement the
following algorithm: First, a communications
channel is set up between the server repository
and the remote repository. Second, the server
repository performs a registration process with
the remote repository. Third, the server
repository invokes a “play” transaction to
request the authorization object.”

(Dkt. No. 366, Ex. B, at 23-25.) These disputed terms appear in Claim 1 of the ‘576 Patent.
Defendants submit:
[T]o avoid jury confusion, the Court should decline [Plaintiff’s] invitation to
include parenthetical citations in its constructions of “means for processing the
96

request to make the digital content available to the rendering engine for rendering
when the request is for a permitted rendering of the digital [content]”; “means for
authorizing the repository for making the digital content available for rendering”;
and “means for making a request for an authorization object required to be
included within the repository for the apparatus to render the digital content.”
Outside of the parenthetical citations, the parties now agree on the substance of
these three terms.
(Dkt. No. 331, at 27 n.15 (square brackets Defendants’).) At the February 6, 2015 hearing, the
parties did not address these terms.
On balance, the Court agrees with Defendants that including the parentheticals proposed
by Plaintiff is unnecessary in light of the parties having otherwise reached agreement as to the
proper corresponding structure for these means-plus-function terms.
The Court accordingly hereby construes these disputed terms as set forth in the following
chart:
Term

Corresponding Structure

“means for processing the request to make the
digital content available to the rendering
engine for rendering when the request is for a
permitted rendering of the digital [content]”

“One or more processors that implement the
following algorithm and equivalents thereof:
First, transaction information is provided to the
server repository by the requester repository.
Second, the server repository transmits a block
of data to the requester repository and waits for
an acknowledgement provided by the requester
when the block of data has been received.
Unless a communications failure terminates the
transaction, that process repeats until there are
no more blocks to transmit. Finally, the
requester repository commits the transaction
and sends an acknowledgement to the server
repository.”

“means for authorizing the repository for
making the digital content available for
rendering, wherein the digital content can be
made available for rendering only by an
authorized repository”

“One or more processors that implement the
following algorithm and equivalents thereof:
First, a communication channel is set up
between the server and the remote repository.
Second, the server repository performs a
registration process with the remote repository.
Third, the server repository invokes a “play”
97

transaction to acquire the authorization object.
Finally, the server repository performs tests on
the authorization object or executes a script
before signaling that authorization has been
granted for rendering content.”
“means for making a re[q]uest for an
authorization ob[j]ect required to be included
within the repository for the apparatus to
render the digital content”

“One or more processors that implement the
following algorithm and equivalents thereof:
First, a communications channel is set up
between the server repository and the remote
repository. Second, the server repository
performs a registration process with the remote
repository. Third, the server repository
invokes a “play” transaction to request the
authorization object.”

V. CONSTRUCTION OF DISPUTED TERMS IN THE NGUYEN PATENTS
The ‘280 Patent is titled “System and Method for Managing Transfer of Rights Using
Shared State Variables.” The ‘280 Patent issued on August 10, 2010, and bears a priority date of
June 7, 2001. The Abstract states:
A method, system and device for transferring rights adapted to be associated with
items from a rights supplier to a rights consumer, including obtaining a set of
rights associated with an item, the set of rights including meta-rights specifying
derivable rights that can be derived from the meta- [sic, meta-right]; determining
whether the rights consumer is entitled to the derivable rights specified by the
meta-rights; and deriving at least one right from the derivable rights, if the rights
consumer is entitled to the derivable rights specified by the meta-rights, wherein
the derived right includes at least one state variable based on the set of rights and
used for determining a state of the derived right.
The ‘053 Patent claims priority to a provisional application to which the ‘280 Patent also
claims priority.

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A. “repository”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“Same as in Stefik Patents, i.e.: a trusted
system in that it maintains physical,
communications, and behavioral integrity in
the support of usage rights”

“a trusted system, which maintains physical,
communications and behavioral integrity, and
supports usage rights”

(Dkt. No. 292-1, at 12; Dkt. No. 331, at 29; Dkt. No. 366, Ex. B, at 46.) The parties submit that
this disputed term appears in Claims 1 and 12 of the ‘280 Patent and Claims 1 and 15 of the ‘053
Patent. (Dkt. No. 292-1, at 12; Dkt. No. 331, at 29.)
“[Plaintiff] and Defendants agree that ‘repository’ should be construed the same way in
the Stefik and Nguyen patents.” (Dkt. No. 331, at 30.)
For the same reasons set forth above as to the Stefik Patents, the Court hereby construes
“repository” to mean “a trusted system in that it maintains physical, communications, and
behavioral integrity in the support of usage rights.”
B. “license”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“data embodying a grant of usage rights and/or
meta-rights”

“a data structure containing both a usage right
and meta-right”

(Dkt. No. 304, at 21; Dkt. No. 334, at 34.) The parties submit that this disputed term appears in
Claims 11 and 22 of the ‘280 Patent and Claims 1, 3, 4, 5, 15, and 23 of the ‘053 Patent. (Dkt.
No. 292-1, at 11; Dkt. No. 331, at 34.)15

15

Defendants submit in their response brief, evidently erroneously, that this disputed term
appears also in Claim 12 of the ‘280 Patent. (Dkt. No. 331, at 34.)

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(1) The Parties’ Positions
Plaintiff submits that “the specification repeatedly uses ‘and/or’ language to make clear
that a ‘license’ can embody usage rights, meta-rights, or both.” (Dkt. No. 304, at 21.) Plaintiff
also argues that Defendants’ proposal of a “data structure” is based on a portion of the
specification but, “[a]mong other issues, . . . is incomplete.” (Id., at 21-22.)
Defendants respond that the Nguyen Patents “describe licenses not as mere permissions
or authorizations, but as particular data constructs . . . .” (Dkt. No. 331, at 34-35 (citing ‘280
Patent at 4:7-14; citing ‘053 Patent at 4:40-47).)
Plaintiff replies that “the patent specification repeatedly uses ‘and/or’ language to teach
that a license can embody usage rights, meta-rights, or both . . . .” (Dkt. No. 345, at 15.)
Further, Plaintiff submits, “Defendants also fail to explain why the Court should limit the term
license to a ‘data structure’ when the patent teaches that rights can also be expressed in ‘symbols,
elements, or sets of rules.’” (Id., at 15 n.17.)
At the February 6, 2015 hearing, the parties did not address this disputed term.
(2) Analysis
The specification discloses:
License 52 includes the appropriate rights, such as usage rights and/or metarights, and can be downloaded from license server 50 or an associated device.
‘280 Patent at 5:13-16 (emphasis added).
As shown in FIG. 10, license 52 includes license 52a, grant 52b, and digital
signature 52c. Grant 52b includes granted usage rights and/or meta-rights
selected from label. The structure of the grant also includes one or more
principals, to whom the specified usage rights and/or meta-rights are granted, a
list of conditions, and state variables required to enforce the license. Like usage
rights, access and exercise of the granted meta-rights are controlled by the
condition list and state variables as described below.

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‘053 Patent at 4:59-64 (emphasis omitted); see id. at 10:15-16 (“[G]rant 52b of license 52 can
include usage rights and/or meta-rights.”) (emphasis added); see also id. at 6:66-7:2 (“An ‘offer
of rights’ or ‘rights offer’ expresses how a consumer (e.g. a content distributor or user) can
acquire a particular instance of content together with its associated usage rights and/or metarights.”) (emphasis added).
The specification also discloses “licenses” both with and without reference to a metaright:
These licenses embody the actual granting of usage rights to an end user. For
example, rights label 40 may include usage rights permitting a recipient to view
content for a fee of five dollars and view and print content for a fee of ten dollars.
License 52 can be issued for the view right when the five dollar fee has been paid,
for example. Client component 60 interprets and enforces the rights that have
been specified in license 52.
‘280 Patent at 4:7-14.
FIG. 4 is an example of license 52 encoded in XrML™. The provider grants the
distributor a meta right to issue a usage right (i.e., play) to the content (i.e., a
book) to any end user. With this meta right, the distributor may issue the right to
play the book within the U.S. region and subject to some additional conditions
that the distributor may impose upon the user, as long as the distributor pays $1 to
the provider each time the distributor issues a license for an end user.
Id. at 8:17-24.
Licenses 52 embody the actual granting of rights, including usage rights and
meta-rights, to an end user. For example, rights offer 40 may permit a user to
view content for a fee of five dollars and print content for a fee of ten dollars, or it
may permit a user to offer rights to another user, for example, by utilizing the
concept of meta-rights described below. License 52 can be issued for the view
right when the five dollar fee has been paid. Client component 60 interprets and
enforces the rights, including usage rights and meta-rights, that have been
specified in the license.
‘053 Patent at 4:40-50 (emphasis added).
Plaintiff argues that “[t]he plain import of this sentence [(“Licenses 52 embody the actual
granting of rights, including usage rights and meta-rights, to an end user.”)] is that the scope of
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the word ‘rights’ in licenses generally can encompass both usage rights and meta-rights. It does
not follow, however, that every license specifically must contain both types of rights.” (Dkt.
No. 345, at 15.)
On balance, the above-quoted disclosures demonstrate that Defendants’ proposal of
“usage right and meta-right” should be rejected.
As to whether a “license” must be a data structure, as Defendants have proposed, the
specification discloses:
Meta-rights can be expressed by use of a grammar or rights language including
data structures, symbols, elements, or sets of rules.
‘280 Patent at 7:40-42; see id. at 4:7-14; see also id. at 4:40-48. Plaintiff urges that because
Defendants’ proposed construction “ignores the reference to ‘symbols,’ ‘elements’ and ‘sets of
rules, . . . [Plaintiff’s] construction of ‘data embodying a grant’ is more appropriate. (Dkt.
No. 304, at 22.)
On balance, Defendants’ proposal of “data structure” lacks sufficient support in the
intrinsic evidence and would tend to confuse rather than clarify the scope of the claims.
The Court accordingly hereby construes “license” to mean “data embodying a grant of
usage rights and/or meta-rights.”
C. “meta-right”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“a right that when exercised creates or disposes
of usage rights or other meta[-]rights but is not
itself a usage right, i.e., actions to content do
not result from exercising meta-rights”16

“a data structure that is used by a repository to
create or dispose of ‘usage rights’ or other
meta-rights relating to an item of content and is
distinct from a usage right associated with the
item of content”

16

Plaintiff previously proposed: “a right that when exercised creates or disposes of usage rights
or other meta-rights but is not itself a usage right.” (Dkt. No. 304, at 22.)

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(Dkt. No. 304, at 22; Dkt. No. 331, at 31; Dkt. No. 366, Ex. B, at 45.) The parties submit that
these disputed terms appear in Claims 1, 11, 12, and 22 of the ‘280 Patent and Claims 1, 3, 4,
and 15 of the ‘053 Patent. (Dkt. No. 292-1, at 11; Dkt. No. 331, at 31.)
(1) The Parties’ Positions
Plaintiff argues that whereas its proposed construction is “based on an express definition
in the specification,” Defendants “seek to graft additional language onto this definition that is
nowhere found in the specification and which obscures rather than clarifies the distinction
between meta-rights and usage rights.” (Dkt. No. 304, at 22.) Plaintiff explains that “in contrast
to usage rights which control access to content, meta-rights control and manage usage rights (or
other meta-rights).” (Id., at 23 (citing ‘280 Patent at 7:23-31).) Finally, Plaintiff argues that “it
is unclear whether Defendants’ construction means: (a) that a meta-right is not itself a usage
right (in which case [Plaintiff’s] construction is a clearer way of saying that); (b) that a metaright can be a usage right so long as it is distinct from at least one other usage right associated
with the same content (which would be at odds with the distinctions recited in the specification);
or (c) something else entirely.” (Dkt. No. 304, at 24.)
Defendants respond that “‘[m]eta-rights’ in the Nguyen patents are the rights to grant
‘usage rights’ (or additional meta-rights) to others.” (Dkt. No. 331, at 31.) Defendants submit
that their proposed construction “avoids reciting pure legal concepts and captures the three
distinguishing characteristics of ‘meta-rights’ in the Nguyen patents: ‘meta-rights’ are (1) formed
as a data construct associated with a particular digital work; (2) used by a repository to create or
dispose of usage rights or other meta-rights; and (3) distinct from a usage right.” (Id., at 31-32.)
Defendants emphasize that “[e]very . . . example in the specifications . . . presents meta-rights as
data.” (Id., at 32.)
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Plaintiff replies that including Defendants’ “data structure” and “repository” limitations
would “create[] nonsensical redundancy.” (Dkt. No. 345, at 16.) Plaintiff also argues that its
proposed construction makes clear that “a meta-right can be exercised independent of an action
to content.” (Id.)
At the February 6, 2015 hearing, Defendants argued that Plaintiff’s proposed “i.e.” phrase
is confusing and should be omitted.
(2) Analysis
Claim 1 of the ‘280 Patent, for example, recites (emphasis added):
1. A computer-implemented method for transferring rights adapted to be
associated with items from a rights supplier to a rights consumer, the method
comprising:
obtaining a set of rights associated with an item, the set of rights including
a meta-right specifying a right that can be created when the meta-right is
exercised, wherein the meta-right is provided in digital form and is enforceable
by a repository;
determining, by a repository, whether the rights consumer is entitled to the
right specified by the meta-right; and
exercising the meta-right to create the right specified by the meta-right if
the rights consumer is entitled to the right specified by the meta-right, wherein the
created right includes at least one state variable based on the set of rights and used
for determining a state of the created right.
The specification discloses:
Meta-rights are the rights that one has to generate, manipulate, modify, dispose of
or otherwise derive other rights. Meta-rights can be thought of as usage rights to
usage rights (or other meta-rights). * * * Meta-rights can be hierarchical and can
be structured as objects within objects.
‘280 Patent at 5:47-50 & 5:60-62; see ‘053 Patent at 5:22-23 (similar).
At a high level the process of enforcing and exercising meta-rights are [sic, is] the
same as for usage rights. However, the difference between usage rights and metarights are [sic, is] the result from exercising the rights. When exercising usage
rights, actions to content result. For example usage rights can be for viewing,
printing, or copying digital content. When meta-rights are exercised, new rights
are created from the meta-rights or existing rights are disposed as the result of
exercising the meta-rights. The recipient of the new rights may be the same
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principal (same person, entity, or machine, etc), who exercises the meta-rights.
Alternatively, the recipient of meta-rights can be a new principal. The principals
who receive the derived rights may be authenticated and authorized before
receiving/storing the derived rights. Thus, the mechanism for exercising and
enforcing a meta-right can be the same as that for a usage right. . . .
Meta-rights can be expressed by use of a grammar or rights language including
data structures, symbols, elements, or sets of rules. For example, the XrML™
rights language can be used. As illustrated in FIG. 3, the structure of license 52
can consist of one or more grants 300 and one or more digital signatures 310.
‘280 Patent at 7:23-45 (emphasis added).
In FIG. 9, rights 902 and 903 derived from an offer 901 are exclusive to each
respective consumer. The offer 901 is a type of meta-right of which the recipients
have the rights to obtain specific derivative rights when the conditions for
obtaining such rights are satisfied.
‘280 Patent at 11:54-58 (emphasis added); see ‘280 Patent at Figs. 9-16; see also ‘053 Patent at
Figs. 13-20 (same).
Plaintiff also submits that in an appeal during prosecution of United States Patent
No. 7,774,279, which claims priority to one of the same applications to which the Nguyen
Patents claim priority, the Board of Patent Appeals and Interferences found that “the
Specification provides an express definition of ‘meta-rights.’ . . . The definition for ‘meta-rights’
given in the Specification governs the construction to be given that term in the claims.” (Dkt.
No. 304, Ex. V, 12/16/2009 Decision on Appeal, at 6.)
Plaintiff also submits that in a recent Petition for Covered Business Method Patent
Review at the PTO, Defendant Google Inc. argued that “the broadest reasonable construction of
a ‘meta-right’ is ‘a right about a right.’” (Dkt. No. 345, Ex. AJ, at 27.)
On balance, Defendants’ proposal of “data structure” lacks sufficient support in the
intrinsic evidence and would tend to confuse rather than clarify the scope of the claims. The
parties are otherwise essentially in substantive agreement, and the above-discussed evidence

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demonstrates that a “meta-right” is a right governing another right rather than governing any
action to content.
The Court accordingly hereby construes “meta-right” to mean “a right that, when
exercised, creates or disposes of usage rights (or other meta-rights) but that is not itself a
usage right because exercising a meta-right does not result in action to content.”
D. “usage rights”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Same as in Stefik patents, i.e., “an indication of
the manner in which a [digital work / digital
content / content / a digital document] may be
used or distributed as well as any conditions on
which use or distribution is premised”

“statements in a language for defining the
manner in which a digital work may be used or
distributed, as well as any conditions on which
use or distribution is premised. Usage rights
must be permanently attached to the digital
work”17

(Dkt. No. 304, at 23; Dkt. No. 331 at 33; Dkt. No. 366, Ex. B, at 50.) The parties submit that this
disputed term appears in Claims 1, 3, 4, and 15 of the ‘053 Patent. (Dkt. No. 292-1, at 12; Dkt.
No. 331, at 33.)18
(1) The Parties’ Positions
Plaintiff argues: “Defendants’ scattershot approach will result in jury confusion and does
not reflect how a person of skill in the art would understand these patents. From beginning to
end, the specification confirms that ‘usage rights’ should be construed the same in both the metarights patents and the Stefik patents.” (Dkt. No. 304, at 24.)

17

Defendants previously proposed: “A data structure that persists with digital content and that
defines the manner in which the content may be used or distributed, as well as any conditions on
which use or distribution is premised.” (Dkt. No. 292-2, at 21.)

18

Plaintiff submitted in its P.R. 4-3 statement, evidently erroneously, that this disputed term
appears also in Claims 5 and 23 of the ‘053 Patent. (Dkt. No. 292-1, at 12.)

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Defendants respond “[t]he parties agree that the Court should construe ‘usage rights’ in
the Nguyen ‘053 patent in the same way the Court construes that term for the majority of the
Stefik patents because the ‘053 patent incorporates four Stefik patents by reference. . . . The
parties disagree about which Stefik patents to base this construction on.” (Dkt. No. 331, at 33.)
Defendants emphasize that whereas the ‘053 Patent incorporates-by-reference several Stefik
Patents, the Stefik ‘160 Patent relied upon by Plaintiff is not incorporated by the ‘053 Patent.
(Id.)
Plaintiff replies that having a different construction for the Nguyen Patents “would result
in unnecessary jury confusion.” (Dkt. No. 345, at 17.)
(2) Analysis
The specification discloses:
A predetermined set of usage transaction steps define a protocol used by the
repositories for enforcing usage rights associated with a document. Usage rights
persist with the document content. The usage rights can permit various manners
of use such as, viewing only, use once, distribution, and the like. Usage rights can
be contingent on payment or other conditions.
***
The interpretation and enforcement of usage rights are well known generally.
‘053 Patent at 2:39-45 & 6:23-25 (emphasis added); see id. at 15:25-27 (“Access to the various
documents, and elements thereof, can be controlled using known techniques.”)
For substantially the same reasons discussed above as to the Stefik Patents, the Court
reaches the same construction for the Nguyen Patents as for the Stefik Patents.
The Court accordingly hereby construes “usage rights” to mean “indications that are
attached, or treated as attached, to [a digital work / digital content / content / a digital
document] and that indicate the manner in which the [digital work / digital content /

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content / digital document] may be used or distributed as well as any conditions on which
use or distribution is premised.”
E. “manner of use”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Same as in Stefik patents, i.e., “a way in which
[a digital work / digital content / content / a
digital document] may be used”

“a defined way of using or distributing a digital
work (for example, PLAY, COPY, or PRINT),
as distinct from conditions which must be
satisfied before that way of using or
distributing the digital work is allowed”
[Same as in Stefik Patents]

(Dkt. No. 304, at 23; Dkt. No. 331 at 31; Dkt. No. 366, Ex. B, at 50.) The parties submit that this
disputed term appears in Claims 1 and 15 of the ‘053 Patent. (Dkt. No. 292-1, at 12; Dkt.
No. 331, at 31.)
“Both sides propose their respective constructions of ‘manner(s) of use’ for both the
Stefik and Nguyen patents.” (Dkt. No. 331, at 31.)
Defendants argue that “[j]ust like the Stefik patents, the ‘053 patent differentiates
manners of use from conditions on use or distribution.” (Dkt. No. 331, at 31 (citing ‘053 Patent
at 1:58-64 & 2:42-44).) “Essentially,” Defendants submit, “authorization determines whether a
user is allowed to access digital content, while usage rights define particular manners in which
the authorized content can be used.” (Id.)
Plaintiff’s reply brief does not specifically address this disputed term. (See Dkt. No. 345,
at 16-17.)
The specification discloses:
The usage rights can permit various manners of use such as, viewing only, use
once, distribution, and the like. Usage rights can be contingent on payment or
other conditions.

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‘280 Patent at 2:16-19.
Because the parties appear to agree that this disputed term should be given the same
construction in the Nguyen Patents as in the Stefik Patents, the Court hereby construes “manner
of use” to mean “a way in which [a digital work / digital content / content / a digital
document] may be used, as contrasted with a condition associated with such use.”
F. “state variable”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“a variable having a value, or identifying a
location at which a value is stored, that
represents status of an item, rights, license, or
other potentially dynamic conditions”

“a variable having a value that represents the
status of usage rights, license, or other dynamic
conditions”

(Dkt. No. 304, at 25; Dkt. No. 331, at 34.) The parties submit that this disputed term appears in
Claims 1, 5, and 12 of the ‘280 Patent and Claims 1, 4, 5, 15, and 23 of the ‘053 Patent. (Dkt.
No. 292-1, at 13; Dkt. No. 331, at 34.)
(1) The Parties’ Positions
Plaintiff argues that the specification and the prosecution history explain that a “state
variable” can identify location information. (Dkt. No. 304, at 25-26.)
Defendants respond that the Nguyen Patents expressly define “state variables” in the
manner Defendants have proposed. (Dkt. No. 331, at 34.) Defendants also argue that “[Plaintiff]
does not cite any part of the patents to support its construction” and, “[a]s for [Plaintiff’s]
prosecution history argument, new subject matter added to the ‘053 patent by amendment cannot
be used to expand the scope of this term.” (Id.) Finally, Defendants urge that “[c]onditions are
either dynamic or not. [Plaintiff’s proposal of] ‘[p]otentially’ turns the claim inside out by

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allowing it to encompass conditions that are not dynamic and might never become dynamic.”
(Id.)
Plaintiff replies that based on Figure 15 and accompanying description, “there can be no
dispute that the specification amply discloses the use of a state variable to identify a location on a
remote server.” (Dkt. No. 345, at 17.) Plaintiff also emphasizes disclosure of “track[ing]
potentially dynamic states [sic] conditions.” (Id., at 18 (quoting ‘053 Patent at 5:42-44)
(emphasis Plaintiff’s).)
At the February 6, 2015 hearing, Defendants argued that Plaintiff’s proposal of referring
to a location cannot be correct because a state variable is something that holds a value, not a
location where a value might be found. Defendants also argued that the illustrations of a “state
variable id” (in the Figures of the Nguyen Patents) are references to the names of state variables,
not the values of those variables. Defendants concluded that the illustration of “state variable id
= www.foou.edu” does not demonstrate that a state variable can identify a location.
(2) Analysis
Claim 1 of the ‘053 Patent recites (emphasis added):
1. A method for sharing rights adapted to be associated with an item, the method
comprising:
specifying, in a first license, using a processor, at least one usage right and
at least one meta-right for the item, wherein the usage right and the meta-right
include at least one right that is shared among one or more users or devices;
defining, via the at least one usage right, using a processor, a manner of
use selected from a plurality of permitted manners of use for the item;
defining, via the at least one meta-right, using a processor, a manner of
rights creation for the item, wherein said at least one meta-right is enforceable by
a repository and allows said one or more users or devices to create new rights;
associating, using a processor, at least one state variable with the at least
one right in the first license, wherein the at least one state variable identifies a
location where a state of rights is tracked;
generating, in a second license, using a processor, one or more rights
based on the meta-right in the first license, wherein the one or more rights in the

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second license includes at least one right that is shared among one or more users
or devices; and
associating at least one state variable with the at least one right that is
shared in the second license, wherein the at least one state variable that is
associated with the second license is based on the at least one state variable that is
associated with the first license.
This claim itself thus contemplates that a “state variable” can identify a location at which
a value is stored.
The specification discloses:
State variables track potentially dynamic states [sic] conditions. State variables
are variables having values that represent status of an item, usage rights, license
or other dynamic conditions. State variables can be tracked, by clearinghouse 90
license or server 30 another device [sic], based on identification mechanisms in
license 52. Further, the value of state variables can be used in a condition. For
example, a usage right can be the right to print content 42 three times. Each time
the usage right is exercised, the value of the state variable “number of prints” is
incremented. In this example, when the value of the state variable is three, the
condition is no[] longer satisfied and content 42 cannot be printed. Another
example of a state variable is time. A condition of license 52 may require that
content 42 is printed within thirty days. A state variable can be used to track the
expiration of thirty days. Further, the state of a right can be tracked as a
collection of state variables. The collection of the change is [sic, in] the state of a
usage right represents the usage history of that right.
‘053 Patent at 5:42-59 (emphasis added); see ‘280 Patent at 7:66-8:12 (similar).
In light of this disclosure of “potentially” dynamic conditions, Plaintiff’s proposal of
“potentially” is appropriate.
As to Plaintiff’s proposal of “identifying a location at which a value is stored,” the
specification discloses:
There are multiple ways to specify the scope of state variables, each of which can
affect whether the derivative state variables can be shared, how the derivative
state variables can be shared, and the like. For example, a state variable can be
local, and solely confined to a recipient or can be global, and shared by a
predetermined group of recipients. A global state variable can be shared by a
group of recipients not determined when derived rights are issued, but to be
specified later, perhaps based on certain rules defined in the license or based on
other means. A global state variable can be shared between one or more rights
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suppliers, predetermined recipients, un-specified recipients, and the like.
Advantageously, depending on the sharing employed with a given a [sic] business
model and the rights granted in the meta-rights, state variables can be created at
different stages of the value chain.
‘053 Patent at 17:4-18 (emphasis added); see ‘280 Patent at 11:29-43 (same); see also id.
at 11:25-28 & 12:19-21. Also of note, Figure 17 of the ‘280 Patent discloses “state variable id =
www.foou.edu,” which a person of ordinary skill in the art would understand as an Internet
location. (Dkt. No. 304, Ex. K, 11/25/2014 Goodrich Decl. at ¶ 68; Dkt. No. 345, Ex. AA,
1/9/2015 Goodrich Decl., at ¶ 43.)
Plaintiff also submits that during prosecution of the ‘053 Patent, the patentee stated that
“a state variable referring to a location on a server can be used to infer that the right is shared
among multiple devices.” (Dkt. No. 397, Ex. W, Amendment After Non-Final Rejection at 13
(emphasis added); see id. at 13-14 (“a state variable is not ‘the number of copies’ or ‘rental
terms,’ as asserted by the present Office Action, but rather references, for example, a counter or
variable where ‘the number of copies’ or ‘rental terms’ is maintained, and wherein such a
counter or variable can be located on a local device or a remote server. The ability to choose the
location of a state keeper instead of a specific number, advantageously, provides a mechanism
for the rights owner to control rights sharing.”).)19

19

At the February 6, 2015 hearing, the Court requested that Plaintiff file a more complete
version of the excerpted Exhibit W attached to Plaintiff’s opening brief. Plaintiff did so. (Dkt.
No. 397.) Defendants have responded by submitted a subsequent office action. (See Dkt.
No. 399, Ex. A, 5/21/2007 Office Action.) Defendants explain that submission of this
subsequent office action is necessary for “completeness.” (Dkt. No. 399 at 1.) Defendants have
not argued that they were not aware of the content or significance of Plaintiff’s Exhibit W.
Indeed, at the February 6, 2015 hearing, Defendants’ counsel offered immediately to hand up
paper copies of a complete version of the document that Plaintiff had submitted in excerpted
form as Exhibit W. Defendants had an opportunity to respond to Exhibit W and submit
additional exhibits at the time Defendants filed their responsive claim construction brief. Thus,
Defendants’ submission (Dkt. No. 399) is untimely, and the Court does not consider it.
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Finally, Plaintiff’s expert, Dr. Goodrich, has opined:
To someone of ordinary skill in the art the concept that a variable can store a
location where something is tracked is well understood. For example, the
computer language C includes the concept of a variable storing the address for
another variable and this address can be used to read or write the value of the
other variable. Likewise, at the time of the ‘053 patent it was well understood
that objects on the Internet could be referenced by a Uniform Resource Identifier
(URI), such as a Uniform Resource Locator (URL) which is standard format for
specifying addresses of objects on the Internet, or a Uniform Resource Name
(URN), which identifies a resource on a network using a unique name. * * * It
would be well known to someone with ordinary skill in the art . . . that variables
can be of many different types and the same is true of state variables as taught in
the patent.
(Dkt. No. 345, Ex. AA, 1/9/2015 Goodrich Decl., at ¶ 43.)
Defendants’ expert, Dr. Grimes, responds that “[i]n the context of claims and the intrinsic
evidence, a person of ordinary skill in the art would not understand whether the state variable
stores 1) an address or file in which a value is stored, 2) the identity of a group/organization for
which a state variable is tracked, or 3) the right itself.” (Dkt. No. 331, Ex. 11, 12/22/2014
Grimes Decl., at ¶ 73.) Further, as to the above-mentioned disclosure of a web address, Dr.
Grimes responds that “the specification never discloses what, if anything, is maintained at that
location.” (Id.)
On balance, in light of the above-discussed intrinsic evidence, the opinions of Plaintiff’s
expert are more credible as to how a person of ordinary skill in the art would understand a “state
variable” with regard to a location. Defendants’ expert’s opinions regarding purported
ambiguity are unpersuasive, particularly given the above-quoted prosecution history and the
above-quoted disclosure that state variables can be shared. See ‘280 Patent at 11:29-43; see also
id. at 11:25-28 (“[A] shared state variable can include a data variable that is updated in response
to actions by a plurality of users and which is globally applied to each of the users.”) & 12:19-21
(“[A] shared state can be managed by an entity that is accessible by all sharing principals.”).
113

The Court accordingly hereby construes “state variable” to mean “a variable having a
value, or identifying a location at which a value is stored, that represents status of an item,
rights, license, or other potentially dynamic conditions.”
G. “the at least one state variable identifies a location where a state of rights is tracked”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Ordinary and customary meaning

Indefinite

(Dkt. No. 304, at 25; Dkt. No. 331, at 36). The parties submit that this disputed term appears in
Claims 1 and 15 of the ‘053 Patent. (Dkt. No. 292-1, at 14; Dkt. No. 331, at 36.)
(1) The Parties’ Positions
Plaintiff’s opening brief does not address this term separately from the term “state
variable,” which is addressed above. (See Dkt. No. 304, at 25-26.)
Defendants respond that “One of ordinary skill in the art cannot determine with
reasonable certainty whether the ‘state variable’ is and/or stores (1) an address or file in which
another value is stored; (2) the identity of a group/organization for which a state variable is
tracked; or (3) the ‘state of rights’ itself.” (Dkt. No. 331, at 36.)
Plaintiff’s reply brief does not address this term separately from the term “state variable,”
which is addressed above. (See Dkt. No. 345, at 17-18.)
At the February 6, 2015 hearing, the parties did not address this disputed term.
(2) Analysis
Defendants submit that the specification refers to “state variables,” a “state variable
identification,” and a “state variable id” interchangeably. See, e.g., ‘053 Patent at 4:64, 20:2 &
Fig. 17. The specification illustrates the state variable “id” as being a number (Fig. 17 (“40”)), a
right (Fig. 13 (“AlicePlayEbook”)), a priority (Fig. 18 (“priority_1”)), or an organization (Fig. 16
114

(“um.foo.club”)). Defendants submit that “[t]he specification never explains if these values or
elements are themselves ‘state variables’ or merely ‘identification[s]’ of the state variables.”
(Dkt. No. 331, at 36 (square brackets Defendants’).)
Further, Defendants argue, “though the specification alludes to a state variable storing a
location (such as a Web site address), the specification never discloses what is maintained at that
location.” (Id. (citing ‘053 Patent at 18:14-21 & Fig. 15).) Finally, Defendants submit that the
prosecution history of the ‘053 Patent fails to clarify the meaning by stating that “a state variable
referring to a location on a server can be used to infer that the right is shared among multiple
devices . . . .” (Dkt. No. 331, Ex. 23, 12/31/2008 Reply Brief, at 6.)
For substantially the same reasons set forth above as to the term “state variable,” in
particular as to disclosures regarding sharing of state variables, Defendants’ arguments are
unpersuasive.
The Court therefore hereby expressly rejects Defendants’ indefiniteness argument. No
further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521
F.3d at 1362; Finjan, 626 F.3d at 1207.
The Court accordingly hereby construes “the at least one state variable identifies a
location where a state of rights is tracked” to have its plain meaning apart from the
construction of the term “state variable,” above.

115

H. “specifying, in a first license, . . . at least one usage right and at least one meta-right for
the item, wherein the usage right and the meta-right include at least one right that is
shared among one or more users or devices”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“specifying in a first license, at least one usage
right and at least one meta-right for the item,
wherein at least one of the meta-right or the
usage right is shared among one or more users
or devices”

Indefinite

(Dkt. No. 304, at 27; Dkt. No. 331, at 35.) Defendants submit that this disputed term appears in
Claims 1 and 15 of the ‘053 Patent. (Dkt. No. 331, at 35.)
(1) The Parties’ Positions
Plaintiff argues that “the surrounding claim language and the specification make clear
exactly what the claim covers. In particular, the requirement that a license ‘include’ at last one
shared right merely means that at least one right specified in the license be shared with other
users or devices.” (Dkt. No. 304, at 27.)
Defendants respond that “given that [Plaintiff] admits that a meta-right ‘is not itself a
usage right,’ it is nonsensical that a meta-right and a usage right could possibly both include a
‘shared’ right.” (Dkt. No. 331, at 35 (citing Dkt. No. 304, at 23).) Defendants emphasize that
the disputed term itself recites “the usage right and the meta-right,” not “the usage right or the
meta-right.” (Dkt. No. 331, at 35.)
Plaintiff replies that “[t]he claim language simply requires that the first license specify a
set of rights (i.e., at least one usage right and at least one meta-right), where this set includes at
least one right that is shared. This limitation is satisfied so long as at least one member of the set
is shared.” (Dkt. No. 345, at 18.) Plaintiff also highlights Figure 15 and the accompanying
written description. (Id.)

116

At the February 6, 2015 hearing, the parties did not address this disputed term.
(2) Analysis
The specification discloses:
When a usage right is to be shared among a predetermined set of recipients, a
state variable for tracking a corresponding usage right can be specified in a metaright using a same state variable identification for all recipients. During a process
of exercising the meta-right, the same state variable identification is included in
every derived right.
FIG. 15 illustrates the use of state variable in deriving rights that are shared
among a known set of rights recipients, according to the present invention.
‘053 Patent at 18:8-16; see id. at 18:17-24.
Defendants’ expert, Dr. Grimes, opines that “[t]he specification fails to explain how
either the usage right or the meta-right ‘includes’ a shared right[,] and one of ordinary skill in the
art would not understand what this means without further explanation.” (Dkt. No. 331, Ex. 11,
12/22/2014 Grimes Decl., at ¶ 76.)
Plaintiff’s expert, Dr. Goodrich, replies that “in light of the specification, it is clear that
the claim language does not require that the usage right and the meta-right must each contain
another right that is shared, but rather means that the usage right and meta-right comprise a set
whereby that set includes at least one right (either the meta-right or the usage right) that is
shared.” (Dkt. No. 345, Ex. AA, 1/9/2015 Goodrich Decl., at ¶ 45.)
Claim 1 of the ‘530 Patent, for example, recites (emphasis added):
1. A method for sharing rights adapted to be associated with an item, the method
comprising:
specifying, in a first license, using a processor, at least one usage right
and at least one meta-right for the item, wherein the usage right and the metaright include at least one right that is shared among one or more users or devices;
defining, via the at least one usage right, using a processor, a manner of
use selected from a plurality of permitted manners of use for the item;
defining, via the at least one meta-right, using a processor, a manner of
rights creation for the item, wherein said at least one meta-right is enforceable by
117

a repository and allows said one or more users or devices to create new rights;
associating, using a processor, at least one state variable with the at least
one right in the first license, wherein the at least one state variable identifies a
location where a state of rights is tracked;
generating, in a second license, using a processor, one or more rights
based on the meta-right in the first license, wherein the one or more rights in the
second license includes at least one right that is shared among one or more users
or devices; and
associating at least one state variable with the at least one right that is
shared in the second license, wherein the at least one state variable that is
associated with the second license is based on the at least one state variable that is
associated with the first license.
Consistent with Plaintiff’s proposed construction, the language of the disputed term itself
refers to “at least one right” from among “the usage right and the meta-right.” Plaintiff’s
expert’s opinion supports such a reading of the plain language of the claims and is persuasive.
The Court therefore adopts Plaintiff’s proposed construction so as to aid clarity, and the Court
hereby expressly rejects Defendants’ indefiniteness argument.
The Court accordingly hereby construes “specifying, in a first license, . . . at least one
usage right and at least one meta-right for the item, wherein the usage right and the metaright include at least one right that is shared among one or more users or devices” to mean
“specifying in a first license, at least one usage right and at least one meta-right for the
item, wherein at least one of the meta-right or the usage right is shared among one or more
users or devices.”

118

I. “means for obtaining a set of rights associated with an item”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“Corresponding Structure:
a client environment 30 capable of
connecting to a web server 80 and storing a
license 52 including meta-rights and/or usage
rights in a license repository 818, which can be
interpreted by a license interpreter 802
(4:67-5:13; 10:44-45)20”21

Indefinite

(Dkt. No. 304, Ex. K, 11/25/2014 Goodrich Decl. at p. 35; Dkt. No. 331, at 36; Dkt. No. 366,
Ex. B, at 47.) The parties submit that this disputed term appears in Claim 12 of the ‘280 Patent.
(Dkt. No. 292-1, at 14; Dkt. No. 331, at 36.)
(1) The Parties’ Positions
Plaintiff’s expert opines: “A person of ordinary skill in the art would understand that the
ability to connect to a web server and to store and interpret licenses embodying a grant of rights
is necessary to obtain a set of rights associated with an item, and clearly linked to that function.”
(Dkt. No. 304, Ex. K, 11/25/2014 Goodrich Decl. at ¶ 69.)
Defendants argue that the specification “does not identify a specific structure [such as an
algorithm] that ‘obtains a set of rights’” but instead “provides only a conceptual description in
which rights, content, or both are sent from a content provider to a recipient.” (Dkt. No. 331,
at 37 (citing ’280 Patent at 6:27-31).)
Plaintiff’s reply brief does not address this term. (See Dkt. No. 345, at 15-18.)
20

This parenthetical does not appear in the parties’ January 23, 2015 Joint Claim Construction
Chart. (See Dkt. No. 366, Ex. B, at 47.)
21

Plaintiff previously proposed: “Corresponding Structure: algorithm/structure necessary for
performing the recited function set forth in the ’280 Spec., including from the following portions:
Figs. 1, 5, 8 and 4:66-5:16, 5:18-21, 6:10-17, 8:31-35, 9:54-58, 10:37-45, and equivalents
thereof.” (Dkt. No. 292-1, at 14.)

119

At the February 6, 2015 hearing, the parties did not address this disputed term.
(2) Analysis
“[A] means-plus-function claim element for which the only disclosed structure is a
general purpose computer is invalid if the specification fails to disclose an algorithm for
performing the claimed function.” Net MoneyIN, 545 F.3d at 1367; see WMS Gaming, 184 F.3d
at 1349; see also Noah, 675 F.3d at 1319.
If an algorithm is required, that algorithm may be disclosed in any understandable form.
See Typhoon Touch, 659 F.3d at 1386 (“Indeed, the mathematical algorithm of the programmer
is not included in the specification. However, as precedent establishes, it suffices if the
specification recites in prose the algorithm to be implemented by the programmer.”); see also
Finisar, 523 F.3d at 1340; TecSec, 731 F.3d at 1348.
Nonetheless, the purported algorithm cannot “merely provide[] functional language” and
must provide a “step-by-step procedure” for accomplishing the claimed function. Ergo
Licensing, 673 F.3d at 1365. Further, “[i]t is well settled that simply disclosing software,
however, without providing some detail about the means to accomplish the function, is not
enough.” Function Media, 708 F.3d at 1318 (citation and internal quotations and alterations
omitted).
Claim 12 of the ‘280 Patent recites (emphasis added):
12. A system for transferring rights adapted to be associated with items from a
rights supplier to a rights consumer, the system comprising:
means for obtaining a set of rights associated with an item, the set of
rights including a meta-right specifying a right that can be created when the metaright is exercised, wherein the meta-right is provided in digital form and is
enforceable by a repository;
means for determining whether the rights consumer is entitled to the right
specified by the meta-right; and
means for exercising the meta-right to create the right specified by the
meta-right if the rights consumer is entitled to the right specified by the meta120

right, wherein the created right includes at least one state variable based on the set
of rights and used for determining a state of the created right.
The specification discloses:
When a recipient wishes to obtain specific content 42, the recipient makes a
request for content 42. For example, a user, as a recipient, might browse a Web
site running on Web server 80, using a browser installed in client environment 30,
and request content 42. During this process, the user may go through a series of
steps possibly including a fee transaction (as in the sale of content) or other
transactions (such as collection of information). When the appropriate conditions
and other prerequisites, such as the collection of a fee and verification that the
user has been activated, are satisfied, Web server 80 contacts license server 50
through a secure communications channel, such as a channel using a Secure
Sockets Layer (SSL). License server 50 then generates license 52 for content 42
and Web server 80 causes both the content and license 52 to be downloaded.
License 52 includes the appropriate rights, such as usage rights and/or metarights, and can be downloaded from license server 50 or an associated device.
Content 42 can be downloaded from computer 70 associated with a vendor,
distributor, or other party.
Client component 60 in client environment 30 will then proceed to interpret
license 52 and allow use of content 42 based on the usage rights and conditions
specified in license 52. The interpretation and enforcement of usage rights are
well known generally and described in the patents referenced above, for example.
The steps described above may take place sequentially or approximately
simultaneously or in various orders.
‘280 Patent at 4:66-5:25.
On balance, this disclosure amounts to a sufficient algorithm “in prose” for implementing
the claimed function. Typhoon Touch, 659 F.3d at 1386.
The Court accordingly hereby finds that for the “means for obtaining a set of rights
associated with an item,” the function is “obtaining a set of rights associated with an item,”
and the corresponding structure is “a client environment 30 with a browser capable of
connecting to a web server 80 and storing a license 52 that can be interpreted by client
component 60, as set forth in the ‘280 Patent at 4:66-5:21; and equivalents thereof.”

121

J. “means for determining whether the rights consumer is entitled to the right specified by
the meta-right”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“Corresponding Structure:
authorization manager 508 that
authenticates the rights consumer 304 and
verifies that the conditions 306 of the
license 52 have been satisfied (8:66-9:8;
9:15-18; 9:63-10:2)22”23

Indefinite

(Dkt. No. 304, Ex. K, 11/25/2014 Goodrich Decl. at p. 36; Dkt. No. 331, at 37.) The parties
submit that this disputed term appears in Claim 12 of the ‘280 Patent. (Dkt. No. 292-1, at 14;
Dkt. No. 331, at 37.)
(1) The Parties’ Positions
Plaintiff’s expert opines: “A person of ordinary skill in the art would understand that
authenticating the rights consumer and verifying that the conditions of the license have been
satisfied is necessary to determine whether the rights consumer is entitled to the right specified
by the meta-right and clearly linked to that function.” (Dkt. No. 304, Ex. K, 11/25/2014
Goodrich Decl. at ¶ 70.)
Defendants argue that “[t]here are no algorithms or other descriptions of software that
show how the consumer’s entitlement is determined. Instead, the ‘280 patent provides only
conceptual and abstract restatements of the claimed function.” (Dkt. No. 331, at 37 (citations
omitted).)
22

This parenthetical does not appear in the parties’ January 23, 2015 Joint Claim Construction
Chart. (See Dkt. No. 366, Ex. B, at 48.)
23

Plaintiff previously proposed: “Corresponding Structure: algorithm/structure necessary for
performing the recited function set forth in the ’280 Spec., including from the following portions:
Figs. 5, 7, 8 and 8:66-9:8, 9:66-10:2, 10:35-45, and equivalents thereof.” (Dkt. No. 292-1,
at 14.)

122

Plaintiff’s reply brief does not address this term. (See Dkt. No. 345, at 15-18.)
At the February 6, 2015 hearing, the parties did not address this disputed term.
(2) Analysis
Claim 12 of the ‘280 Patent recites (emphasis added):
12. A system for transferring rights adapted to be associated with items from a
rights supplier to a rights consumer, the system comprising:
means for obtaining a set of rights associated with an item, the set of rights
including a meta-right specifying a right that can be created when the meta-right
is exercised, wherein the meta-right is provided in digital form and is enforceable
by a repository;
means for determining whether the rights consumer is entitled to the right
specified by the meta-right; and
means for exercising the meta-right to create the right specified by the
meta-right if the rights consumer is entitled to the right specified by the metaright, wherein the created right includes at least one state variable based on the set
of rights and used for determining a state of the created right.
The specification discloses:
Authorization module 508 instructs license manager 503 to fetch state variable
308 and conditions 306 of license 52. Authorization manager 508 then
determines which state variables are required to enforce to enforce [sic] license
52. State of rights manager 504 then supplies the current value of each required
state variable to authorization module 508. Authorization module 508 then passes
conditions 306 and the required state variables to condition validator 506. If all
conditions 306 are satisfied, authorization module 508 returns “authorized” to
meta-rights manager module 510.
***
Rights manager module 512 uses authorization module 508 to verify that recipient
of the newly created rights or derived rights is intended principal 304.
***
In step 702 [of Fig. 7], principal 304 of license 52 is authenticated in a known
manner. In other words, it is determined if the party exercising meta-right 302
has the appropriate license to do so. If the principal is not authorized, the
procedure terminates in step 704. If the principal is authorized, the procedures
[sic] advances to step 706 in which meta right 302 is exercised and transmitted to
the consumer in the form of license 52 having derived rights in the manner set
forth above. In step 708 the principal of this new license is authenticated. In
123

other words, it is determined if the party exercising the derived rights has the
appropriate license to do so. If the principal is not authorized, the procedure
terminates in step 710. If the principal is authorized, the procedures [sic]
advances to step 712 in which the derived right is stored. The procedure then
returns to step 708 for each additional right in the license and terminates in step
714 when all rights have been processed.
‘280 Patent at 8:66-9:8, 9:15-18 & 9:58-10:7 (emphasis added).
Defendants’ expert, Dr. Grimes, opines:
For instance, “authenticating the rights consumer” is not an algorithm. Rather, it
is a function that similarly requires structural support, which Dr. Goodrich
[(Plaintiff’s expert)] does not identify. “Verifying that conditions of the license
have been satisfied” is no better. This language is insufficient to define an
algorithm.
(Dkt. No. 331, Ex. 11, 12/22/2014 Grimes Decl., at ¶ 41.)
Plaintiff’s expert, Dr. Goodrich, opines that a person of ordinary skill in the art would
understand the above-quoted passages as sufficient disclosure of an algorithm in prose form.
(Dkt. No. 345, Ex. AA, 1/9/2015 Goodrich Decl., at ¶ 23.)
The Court finds Plaintiff’s expert’s opinion more credible in this regard. For example,
Defendants’ have not rebutted the above-quoted disclosure in the specification that
authentication was “known.” On one hand, “[t]he inquiry is whether one of skill in the art would
understand the specification itself to disclose a structure, not simply whether that person would
be capable of implementing a structure.” Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946,
953 (Fed. Cir. 2007). On the other hand, “the amount of detail that must be included in the
specification depends on the subject matter that is described and its role in the invention as a
whole, in view of the existing knowledge in the field of the invention.” Typhoon Touch, 659
F.3d at 1385. On balance, the latter is the applicable principle here, and the above-quoted
disclosure amounts to a sufficient algorithm in prose form. Id. at 1386.

124

The Court accordingly hereby finds that for the “means for determining whether the
rights consumer is entitled to the right specified by the meta-right,” the function is
“determining whether the rights consumer is entitled to the right specified by the metaright,” and the corresponding structure is “authorization manager 508 that authenticates the
rights consumer 304 and verifies that the conditions 306 of the license 52 have been
satisfied, as described in the ‘280 Patent at 8:66-9:8, 9:15-18 & 9:63-10:2; and equivalents
thereof.”
K. “means for exercising the meta-right to create the right specified by the meta-right”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“Corresponding Structure:
meta-rights manager module 510 that
derives new rights from meta-rights 302 in
accordance with a set of rules or other logic
and updates the state of rights and the current
value of the conditions in a state of rights
repository (9:9-13; 9:33-50)24”25

Indefinite

(Dkt. No. 304, Ex. K, 11/25/2014 Goodrich Decl. at p. 37; Dkt. No. 331, at 37.) The parties
submit that this disputed term appears in Claim 12 of the ‘280 Patent. (Dkt. No. 292-1, at 15;
Dkt. No. 331, at 37.)
(1) The Parties’ Positions
Plaintiff’s expert opines: “A person of ordinary skill in the art would understand that
deriving new rights from meta-rights and updating the state of rights and the current value of the
24

This parenthetical does not appear in the parties’ January 23, 2015 Joint Claim Construction
Chart. (See Dkt. No. 366, Ex. B, at 48.)
25

Plaintiff previously proposed: “Corresponding Structure: algorithm/structure necessary for
performing the recited function set forth in the ‘280 Spec., including from the following portions:
Figs. 5, 7, 8 and 8:56-57, 9:9-22, 9:33-6, 10:2-7, 10:35-45, 10:62-66, and equivalents thereof.”
(Dkt. No. 292-1, at 15.)

125

conditions in a state of rights repository is necessary in exercising the meta-right to create the
right specified by the meta-right, and clearly linked to that function.” (Dkt. No. 304, Ex. K,
11/25/2014 Goodrich Decl. at ¶ 71.)
Defendants argue that “[t]he ‘280 patent explains that to ‘exercise’ a meta-right is to
create a usage right (or another meta-right) using the meta-right. The ‘280 patent, however,
provides no description of any algorithm for performing this ‘exercising’ function.” (Dkt.
No. 331, at 37.)
Plaintiff’s reply brief does not address this term. (See Dkt. No. 345, at 15-18.)
At the February 6, 2015 hearing, the parties did not address this disputed term.
(2) Analysis
Claim 12 of the ‘280 Patent recites (emphasis added):
12. A system for transferring rights adapted to be associated with items from a
rights supplier to a rights consumer, the system comprising:
means for obtaining a set of rights associated with an item, the set of rights
including a meta-right specifying a right that can be created when the meta-right
is exercised, wherein the meta-right is provided in digital form and is enforceable
by a repository;
means for determining whether the rights consumer is entitled to the right
specified by the meta-right; and
means for exercising the meta-right to create the right specified by the
meta-right if the rights consumer is entitled to the right specified by the metaright, wherein the created right includes at least one state variable based on the set
of rights and used for determining a state of the created right.
The specification discloses:
Meta-rights manager module 510 verifies license 52 and meta-rights 302 therein,
to authorize the request to exercise meta-rights 302, to derive new rights from
meta-rights 302, and to update the state of rights and the current value of the
conditions.
***
Once a request to exercise a meta-rights [sic] has been authorized, the meta-right
can be exercised. Meta-rights manager module 510 informs state of rights
126

module 504 that it has started exercising the requested meta-rights. State of rights
module 504 then records the usage history and changes its current value of the
state variables. Meta-rights manager module 510 exercises the requested metarights in a manner similar to known procedures for usage rights. If new rights are
derived, then meta-rights manager module 510 invokes license manager module
504 to create new rights as the result of exercising the target meta-rights. Each
new right is then sent to the corresponding rights manager module 512 of the
consumer and stored in a repository associated with the consumer. Rights
manager module 512 of the consumer will authenticate and authorize the
consumer before receiving and storing the newly created right. New rights can be
derived from meta-rights in accordance with a set of rules or other logic. For
example, one rule can dictate that a consumed right to offer a license for use will
result in the consumer having the right to offer a usage right and grant a license to
that usage right to another consumer.
‘280 Patent at 9:9-13 & 9:33-53.
Plaintiff’s expert, Dr. Goodrich, opines that a person of ordinary skill in the art would
recognize this as disclosure of an algorithm in prose form. (Dkt. No. 345, Ex. AA, 1/9/2015
Goodrich Decl., at ¶ 22; see Dkt. No. 304, Ex. K, 11/25/2014 Goodrich Decl. at ¶ 71.)
The Court finds Plaintiff’s expert’s opinion credible in this regard. On one hand, “[t]he
inquiry is whether one of skill in the art would understand the specification itself to disclose a
structure, not simply whether that person would be capable of implementing a structure.”
Biomedino, 490 F.3d at 953. On the other hand, “the amount of detail that must be included in
the specification depends on the subject matter that is described and its role in the invention as a
whole, in view of the existing knowledge in the field of the invention.” Typhoon Touch, 659
F.3d at 1385. On balance, the latter is the applicable principle here, and the above-quoted
disclosure amounts to a sufficient algorithm in prose form. Id. at 1386.
The Court accordingly hereby finds that for the “means for exercising the meta-right to
create the right specified by the meta-right,” the function is “exercising the meta-right to
create the right specified by the meta-right,” and the corresponding structure is “meta-rights
manager module 510 that derives new rights from meta-rights 302 in accordance with a set
127

of rules or other logic and updates the state of rights and the current value of the
conditions in a state of rights repository, as described in the ‘280 Patent at 9:9-13 &
9:33-50; and equivalents thereof.”
L. “means for generating a license including the created right, if the rights consumer is
entitled to the right specified by the meta-right”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“Corresponding Structure:
License Server 50/License Manager 803
(4:5-14; 5:6-13; 10:35-45; 10:62-11:16)26”27

Indefinite

(Dkt. No. 304, Ex. K, 11/25/2014 Goodrich Decl. at p. 37; Dkt. No. 331, at 38; Dkt. No. 366,
Ex. B, at 49.) Plaintiff submits that this disputed term appears in Claim 22 of the ‘280 Patent.
(Dkt. No. 292-1, at 15.)
(1) The Parties’ Positions
Plaintiff’s expert opines: “A person of ordinary skill in the art would understand that a
license server/license manager is necessary to generate a license including the created right and
[is] clearly linked to that function.” (Dkt. No. 304, Ex. K, 11/25/2014 Goodrich Decl. at ¶ 72.)
Defendants argue that the only relevant passage in the specification “simply restates the
function of generating a license.” (Dkt. No. 331, at 38 (citing ‘280 Patent at 5:11-13).)
Plaintiff’s reply brief does not address this term. (See Dkt. No. 345, at 15-18.)
At the February 6, 2015 hearing, the parties did not address this disputed term.

26

This parenthetical does not appear in the parties’ January 23, 2015 Joint Claim Construction
Chart. (See Dkt. No. 366, Ex. B, at 49.)
27

Plaintiff previously proposed: “Corresponding Structure: algorithm/structure necessary for
performing the recited function set forth in the ‘280 Spec., including from the following portions:
Figs. 1, 3, 4, 5, 7, 8 and 4:2-49, 5:6-13, 8:31-35, 8:56-57, 9:9-22, 9:33-66, 10:2-7, 10:35-45,
10:62-66, and equivalents thereof.” (Dkt. No. 292-1, at 15.)

128

(2) Analysis
Claim 22 of the ‘280 Patent recites: “The system of claim 12, further comprising means
for generating a license including the created right, if the rights consumer is entitled to the right
specified by the meta-right.”
The portions of the specification cited by Plaintiff disclose as follows:
License Server 50 manages the encryption keys and issues licenses for protected
content. These licenses embody the actual granting of usage rights to an end user.
For example, rights label 40 may include usage rights permitting a recipient to
view content for a fee of five dollars and view and print content for a fee of ten
dollars. License 52 can be issued for the view right when the five dollar fee has
been paid, for example. Client component 60 interprets and enforces the rights
that have been specified in license 52.
***
When the appropriate conditions and other prerequisites, such as the collection of
a fee and verification that the user has been activated, are satisfied, Web server 80
contacts license server 50 through a secure communications channel, such as a
channel using a Secure Sockets Layer (SSL). License server 50 then generates
license 52 for content 42 and Web server 80 causes both the content and license
52 to be downloaded.
***
FIG. 8 illustrates an exemplary system including a common state-of-rights server,
according to the present invention. In FIG. 8, the exemplary system can include a
common state-of-rights server of the system 801, including a state-of-rights
manager 809, and one or more state-of-rights repositories 814, and one or more
license servers 800, including a meta-rights manager 810, a usage rights manager
812, an authorization component 808, a condition validator 806, a state-of-rights
manager 804, one or more state-of-rights repositories 816, a license manager 803,
a license interpreter 802, and one or more license repositories 818.
***
The license manager 803 derives new rights based on an offer, which can include
any suitable machine-readable expression, and optionally including meta-rights.
While deriving rights, the license manager 803 can create new state variables to
be associated with derived rights. The creation of state variables and their scopes
can be prescribed in the offer or by some other function in the system. The state
variables can be created in one or more instances, for example, prior to rights
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derivation, during rights derivation, upon fulfillment of conditions, during a first
exercise of rights associated with the state variables, and the like. The state
variables can be designated exclusively for a specific rights consumer, can be
shared among rights consumers, and can be shared among rights consumers and
other entities, such as rights suppliers, and the like. The license manager 803 can
interact with the state-of-rights manager 804 to associate new state variables with
physical addresses in one or more of the state-of-rights repositories 816. The
state-of-rights manager 804 can access the one or more state-of-rights repositories
816 and can interact with the state-of-rights server 801 to access shared state
variables from one or more of the state-of-rights repositories 814.
‘280 Patent at 4:5-14, 5:6-13, 10:35-45 & 10:62-11:16 (emphasis added).
On balance, these disclosures set forth a “license server 50” and a “license manager 803”
that are “clearly linked or associated with the claimed function,” Med. Instrumentation &
Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1219 (Fed. Cir. 2003), and that connote structure
as opposed to merely restating the claimed function, especially in light of the surrounding
disclosure set forth above.
The Court accordingly hereby finds that for the “means for generating a license
including the created right, if the rights consumer is entitled to the right specified by the
meta-right,” the function is “generating a license including the created right, if the rights
consumer is entitled to the right specified by the meta-right,” and the corresponding structure
is “license server 50 or license manager 803 as described in the ‘280 Patent at 4:5-14,
5:6-13, 10:35-45, and 10:62-11:16; and equivalents thereof.”
VI. CONSTRUCTION OF DISPUTED TERMS IN THE DUNKELD PATENT
The ‘556 Patent is titled “Method of Providing a Digital Asset for Distribution.” The
‘556 Patent issued on November 12, 2013, and bears a priority date of December 10, 2001. The
Abstract states:
Digital assets are provided for distribution within an electronic network. The
digital asset includes digital content that is associated with a digital rights holder.
A serial number is provided for (embedded within) the asset; this number
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uniquely identifies a first introduction of digital asset for distribution within the
electronic network. The asset is then posted in a number of locations so that it
can be distributed to users. A transaction database is updated to reflect
occurrences of different instantiations of the asset.
A. “detect[ing] a transfer”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“to discover or determine the existence,
presence, or fact of a transfer”

“to discover the occurrence of a transfer”

(Dkt. No. 304, at 28; Dkt. No. 331, at 38.) Defendants submit that these disputed terms appear in
Claims 1 and 12 of the ‘556 Patent. (Dkt. No. 331, at 38.)
(1) The Parties’ Positions
Plaintiff argues, in full: “Both parties are proposing dictionary definitions. [Plaintiff’s]
proposal, which relies on the Merriam-Webster dictionary (http://www.merriamwebster.com/dictionary/detect), is slightly broader than Defendants’, and as such should be
adopted.” (Dkt. No. 304, at 28 (citing Cephalon Inc. v. Mylan Pharms. Inc., 962 F. Supp. 2d
688, 699 (D. Del. 2013)).)
Defendants respond that “[t]he specification does not include the broad[] scope urged by
[Plaintiff],” and “Defendants’ more clear and concise proposal will be easier for a jury to
understand.” (Dkt. No. 331, at 38.)
Plaintiff replies that “[t]he parties’ . . . dispute boils down to whether the Court should
pick Defendants’ narrow definition . . . or [Plaintiff’s] slightly broader definition . . . .” (Dkt.
No. 345, at 19.) “Nothing in the specification indicates that the patentee had in mind a narrow
definition for ‘detecting,’” Plaintiff urges. (Id.)
(2) Analysis
The specification discloses:

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One key purpose of the present inventions is to allow individual customers to
trade digital assets with each other while compensating rights holders for their
work. The described system allows each asset to be identified and tracked
(preferably) at the time the asset is transferred.
‘556 Patent at 10:13-17 (emphasis added).
At the completion of the transfer, Host Server Network Device initiates step 324
by contacting Serial Number Reconciliation Module 120 to report completion of
the transfer or its abandonment and the reasons for such.
***
Customer client server module 124 also contacts Serial Number Reconciliation
Module 120 in step 328. It reports the transaction as being complete and also
indicates whether and where the second instantiation of the digital asset can be
found for transfer to other customers in system 100.
Id. at 15:20-23 & 15:38-42.
In another variation of the present invention, detection of “rogue” assets is
performed prior to transfers. By this it is meant that a first customer may attempt
to download a digital asset from a second customer, and in the process of doing
so, System Network Device 106 may detect that there is no appropriate tracking
record reflecting a prior authorized transfer to such second customer.
Id. at 16:10-16 (emphasis added).
Nothing in the intrinsic evidence suggests that the patentee gave a special meaning to the
term “detect.” Thorner, 669 F.3d at 1367 (“The patentee is free to choose a broad term and
expect to obtain the full scope of its plain and ordinary meaning unless the patentee explicitly
redefines the term or disavows its full scope.”). In other words, the proposals by both sides lack
support or justification in the intrinsic evidence and would tend to confuse rather than clarify the
scope of the claims.
Further, upon discussion at the February 6, 2015 hearing, both sides agreed that this
disputed term could be construed to have its plain meaning.

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The Court accordingly hereby construes “detect[ing] a transfer” to have its plain
meaning.
B. “instance”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“instantiation”

“a file containing the digital asset that is
distinct from other files containing the same
digital asset”

(Dkt. No. 304, at 28; Dkt. No. 331, at 40.) The parties submit that this disputed term appears in
Claims 1 and 12 of the ‘556 Patent. (Dkt. No. 292-1, at 16; Dkt. No. 331, at 40.)
(1) The Parties’ Positions
Plaintiff argues that whereas the specification and the prosecution history support
Plaintiff’s proposal, Defendants’ proposal “is both unsupported by the evidence and needlessly
verbose.” (Dkt. No. 304, at 28; see id., at 28 n.15 (citing Encap LLC v. Oldcastle Retail, Inc.,
2012 WL 2339095, at *9 (E.D. Wis. June 19, 2012) (“Claim construction is not intended to
allow for needless substitution of more complicated language for terms easily understood by a
lay jury.”); Am. Patent Dev. Corp. v. Movielink, LLC, 604 F. Supp. 2d 704, 716 (D. Del. 2009)
(rejecting construction that, “in the Court’s view, is merely a verbose paraphrasing of the claim
language that otherwise offers little to assist one of skill in the art in understanding the
claims”)).)
Defendants respond, in full: “Defendants’ proposal clearly explains the meaning of
‘instance,’ while [Plaintiff’s] proposal would be more confusing to the jury than ‘instance’ itself.
Moreover, ‘instance’ was changed from ‘instantiation’ during prosecution. The Court should
prevent [Plaintiff] from reclaiming scope it surrendered to obtain the claims.” (Dkt. No. 331,
at 40 (citation omitted).)

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Plaintiff replies that whereas Defendants’ proposal lacks support in any intrinsic evidence
or any dictionary definition, Plaintiff’s proposal is consistent with the intrinsic record. (Dkt.
No. 345, at 20.) Plaintiff also argues that “Defendants are incorrect that the patentee effectuated
a ‘surrender[r]’ of claim scope by replacing ‘instantiation’ in the claims with its synonym
‘instance.’” (Id.)
At the February 6, 2015 hearing, the parties did not address this disputed term.
(2) Analysis
The specification repeatedly uses the term “instantiation”:
A related object [of the invention] is to provide a tracking mechanism and method
that relies primarily on creating separate instantiations of a digital asset to
facilitate tracking of the latter[.]
***
This architecture ensures security, compliance, and accountability for each
instantiation of the asset.
***
[T]o assist the tracking of the digital asset, a separate and new instantiation of the
digital asset is created for each transfer occurring over the network between peer
devices.
***
The present invention treats each instantiation of an asset as unique and as such
the terms of acquisition can be flexible with respect to time, parties involved in
the transaction, prior purchasing, intended usage, etc.
***
As noted earlier, a first instantiation of the digital asset is created based on an
original offset and serial number embedded within the digital content. To allow
for tracking of the particular transfer, a new instantiation of the digital asset is
made. In step 316 Client Server module 124 gets a new serial number and new
offset for this transaction from the Serial Number Assignment Module 118. The
new serial number and new offset are used to create a unique instantiation of the
digital asset for the particular transaction. Thus, instead of merely copying the
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digital content as part of the transfer, the present invention creates a separate
instantiation to facilitate tracking of each transfer (or transaction) within
system 100.
In some applications where security and accounting is [sic, are] not as critical (or
can be remedied by other mechanisms consistent with the present teachings) it is
possible that actual separate instantiations of the digital asset might not be
required. Instead, it might be more practical to simply track the point-to-point
movement of a digital asset across network between one or more Customer
Network devices 112, and/or Host Server Network Device 110.
‘556 Patent at 2:32-34, 3:27-28, 3:43-46, 8:23-27 & 14:27-46 (emphasis added); see id.
at 4:24-38 (“first instantiation” and “second instantiation”); see also id. at 5:37-44 (similar) &
6:53-62 (similar).
Plaintiff also submits that during prosecution of the ‘556 Patent, the patentee submitted:
“Instantiation=To create an instance of an object, Microsoft Computer Dictionary, 3rd Edition,
Microsoft Press, Redmond, WA, 1997[].” (Dkt. No. 304, Ex. X, at 4.) Defendants likewise note
that the patentee amended the claims so as to replace “instantiation” with “instance.” (Dkt.
No. 331, Ex. 20, 10/9/2012 Amendment and Response, at 2-3 & 5-6.)
The intrinsic evidence thus demonstrates that the term “instance” in the claims refers to
what is described as an “instantiation” in the specification. Defendants’ proposed construction
properly conveys the essential feature of an “instance” as set forth in the disclosures above.
Specifically, as quoted above, the essence of one “instance” of an item of digital content, as
compared to another such instance, is that each instance contains the same digital content but is
nonetheless uniquely identifiable. See ‘556 Patent at 8:23-27 & 14:27-38 (describing “the
present invention”); see, e.g., Verizon, 503 F.3d at 1308.
The Court accordingly hereby construes “instance” to mean “a file that contains a
digital asset, and the file is distinguishable from other files containing the same digital
asset.”
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C. “other portion”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“an unused part of the digital asset or
information prepended or postpended to the
digital asset”

“a part of the digital asset wherein embedding
information does not affect the user-perceptible
portion of content”

(Dkt. No. 304, at 29; Dkt. No. 331, at 39.) The parties submit that this disputed term appears in
Claims 1 and 12 of the ‘556 Patent. (Dkt. No. 292-1, at 16; Dkt. No. 331, at 39.)
(1) The Parties’ Positions
Plaintiff argues that whereas its proposed construction “faithfully tracks the disclosure in
the specification,” “Defendants’ construction reflects language that is expressly tied to a
preferred embodiment (see ‘556 Patent at col. 3:35-39) that is nowhere present in the claims.”
(Dkt. No. 304, at 29.) Plaintiff submits that although the prosecution history of the ‘556 Patent
reveals that the application claims at one time included a limitation of “without altering user
perceptible content of the first digital media asset” (Dkt. No. 304, Ex. Y, 10/9/2012 Amendment
and Response, at 3), the issued Claims 1 and 12 do not include such a limitation.
Defendants respond that “[Plaintiff’s] proposed construction ignores the specification,
which shows that a customer identification can be embedded into many portions of the digital
asset.” (Dkt. No. 331, at 39 (citing ‘556 Patent at 12:43-47 & 19:28-31).) Defendants also urge
that “Defendants’ proposed construction takes into account a key part of the invention: that
embedding the customer identification does not affect user-perceptible content.” (Dkt. No. 331,
at 39 (citing ‘556 Patent at 1:24-26, 2:8-10, 3:37-39 & 8:8-9).)
Plaintiff replies that its proposal “mirrors verbatim the specification’s disclosure
concerning the ‘portion[s]’ of the digital assets that are to contain identifying information.”
(Dkt. No. 345, at 19 (citing ’556 Patent at 19:36-38).) Plaintiff also argues that “Defendants’

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proposed construction (1) describes a preferred embodiment; (2) rests on a portion of the
specification that says nothing about which part of the digital asset is to contain identifying
information; and (3) imports into the claims a limitation (‘embedding information does not affect
the user-perceptible portion of content’) that was removed during prosecution.” (Id., at 19-20
(citation omitted).)
At the February 6, 2015 hearing, the parties did not address this disputed term.
(2) Analysis
Claims 1 and 23 of the ‘556 Patent recite, in relevant part:
1. A method implemented by one or more computing devices for providing a
digital asset for distribution, the method comprising:
storing, by at least one of the one or more computing devices, the digital
asset, the digital asset including digital content; . . .
in response to the request for the digital asset, creating, by at least one of
the one or more computing devices, a second instance of the digital asset for
transfer to the user device, the second instance of the digital asset including
content and at least one other portion, and embedding in the at least one other
portion of the second instance of the digital asset at least a customer identification
associated with the user and the asset identifier, wherein other instances of the
digital asset have customer identifications embedded therein and the customer
identifications are used to track instances of the digital asset;
....
***
23. The method of claim 1, wherein the at least one other portion is an unused
portion.
Claim 23, a dependent claim, thus suggests that the “other portion” can be either an
“unused” portion or, presumably, a “used” portion. See Phillips, 415 F.3d at 1315 (“[T]he
presence of a dependent claim that adds a particular limitation gives rise to a presumption that
the limitation in question is not present in the independent claim.”); see also Liebel-Flarsheim,
358 F.3d at 910 (“[W]here the limitation that is sought to be ‘read into’ an independent claim
already appears in a dependent claim, the doctrine of claim differentiation is at its strongest.”);
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Wenger, 239 F.3d at 1233 (“Claim differentiation, while often argued to be controlling when it
does not apply, is clearly applicable when there is a dispute over whether a limitation found in a
dependent claim should be read into an independent claim, and that limitation is the only
meaningful difference between the two claims.”).
Nonetheless, “the doctrine of claim differentiation can not broaden claims beyond their
correct scope, determined in light of the specification and the prosecution history and any
relevant extrinsic evidence.” Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1480
(Fed. Cir. 1998); see N. Am. Vaccine, Inc. v. Am. Cyanamid Co., 7 F.3d 1571, 1577 (Fed. Cir.
1993) (“While it is true that dependent claims can aid in interpreting the scope of claims from
which they depend, they are only an aid to interpretation and are not conclusive. The dependent
claim tail cannot wag the independent claim dog.”).
At first blush, reading “other portion” to encompass the “content” set forth in Claim 1
would seemingly be at odds with the plain language of Claim 1, which appears to contrast the
“other portion” with “content,” as quoted above. Nonetheless, Claim 1 recites “content,” not a
“content portion,” so Claim 1 does not on its face recite whether or not the “other portion” can be
embedded with the content.
Turning to the other intrinsic evidence, the specification discloses substantially the
language that Defendants have proposed:
In a preferred embodiment the digital asset is modified for each transfer, and this
modification is used by the third management server for generating the tracking
records. Again, the modification does not alter user-perceptible content of the
digital asset.
***
A preferred approach is to use the Offset to specify a valid frame and word count
within the MP3 file to begin the marking. The Serial Number is then encoded one

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bit at a time in the least significant bit of successive data words until the entire
Serial Number is encoded.
‘556 Patent at 3:35-39 & 12:43-47 (emphasis added); see id. at 1:24-26 (“intellectual property
assets that can be digitized can now be reproduced and distributed without quality degradation”);
see also id. at 8:8-9 (“digital media formats are receptive to steganographic techniques without
noticeable quality degradation”).
Defendants’ proposed reference to what is “user-perceptible” thus has some support in
the specification, as set forth above, but the specification also explains that one of the purposes
of using steganographic techniques is to allow use of existing media formats and rights
management. See ‘556 Patent at 8:8-18; see also id. at 8:50-52 & 9:61-64. Thus, userperceptible portions of content may be altered, albeit perhaps in a way that a user would not
notice. Defendants’ proposal of “user-perceptible” would also introduce a potentially subjective
element that would tend to confuse rather than clarify the scope of the claims. The Court
therefore hereby expressly rejects Defendants’ proposed construction.
The specification also discloses that information can be “prepended or postpended,” as
Plaintiff has proposed:
Steganographic Variations
While the preferred embodiment discussed above uses a steganographic technique
for embedding a serial number in an MP3 file, there are many other approaches
that could accomplish this same function. Furthermore, it is expected that the
particular mechanism used to provide and associated serial numbers will be
different from application to application, because various digital asset formats are
receptive to different approaches.
In addition, as alluded to earlier, digital asset serial numbers could be prepended
or postpended; alternatively, unused portions of the digital asset could be used to
store the serial numbers. Finally, a modified format for a digital asset could be
created to accommodate the serial number, such as new variation of an MP3 file,
MPEG file, etc. For example, one or more standards groups or industry groups

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may utilize a form of digital asset that includes fields intended to accommodate a
serial number.
Id. at 19:27-44 (emphasis added)
Plaintiff’s proposal of “prepended or postpended” is thus supported by the specification.
Plaintiff’s proposal of referring to an “unused part of the digital asset,” however, would
apparently exclude a “used” portion. Such a reading is disfavored by the doctrine of claim
differentiation, as set forth above.
The Court accordingly hereby construes “other portion” to mean “any part of the
digital asset, or information prepended or postpended to the digital asset.”
D. “over said network between user devices”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Error – “over said network” should be deleted
from both claims 8 and 19

Indefinite

(Dkt. No. 304, at 29; Dkt. No. 331, at 40; Dkt. No. 366, Ex. B, at 57.) The parties submit that
this disputed term appears in Claims 8 and 19 of the ‘556 Patent. (Dkt. No. 292-1, at 16; Dkt.
No. 331, at 40.)
(1) The Parties’ Positions
Plaintiff submits that “‘[o]ver said network’ appears in claims 8 and 19 because it was
overlooked in a complicated amendment when similar language was deleted from other claims.”
(Dkt. No. 304, at 30.)
Defendants respond that “[t]he parties agree that claims 8 and 19 of the ‘556 patent are
indefinite as written,” and “[t]he Court should not grant [Plaintiff’s] request [for judicial
correction] because the claims are subject to multiple potential ‘corrections,’ e.g., changing

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‘said’ to ‘a’ or reciting a ‘network’ in claim 1.” (Dkt. No. 331, at 40 (citing Novo Indus., 350
F.3d at 1354).)
Plaintiff replies:
[F]rom the face of the patent, it is plain that, as they presently stand and unless
“over said network” is removed, claims 8 and 19 lack antecedent bases in the
claims from which they depend, independent claims 1 and 12. Put differently,
[Plaintiff] is not asking the Court to impermissibly remove a limitation from a
defect-free, perfectly coherent claim. Rather, [Plaintiff] is asking for a correction
of an obvious clerical error to make these claims coherent.
(Dkt. No. 345, at 20.)
At the February 6, 2015 hearing, the parties did not address this disputed term.
(2) Analysis
Claims 1 and 8 of the ‘556 Patent are representative and recite (emphasis added):
1. A method implemented by one or more computing devices for providing a
digital asset for distribution, the method comprising:
storing, by at least one of the one or more computing devices, the digital
asset, the digital asset including digital content;
associating, by at least one of the one or more computing devices, an asset
identifier with the digital asset to thereby generate a first instance of the digital
asset, the asset identifier identifying the digital asset;
receiving from a user, by at least one of the one or more computing
devices, an acceptance of terms of use of digital assets;
providing, by at least one of the one or more computing devices, a list of
one or more digital assets to the user, the list including the digital asset;
receiving from the user, by at least one of the one or more computing
devices, a request for the digital asset;
in response to the request for the digital asset, creating, by at least one of
the one or more computing devices, a second instance of the digital asset for
transfer to the user device, the second instance of the digital asset including
content and at least one other portion, and embedding in the at least one other
portion of the second instance of the digital asset at least a customer identification
associated with the user and the asset identifier, wherein other instances of the
digital asset have customer identifications embedded therein and the customer
identifications are used to track instances of the digital asset;
detecting, by at least one of the one or more computing devices, a transfer
of the second instance of the digital asset to the user based at least in part on the
customer identification;

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debiting an account of the user related to the transfer of the second
instance of the digital media asset to the user; and
updating, by at least one of the one or more computing devices, a
transaction database to reflect a transfer of the second instance of the digital
media asset to the user.
***
8. The method of claim 1, wherein distributions of said digital asset over said
network between user devices are not preconditioned on securing authorization
for individual copies of said digital asset.
During prosecution, the patentee added new application claims 40 and 43 (which issued
as Claim 1 and Claim 12, respectively), which recited no “network” limitation. (Dkt. No. 304,
Ex. Z, 8/14/2014 Amendment, at 6-7.) At the same time, the patentee modified various
dependent claims so as to depend from the new application claims 40 and 43, and the patentee
removed the “network” from various dependent claims. (See id., at 2-6.) Plaintiff submits that
the patentee’s failure to remove “over said network” from the claims that issued as Claim 8 and
Claim 19 was an “oversight.” (Dkt. No. 304, at 30.)
“A district court can correct a patent only if, among other things, the error is evident from
the face of the patent.” H-W Tech., LC v. Overstock.com, Inc., 758 F.3d 1329, 1333 (Fed. Cir.
2014) (citation and internal quotation marks omitted). Further, “evidence of error in the
prosecution history [is] alone insufficient to allow the district court to correct the error.” Id.
at 1334.
Here, Plaintiff argues that because the erroneousness of the claims is self-evident on their
face, the Court can look to the prosecution history to determine the nature of the error and the
appropriate correction. The above-cited authority, however, appears to require that “the error,”
not merely the presence of some error, must be evident from the face of the patent. Id. Because

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Plaintiff must resort to the prosecution history to demonstrate the error, the Court hereby
expressly rejects Plaintiff’s argument.
This finding is also consistent with the principle that “[c]ourts do not rewrite claims;
instead, we give effect to the terms chosen by the patentee.” K-2, 191 F.3d at 1364; see Chef
Am., 358 F.3d at 1374 (“courts may not redraft claims, whether to make them operable or to
sustain their validity”).
The Court accordingly hereby finds that the term “over said network” in Claims 8
and 19 of the ‘556 Patent is indefinite.
VII. CONCLUSION
The Court adopts the constructions set forth in this opinion for the disputed terms of the
patents-in-suit. The parties are ordered that they may not refer, directly or indirectly, to each
other’s claim construction positions in the presence of the jury. Likewise, the parties are ordered
to refrain from mentioning any portion of this opinion, other than the actual definitions adopted
by the Court, in the presence of the jury. Any reference to claim construction proceedings is
limited to informing the jury of the definitions adopted by the Court.
Having found that the term “validating” in Claim 5 of the ‘007 Patent is indefinite, as
discussed above, the Court hereby finds that Claim 5 of the ‘007 Patent is invalid.
Also, having found that the term “over said network” in Claims 8 and 19 of the ‘556
Patent is indefinite, as discussed above, the Court hereby finds that Claims 8 and 19 of the ‘556
Patent are invalid.
Within thirty (30) days of the issuance of this Memorandum Opinion and Order, the
parties are hereby ORDERED, in good faith, to mediate this case with the mediator agreed upon
by the parties. As a part of such mediation, each party shall appear by counsel and by at least

143

.
one corporate officer possessing sufficient authority and control to unilaterally make binding
decisions for the corporation adequate to address any good faith offer or counteroffer of
settlement that might arise during such mediation. Failure to do so shall be deemed by the Court
as a failure to mediate in good faith and may subject that party to such sanctions as the Court
deems appropriate.

SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 20th day of March, 2015.

____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE

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