Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 27
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` Entered: July 21, 2015
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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 IPR2014-00339
`Patent 7,526,784 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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`I. INTRODUCTION
`CustomPlay, LLC (“Petitioner”) filed a Corrected Petition requesting an
`inter partes review of claims 1–9 (all of the claims) of U.S. Patent No.
`7,526,784 B2 (“the ’784 patent”). Paper 4 (“Pet.”). ClearPlay, Inc. (“Patent
`Owner”) filed a Patent Owner Preliminary Response. Paper 9 (“Prelim. Resp.”).
`We instituted an inter partes review of claims 1, 2, and 4–9 on the ground of
`obviousness under 35 U.S.C. § 103(a) based on Abecassis1 and Malkin.2 Paper 12
`(“Dec. on Inst.”). We denied Patent Owner’s Request for Rehearing (Paper 14,
`“Req. Reh’g”). Paper 15. Patent Owner filed a Patent Owner Response. Paper 17
`(“PO Resp.”). Petitioner filed a Reply. Paper 18 (“Pet. Reply”).
`An oral hearing was held on April 20, 2015. A transcript of the hearing is
`included in the record. Paper 26 (“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 shown, by a
`preponderance of the evidence, that claims 1, 2, and 4–9 are unpatentable.
`A. Related Proceedings
`The ’784 patent is related to the patents involved in IPR2013-00484,
`IPR2014-00383, and IPR2014-00430.
`B. The ’784 Patent
`The ’784 patent relates generally to filtering multimedia content, such as
`scenes or language unsuitable for viewers of some ages. Ex. 1009, col. 1,
`ll. 18–25. More specifically, the invention claimed in the ’784 patent relates to a
`method for automatically identifying and filtering portions of multimedia content
`
`
`1 US Pat. No. 6,408,128 B1, filed Nov. 12, 1998, issued June 18, 2002. Ex. 1012.
`2 US Pat. No. 6,317,795 B1, filed July 22, 1997, issued Nov. 13, 2001. Ex. 1013.
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`during the decoding process. Id. at col. 4, ll. 37–39.
`Figure 2 from the ’784 patent, shown below, is a block diagram showing the
`four basic components of a system embodying the claimed invention.
`
`Figure 2 from the ’784 patent.
`Figure 3C from the ’784 patent, shown below, provides additional details for
`the four basic components shown in Figure 2.
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`Fig. 3C is a block diagram showing system components.
`As described in the Specification, and as shown generally in FIG. 3C, the
`system includes server/remote system 390c and consumer system 380c. Id. at col.
`13, ll. 3–8. Content source 330c, audio and video decoders 350c, and output
`device 370c are located at consumer system 380c. Id. Navigator 310c is located at
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`server/remote system 390c. Id. The navigator “is software and/or hardware that
`control the decoders by determining if the content being decoded needs to be
`filtered.” Id. at col. 10, ll. 35–37. Server/remote system 390c and consumer
`system 380c are connected through communication link 356c. Id. at col. 13, ll. 23–
`36.
`
`The ’784 patent system creates “navigation objects” that are transmitted
`from the server to the consumer through the communication link. The navigation
`objects define portions of the multimedia content to be filtered. Ex. 1009, col. 4, ll.
`48–50. Each navigation object contains a start position, a stop position, and a
`filtering action for the portion of the multimedia content defined by the start and
`stop positions. Id. at col. 4, ll. 50–53. The Specification of the ’784 patent
`discloses several filtering actions: “skip” (id. at col. 5, l. 7); “mute” (id. at col. 5, l.
`27); and “reframe” (id. at col. 5, l. 44). The ’784 patent also refers to these
`filtering actions as “editing actions.” Id. at col. 5, l. 59–col. 6, l. 6. The navigation
`objects, including the filtering actions, are obtained through a server system linked
`to a consumer system through a communication link for use by the user. Id. at col.
`7, l. 47–col. 8, l. 9.
`
`C. Illustrative Claim
`Claim 1, the sole independent claim, is illustrative of the claimed subject
`matter and is reproduced below.
`
`1. In a server system linked to a consumer system through a
`communication link, wherein the consumer system includes a
`processor, a memory, a decoder, and an output device for playing
`multimedia content, and wherein the server system enables the
`consumer system to filter multimedia content that is comprised
`of video content, audio content, or both, a method of assisting the
`consumer system to automatically identify portions of the
`multimedia content that are to be filtered and to thereafter
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`the method
`identified portions,
`the
`filter
`automatically
`comprising the server system performing the acts of:
`
`obtaining a plurality of navigation objects which can be
`loaded into a memory of the consumer system, each navigation
`object defining a portion of the multimedia content that is to be
`filtered by defining a start position, a stop position, and a specific
`filtering action to be performed on the portion of the multimedia
`content defined by the start and stop positions for that portion;
`
`receiving a request for one or more navigation objects from
`the consumer system, the request identifying the multimedia
`content to be played at the consumer system;
`
`sending the one or more navigation objects to the consumer
`system for processing;
` whereby the consumer system is adapted to filter the
`multimedia content by activating the filtering action for each
`portion of the multimedia content defined by the start and stop
`positions of each navigation object.
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are interpreted
`according to their broadest reasonable construction in light of the specification of
`the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs.
`LLC, _ F.3d _, No. 2014-1301, 2015 WL 4097949, at *7–8 (Fed. Cir. July 8, 2015)
`(“Congress implicitly approved the broadest reasonable interpretation standard in
`enacting the AIA,” and “the standard was properly adopted by PTO regulation”).
`Claim terms also are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire disclosure.
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Petitioner proposes definitions for certain claim terms in the ’784 patent.
`Pet. 10–13. Patent Owner does not propose any claim constructions, nor does
`Patent Owner dispute Petitioner’s proposed definitions. Patent Owner, however,
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`seeks to “clarif[y]” our construction of the terms “start position” and “stop
`position.” PO Resp. 12. We address below claim constructions for the terms at
`issue in this proceeding. Unless otherwise indicated, each of the terms listed below
`appears in independent claim 1.
`1. Filtering/Filtered
`Independent claim 1 recites “obtaining a plurality of navigation objects
`which can be loaded into a memory of the consumer system, each navigation
`object defining a portion of the multimedia content that is to be filtered by defining
`a start position, a stop position, and a specific filtering action to be performed”
`(emphases added).
`The Specification states that “navigation objects . . . define portions of the
`multimedia content that should be filtered.” Ex. 1009, col. 4, ll. 48–50. The
`Specification provides three examples of filtering actions, referred to as “skip,”
`“mute,” and “reframe.” Id. at col. 5, ll. 7, 27, 44. Following these examples, the
`Specification includes two paragraphs describing “discontinuities, irregularities, or
`artifacts” that may result from editing actions or filtering actions. Id. at col. 5,
`l. 59–col. 6, l. 21. These two paragraphs are identical except for the interchange of
`the words “editing” and “filtering.” These two paragraphs conclude with the
`following sentence:
`As used in this application, filtering[3] actions should be
`interpreted broadly to encompass all types of actions that may be
`useful in filtering multimedia content, including incremental
`filtering actions that are either separate from or combined with
`other filtering actions.
`Id. at col. 6, ll. 17–21.
`
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`3 The first paragraph substitutes “editing” for “filtering.”
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`Accordingly, the broadest reasonable construction of the terms “filtering,” or
`“filtered,” in light of the Specification of the ’784 patent and ordinary usage, is
`editing or rejecting some multimedia content while allowing other multimedia
`content to pass unchanged.
`
`2. Navigation Object
`The Specification states that “navigation objects” define portions of the
`multimedia content that should be filtered. Ex. 1009, col. 4, ll. 48–50. The
`Specification also discloses that each navigation object contains a start position, a
`stop position, and a filtering action to be performed on the portion of the
`multimedia content that is defined by the start position and stop position. Id. at
`50–53. Independent claim 1 mirrors this language, requiring that each navigation
`object define a start position, stop position, and a specific filtering action.
`Accordingly, the broadest reasonable construction of the phrase “navigation
`object” in light of the Specification of the ’784 patent is 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.
`3. Start and Stop Positions
`Claim 1 states that the navigation object defines a portion of the multimedia
`content to be filtered by “defining a start position [and] a stop position.” We agree
`with Patent Owner that the two positions must be different in order to define a
`portion of multimedia content. See PO Resp. 12–13. The Specification states that
`“[e]ach navigation object contains a start position, a stop position, and a filtering
`action to be performed on the portion of the multimedia content that is defined by
`the start position and stop position.” Ex. 1009, col. 4, ll. 50–53. In the context of a
`skip-type filtering action, for example, the portion of the multimedia content
`defined between the start and stop positions of the multimedia content is never
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`decoded and, as a result, is never transferred to a multimedia output device, such as
`a video display. Id. at col. 5, ll. 7–13. Accordingly, the broadest reasonable
`construction of the term “start position” in light of the Specification of the ’784
`patent is information that defines a beginning of a portion of multimedia content;
`and the broadest reasonable construction of the term “stop position” in light of the
`Specification of the ’784 patent is information that defines an ending of a portion
`of multimedia content, which is different than the start position.
`B. Asserted Ground of Unpatentability
`1. Obviousness Based on Abecassis and Malkin
`To prevail on its patentability challenge, Petitioner must establish facts
`supporting its challenge by a preponderance of the evidence. 35 U.S.C. § 316(e);
`37 C.F.R. § 42.1(d). Petitioner asserts that claims 1, 2, and 4–9 are unpatentable
`under 35 U.S.C. § 103(a) over Abecassis and Malkin. Pet. 25–48; Pet. Reply 3–15.
`Patent Owner disagrees with Petitioner’s assertions, and relies on the Declaration
`of Sayfe Kiaei, Ph.D. PO Resp. 14–55 (citing Ex. 2001). We have reviewed the
`evidence and arguments presented by the parties and determine that Petitioner has
`demonstrated, by a preponderance of the evidence, that Abecassis and Malkin
`teach all of the limitations of the claims, and that a person of ordinary skill in the
`art would have had reason to combine their teachings to achieve the recited
`methods.
`According to Petitioner, “the question of patentability before the Board rests
`in the analysis of the ‘navigation object’ claim limitation.” Pet. 14; see also Tr. 4,
`ll. 8–11 (“[T]he principal issue, if not the only issue, that remains for the hearing
`concerns the navigation object or filtering information limitations that are found in
`all of the claims under review.”). Petitioner frames the dispositive issue as
`follows: “the issue is whether the combined teachings of Abecassis and Malkin
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`would suggest to one of ordinary skill in the art what is claimed in the navigation
`object limitation.” Tr. 4, ll. 17–20. We frame the issue somewhat differently. The
`issue is whether the differences between the subject matter sought to be patented
`and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the
`art.
`
`Patent Owner agrees that the claimed navigation object is the critical,
`dispositive element, but asserts that the combination of Abecassis and Malkin fails
`to teach or suggest a navigation object. PO Resp. 41. Patent Owner also agrees
`with Petitioner that “to a large extent regarding what Clearplay does, what
`Abecassis does, what Malkin does, is very similar.” Tr. 30, ll. 19–21. Patent
`Owner states that:
`from the user’s perspective, it may be hard to tell a difference,
`especially with what Abecassis does and what Clearplay does.
`They are very, very similar. That doesn’t matter. It’s not what
`they do, it’s how they do it, and that’s what’s been lost in
`Petitioner’s argument. What matters is what’s in the claims.
`Tr. 31, ll. 1–5. We agree; what matters is what is claimed.4 Accordingly, we
`proceed to an analysis of the claims in the context of the references to determine
`whether the preponderance of the evidence establishes that the challenged claims
`would have been obvious in view of Abecassis and Malkin.
`Section 103(a) provides that a claim is unpatentable when “the differences
`between the subject matter sought to be patented and the prior art are such that the
`
`4 “[T]he name of the game is the claim.” Giles S. Rich, The Extent of the
`Protection and Interpretation of Claims-American Perspectives, 21 INT’L REV.
`INDUS. PROP. & COPYRIGHT L. 497, 499 (1990). “It is a ‘bedrock principle’ of
`patent law that ‘the claims of a patent define the invention to which the patentee is
`entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
`Cir. 2005) (en banc) (citation omitted).
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`subject matter as a whole would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains.” 35 U.S.C. § 103(a) (2004). In Graham v. John Deere Co., 383 U.S. 1
`(1966), the Court set out a framework for applying the statutory language of § 103:
`Under § 103, the scope and content of the prior art are to be
`determined; differences between the prior art and the claims at
`issue are to be ascertained; and the level of ordinary skill in the
`pertinent art resolved. Against this background, the obviousness
`or nonobviousness of the subject matter is determined.
`Id. at 17–18. “While the sequence of these questions might be reordered in any
`particular case, the factors continue to define the inquiry that controls.” KSR Int’l
`Co. v. Teleflex Inc., 550 U.S. 398, 407 (2007).
`The Supreme Court has made clear that we apply “an expansive and flexible
`approach” to the question of obviousness. Id. at 415. Whether a patent claiming a
`combination of prior art elements would have been obvious is determined by
`whether the improvement is more than the predictable use of prior art elements
`according to their established functions. Id. at 417. To reach this conclusion,
`however, requires “more than a mere showing that the prior art includes separate
`references covering each separate limitation in a claim.” Unigene Labs., Inc. v.
`Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). “Rather, obviousness requires
`the additional showing that a person of ordinary skill at the time of the invention
`would have selected and combined those prior art elements in the normal course of
`research and development to yield the claimed invention.” Id.
`Against this general background, we consider the references, other evidence,
`and arguments on which the parties rely.
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`2. Scope and Content of the Prior Art
`a. Abecassis
`Petitioner relies on the combined teachings of Abecassis and Malkin as
`teaching a “navigation object defining a portion of the multimedia content that is to
`be filtered by defining a start position, a stop position, and a specific filtering
`action to be performed on the portion of the multimedia content defined by the
`start and stop positions for that portion,” as recited in claim 1. Pet. 15–24, 33–35.
`Specifically, Petitioner relies on Malkin’s teaching of fuzz-balls in a control
`specification for the “filtering action” aspect of the claim, and relies on Abecassis
`for other aspects of the claim. Id. As stated by Petitioner, “[w]e’re relying on
`Malkin to supply the third information element of the navigation object [i.e., the
`filtering action]. And that’s it. Everything else is in Abecassis.” Tr. 97, ll. 1–3.
`We briefly describe the “everything else” disclosed in Abecassis.
`Abecassis discloses the use of “video maps” that identify the start, stop, and
`subject matter content of various scenes in a movie or other multi-media
`presentation. Ex. 1012, col. 16, ll. 13–22. A video map identifies the beginning
`frame and end frame in each of the relevant segments, and assigns the segment a
`content category code and/or descriptor(s). Id. at col. 16, ll. 19–22. The
`descriptors may define categories such as profanity, violence, bloodshed, monsters,
`nudity, or sex. Id. at Fig. 5B. The video map may indicate that the described
`category has none of the defined category (for example, no bloodshed), or may
`indicate various levels of the defined category, such as implied, explicit, or graphic
`levels of the defined category. Id. Once a segment is assigned a descriptor, logical
`entry (start) and exit (stop) references are assigned. Id. at col. 16, ll. 25-26, col. 20,
`ll. 1–6. Thus, each segment “is defined by a beginning and ending frame and
`comprises any number of frames.” Id. at col. 20, ll. 4–6. The resulting segment
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`definitions are mapped, and the required user interface is produced. Id. at col. 16,
`ll. 26–28. The video map’s data is provided with video and audio data contained
`on a CD or other multi-media content source. Id. at col. 16, ll. 34–35.
`The steps in the production of a variable content video are summarized with
`respect to the flow chart in Figure 5A. Each scene, segment, or fragment of a
`segment on a video script is reviewed according to an appropriate video descriptive
`structure, as shown in Figures 5B–5E. Id. at col. 15, ll. 58–63. Where necessary, a
`video segment is associated with an audio segment, and corresponding separate
`audio and video category codes are provided. Id. at col. 16, ll. 13–18.
`The video map itself does not establish or define any specific filtering
`action. The video map descriptors, such as profanity, violence, bloodshed,
`monsters, nudity, and sex, by themselves, do not describe or specify a distinct
`filtering operation. In the context of a movie, for example, a user may watch the
`movie unedited, without filtering any content. The video map, and the
`corresponding user interface, however, allows the user to filter out, or skip,
`selected segments, for example, explicit bloodshed, while retaining all other
`content. Id. at col. 20, ll. 14–25. Alternatively, the video map may identify a
`segment from somewhere else within that video that can be “grafted” in place of
`the skipped segment to enhance the artistic seamlessness of a scene. Id. at col. 20,
`ll. 61–65. A grafted segment need not be of the same duration as the segment it
`replaces. Id.
`Whatever specific filtering or editing action that may occur, if any, in
`Abecassis is defined at some later time in a different step of the process. The
`specific filtering action is not defined as part of the video map that also includes
`the start and stop positions, or duration, of content that may be filtered, as called
`for in the claims of the ’784 patent. At the end of the process, however, once the
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`viewer has selected specific filtering actions, as explained below, Abecassis
`provides the capability for the system to define a start position for a segment of
`multimedia content, a stop position for the segment, and a user initiated specific
`filtering action on the portion of the multimedia content defined by the start and
`stop positions. Indeed, Patent Owner admitted that Abecassis “accomplishes
`filtering.” Tr. 32, ll. 20–21 (“Q. Does Abecassis disclose filtering?” “A. It
`accomplishes filtering.”).
`As explained in Abecassis, the disclosed editing system “is intended to
`significantly transfer censorship, and time-constrained editing decision making
`from the producer and/or editor to the viewer.” Ex. 1012, col. 22, ll. 22–26. Thus,
`the producer can maximize the content range of the video “to permit the creation of
`a greater number of versions of a video and thus appeal to a wider audience and to
`multiple viewings.” Id. at col. 22, ll. 26–29.
`Figure 7A in Abecassis, shown below, illustrates the separate editing or
`filtering step performed by the user or viewer. Figure 7A illustrates a viewer’s
`content preferences selection screen 701 specific to the content of a selected video.
`Id. at col. 24, ll. 30–31.
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`Figure 7A from Abecassis shows a viewer’s selections from the video map.
`As shown in Figure 7A, the viewer or user selects content categories 702,
`shown by bold boxes 703. Id. at col. 24, ll. 33–38. In Figure 7A, for example, by
`selecting “None” for the categories of profanity and bloodshed, the viewer has
`selected to filter or skip all content that includes any profanity or bloodshed. Thus,
`in this example, the video map of Abecassis provides for “the option of editing-out
`the explicit bloodshed” (id. at col. 20, ll. 13–15) and “skipping of the playing of a
`segment” (id. at col. 20, ll. 59–60).
`
`b. Malkin
`Malkin also discloses a system for editing multimedia video and audio.
`Ex. 1013, col. 2, ll. 44–52. The disclosed system allows the multimedia content to
`be “masked, filtered, or modified according to the user’s content specification.”
`Id. at col. 2, ll. 29–30. A control specification is created, which can be part of the
`multimedia stream or provided as a separate stream, to allow viewers to specify
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`content preferences. Id. at col. 2, ll. 53–62.
`A control specification (reference numeral 237) “indicates how the stream
`content should be modified.” Id. at col. 12, ll. 59–62. “It provides instructions on
`showing the frames or groups of frames of the multimedia streams, [and] specifies
`blocking, omissions, and overlays.” Id. One type of control specification is a
`separate fuzz-ball track (reference numeral 337). Id. at col. 12, ll. 63–64. Another
`is an edit-decision list, “which indicates which frames to modify or replace.” Id. at
`col. 12, ll. 64–65.
`In the Malkin system, third party mask providers provide pre-constructed
`frame-level masks (as will be discussed below with reference to FIG. 3A) that are
`used to modify the multimedia content to filter out undesired information. Id. at
`col. 4, ll. 7–12. For example, a client specifies in a video request to the third party
`provider a content specification “having a violence level value no higher than 3
`and a nudity level value no higher than 2” for a particular video. Id. at col. 8, ll. 1–
`6. The appropriate mask, or control specification, is provided so that only the
`requested level of content is played. Id. at col. 8, ll. 1–30. Thus, in Malkin, a third
`party provides a single system that identifies the frames or groups of frames to be
`filtered and also provides the filtering action for the identified frames. In
`Abecassis, one party identifies content, and another party, the viewer, performs the
`filtering action.
`Figure 3A in Malkin, shown below, depicts examples of a “fuzz-ball” and a
`fuzz-ball control specification. A “fuzz ball” can modify/mask one or more
`specified objects, such as a portion of a video frame or sample of audio, according
`to user specifications. Id. at col. 3, ll. 18–21. Figure 3A in Malkin illustrates a
`fuzz-ball control specification for a video stream comprising multiple frames.
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`Figure 3A of Malkin shows a fuzz-ball control specification.
`Figure 3A depicts an example of a video stream having a series of adjacent
`frames, shown as “Frame n,” “Frame n+1,” . . . “Frame n+4.” Id. at col. 7, ll. 21–
`22. In the example shown in Figure 3A, control specification 237 is a separate
`“fuzz ball” track (reference numeral 337 in Fig. 3A). Id. at col. 7, ll. 23–25. Fuzz
`ball track 337 specifies a sequence of fuzz balls 397 having a size (382), location
`(384), and a temporal relationship (386) to the video stream (390). Id. at col. 7, ll.
`32–35. Each frame has a “known dimension.” Id. at col. 7, l. 37.
`The fuzz balls shown in Figure 3A are embodiments of control specification
`237, which indicates how the stream content should be modified. Id. at col. 12, ll.
`59–60. Control specification 237 “provides instructions on showing the frames or
`groups of frames of the multimedia streams, and specifies blocking, omissions, and
`overlays.” Id. at ll. 60–62 (emphases added). One type of control specification is
`fuzz-ball track 337. The control specification is transmitted as a separate stream or
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`file, such as a “fuzz-ball track” (reference numeral 337 in Fig. 3A). Id. at col. 8, ll.
`42–44.
`
`3. Asserted Differences Between the Prior Art and Claims
`In determining the differences between the prior art and the claims, the
`question under 35 U.S.C. § 103 is not whether the differences themselves would
`have been obvious, but whether the claimed invention as a whole would have been
`obvious. Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 164
`(Fed. Cir. 1985) (“It is elementary that the claimed invention must be considered as
`a whole in deciding the question of obviousness.”); see also Stratoflex, Inc. v.
`Aeroquip Corp., 713 F.2d 1530, 1537 (Fed. Cir. 1983) (“[T]he question under 35
`U.S.C. § 103 is not whether the differences themselves would have been obvious.
`Consideration of differences, like each of the findings set forth in Graham, is but
`an aid in reaching the ultimate determination of whether the claimed invention as a
`whole would have been obvious.”).
`As presented by the parties, we focus on the limitations in claim 1 requiring
`a “navigation object defining a portion of the multimedia content that is to be
`filtered by defining a start position, a stop position, and a specific filtering action to
`be performed on the portion of the multimedia content defined by the start and stop
`positions.”
`Patent Owner focuses its arguments on Malkin. Patent Owner acknowledges
`that the fuzz balls in Malkin are a specific filtering action, but argues that Malkin
`discloses only “single frame (or single page) specific edits.” PO Resp. 5. Patent
`Owner admits, however, the “start” and “stop” positions defining the duration of
`content to be filtered in claim 1 “could correspond with a single frame,” but
`contends that Malkin does not do so because it does not specify two different
`positions. Id. at 6. Substantially all of Patent Owner’s argument is directed to the
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`assertion that Malkin does not disclose a “navigation object” with a start position, a
`stop position, and a specific filtering action to be performed on the portion of the
`multimedia content defined by the start and stop positions. E.g., PO Resp. 8–9, 11
`(arguing that “a single fuzz-ball cannot be a navigation object,” and “Malkin’s
`skipping, replacing, omitting, etc. also cannot be a navigation object because each
`type of filtering is associated with a single frame using a single frame identifier”).
`Patent Owner’s proffered expert, Dr. Kiaei, also focuses on Malkin and
`opines that “Malkin implements this frame-by-frame fuzz-ball editing” (Ex. 2001
`¶ 48); “Malkin’s frame-by-frame method filters each frame individually” (id. ¶ 49);
`and “[a]ll editing in Malkin is performed on a single frame basis without requiring
`anything similar to a start or stop position” (id. ¶ 56). Dr. Kiaei also opines that
`“Malkin employs an entirely different technique to edit video content than is
`disclosed and claimed in the ’784 Patent.” Id. ¶ 58.5
`Dr. Kiaei concludes that “because Malkin does not employ start and stop
`positions, Malkin’s techniques would be incapable of implementing a skip filtering
`action that starts at a start position and stops at a stop position.” Id. ¶ 57.
`Patent Owner argues that the combination of Malkin and Abecassis does not
`teach or suggest each limitation of independent claim 1. Specifically, Patent
`Owner argues “the combination of Malkin and Abecassis does not teach or suggest
`a navigation object that defines the associated start position, stop position, and
`filtering action.” PO Resp. 43. According to Patent Owner, the references fail to
`identify any filtering action that is, or could be, “associated with both a start
`position and a stop position.” Id.
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`5 This is somewhat inconsistent with Patent Owner’s acknowledgement that “to a
`large extent regarding what Clearplay does, what Abecassis does, what Malkin
`does, is very similar.” Tr. 30, ll. 19–21.
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`Abecassis discloses start and stop positions for defining segments that may
`be edited or filtered. Ex. 1012, col. 20, ll. 4–6 (“Each segment 603 is defined by a
`beginning and ending frame and comprises any number of frames 604”). Patent
`Owner also acknowledges that the claimed start and stop positions of a navigation
`object can define a single frame. See Req. Reh’g. 8 (“[T]he start position of the
`navigation object identifies a position immediately before the frame while the stop
`position identifies a position immediately after the frame.”). The Abecassis system
`is intended to include a user-defined filtering action. See, e.g., Ex. 1012, col. 22,
`ll. 22–26, col. 24, ll. 33–38, Fig. 7A. The evidence also is clear that Malkin
`discloses a specific filtering action to be applied to selected frames or groups of
`frames. See, e.g., Ex. 1013, col. 12, ll. 59–62 (control specification 237 “provides
`instructions on showing the frames or groups of frames of the multimedia streams,
`and specifies blocking, omissions, and overlays”).
`Thus, based on our analysis, and contrary to Patent Owner’s position, all the
`elements of the claimed navigation object are taught—start and stop positions from
`Abecassis, and a pre-defined filtering action included in the system for editing
`from Malkin. The dispositive issue is whether it would have been obvious to a
`person of ordinary skill in the relevant technology to include pre-defined skip
`filtering actions in Abecassis based on the disclosure in Malkin, rather than require
`the end-user to make all the filtering decisions. See Pet. Reply 7–8.
`4.