UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. NETFLIX, INC., Petitioner, COPY PROTECTION LLC, Patent Owner.

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD NETFLIX, INC., Petitioner, v. COPY PROTECTION LLC, Patent Owner. IPR Case No. Not Yet Assigned Patent 7,079,649 PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,079,649 UNDER 35 U.S.C AND 37 C.F.R ET SEQ. Filed on behalf of Petitioner by: Srecko Vidmar (Reg. No. 72,937) Clayton C. James (pro hac vice motion to be filed) Carey M. Rozier (Reg. No. 63,429) Aaron Oakley (Reg. No. 73,532) Hogan Lovells US LLP One Tabor Center, Suite Seventeenth Street Denver, CO Telephone:

2 TABLE OF CONTENTS Page I. Introduction... 1 II. Mandatory Notices 37 C.F.R. 42.8(a)(1)... 6 A. Real Parties-in-Interest 37 C.F.R. 42.8(b)(1)... 6 B. Related Matters 37 C.F.R. 42.8(b)(2)... 6 C. Lead and Backup Counsel and Service Information 37 C.F.R. 42.8(b)(3) & (4)... 6 III. Notice of Fees Paid... 7 IV. Grounds for Standing (37 C.F.R (a))... 7 V. Identification of Challenge (37 C.F.R (b))... 7 A. Relief Requested... 7 B. Necessity of Multiple Grounds... 8 C. Threshold Requirement for Inter Partes Review VI. Claim Construction A. protecting means for cryptographically protecting the requested data set [claims 13 and 26] B. generating means for generating a program portion for sending to the source of the access request [claim 13 and 26] VII. Citation of Prior Art VIII. Claim-by-Claim Explanation of Grounds for Unpatentability A. PHOSITA B. Grounds Ground 1: Claims 1-6, 9-12, 14, 17, 19-21, and are anticipated by Erickson Ground 2: Erickson in view of Kamba renders obvious claims 7, 8, 13, 22, and Ground 3: Erickson in view of AAPA renders obvious claim Ground 4: Erickson in view of Mihm renders obvious Claim Ground 5: Kamba in view of Lagoze renders obvious claims 1, 2, 5-13, and Ground 6: Kamba in view of Lagoze and further in view of AAPA renders obvious claims 3 and Ground 7: Kamba in view of Lagoze and further in view of Erickson renders obvious claims 14 and i

3 8. Ground 8: Kamba in view of Lagoze and further in view of AAPA renders obvious claim Ground 9: Kamba in view of Lagoze and further in view of Mihm renders obvious claim Ground 10: Kamba in view of Lagoze and further in view of AAPA renders obvious claims 1-13, 16, and Ground 11: Kamba in view of Lagoze and further in view of AAPA and Erickson renders obvious claims 14 and Ground 12: Kamba in view of Lagoze and further in view of AAPA and Mihm renders obvious claim ii

4 I. INTRODUCTION Netflix, Inc. ( Netflix or Petitioner ) respectfully requests inter partes review under 35 U.S.C and 37 C.F.R of claims 1-14 and of U.S. Patent No. 7,079,649 ( the 649 patent ) (Ex. 1001). Copy Protection, LLC ( Copy Protection or Patent Owner ), acquired the 649 patent from original owner British Telecommunications plc in The 649 patent relates to protecting data transmitted over a computer network such as the Internet. Each independent claim recites a program or program portion running on a client computer that: (a) receives encrypted data from the server; (b) decrypts the data and displays it at the client computer; and (c) after decryption, restricts access to copy or save functions on the client. 1 Several independent claims further require that the program or program portion requests access to data on a server. As described in its Abstract, the alleged invention of the 649 patent protects documents and other data sent over a computer network to a client computer s display application, such as a browser, by selectively disabling that client s ability to copy or save that content. After repeated rejections, the BPAI and the Examiner accepted the applicants argument that the combination of 1 The claims use different wording for the last limitation. Some recite restricting or preventing access, while others recite selectively controlling access or suppressing. Applicants represented during prosecution that these limitations all recited similar features. (File History of 649 Patent, Ex. 1002, at 254.) 1

5 features claimed, primarily suppressing copy and save functions with respect to the decrypted data, was not present in the prior art. However, each element and relevant combination of elements was present in the prior art. This Petition first presents grounds based on Erickson, a patent that expressly discloses a program that requests access to data, receives encrypted data at a client, decrypts that data at the client, and selectively controls access to copy and save functions in respect to the decrypted data. (See Grounds 1-4.) Grounds 5-12 rely on references that disclose Java applets that perform every limitation of the independent claims. The use of Java applets in these references is notable because the only embodiment disclosed in the 649 patent uses Java applets to perform the claim features. In fact, the 649 patent s specification admits that the purportedly-inventive program portion responsible for selectively disabling copy and save functions was itself a Java applet, which disabled the browser s normal ability to display copy and save menus by rightclicking a mouse over portions of the webpage. The specification also admits that this was a standard feature of Java applets: The right mouse button function is disabled according to usual Java operation for applets. (Ex at 9:8-9 2 ; see also 4:53-65.) Vasanthan Dasan, who collaborated with colleagues at Sun Microsystems during the development of the Java programming language and who 2 Except where noted, all bolding, quotation, or other emphases in quotations was added, and is not present in the source of the quotation. 2

6 worked extensively with Java applets in the timeframe in his role as a Sun engineer, confirms this feature was a default function of prior art Java applets. (Dasan Decl., Ex. 1007, at ) Java applets disabled right mouse button functionality in a manner that fully discloses the selective disablement of copy and save functionality claimed in the 649 patent. Upon clicking the right mouse button when the mouse pointer was positioned over a Java applet in a browser, no drop-down menu would appear and therefore no option to save or copy the data.. (Ex at 31, 37.) When the mouse pointer was positioned over non-applet regions of the same browser page, the right mouse button functionality would, in its usual manner, trigger a drop down menu offering copy and save functions as shown in FIG. 2 of the 649 patent. (Ex at 38; see also Ex at 6:13-26, FIG. 4.) Because Java applets disabled copy and save functionality only in regions of the webpage where the applet was presented, while allowing those same functions on other regions of the webpage, Java applets selectively controlled access to copy and save functions. This was not the only means by which Java applets disabled copy and save functions. Because Java applets are downloaded from potentially untrusted thirdparty servers, the Java environment was programmed to not allow (and still does not allow) a Java applet to access the client file system. (Ex at 34.); see 3

7 also David Flanagan, Java in a Nutshell, A Desktop Quick Reference for Java Programmers, p. 197 (1996) (Ex ) Access to the system clipboard was not available in Java 1.0. (Id.) Thus, data provided in the applet could not be saved to the file system or copied to the clipboard. In all these ways, Java applets disabled or suppressed copy and save functions, exactly as applicants claimed invention does. In fact, applicants admitted that these features of Java applets were well known in the art: As is well known in the art, HTML code can also include a Java applet. (Ex at 5:12-13.) Typically, applets are used to display animated graphic symbols in a webpage... as well known to those skilled in the art. (Id. at 5:19-22.) Because the Java enabled browser is running an applet for the image data in region 12, the functions of the right mouse button are disabled for region 12. Therefore, if the user clicks the mouse with the right button, no menu option is automatically provided for saving, copying or printing the displayed data in region 12. The right mouse button function is disabled according to usual Java operation for applets as previously described. (Id. at 9:2-9.) As a result of processing a Java applet, the usual copy and save functions will not be presented to the user. (Id. at 2:21-24.) 4

8 If the user clicks the right mouse button on the data displayed by running the applet, no drop-down menu is provided corresponding to the menu 9 shown in FIG. 2. (Id. at 5:25-47 (note that the drop-down menu 9 in FIG. 2 provides copy and save functions).) During prosecution, the applicants again admitted that Java applets disabled save or copy functions for the region in which they were displayed: Because the Java enabled browser is executing an applet for the image data in region 12, the functions of a right mouse button including print, save or copy are disabled for region 12. Therefore, if a user clicks a right button of the mouse for region 12, no menu option is automatically provided for saving, copying or printing the displayed data in region 12 in order to prevent unauthorized copying. (Ex at 56; see also id. at 144.) Applicants also admitted that the Java applet is the program portion recited in the claims, and that Java applets were the method they contemplated would perform the functionality of suppressing or preventing access to copy or save functions: [I]t is the program portion (e.g., a Java applet) that is being used to restrict access to functions that would otherwise be legitimately available at the client.... (Id. at 254.) All the foregoing admissions constitute Applicants Admitted Prior Art 5

9 ( AAPA ). Applicants did not invent the functionality of Java applets that restricts right mouse button copy and save functionality. This functionality was developed by Sun Microsystems in as part of the Java language environment, and was made available for public download in (Ex at 19, 31, 37.) And, each of the other elements of the alleged invention encryption, and decryption, as well as the features of the dependent claims were well known in the art, both alone and in the claimed combinations, as demonstrated below. II. MANDATORY NOTICES 37 C.F.R. 42.8(a)(1) A. Real Parties-in-Interest 37 C.F.R. 42.8(b)(1) Netflix, Inc., a Delaware corporation with a principal place of business at 100 Winchester Circle, Los Gatos, CA 95032, is the real party-in-interest. B. Related Matters 37 C.F.R. 42.8(b)(2) The 649 patent has been asserted by Patent Owner in Copy Protection LLC v. Netflix, Inc., Civil Action No (LPS) in the U.S. District Court for the District of Delaware. C. Lead and Backup Counsel and Service Information 37 C.F.R. 42.8(b)(3) & (4) Srecko Vidmar (Reg. No. 72,937) is lead counsel. Clayton C. James (pro hac vice motion to be filed), Carey M. Rozier (Reg. No. 63,429), and Aaron Oakley (Reg. No. 73,532) are backup counsel. The Petitioner may be served in this matter as follows: 6

10 Post and Hand Delivery Telephone No Facsimile No HOGAN LOVELLS US LLP One Tabor Center, Suite Seventeenth Street Denver, CO III. NOTICE OF FEES PAID Fees are submitted herewith. If any additional fees are due at any time during the inter partes review proceedings, the undersigned authorizes the Office to charge such fees to Deposit Account No IV. GROUNDS FOR STANDING (37 C.F.R (a)) Petitioner certifies that the 649 patent is available for inter partes review and that Petitioner is not barred or estopped from requesting such review. This Petition is being filed within one year of service on Petitioner of a complaint for infringement. V. IDENTIFICATION OF CHALLENGE (37 C.F.R (b)) A. Relief Requested Petitioner requests cancellation of claims 1-14 and of the 649 patent on the following grounds. Ground Claims Basis Prior Art References 7

11 Grounds based on Erickson as primary reference 1 1-6, 9-12, 14, 17, 102(e) Erickson 19-21, , 8, 13, 22, Erickson in view of Kamba Erickson in view of AAPA Erickson in view of Mihm Grounds based on Kamba as primary reference 5 1, 2, 5-13, and 103 Kamba in view of Lagoze , Kamba in view of Lagoze, and further in view of AAPA 7 14, Kamba in view of Lagoze, and further in view of Erickson Kamba in view of Lagoze, and further in view of AAPA Kamba in view of Lagoze, and further in view of Mihm Grounds based on Kamba as primary reference with AAPA , 16, and Kamba in view of Lagoze, and further in view of AAPA 11 14, Kamba in view of Lagoze, and further in view of AAPA and Erickson Kamba in view of Lagoze, and further in view of AAPA and Mihm B. Necessity of Multiple Grounds This Petition presents three groups of Grounds, each of which renders invalid claims 1-14 and of the 649 patent. Grounds 1-4 are based on Erickson, a prior art reference under 35 U.S.C. 102(e). In pending litigation, the Patent Owner has indicated it may try to establish a conception date that predates the priority date on the face of the 649 patent, thereby raising the possibility that Erickson may not be available as prior art. Therefore, grounds based on the combination of Kamba and Lagoze are also presented (Grounds 5-9). Both Kamba 8

12 and Lagoze are statutory prior art under 35 U.S.C. 102(b). Petitioner therefore submits that Grounds 5-9 are meaningfully distinct from Grounds 1-4 at least because they cannot be sworn behind. 3 Grounds 5-9 are also meaningfully distinct from Grounds 1-4 because they disclose the same embodiment described in the 649 patent, i.e., using Java applets to request access to data, decrypt data sent over a network, and display that data at a client. And Java applets, in their usual and normal operation, restricted copy and save functions at the client, so the combination of Kamba and Lagoze discloses every feature of the independent claims in the exact manner described by the 649 patent. Finally, Kamba and Lagoze are addressed in view of applicants admissions. (Grounds 10-12). As noted above, the 649 patent expressly admits that Java applets restricted and suppressed access to copy and save functions as part of their usual operation, and those admissions constitute AAPA. See MPEP Combinations relying on AAPA have been recognized as valid bases for instituting inter partes reviews. (See, e.g., ZTE Corporation and ZTE (USA), Inc., IPR , Paper 61: Final Written Decision (July 21, 2014).) 3 (See, e.g., Medtronic, Inc. et al. v. Tory R. Norred, M.D., IPR , Paper 13: Decision, Institution of Inter Partes Review, at *20 (June 27, 2014) (instituting review for claims 16 and on the basis of both a 102(e)-based ground and a 102(b)-based ground where the Patent Owner claimed an earlier conception date but failed to present pre-institution evidence sufficient to establish the earlier conception).) 9

13 Finally, additional grounds are required to address dependent claims related to particular aspects of encryption and data protection. C. Threshold Requirement for Inter Partes Review This Petition for inter partes review demonstrates a reasonable likelihood that the Petitioner would prevail with respect to at least one of the claims challenged in the petition. (35 U.S.C. 314(a).) All elements of claims 1-14 and of the 649 patent are taught in the prior art. This Petition presents grounds that invalidate the claims of the asserted patent based on a primary reference, Erickson, that anticipates each limitation of the 649 Patent s independent claims. Further challenges are presented based on obviousness under 35 U.S.C. 103, and reasons to combine are established. None of the references cited herein were of record during original prosecution. Further, during prosecution, the Examiner failed to appreciate applicants admissions that claimed limitations were embodied in the default copy-suppression features of Java applets, and that well-known encryption and hashing technologies existed, and in doing so erroneously found that the mere combination of these known prior art features was patentable. The claims of the 649 patent are invalid under more recent precedent because they are, at best, directed to combinations of well-known existing technologies. (See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) ( The combination of familiar elements according to known methods is likely to be obvious when it does no more 10

14 than yield predictable results. ).) VI. CLAIM CONSTRUCTION The terms in claims 1-14 and are to be given their broadest reasonable interpretation, as understood by a PHOSITA and consistent with the disclosure of the 649 patent. The broadest reasonable interpretation for all means-plus-function claim terms appear below as required by 37 C.F.R (b)(3). A. protecting means for cryptographically protecting the requested data set [claims 13 and 26] Claims 13 and 26 recite a means-plus-function limitation governed by 35 U.S.C. 112(f): protecting means for cryptographically protecting the requested data set. Petitioner identifies col. 7, ll as the portion of the specification that describes the structure, material, and acts corresponding to the claimed function of cryptographically protecting the requested data set. Consistent with that section of the specification, the structure for performing the limitation protecting means for cryptographically protecting the requested data set is a special purpose computer programmed to implement the Data Encryption Standard ( DES ) encryption algorithm or equivalent algorithms. B. generating means for generating a program portion for sending to the source of the access request [claim 13 and 26] Claims 13 and 26 recite a means-plus-function limitation governed by 35 U.S.C. 112(f): generating means for generating a program portion for sending to 11

15 the source of the access request. Petitioner identifies col. 5, ll , col. 6, ll , and col. 10, ll as the portions of the specification that describe the structure, material, and acts corresponding to the claimed function of generating a program portion for sending to the source of the access request. Consistent with those sections of the specification, the structure for performing that limitation is a special purpose computer programmed to package program code transmission over a network. VII. CITATION OF PRIOR ART Claims 1-14 and are unpatentable in view of the following prior art references taken alone or in the combinations specified in the Grounds below: U.S. Patent No. 5,765,152 to Erickson ( System and Method for Managing Copyrighted Electronic Media ) was filed on October 13, 1995 ( Erickson ) (Ex. 1003). Erickson is prior art under at least 35 U.S.C. 102(e). Applicants Admitted Prior Art ( AAPA ) applicants admitted, both in the specification of the 649 patent and during prosecution, that use of Java applets to disable right mouse button functionality constitutes prior art. Applicants also admitted that the DES encryption and associated hashing algorithms (a form of data integrity protection) as well as watermarking and other steganographic protection techniques were prior art. U.S. Patent No. 5,402,490 to Mihm ( Process for Improving Public Key 12

16 Authentication ) was filed on September 1, 1992 and published on March 28, 1995 ( Mihm ) (Ex. 1005). Mihm is prior art under at least 35 U.S.C. 102(b). Kamba, Tomonari et al., The Krakatoa Chronicle An Interactive, Personalized, Newspaper on the Web, presented in the 1995 Proceedings of the Fourth International World Wide Web Conference ( WWW4 ), pp. 1-15, 1995 (available at < ( Kamba ) (Ex. 1004). Mr. Dasan, who attended WWW4, confirms that Kamba was published and available during the conference held on December 11-14, (Ex at 51.) Specifically, Kamba was presented as part of the Resource Discovery presentation at WWW4, as evidenced on the website < last updated on Dec. 11, Therefore, Kamba is prior art under at least 35 U.S.C. 102(b). Lagoze, Carl, A Secure Repository Design for Digital Libraries, D-Lib Magazine, Vol. 1, No. 12, Digital Library Research Group, pp. 1-8, December 1995 (available at < ( Lagoze ) (Ex. 1006). Vol. 1, No. 12 of D-Lib Magazine, in which the Lagoze article was published, was registered with an International Standard Serial Number (ISSN) of An ISSN is a widely recognized 13

17 standard identifier for published serials (See Lagoze therefore qualifies as prior art under at least 35 U.S.C. 102(b). VIII. CLAIM-BY-CLAIM EXPLANATION OF GROUNDS FOR UNPATENTABILITY A. PHOSITA As used herein, a person having ordinary skill in the art ( PHOSITA ) refers to a person having at least a B.S. in Electrical Engineering, Computer Engineering, Computer Science, or a similar discipline, as well as approximately 4-5 years of industry experience in data transmission, display, and security in a computer network environment, and some exposure to web browsers and Hypertext Transfer Protocol ( HTTP ). (Clark Decl., Ex. 1009, at 24; Ex at 16.) B. Grounds 1. Ground 1: Claims 1-6, 9-12, 14, 17, 19-21, and are anticipated by Erickson Erickson discloses each limitation of claims 1-6, 9-12, 14, 17, 19-21, and 23-25, as shown in the charts below. Generally, Erickson discloses systems and methods for managing copyrighted electronic media. (Ex at Abstract.) Users connect to a server through a computer network to enable transfer of copyrighted media to the user. (Id. at Abstract, 18:36-40.) Using a VIEWER program running at the client, the user can request and receive access to media stored on the server. (Id. at Abstract, 14

18 18:36-40, 13:34-14:6.) The server encrypts the requested data and transmits that media to the VIEWER. (Id. at 4:36-42, 17:59-64, 18:36-40). The VIEWER then decrypts and displays the media. (Id. at Abstract, 13:35-48.) After the media has been decrypted and is being displayed, the VIEWER blocks the user from copying or saving the media to the local client file system, thereby protecting the copyrighted media from unauthorized dissemination. (Id. at Abstract, 14:24-31.) These are the exact steps described in the foregoing claims of the 649 patent. 1[a] A method of protecting data sent from a server to a client, said method comprising: Copyrighted electronic media are packaged in a secure electronic format, and registered on associated registration server, which serves to provide on-line licensing and copyright management for that media. Users are connected to the server, e.g., through a computer network or the Internet, to enable data transfers and to transact licenses to utilize the media. (Ex at Abstract.) 1[b] running a program portion at the client, the program portion generating and uploading to the server a request for access to data; [t]he DOCUMENT 20 is viewable through a system constructed according to the invention and denoted herein as a VIEWER. (Id. at 12:62-63.) By way of example, user 96 has a VIEWER and is connected to the network 90 through communication line 97. The user 96 can thereby access the DOCUMENT 93 through the authorization server 94 up to the minimum permissions data set forth in the DOCUMENT format. (Id. at 18:36-40.).the VIEWER contacts the DOCUMENT's Registration Server and initiates an authorization transaction. After the user is the user uses a template-like interface to request auxiliary permissions... (Id. at, 20:51-69.) The VIEWER disclosed by Erickson is a program portion running at a client computer. Erickson discloses using the VIEWER to generate and upload a request seeking authorized access to data because a program that allows a user to connect 15

19 to a server through a communication line in order to access data (i.e., DOCUMENT 93) necessarily must request access to that data. Further, Erickson expressly discloses using the VIEWER to request auxiliary permission, i.e., auxiliary access to DOCUMENT 93. 1[c] cryptographically protecting the data; In other aspects, the invention provides an encrypted electronic signature and optional data encryption, to enhance or guarantee the authenticity of the entire work, including authorship. More particularly, in other aspects, the DOCUMENT encapsulates the required data in a secure fashion using encryption; and the digital signatures are based on message digests resulting from one-way hash functions. (Ex at 4:36-42.) Accordingly, the methods of the invention include, for example, the step of encrypting the media through an RSA public key algorithm. (Id. at 8:22-26.) The Data Container 23 contains the information representing the electronic media, typically in an original file format. If desired by the author, this data can be secured through encryption, such as through secret or public key methods known in the art. (Id. at 11:55-59.) Encrypted data is preferably formatted with a secret key that is generated at the encryption event, and transported using public key encryption. (Id. at 17:45-64.) FIG. 1A of Erickson is a schematic view of a DOCUMENT. (Id. at 10:6-7.) As shown in FIG. 1A, the DOCUMENT includes a Data Container portion 23 that constitutes data representing the electronic media to be transmitted, data that can be encrypted. (Id. at 11:55-59.) Thus, Erickson discloses cryptographically protecting the data that represents the electronic media. 1[d] sending the cryptographically protected data to the client; and Encrypted data is preferably formatted with a secret key that is generated at the 16

20 encryption event, and transported using public key encryption. Applications compatible with system 70 are preferably based on TCP/IP, and therefore operate in the same manner as most popular Internet-compatible users. (Ex at 17:59-64.) By way of example, user 96 has a VIEWER and is connected to the network 90 through communication line 97. The user 96 can thereby access the DOCUMENT 93 through the authorization server 94 up to the minimum permissions data set forth in the DOCUMENT format. (Id. at 18:36-40.) Erickson discloses encrypting the Data Container portion 23, which is a portion of the DOCUMENT, and allowing a user to access that DOCUMENT over a network 90 through a communication line 97. (Ex at 11:55-59.) Allowing a user to access the DOCUMENT over a network constitutes sending the cryptographically protected data in Data Container 23 to the user (i.e., the client.). 1[e] after the running of the program portion has begun and under control of the program portion at the client, converting the cryptographically protected data to an unprotected form and FIG. 2 illustrates a VIEWER system 30 constructed according to the invention and which is suitable for viewing the DOCUMENT 20 illustrated in FIG. 1A. The VIEWER 30 includes a series of process actuators 32a... 32f.Process actuator 32c interprets--and sometimes decrypts--the data formulating the media 38, so that the user can view the media 38 to evaluate whether to engage in a licensing transaction. (Ex at 13:34-14:6.) At a minimum, however, the VIEWER must be able to interpret the data within the DOCUMENT, including, if necessary, decrypt algorithms needed to unlock any encrypted data within the DOCUMENT 36. (Id. at 14:15-20.) 1[f] selectively controlling access to copy or save functions at the client in respect of the data in its unprotected form. [U]sers are typically permitted to view the packaged media--through a system which unpackages the media--but cannot save or otherwise transfer the media without obtaining auxiliary permissions to do so from the authorization server. (Id. at Abstract.) 17

21 The VIEWER will not, however, typically permit further actions--such as copying and/or downloading of the media 38 to disk--without first obtaining auxiliary licensing permissions from the associated authorization server, as described in more detail below. The VIEWER thus provides a minimum access to the data 38, such as viewing the media contents on the user's display terminal, thereby promoting limited but fair use of the data 38. (Id. at 14:24-31.) Erickson discloses, after the program portion has begun to run, selectively controlling access to copy or save functions at the client with respect to the data in its unencrypted form because the VIEWER allows viewing of the decrypted data 38 in a DOCUMENT but prevents users from copying or saving the data unless further permissions are selectively obtained from the authorization server. (Ex at 36.) 2. A method as in claim 1 wherein cryptographically protecting the data comprises protecting the data by encryption. In other aspects, the invention provides an encrypted electronic signature and optional data encryption, to enhance or guarantee the authenticity of the entire work, including authorship. More particularly, in other aspects, the DOCUMENT encapsulates the required data in a secure fashion using encryption. (Ex at 4:36-42.) The invention also provides for optional encryption of the data within the secure container. Accordingly, the methods of the invention include, for example, the step of encrypting the media through an RSA public key algorithm. (Ex at 8:22-26.) The Data Container 23 contains the information representing the electronic media, typically in an original file format. If desired by the author, this data can be secured through encryption, such as through secret or public key methods known in the art. (Id. at 11:55-59.) 18

22 3. A method as in claim 1 wherein cryptographically protecting the data comprises protecting the integrity of the data cryptographically. an encrypted Digital Signature 26 is also part of the DOCUMENT 20, to facilitate authentication. While only the Signature 26 needs to be encrypted to ensure the authenticity and integrity of the DOCUMENT 20, encryption of the bulk data 23 is also preferred since this guarantees a high level of security. (Ex at 12:49-55.) Encrypted data is preferably formatted with a secret key that is generated at the encryption event, and transported using public key encryption. Applications compatible with system 70 are preferably based on TCP/IP, and therefore operate in the same manner as most popular Internet-compatible users. (Id. at 17:59-64.) Encrypting a digital signature to ensure the integrity of a document or data, as taught by Erickson constitutes protecting the integrity of the data cryptographically. (Ex at 37-38) 4. A method as in claim 3 wherein the integrity of the data is achieved by hashing. More particularly, in other aspects, the DOCUMENT encapsulates the required data in a secure fashion using encryption; and the digital signatures are based on message digests resulting from one-way hash functions. (Ex at 4:36-42.) (5) Digital Signature: The Digital Signature provides authenticity and integrity of all information contained in the DOCUMENT. One secure way to do this is to attach a RSA digital signature to the DOCUMENT.evidence of certification and the DOCUMENT's hash results are contained in the signature. (Id. at 23:9-17.) Erickson s disclosure of using hash functions to prepare digital signatures for transmission with the DOCUMENT constitutes protecting the integrity of the data in the DOCUMENT by hashing. (Ex at 39.) 5. A method as in claim 1 including authenticating that the client is permitted to receive the data. The VIEWER also facilitates on-line licensing of DOCUMENT-packaged works. 19

23 Based on registration information encapsulated with the data, i.e., the Document ID, the VIEWER contacts the DOCUMENT's Registration Server and initiates an authorization transaction. After the user is authenticated (typically utilizing the user's RSA digital signature, whereby the user's key is stamped by a certification authority), the user uses a template-like interface to request auxiliary permissions, such as shown in FIG. 7a. (Ex at 20:51-60.) 6. A method as in claim 1 including identifying the client to the server before the data are sent to the client. The VIEWER also facilitates on-line licensing of DOCUMENT-packaged works. Based on registration information encapsulated with the data, i.e., the Document ID, the VIEWER contacts the DOCUMENT's Registration Server and initiates an authorization transaction. After the user is authenticated (typically utilizing the user's RSA digital signature, whereby the user's key is stamped by a certification authority), the user uses a template-like interface to request auxiliary permissions, such as shown in FIG. 7a. (Ex at 20:51-60.) 9[a] A method of controlling access to data downloaded from a server computer to a client computer, said method comprising: See citations for limitation 1[a] above. (Ex at Abstract.) 9[b] downloading a protected copy of requested data from a server to a client; and See citations for limitation 1[d] above. (Id. at 17:59-64; 18:36-40.) Erickson discloses accessing a DOCUMENT that includes encrypted, i.e., protected, data using a VIEWER. The DOCUMENT is accessed over a network through a server 94. Erickson therefore discloses downloading a protected copy of data to the VIEWER. 9[c] before using said protected copy, running a program at the client so that after running the program at the client has begun at the client, the program serves to both: (a) unprotect the downloaded data thereby to provide access to an unprotected copy of the requested data, and See citations for limitation 1[e] above. (Ex at 13:34-14:6; 14:15-20.) Erickson discloses unprotecting the data contained in the DOCUMENT 20

24 because Erickson discloses decrypting that data to allow a user to access, i.e., view, the data using the VIEWER. 9[d] (b) suppress client computer copy or save functions with respect to the unprotected copy of the requested data. See citations and notes for limitation 1[f] above. (Ex at Abstract; 14:24-31.) 10[a] A method of controlling access to data sent from a server to a client, said method comprising: See citations for limitation 1[a] above. (Ex at Abstract.) 10[b] running a program portion at the client, the program portion generating and uploading to the server a request for access to data; See citations for limitation 1[b] above. (Id. at 12:62 13:15; 13:49-58; 18:36-40.) 10[c] cryptographically protecting the data; See citations for limitation 1[c] above. (Id. at 4:36-42; 8:22-26; 11:55-59; 17:45-64.) 10[d] sending the cryptographically protected data to the client; and See citations for limitation 1[d] above. (Id. at 17:59-64; 18:36-40.) 10[e] after access to the program portion is permitted and under control of the program portion, converting the cryptographically protected data to an unprotected form and See citations for limitation 1[e] above. (Id. at 13:34-14:6; 14:15-20.) 10[f] restricting or preventing access to copy or save functions at the client in respect of the data in its unprotected form. See citations for limitation 1[f] above. (Id. at Abstract; 14:24-31; 18:36-40.) 11[a] A method of controlling access to data downloaded from a server computer to a client computer, said method comprising: See citations for limitation 1[a] above. (Id. at Abstract.) 11[b] downloading a protected copy of requested data from a server to a client; and See citations for limitation 1[c] and 1[d] above. (Id. at 4:36-42; 8:22-26; 17:45-64; 18:36-40.) 11[c] running a program at the client after access to the program is permitted to both: (a) unprotect the downloaded data thereby to provide access to an unprotected copy of the requested data, and See citations for limitation 1[e] above. (Id. at 13:34-14:6; 14:15-20.) 11[d] (b) restrict or prevent client computer copy or save functions with 21

25 respect to the unprotected copy of the requested data. See citations for limitation 1[f] above. (Id. at Abstract; 14:24-31; 18:36-40.) 12. A method as in claim 1 wherein the data are sent to the client from the server through a network. See citations for limitation 1[d] above. (Ex at 17:59-64; 18:36-40.) 14. A method as in claim 7 wherein the program portion includes data concerning a cryptographic key, and the method including using the key to render the downloaded cryptographically protected data into an unprotected form. The Data Container 23 contains the information representing the electronic media, typically in an original file format. If desired by the author, this data can be secured through encryption, such as through secret or public key methods known in the art. (Ex at 11:23-59.) The VIEWER 30 includes a series of process actuators 32a. Process actuator 32c interprets--and sometimes decrypts--the data formulating the media 38, so that the user can view the media 38 to evaluate whether to engage in a licensing transaction. (Id. at 13:34-14:6.) At a minimum, however, the VIEWER must be able to interpret the data within the DOCUMENT, including, if necessary, decrypt algorithms needed to unlock any encrypted data within the DOCUMENT 36. (Id. at 14:17-20.) Publicly distributed files are registered on a registration server, and if encrypted, the key resident on the server is passed to the user via a secure channel. (Id. at 16:56-58.) Erickson discloses that the data in Data Container 23, which is part of the DOCUMENT, is encrypted using secret or public key methods. Erickson further discloses that process actuator 32c in the VIEWER decrypts that data using a key passed to the user via a secure channel, i.e., data concerning a cryptographic key is passed to the program portion via the secure channel. Because process actuator 32c in the VIEWER performs the decryption with the key, it has the data 22

26 concerning a cryptographic key at the time of decryption. 17. A method as in claim 1 including registering the client with the server. Any user of a VIEWER or PACKAGER who wishes to engage in an on-line transaction typically presents an RSA-based, network-standard digital signature signed by a recognized Certification Authority. Both VIEWERs and PACKAGERs will thus contain RSA-based standardized procedures for creating and managing public/private key pairs, for engaging in certification transactions, and for becoming registered users. (Ex at 21:32-41.) Verify that the user is a registered user. It will look for the user's RSA key with a certification stamp from an approved certification authority. Preferably, user registration capabilities are built into all VIEWERs and PACKAGERs. (Id. at 23:66 24:2.) 19[a] A method of protecting data downloaded from a server computer to a client computer, said method comprising: See citations for limitation 9[a] above. (Ex at Abstract.) 19[b] downloading a protected copy of requested data from a server to a client; and See citations for limitation 9[b] above. (Id. at 11:55-59; 17:59-64; 18:36-40.) 19[c] running a program at the client after access to the program is permitted to both: (a) unprotect the downloaded data thereby to provide access to an unprotected copy of the requested data, and See citations for limitation 9[c] above. (Id. at 13:34-14:6; 14:15-20.) 19[d] b) restrict or prevent client computer copy and save functions with respect to the unprotected copy of the requested data. See citations for limitation 9[d] above. (Id. at Abstract; 14:24-31; 18:36-40.) 20. A method as in claim 19, wherein the program running at the client generates and uploads a request for data from the client to the server, and the protected copy of requested data is downloaded from the server to the client in response to the request. See citations and notes for limitations 1[b] and 9[b] above. (Ex at 11:55-59; 12:62 13:15; 13:49-58; 17:59-64; 18:36-40.) 21. A data storage medium storing copy protected data on the client received by a method according to claim 1. The Data Container 23 contains the information representing the electronic media, 23

27 typically in an original file format. If desired by the author, this data can be secured through encryption, such as through secret or public key methods known in the art. (Ex at 11:55-59.) Not all process actuators 32 are required in every VIEWER, depending upon the form of the DOCUMENT 36. At a minimum, however, the VIEWER must be able to interpret the data within the DOCUMENT, including, if necessary, decrypt algorithms needed to unlock any encrypted data within the DOCUMENT 36. (Id. at 14:15-20.) By way of example, user 96 has a VIEWER and is connected to the network 90 through communication line 97. The user 96 can thereby access the DOCUMENT 93 through the authorization server 94 up to the minimum permissions data set forth in the DOCUMENT format. (Id. at 18:36-40.) Erickson discloses a data storage medium because Erickson discloses downloading encrypted data to the VIEWER on a user s computer system, such as a personal computer or laptop. The encrypted data is at least temporarily stored in a data storage medium on the client computer in order to be decrypted by the VIEWER, thus satisfying the storing term of this limitation. 23[a]. A method of protecting data downloaded from a server computer to a client computer, said method comprising: See citations for claim 9[a] above. (Ex at Abstract.) 23[b] downloading a protected copy of requested data from a server to a client; and See citations for claim 9[b] above. (Id. at 11:55-59; 17:59-64; 18:36-40.) 23[c] running a program at the client so that after running the program at the client has begun at the client, the program serves to both: (a) unprotect the downloaded data thereby to provide access to an unprotected copy of the requested data, and See citations for claim 9[c] above. (Id. at 13:34-14:6; 14:15-20.) 23[d] (b) suppress client computer copy and save functions with respect to the unprotected copy of the requested data. See citations for claim 9[d] above. (Id. at Abstract; 14:24-31; 18:36-40.) 24

28 24. A method as in claim 23, wherein the program running at the client generates and uploads a request for data from the client to the server, and the protected copy of requested data is downloaded from the server to the client in response to the request. See citations and notes for limitations 1[b] and 9[b] above. (Ex at 11:55-59; 12:62 13:15; 13:49-58; 17:59-64; 18:36-40.) 25[a]. A method of protecting data sent from a server to a client, said method comprising: See citations for limitation 1[a] above. (Ex at Abstract.) 25[b] running a program portion at the client, the program portion generating and uploading to the server a request for access to data; See citations for limitation 1[b] above. (Id. at 12:62 13:15; 13:49-58; 18:36-40.) 25[c] cryptographically protecting the data; See citations for limitation 1[c] above. (Id. at 4:36-42; 8:22-26; 11:55-59; 17:45-64.) 25[d] sending the cryptographically protected data to the client; and See citations for limitation 1[d] above. (Id. at 17:59-64; 18:36-40.) 25[e] after access to the program portion is permitted and under control of the program portion, converting the cryptographically protected data to an unprotected form and See citations for limitation 1[e] above. (Id. at 13:34-14:6; 14:15-20.) 25[f] restricting or preventing access to copy or save functions at the client in respect of the data in its unprotected form. See citations for limitation 1[f] above. (Id. at Abstract; 14:24-31; 18:36-40.) 2. Ground 2: Erickson in view of Kamba renders obvious claims 7, 8, 13, 22, and 26 The limitations in claims 7, 8, 13, 22, and 26 are similar to the other independent claims of the 649 patent, except that these claims recite some version of the steps generating a program portion at a server and/or downloading the program portion to the server. These additional limitations are disclosed by the combination of Erickson and Kamba. Specifically, as detailed above, Erickson discloses a program portion (the 25

29 VIEWER) that requests and receives data over a network from a server, decrypts that data, and displays that data to a user while restricting access to copy and save function at the client in respect of the unencrypted data. (Ex at 11:55-59; 13:34-14:6; 14:24-31; 18:36-40.) The VIEWER is available in several formats, including as a stand-alone application, other applications with extensions or plugins implementing VIEWER functionality, applications for integration into Internet browsers such as Mosaic and Netscape, and a software module resident within a computer. (Id. at 12:62 13:15; 13:49-58.) Therefore, Erickson discloses that many different types of applications could be used to decrypt the data and suppress copy and save functions. Like Erickson, Kamba discloses methods of sending encrypted data to a client and using a program portion (a Java applet) to display data at the client. (Ex at pp. 3, 4, 10.) Kamba further discloses that the Java applet is generated at a server and transmitted to a client over a network. (Id. at p. 8.) The applet is then run at the client in order to allow access to data. (Id.) Thus, Kamba discloses generating a program portion at a server, downloading the program portion to the client, and running the program portion at the client. (Ex at 44.) Based on Kamba s teaching of generating a program portion at a server and downloading that program over a network to a client in order to allow the client to access data, a PHOSITA would have found it obvious to modify Erickson such that 26

30 the VIEWER is generated at a server and downloaded to the client. (Ex at 46.) A PHOSITA would also have found it obvious to use the Java applet of Kamba to implement Erickson s VIEWER functionality. (Ex at 45.) Erickson and Kamba are directed to the same technical endeavor delivering media content to a user over a network. And the solution of Kamba (a Java applet) is the type of solution expressly contemplated by Erickson because a Java applet is a program that can be integrated into an Internet browser such as Netscape or can run as a stand-alone application. (Ex at 45.; see Ex at 12:62 13:15.) 7[a] A method as in claim 1 including: generating the program portion at a server, Erickson discloses each and every limitation of claim 1. (See citations for Ground 1, claim 1 above.) When the user chooses the "Create Today's Newspaper" button, each article's personal and community weights are computed, and a java newspaper applet is composed by the cgi-script and sent to the client. (Ex at p. 8.) 27

31 (Ex at FIG. 1.) 7[b] downloading the program portion to the client, and When the user chooses the "Create Today's Newspaper" button, each article's personal and community weights are computed, and a java newspaper applet is composed by the cgi-script and sent to the client. (Ex at p. 8., see also Ex at FIG. 1) 7[c] running the program portion on the client such that a request is uploaded to the server for a file containing the cryptographically protected data. More particularly, in other aspects, the DOCUMENT encapsulates the required data in a secure fashion using encryption; and the digital signatures are based on message digests resulting from one-way hash functions. (Ex at 4:39-42.) By way of example, user 96 has a VIEWER and is connected to the network 90 through communication line 97. The user 96 can thereby access the DOCUMENT 93 through the authorization server 94 up to the minimum permissions data set forth in the DOCUMENT format. (Ex at 18:36-40.) In the Krakatoa Chronicle, this flexible layout control was implemented by having the applet code on the client fetch articles from the server side (see Figure 6). (Ex at p. 10.) 8. A method as in claim 7 wherein the program portion is generated in response to, and corresponds with, an earlier received request for access to the data. When the user chooses the "Create Today's Newspaper" button, each article's personal and community weights are computed, and a java newspaper applet is composed by the cgi-script and sent to the client. (Ex at p. 8.) Kamba discloses generating a program portion (a Java newspaper applet) in response to an earlier request for access to data (a user selecting the Create Today s Newspaper button). 13[a] A server for providing access to data sets in a protected form, the server comprising: Copyrighted electronic media are packaged in a secure electronic format, and registered on associated registration server, which serves to provide on-line licensing and copyright management for that media. Users are connected to the 28

32 server, e.g., through a computer network or the Internet, to enable data transfers and to transact licenses to utilize the media. (Ex at Abstract.) 13[b] an input for receiving a request for access to a data set; See citations for limitation 1[b] above. (Id. at 12:62 13:15; 13:49-58; 18:36-40.) To the extent that the combination of Erickson and Kamba does not expressly disclose an input on the server, a PHOSITA would understand that a server from which users can request protected data over a computer network necessarily includes an input for receiving that request for access to data. (Ex at 42) 13[c] protecting means for cryptographically protecting the requested data set; and In other aspects, the invention provides an encrypted electronic signature and optional data encryption, to enhance or guarantee the authenticity of the entire work, including authorship. More particularly, in other aspects, the DOCUMENT encapsulates the required data in a secure fashion using encryption. (Ex at 4:36-42.) A PHOSITA would understand that a server that is capable of encrypting data is a special purpose computer programmed to implement an encryption algorithm. (Ex at 40; see also claim construction for this limitation in Section VI.A.) Furthermore, using the DES algorithm to perform the bulk data encryption taught by Erickson would have been an obvious design choice to a PHOSITA. (Ex at 41.) As detailed in the specification of the 649 patent, the DES algorithm was a part of the publicly available Federal Standards, and its use was well known to those skilled in the art in (Ex at 41; see 649 patent, 7:53-64.) The system disclosed by Erickson is compatible with use of the 29