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`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 29
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` Entered: November 5, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CUSTOMPLAY, LLC,
`Petitioner,
`
`v.
`
`CLEARPLAY, INC.,
`Patent Owner.
`_______________
`
`Case IPR2013-00484
`Patent 7,577,970 B2
`_______________
`
`
`Before KARL D. EASTHOM, JUSTIN T. ARBES, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
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`

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`IPR2013-00484
`Patent 7,577,970 B2
`
`
`I. INTRODUCTION
`CustomPlay, LLC (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–43 (all of the claims) of U.S. Patent No. 7,577,970 B2 (“the
`’970 patent”) on multiple grounds. Paper 4 (“Pet.”). On November 26, 2013, we
`instituted an inter partes review of claims 16, 27, 28, 30–34, and 40 on a single
`ground of unpatentability under 35 U.S.C. § 103 based on a proposed combination
`of Abecassis (Ex. 1002) and Malkin (Ex. 1004). Paper 10 (“Dec. on Inst.”).
`ClearPlay, Inc. (“Patent Owner”) filed a Patent Owner Response (Paper 17, “PO
`Resp.”), and Petitioner filed a Supplemental Reply (Paper 22, “Reply”).
`Patent Owner did not file a motion to amend the claims.
`An oral hearing was held on August 27, 2014, and a transcript of the hearing
`is included in the record. Paper 28 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This final written decision is
`issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine Petitioner has not shown by a
`preponderance of the evidence that claims 16, 27, 28, 30–34, and 40 are
`unpatentable.
`
`A. The ’970 Patent
`The ’970 patent relates generally to filtering multimedia content, such as
`scenes or language unsuitable for viewers of some ages. Ex. 1001, col. 1, ll. 16–
`17, 22–23. More specifically, the invention claimed in the ’970 patent relates to a
`computerized system for identifying and filtering automatically portions of
`multimedia content during the decoding process. Id. at col. 1, ll. 17–20. The
`decoding process creates various continuous multimedia streams by identifying,
`selecting, retrieving, and transmitting content segments from a number of available
`segments stored on a content source, such as a DVD. Id. at col. 2, ll. 3–6. The
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`IPR2013-00484
`Patent 7,577,970 B2
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`system disclosed in the ’970 patent permits filtering multimedia content at the
`output side of a decoder rather than at the input or source side of the decoder. Id.
`at col. 4, ll. 41–44.
`The ’970 patent system creates “navigation objects” to define portions of the
`multimedia content that should be filtered. Id. at col. 4, ll. 47–49. As required in
`the challenged claims, each navigation object defines a start position, a stop
`position, and a filtering action for the portion of the multimedia content defined by
`the start position and stop position. Id. at col. 4, ll. 49–52. The Specification of
`the ’970 patent discloses several filtering actions: “skip” (Ex. 1001, col. 6, ll. 1–
`13); “mute” (id. at col. 5, ll. 21–32); and “reframe” (id. at col. 5, ll. 38–52). The
`’970 patent also refers to these filtering actions as “editing actions.” Id. at col. 5,
`ll. 53–67. As disclosed, at least a “reframe navigation object” may be
`implemented “on a frame-by-frame basis.” Id. at col. 15, ll. 48–50.
`The navigation objects are placed in an “object store.” The object store may
`be a file, such as a database, and the navigation objects may be records within the
`database. Id. at col. 11, ll. 52–62.
`Figure 2 from the ’970 patent, shown below, is a block diagram showing the
`basic components of a system embodying the claimed invention.
`
`Figure 2 from the ’970 patent.
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`IPR2013-00484
`Patent 7,577,970 B2
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`
`Figure 3a from the ’970 patent, shown below, is an enhanced diagram that
`provides additional details for the basic components shown in Figure 2.
`
`
`
`Figure 3a is annotated to highlight corresponding components in Figure 2.
`
`B. Illustrative Claim
`We instituted inter partes review of independent claims 16 and 27, and
`dependent claims 28, 30–34, and 40. Illustrative claim 16 follows:
`
`16. In a computerized system for enabling a consumer to
`filter multimedia content that is comprised of video content,
`audio content, or both, and wherein a consumer computer system
`includes a processor, a memory, a decoder, and an output device
`for playing the multimedia content, a method for assisting the
`consumer to identify portions of the multimedia content that are
`to be filtered and to thereafter filter the identified portions, the
`method comprising the acts of:
`
`loading a plurality of navigation objects into the memory of
`the consumer computer system, each of which defines a portion
`of the multimedia content that is to be filtered by defining a start
`position and a stop position and a specific filtering action to be
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`performed on the portion of the multimedia content defined by
`the start and stop positions for that portion;
`
`updating a position code in association with decoding the
`multimedia content on the consumer computer system;
`
`comparing the position code with a navigation object to
`determine whether the position code corresponding to the
`multimedia content falls within start and stop positions defined
`by one of the navigation objects;
` when the position code is determined to fall within the start
`and stop position defined by a particular navigation object,
`activating
`the filtering action assigned
`to
`the particular
`navigation object in order to filter the multimedia content for that
`portion of the multimedia content defined by the particular
`navigation object;
`
`transferring the multimedia content to an output device,
`whereby the multimedia content is played at the output device
`excluding each portion thereof which is filtered in accordance
`with the plurality of navigation objects;
`
`assigning a configuration identifier to the decoder;
`
`comparing the configuration identifier of the particular
`navigation object with the configuration identifier of the decoder
`to determine if the particular navigation object applies to the
`decoder; and
`
`determining that the particular navigation object applies to
`the decoder based on the configuration identifier of the particular
`navigation object matching the configuration identifier of the
`decoder.
`
`C. References Relied Upon
`The ground of unpatentability in this inter partes review is based on the
`following references:
`
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`Patent 7,577,970 B2
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`Reference
`Abecassis
`
`Malkin
`
`
`
`Pat. Number
`U.S. 6,408,128 B1
`
`Date
`June 18, 2002
`(filed Nov. 12,
`1998)
`U.S. 6,317,795 B1 Nov. 13, 2001
`(filed July 22,
`1997)
`
`Exhibit Number
`Ex. 1002
`
`Ex. 1004
`
`D. Ground of Unpatentability
`This inter partes review addresses the issue of whether claims 16, 27, 28,
`30–34, and 40 would have been obvious under 35 USC § 103(a) based on
`Abecassis and Malkin.
`
`II. ANALYSIS
`
`A. Claim Interpretation
`In the Decision on Institution, we used the broadest reasonable claim
`interpretation standard and interpreted various claim terms of the ’970 patent as
`follows:
`Term or Phrase
`Filtering/Filter
`
`Construction
`Editing or rejecting some multimedia
`content while allowing other multimedia
`content to pass unchanged.
`Describing or specifying a distinct
`filtering operation.
`Information that defines both (1) a
`portion of multimedia content to filter
`and (2) the filtering action to be taken on
`the defined portion of multimedia
`content.
`Information that identifies a location in
`the multimedia content.
`Information that defines a beginning of a
`portion of multimedia content
`
`Defining a Filtering Action
`
`Navigation Object
`
`Position Code
`
`Start Position
`
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`Construction
`A continuance in time from the start
`position.
`
`Term or Phrase
`Duration from the Start
`Position
`See Dec. on Inst. 14–15.
`Patent Owner indicates that our construction of the claim term “navigation
`object” in our Decision on Institution is correct “as long as it encompasses the
`requirement that a navigation object must define when to start applying the
`filtering action and when to stop applying the filtering action.” PO Resp. 4.
`Because we base our Final Decision on other claim limitations, however, we need
`not reach this claim interpretation.
`The parties otherwise do not dispute the interpretations set forth in our
`Decision on Institution, and we discern no reason based on the record before us to
`change them for purposes of the Final Decision. Accordingly, to the extent
`necessary to reach this Final Decision, we adopt our claim constructions from the
`Decision on Institution.
`B. Asserted Ground of Unpatentability
`1. Obviousness Based on Abecassis and Malkin
`a. Configuration Identifier
`In claim 16, a “configuration identifier” determines when a particular
`navigation object is applied. Claim 16 is the only claim before us that includes a
`configuration identifier.
`Claim 16 requires the step of assigning a configuration identifier to the
`decoder. Ex. 1001, col. 21, l. 53. Claim 16 also requires the step of comparing
`“the configuration identifier of the particular navigation object” with the
`configuration identifier of the decoder to determine if “the particular navigation
`object” applies to the decoder. Id. at col. 21, ll. 54–57. Claim 16 also requires the
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`step of determining whether “the particular navigation object” applies to the
`decoder based on the configuration identifier of “the particular navigation object”
`matching the configuration identifier of the decoder. Id. at col. 21, ll. 58–61.
`Claim 16 requires the step of “comparing the configuration identifier of the
`particular navigation object” to the configuration identifier of the decoder
`(emphasis added). Therefore, claim 16 inferentially claims that the particular
`navigation object has a “configuration identifier.” Additionally, claim 16 requires
`the step of determining whether the configuration identifier of the particular
`navigation object matches the configuration identifier of the decoder.
`As explained in the Specification of the ’970 patent with reference to Figure
`3A, the configuration identifier “is an identifier (329a) used to determine if
`navigation object 320a applies to a particular consumer system.” Ex. 1001,
`col. 12, ll. 2–5. Figure 3A shows that configuration identifier 329a is included
`within navigation object 320a. The configuration identifier identifies the hardware
`and software configuration of a consumer system to which the navigation object
`applies. Id. at col. 14, ll. 7–8; see also id. at col. 14, ll. 13–17 (“The motivation
`behind configuration 499 [in Figure 4B] is that different consumer systems may
`introduce variations in how navigation objects are processed. As those variations
`are identified, navigation objects may be customized for a particular consumer
`system without impacting other consumer systems.”).
`In its Patent Owner Response, Patent Owner asserts that because neither
`Abecassis nor Malkin discloses a navigation object, these references also cannot
`teach or suggest a navigation object with a configuration identifier or the steps of
`selectively applying navigation objects based on the configuration identifier of the
`decoder, as required in claim 16. PO Resp. 11. Patent Owner also asserts that
`Abecassis does not disclose a configuration identifier. Id.
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`Petitioner has not directed us to any evidence that Malkin discloses or
`suggests a “configuration identifier” as part of a navigation object. Petitioner relies
`on the disclosure in Abecassis for evidentiary support that Abecassis discloses the
`claimed steps involving the “configuration identifier.” Petitioner asserts that
`Abecassis recognizes that different multimedia players have different
`configurations. Pet. 38 (citing Ex. 1002, col. 27, ll. 25–28). The mere fact that a
`system has different potential configurations, however, does not mean that it
`performs the specific “assigning,” “comparing,” and “determining” steps as recited
`in claim 16 pertaining to the “configuration identifier.”
`Petitioner also asserts that Abecassis discloses the correlation of a video-
`map configuration and a multimedia-player configuration. Id. (citing Ex. 1002,
`col. 23, ll. 48–52 (“When completed, the map may be automatically keyed or
`configured to accommodate the requirements of the particular device to which the
`video is to be downloaded.”)). The portion of Petitioner’s Reply addressing the
`“configuration identifier” also focuses exclusively on the disclosure in Abecassis.
`Reply 11–13. The cited portion in Abecassis applies to a completed video map,
`not to particular navigation objects. In our Decision on Institution, we determined
`that the video map in Abecassis was not a navigation object, as required by the
`claims of the ’970 patent. Dec. on Inst. 19.
`Petitioner maintains that Abecassis discloses a variety of video map
`configurations and that it would be illogical to key or configure a video map “and
`then exclude the configuration identification.” See Reply 13. Petitioner points out
`that Abecassis’s video maps are automatically “‘configured or keyed to
`accommodate the requirements of [a] particular device.’” See id. at 12 (quoting
`Ex. 1002, col. 23, ll. 48–52). This disclosure shows that each map does not
`necessarily need to carry a configuration identifier, because in Abecassis, each map
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`has been designed to correspond to a specific device. Petitioner has not provided
`any persuasive evidence or argument that shows that the combination of Abecassis
`and Malkin discloses or suggests the “configuration identifier” limitations recited
`in claim 16.
`Petitioner cites the Declaration of Dr. Robert Louis Stevenson for
`evidentiary support that Abecassis discloses the claimed steps involving the
`“configuration identifier.” Pet. 38 (citing Ex. 1006 ¶ 57). Dr. Stevenson cites
`substantially the same passages from Abecassis as cited by Petitioner and
`concludes that Abecassis discloses a configuration identifier, as claimed in claim
`16. Ex. 1006 ¶ 57.
`Petitioner also has not directed us to any persuasive evidence or argument
`that it would have been obvious to modify the configuration technology used for
`completed video maps in Abecassis to provide configurable navigation objects,
`each with configuration identifiers, as required in claim 16. Moreover, Petitioner
`has not provided any persuasive evidence or argument that it would have been
`obvious to compare each navigation object’s configuration identifier to a decoder’s
`configuration identifier, as claim 16 also requires. No apparent need would exist
`for this type of comparison step in the system of Abecassis, because each video
`map is configured to a specific device. Accordingly, the preponderance of the
`evidence does not establish that the combination of Abecassis and Malkin, on
`which this inter partes review is based, discloses or suggests the “configuration
`identifier” limitations recited in claim 16. Accordingly, Petitioner has not
`demonstrated by a preponderance of the evidence that claim 16 is unpatentable
`over Abecassis and Malkin.
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`b. Disabling a Navigation Object
`Claim 27 requires the step of “providing for disabling of one or more of the
`navigation objects such that the specific filtering action specified by the disabled
`navigation object is ignored.” Ex. 1001, col. 23, ll. 41–43. The Specification
`states that “[n]avigation objects may be disabled by including an indication within
`the navigation objects that they should not be part of the filtering process.” Id. at
`col. 18, ll. 64–66. The Specification also states that the step of retrieving
`navigation objects may ignore navigation objects that have been marked as
`disabled so they are not retrieved, or, alternatively, a separate step could be
`performed to eliminate disabled navigation objects from being used in filtering
`multimedia content. Id. at col. 18, l. 66–col. 19, l. 4.
`In its Patent Owner Response, Patent Owner asserts that “because neither
`Abecassis nor Malkin teaches or suggests a navigation object, these references also
`cannot teach or suggest the disabling of a navigation object.” PO Resp. 12. Patent
`Owner also asserts that the “supervisor preview” in Abecassis, on which Petitioner
`relies for disclosing the “providing for disabling” step, is performed during the
`creation of the video map and is therefore irrelevant to the process of employing
`navigation objects during the process of outputting multimedia content. Id.
`In its Petition, Petitioner asserts that Abecassis discloses the claimed
`“providing for disabling” step in the context of the asserted ground of anticipation
`based on Abecassis alone. Pet. 40. The Petition did not address the “disabling”
`step in the context of the asserted ground of obviousness based on Abecassis and
`Malkin. Petitioner asserts that Abecassis discloses “a supervisor’s previewing
`flagged segments and making individualized determinations to skip or include the
`segments, where an ‘include’ decision entails disabling the segment information
`(or navigation object).” Id. (citing Ex. 1006 ¶¶ 37–38). Petitioner also asserts that
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`when a viewer establishes content preferences in the Abecassis video map system,
`the result is “ignoring the segment information for segments that are deemed
`acceptable under the viewer’s preferences.” Id. (citing Ex. 1006 ¶¶ 74–75).
`Neither of these assertions establishes that a navigation object can be disabled, as
`required in claim 27. A viewer’s content preferences, which define which
`segments are played and which are not, do not disable a navigation object, as
`required by claim 27. Claim 27 specifically requires “playing the multimedia
`content at the output device excluding the portion thereof which is filtered in
`accordance with the corresponding navigation object and ignoring the filtering
`action specified by any disabled navigation objects.” Ex. 1001, col. 23, ll. 54–58
`(emphasis added). Thus, in claim 27, the disabling step ignores a specified
`filtering action during playback, not at some earlier time as in Abecassis.
`Dr. Stevenson’s Declaration, on which Petitioner relies for evidentiary
`support, repeats Petitioners assertions in the context of the ground of anticipation
`based on Abecassis alone. We also find Dr. Stevenson’s conclusions unpersuasive.
`Petitioner has not directed us to any persuasive evidence or argument that
`creating a video map with viewer content preferences, as disclosed in Abecassis,
`discloses or suggests the steps of “providing for disabling” a navigation object and
`“ignoring the filtering action specified by any disabled navigation objects,” as
`required in claim 27. Moreover, Petitioner has not provided any persuasive
`evidence or argument that it would have been obvious to include the asserted video
`map “disabling” technology disclosed in Abecassis to provide for disabling one or
`more of the navigation objects of Malkin. Accordingly, the preponderance of the
`evidence does not establish that the combination of Abecassis and Malkin, on
`which this inter partes review is based, discloses or suggests providing for
`disabling a navigation object and ignoring filtering actions specified by any
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`disabled navigation objects, as required in claim 27. Accordingly, Petitioner has
`not demonstrated by a preponderance of the evidence that claim 27 is unpatentable
`over Abecassis and Malkin.
`d. Dependent Claims 28, 30–34, and 40
`Dependent claims 28, 30–34, and 40 depend, directly or indirectly, from
`claim 27, and thus include all its elements and limitations. 37 C.F.R. § 1.75(c)
`(“One or more claims may be presented in dependent form, referring back to and
`further limiting another claim or claims in the same application” (emphasis
`added)). Accordingly, for the same reasons as discussed above for claim 27,
`Petitioner has not demonstrated by a preponderance of evidence that claims 28,
`30–34, and 40 are unpatentable over Abecassis and Malkin.
`III. CONCLUSION
`Based on the evidence and arguments, Petitioner has not demonstrated by a
`preponderance of the evidence that claims 16, 27, 28, 30–34, and 40 of the ’970
`patent are unpatentable under 35 U.S.C. § 103(a) based on Abecassis and Malkin.
`IV. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that claims 16, 27, 28, 30–34, and 40 of the ʼ970 patent have not
`been shown, by a preponderance of the evidence, to be unpatentable.
`This is a final decision. Parties to the proceeding seeking judicial review of
`the decision must comply with the notice and service requirements of 37 C.F.R.
`§ 90.2.
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`IPR2013-00484
`Patent 7,577,970 B2
`
`For Petitioner:
`
`Steven Greenberg
`Kara Brotman
`CRGOLaw
`sgreenberg@crgolaw.com
`kbrotman@crgolaw.com
`
`John Carey
`CAREY RODRIGUEZ GREENBERG O’KEEFE, LLP
`jcarey@careyrodriguez.com
`
`
`For Patent Owner:
`
`Brian Tucker
`Joshua Rupp
`KIRTON McCONKIE PC
`btucker@kmclaw.com
`jrupp@kmclaw.com
`
`
`
`
`
`kis
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