Paper 20
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` Entered: August 14, 2015
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`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
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`
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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 IPR2014-00430
`Patent 8,117,282 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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`
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`

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`IPR2014-00430
`Patent 8,117,282 B2
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`I. INTRODUCTION
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`CustomPlay, LLC (“Petitioner”) filed a Petition requesting an inter partes
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`review of claims 1–25 (all of the claims) of U.S. Patent No. 8,117,282 B2 (“the
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`’282 patent”). Paper 1 (“Pet.”). We instituted an inter partes review of claims 1–
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`25 on the ground of obviousness under 35 U.S.C. § 103(a) based on Abecassis1 and
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`Malkin.2 Paper 6 (“Dec. on Inst.”). ClearPlay, Inc. (“Patent Owner”) filed a Patent
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`Owner Response. Paper 10 (“PO Resp.”). Petitioner filed a Reply. Paper 11
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`(“Pet. Reply”).
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`An oral hearing was held on April 20, 2015. A transcript of the hearing is
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`included in the record. Paper 19 (“Tr.”).
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`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision is
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`issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
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`For the reasons that follow, we determine Petitioner has shown, by a
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`preponderance of the evidence, that claims 1–25 are unpatentable.
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`A. Related Proceedings
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`The ’282 patent is related to the patents involved in IPR2013-00484,
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`IPR2014-00339, and IPR2014-00383.
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`B. The ’282 Patent
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`The ’282 patent relates generally to the field of modifying playback of a
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`multimedia presentation, such as a video, from a storage medium. Ex. 1001, col. 1,
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`ll. 25–27. The ’282 patent describes, as “BACKGROUND,” for example, filtering
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`out certain language, images, scenes, or other content not suitable for, or
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`considered objectionable by, certain audiences. Id. at col. 1, ll. 40–55. As another
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`example, a media player, such as a DVD player, is configured to upload playback
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`1 US Pat. No. 6,408,128 B1, filed Nov. 12, 1998, issued June 18, 2002. Ex. 1004.
`2 US Pat. No. 6,317,795 B1, filed July 22, 1997, issued Nov. 13, 2001. Ex. 1005.
`2
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`Patent 8,117,282 B2
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`filters to a local memory or otherwise use playback filters from a removable
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`storage medium in communication with a memory interface. Id. at col. 1, ll. 27–
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`30.
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`The ’282 patent applies filters to modify, e.g., skip or mute, certain portions
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`of a video during playback. Id. at col. 1, ll. 35–36. The ’282 patent also generally
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`discloses a method for loading filter information to a media player. Ex. 1001, col.
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`2, ll. 15–16. There are two independent claims. Independent claim 1 is directed to
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`the disclosed method. Independent claim 19 is directed to a media player. The
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`method involves analyzing the status of a first memory reader adapted to
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`communicate with a removable storage medium. Id. at col. 2, ll. 16–18. The
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`method further involves establishing communication with a second storage
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`medium and determining whether the second storage medium includes filtering
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`information associated with a multimedia presentation. Id. at col. 2, ll. 19–23.
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`During display of the multimedia presentation, such as during play of a DVD, the
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`player continually checks the filter information to determine if a particular portion
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`of a movie should be filtered. Id. at col. 3, ll. 33–36. A filter file or event includes
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`a time code corresponding to a portion of the multimedia data to be filtered. Id. at
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`col. 3, ll. 28–30. A match between the time code of the multimedia presentation
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`and the time code in the filter file causes the execution of a filtering action. Id. at
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`col. 3, ll. 30–33.
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`C. Illustrative Claim
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`Claims 1 and 19 are independent claims. Claim 1 is illustrative of the
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`claimed subject matter and is reproduced below.
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`1. A method for loading filter information to a media player
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`comprising:
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`analyzing a status of a first memory reader adapted to
`communicate with a removable non-transitory storage medium
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`3
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`Patent 8,117,282 B2
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`including audio and visual data associated with a multimedia
`presentation;
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`establishing communication with a second non-transitory
`storage medium;
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`automatically determining whether the second non-transitory
`storage medium includes filtering information for the multimedia
`presentation, the filter information including at least one
`identification of a start time and end time associated with a
`portion of the multimedia presentation, the filtering information
`further including at least one filtering action for the portion of
`the multimedia presentation; and
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`providing for presentation of the multimedia presentation
`pursuant to the filtering information.
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`II. ANALYSIS
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`A. Claim Construction
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`In an inter partes review, claim terms in an unexpired patent are interpreted
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`according to their broadest reasonable construction in light of the specification of
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`the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs.
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`LLC, No. 2014-1301, 2015 WL 4097949, at *7–8 (Fed. Cir. July 8, 2015)
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`(“Congress implicitly approved the broadest reasonable interpretation standard in
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`enacting the AIA,” and “the standard was properly adopted by PTO regulation”).
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`Claim terms also are given their ordinary and customary meaning, as would be
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`understood by one of ordinary skill in the art in the context of the entire disclosure.
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`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
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`We apply these general rules in construing the claims in the ’282 patent.
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`In the Decision on Institution, we interpreted two means-plus-function
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`limitations in the claims of the ’282 patent as follows:
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`Term
`
`Interpretation
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`“means for storing
`filter information”
`(claim 21)
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`Function: storing filter information
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`Corresponding structure: memory in
`a memory card, memory stick, USB
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`Patent 8,117,282 B2
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`Term
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`Interpretation
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`“means for reading
`filter information
`from a non-transitory
`storage medium”
`(claim 22)
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`flash drive and jump drive, laser or
`optical readable memory platform, or
`magnetic memory platform
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`Function: reading filter information
`from a non-transitory storage
`medium
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`Corresponding structure: a reader
`device capable of searching the
`non-transitory storage medium for
`computer-executable instructions or
`data structures stored thereon
`containing filter information
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`Dec. on Inst. 6–8. The parties do not dispute these interpretations in the
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`Patent Owner Response and Petitioner’s Reply. Based on the full record
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`developed during trial, we adopt our previous analysis for purposes of this
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`Decision.
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`We also interpret the following limitation in claims 1 and 19: “filter
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`information including at least one identification of a start time and end time
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`associated with a portion of the multimedia presentation, the filtering information[3]
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`further including at least one filtering action for the portion of the multimedia
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`presentation.” Patent Owner contends that the limitation means “(1) an
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`identification of a first time within a multimedia presentation when a filtering
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`action is started; (2) an identification of a second time within the multimedia
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`presentation, subsequent to the first time, when the filtering action is ended; and
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`3 The claims refer to both “filtering information” and “filter information.” See,
`e.g., Ex. 1001, col. 14, ll. 26 (“filter information”), 35 (“filtering information”), 36
`(“filter information”), 39 (“filtering information”). The Specification also uses
`both terms. See, e.g., id. at col. 2, ll. 16 (“filter information”), 22 (“filtering
`information”). We view these terms as interchangeable and having the same
`meaning in the context of the ’282 patent.
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`(3) the filtering action.” PO Resp. 5. We agree with Patent Owner that the start
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`time and end time must be different in order to define a portion of a multimedia
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`presentation. The Specification states, for example, that “[t]he portion of the
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`multimedia presentation may be identified by a start (or interrupt) and end time (or
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`resume code), by start and end physical locations on a memory media, [or] by a
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`time or location and an offset value (time, distance, physical location, or a
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`combination thereof, etc.).” Ex. 1001, col. 4, l. 67–col. 5, l. 5. Patent Owner’s
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`proposed interpretation is consistent with the language of the claims and the
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`Specification, and we adopt it for purposes of this Decision.
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`B. Asserted Ground of Unpatentability
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`1. Obviousness Based on Abecassis and Malkin
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`To prevail on its patentability challenge, Petitioner must establish facts
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`supporting its challenge by a preponderance of the evidence. 35 U.S.C. § 316(e);
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`37 C.F.R. § 42.1(d). Petitioner asserts that claims 1–25 are unpatentable under 35
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`U.S.C. § 103(a) over Abecassis and Malkin. Pet. 22–49; Pet. Reply 11–14. Patent
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`Owner disagrees, and focuses its argument on the assertions that Malkin does not
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`disclose or suggest a “navigation object” (PO Resp. 6, 20); that Malkin’s fuzz-ball
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`control specification does not identify start and end times for a filtering action (id.
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`at 7, 21); and that Malkin’s other control specifications do not constitute a
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`“navigation object” (id. at 16).
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`We have reviewed the evidence and arguments presented by the parties and
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`determine that Petitioner has demonstrated, by a preponderance of the evidence,
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`that Abecassis and Malkin teach all of the limitations of the claims, and that a
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`person of ordinary skill in the art would have had reason to combine their
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`teachings to achieve the recited method or apparatus in claims 1–25.
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`6
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`Patent Owner acknowledges that, unlike some of the claims in the related
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`inter partes reviews listed above, the claims of the ’282 patent do not use the term
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`“navigation object.” PO Resp. 3.4 Patent Owner also states, however, that all the
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`challenged claims require the following three elements: (1) an identification of a
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`start time of a portion of a multimedia presentation; (2) an identification of an end
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`time of the portion; and (3) a filtering action for the portion. Id.; see also id. at 21
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`(“[E]ach claim generally requires three associated pieces of information which
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`define (1) the filtering action to apply, (2) when to start the filtering action, and (3)
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`when to stop the filtering action.”) (emphasis omitted). These same three elements
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`are recited as being included in a “navigation object” in some of the claims in the
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`related inter partes reviews. See Tr. 31, ll. 17–18 (“This first slide shows a
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`4 Throughout its Response, Patent Owner refers generally to “Ex. 2001; Ex. 2002;
`Ex. 2003; Ex. 2004; Ex. 2005,” which are exhibits from the related inter partes
`reviews. See, e.g., PO Resp. 6 (arguing that Patent Owner’s arguments in the
`related proceedings “are equally applicable to the present IPR”), 7, 11, 16, 18, 19,
`21 (“For each of the reasons given above and in the related IPRs, Malkin does not
`teach or suggest a navigation object.”). Exhibit 2001 is the Patent Owner
`Response in IPR2013-00484; Exhibit 2002 is the Patent Owner Response in
`IPR2014-00339; Exhibit 2003 is a Declaration of Sayfe Kiaei, Ph.D., filed in
`IPR2014-00339; Exhibit 2004 is the Patent Owner Response in IPR2014-00383;
`and Exhibit 2005 is a Declaration of Sayfe Kiaei, Ph.D., filed in IPR2014-00383.
`These non-specific references to documents from other proceedings are
`inconsistent with 37 CFR § 42.6(a)(3). See Cisco Sys., Inc. v. C-Cation Techs.,
`LLC, Case IPR2014 00454, slip op. at 7–10 (PTAB Aug. 29, 2014) (Paper 12)
`(informative) (noting that “[o]ne purpose of the prohibition against incorporation
`by reference is to eliminate abuses” of the page limits established for the parties’
`substantive papers, and that citing “large portions of another document, without
`sufficient explanation of those portions, amounts to incorporation by reference”).
`We do not consider information presented in other papers or exhibits, but not
`discussed sufficiently in Patent Owner’s Response. Moreover, the cited Responses
`and Declarations pertain to different claims of different patents, and are based on
`cases with a different record from the instant proceeding.
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`navigation object, and I’ve used figure 4B, this appears pretty much consistently in
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`all the patents.”); Tr. 34, ll. 4–6 (“I want to point out that the three associated
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`pieces of information [start, stop or end, and filtering action] are the same in each
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`of the three patents.”);5 Tr. 35, l. 21–Tr. 36, l. 3 (“You’re providing three separate
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`pieces of information that define what you do, when you start it, and when you
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`finish it. That’s been our argument, it’s been very consistent in all of these IPRs,
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`it’s the same argument we’re making in all of our related litigations. That’s what a
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`navigation object is.”).
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`Petitioner takes the position that “[i]n each of the two independent claims of
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`the ’282 patent, the claim limitation ‘filtering information’[6] requires three distinct
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`information elements, i.e., start time, end time, and a filtering action.” Pet. 22
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`(emphasis omitted); see also Tr. 4, ll. 8–11 (“the principal issue, if not the only
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`issue, that remains for the hearing concerns the navigation object or filtering
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`information limitations that are found in all of the claims under review”). Patent
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`Owner agrees, as discussed above, arguing, however, that the combination of
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`Malkin and Abecassis does not teach or suggest a “navigation object” that defines
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`the associated start time, end time, and filtering action. PO Resp. 20–21.
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`Patent Owner agrees with Petitioner that “to a large extent regarding what
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`Clearplay does, what Abecassis does, what Malkin does, is very similar.” Tr. 30,
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`ll. 19–21. Patent Owner also states that
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`5 The three patents are the patents involved in related inter partes review
`proceedings IPR2014-00339, 00383, and 00430. All three proceedings were
`argued together. Tr. 3 (“This is the hearing for case number[s] IPR2014-00339,
`383 and 430. The patent for 339 is 7,526,784, for 383 it’s 7,543,318, and for the
`430 case it’s 8,117,282.”).
`6 Claim 1 uses the term “filtering information.” Claim 19 uses the term “filter
`information.” For our analysis, the terms have the same meaning.
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`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.
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`Tr. 31, ll. 1–5. We agree; what matters is what is claimed.7 Accordingly, we
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`proceed to an analysis of the claims in the context of the references to determine
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`whether the preponderance of the evidence establishes that the challenged claims
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`would have been obvious in view of Abecassis and Malkin.
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`Section 103(a) provides that a patent claim is unpatentable when “the
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`differences between the subject matter sought to be patented and the prior art are
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`such that the subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains.” 35 U.S.C. § 103(a) (2004). In Graham v. John Deere
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`Co., 383 U.S. 1 (1966), the Court set out a framework for applying the statutory
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`language of § 103:
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`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.
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`Id. at 17–18. “While the sequence of these questions might be reordered in any
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`particular case, the factors continue to define the inquiry that controls.” KSR Int’l
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`Co. v. Teleflex Inc., 550 U.S. 398, 407 (2007).
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`7 “The 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). See also Phillips v. AWH Corp., 415 F.3d 1303,
`1312 (Fed. Cir. 2005) (en banc) (“It is a ‘bedrock principle’ of patent law that ‘the
`claims of a patent define the invention.’”).
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`The Supreme Court has made clear that we apply “an expansive and flexible
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`approach” to the question of obviousness. Id. at 415. Whether a patent claiming
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`the combination of prior art elements would have been obvious is determined by
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`whether the improvement is more than the predictable use of prior art elements
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`according to their established functions. Id. at 417. To reach this conclusion,
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`however, requires more than a mere showing that the prior art includes separate
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`references covering each separate limitation in a claim. Unigene Labs., Inc. v.
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`Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). “Rather, obviousness requires
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`the additional showing that a person of ordinary skill at the time of the invention
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`would have selected and combined those prior art elements in the normal course of
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`research and development to yield the claimed invention.” Id.
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`Against this general background, we consider the references, other evidence,
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`and arguments on which the parties rely.
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`2. Scope and Content of the Prior Art
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`a. Abecassis
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`Petitioner states that “the issue is whether the combined teachings of [the]
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`cited art would have suggested the claimed limitations of the ’282 Patent to those
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`of ordinary skill in the art, not whether Malkin alone teaches or suggests the
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`claimed ‘filtering information.’” Pet. Reply 11–12; see Pet. 20–23, 28–31.
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`Specifically, Petitioner states “Malkin need only contribute an explicit filtering
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`action to Abecassis’ segment definitions.” Id. at 13. As stated by Petitioner,
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`“[w]e’re relying on Malkin to supply the third information element of the
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`navigation object [i.e., the filtering action]. And that’s it. Everything else is in
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`Abecassis.” Tr. 97, ll. 1–3. We briefly describe the “everything else” disclosed in
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`Abecassis.
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`Abecassis discloses the use of “video maps” that identify the start, stop, and
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`subject matter content of various scenes in a movie or other multi-media
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`presentation. Ex. 1004, col. 16, ll. 13–22. A video map identifies the beginning
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`frame and end frame in each of the relevant segments, and assigns the segment a
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`content category code and/or descriptor(s). Id. at col. 16, ll. 19–22. The
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`descriptors may define categories such as profanity, violence, bloodshed, monsters,
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`nudity, or sex. Id. at Fig. 5B. The video map may indicate that the described
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`category has none of the defined category (for example, no bloodshed), or may
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`indicate various levels of the defined category, such as implied, explicit, or graphic
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`levels of the defined category. Id. Once a segment is assigned a descriptor, logical
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`entry (start) and exit (stop) references are assigned. Id. at col. 16, ll. 25-26, col. 20,
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`ll. 1–6. Thus, each segment “is defined by a beginning and ending frame and
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`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,
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`ll. 26–28. The video map’s data are provided with video and audio data contained
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`on a CD or other multi-media content source. Id. at col. 16, ll. 34–35.
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`The steps in the production of a variable content video are summarized with
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`respect to the flow chart in Figure 5A. Each scene, segment, or fragment of a
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`segment on a video script is reviewed according to an appropriate video descriptive
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`structure, as shown in Figures 5B–5E. Id. at col. 15, ll. 58–63. Where necessary, a
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`video segment is associated with an audio segment, and corresponding separate
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`audio and video category codes are provided. Id. at col. 16, ll. 13–18.
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`The video map itself does not establish or define any specific filtering
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`action. The video map descriptors, such as profanity, violence, bloodshed,
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`monsters, nudity, and sex, by themselves, do not describe or specify a distinct
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`filtering operation. In the context of a movie, for example, a user may watch the
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`movie unedited, without filtering any content. The video map (and the
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`corresponding user interface) allows the user to filter out, or skip, selected
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`segments (e.g., explicit bloodshed), while retaining all other content. Id. at col. 20,
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`ll. 14–25. Alternatively, the video map may identify a segment from somewhere
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`else within that video that can be “grafted” in place of the skipped segment to
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`enhance the artistic seamlessness of a scene. Id. at col. 20, ll. 61–65. A grafted
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`segment need not be of the same duration as the segment it replaces. Id.
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`Whatever specific filtering or editing action that may occur, if any, in
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`Abecassis is defined at some later time in a different step of the process. The
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`specific filtering action is not defined as part of the video map that also includes
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`the start and end times of content that may be filtered, as called for in the claims of
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`the ’282 patent. At the end of the process, however, once the viewer has selected
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`specific filtering actions, as explained below, Abecassis provides the capability for
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`the system to define a start time for a portion of multimedia content, an end time
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`for the portion, and a filtering action for the portion of the multimedia content
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`defined by the start and end times. Indeed, Patent Owner admitted that Abecassis
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`“accomplishes filtering.” Tr. 32, ll. 20–21 (“Q. Does Abecassis disclose filtering?”
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`“A. It accomplishes filtering.”).
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`As explained in Abecassis, the disclosed editing system “is intended to
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`significantly transfer censorship, and time-constrained editing decision making
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`from the producer and/or editor to the viewer.” Ex. 1004, col. 22, ll. 22–26. Thus,
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`the producer can maximize the content range of the video “to permit the creation of
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`a greater number of versions of a video and thus appeal to a wider audience and to
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`multiple viewings.” Id. at col. 22, ll. 26–29.
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`Figure 7A in Abecassis, shown below, illustrates the separate editing or
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`filtering step performed by the user or viewer. Figure 7A illustrates a viewer’s
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`content preferences selection screen 701 specific to the content of a selected video.
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`Id. at col. 24, ll. 30–31.
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`
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`Figure 7A from Abecassis shows a viewer’s selections from the video map.
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`As shown in Figure 7A, the viewer or user selects content categories 702,
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`shown by bold boxes 703. Id. at col. 24, ll. 33–38. In Figure 7A, for example, by
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`selecting “None” for the categories of profanity and bloodshed, the viewer has
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`selected to filter or skip all content that includes any profanity or bloodshed. Thus,
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`in this example, the video map of Abecassis provides for “the option of editing-out
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`the explicit bloodshed” (id. at col. 20, ll. 13–15) and “skipping of the playing of a
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`segment” (id. at col. 20, ll. 59–60).
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`b. Malkin
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`Malkin also discloses a system for editing multimedia video and audio. Ex.
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`1005, col. 2, ll. 44–52. The disclosed system allows the multimedia content to be
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`“masked, filtered, or modified according to the user’s content specification.” Id. at
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`col. 2, ll. 29–30. A control specification is created, which can be part of the
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`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.
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`A control specification (reference numeral 237) “indicates how the stream
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`content should be modified.” Id. at col. 12, ll. 59–62. “It provides instructions on
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`showing the frames or groups of frames of the multimedia streams, [and] specifies
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`blocking, omissions, and overlays.” Id. One type of control specification is a
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`separate fuzz-ball track (reference numeral 337). Id. at col. 12, ll. 63–64. Another
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`is an edit-decision list, “which indicates which frames to modify or replace.” Id. at
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`col. 12, ll. 64–65.
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`In the Malkin system, third party mask providers provide pre-constructed
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`frame-level masks (as will be discussed below with reference to FIG. 3A) that are
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`used to modify the multimedia content to filter out undesired information. Id. at
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`col. 4, ll. 7–12. For example, a client specifies in a video request to the third party
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`provider a content specification “having a violence level value no higher than 3
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`and a nudity level value no higher than 2” for a particular video. Id. at col. 8, ll. 1–
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`6. The appropriate mask, or control specification, is provided so that only the
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`requested level of content is played. Id. at col. 8, ll. 1–30. Thus, in Malkin, a third
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`party provides a single system that identifies the frames or groups of frames to be
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`filtered and also provides the filtering action for the identified frames. In
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`Abecassis, one party identifies content, and another party, the viewer, performs the
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`filtering action.
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`Figure 3A in Malkin, shown below, depicts examples of a “fuzz-ball” and a
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`fuzz-ball control specification. A “fuzz ball” can modify/mask one or more
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`specified objects, such as a portion of a video frame or sample of audio, according
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`to user specifications. Id. at col. 3, ll. 18–21. Figure 3A in Malkin illustrates a
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`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.
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`Figure 3A depicts an example of a video stream having a series of adjacent
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`frames, shown as “Frame n,” “Frame n+1,” . . . “Frame n+4.” Id. at col. 7, ll. 21–
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`22. In the example shown in Figure 3A, control specification 237 is a separate
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`“fuzz ball” track (reference numeral 337 in Fig. 3A). Id. at col. 7, ll. 23–25. Fuzz
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`ball track 337 specifies a sequence of fuzz balls 397 having a size (382), location
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`(384), and a temporal relationship (386) to the video stream (390). Id. at col. 7,
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`ll. 32–35. Each frame has a “known dimension.” Id. at col. 7, l. 37.
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`The fuzz balls shown in Figure 3A are embodiments of control specification
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`237, which indicates how the stream content should be modified. Id. at col. 12, ll.
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`59–60. Control specification 237 “provides instructions on showing the frames or
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`groups of frames of the multimedia streams, and specifies blocking, omissions, and
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`overlays.” Id. at ll. 60–62 (emphases added). One type of control specification is
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`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,
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`ll. 42–44.
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`3. Asserted Differences Between the Prior Art and Claims 1 and 19
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`In determining the differences between the prior art and the claims, the
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`question under 35 U.S.C. § 103 is not whether the differences themselves would
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`have been obvious, but whether the claimed invention as a whole would have been
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`obvious. Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 164
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`(Fed. Cir. 1985) (“It is elementary that the claimed invention must be considered as
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`a whole in deciding the question of obviousness.”); see also Stratoflex, Inc. v.
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`Aeroquip Corp., 713 F.2d 1530, 1537 (Fed. Cir. 1983) (“[T]he question under 35
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`U.S.C. § 103 is not whether the differences themselves would have been obvious.
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`Consideration of differences, like each of the findings set forth in Graham, is but
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`an aid in reaching the ultimate determination of whether the claimed invention as a
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`whole would have been obvious.”).
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`We focus our analysis on the limitations in the challenged claims requiring
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`“filtering information”8 including at least one identification of a start time and end
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`time, and at least one filtering action for the portion of the multimedia presentation.
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`As stated by Patent Owner, “the primary issue to be resolved is whether Malkin
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`teaches or suggests the ‘filtering information’ (or a navigation object) as required
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`by claims 1-25.” PO Resp. 6.
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`Patent Owner focuses its argument on Malkin. PO Resp. 6, 7, 16, 20.
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`Patent Owner acknowledges that the fuzz balls in Malkin are a specific filtering
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`8 As noted above, the claims in the ’282 patent do not use the term “navigation
`object,” but the parties have used this term in their arguments to refer to the
`limitations in dispute in the claims of the ’282 patent. See, e.g., PO Resp. 6
`(“Malkin Does Not Teach Or Suggest A Navigation Object”).
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`action, but argues “each fuzz-ball is a separate filtering action that is applied to a
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`single frame independently of any other fuzz ball.” Id. at 11. Patent Owner
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`“concedes that a frame identifier [as used in Malkin] can serve as an identification
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`of a time within the multimedia content.” Id. at 10. Patent Owner also states that
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`in some embodiments of Patent Owner’s technology, the identifications of the start
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`time and end time could be in the form of two frame identifiers. Id. It is Patent
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`Owner’s position, however, that without more than a single frame identifier, as is
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`the case with a fuzz-ball in Malkin, “there is no way to identify separate start and
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`end times within the multimedia content.” Id.
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`Substantially all of Patent Owner’s argument is directed to the assertion that
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`Malkin does not disclose a “navigation object” with a start time, an end time, and a
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`filtering action to be performed on the portion of the multimedia presentation
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`defined by the start and end times. E.g., PO Resp. 8–9 (arguing “it is not possible
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`for the fuzz-ball to include an ‘identification of a start time and end time associated
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`with a portion of the multimedia presentation’” and “[a] frame identifier of a fuzz-
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`ball therefore cannot identify a start time and an end time”).
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`Patent Owner argues that the analysis of whether Malkin reasonably can be
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`combined with Abecassis “is unnecessary because Malkin does not teach or
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`suggest a navigation object.” Id. at 20.
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`Abecassis discloses start and stop positions for defining segments that may
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`be edited or filtered. Ex. 1004, col. 20, ll. 4–6 (“Each segment 603 is defined by a
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`beginning and ending frame and comprises any number of frames 604”). The
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`Abecassis system is intended to include a user-defined filtering action. See, e.g.,
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`Ex. 1004, col. 22, ll. 22–26, col. 24, ll. 33–38, Fig. 7A. The evidence also is clear
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`that Malkin discloses a specific filtering action to be applied to selected frames or
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`groups of frames. See, e.g., Ex. 1005, col. 12, ll. 59–62 (control specification 237
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`“provides instructions on showing the frames or groups of frames of the
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`multimedia streams, and specifies blocking, omissions, and overlays”).
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`Thus, based on our analysis, and contrary to Patent Owner’s position, all the
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`elements of the claimed filtering information are taught—start and end times from
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`Abecassis, and a pre-defined filtering action included in the system for editing
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`from Malkin. The dispositive issue is whether it would have been obvious to a
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`person of ordinary skill in the relevant technology to include pre-defined filtering
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`actions in Abecassis based on the disclosure in Malkin, rather than require the end-
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`user to make all the filterin