Trials@uspto.gov
`571-272-7822
`
`Paper 17
`Date Entered: October 20, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DUODECAD IT SERVICES LUXEMBOURG S.À.R.L.,
`FRIENDFINDER NETWORKS INC., AND
`STREAMRAY INC.,
`Petitioner,
`
`v.
`
`WAG ACQUISITION, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01036
`Patent 8,364,839 B2
`____________
`
`
`
`
`Before GLENN J. PERRY, TREVOR M. JEFFERSON, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`PERRY, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 17
`Date Entered: October 20, 2016
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`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DUODECAD IT SERVICES LUXEMBOURG S.À.R.L.,
`FRIENDFINDER NETWORKS INC., AND
`STREAMRAY INC.,
`Petitioner,
`
`v.
`
`WAG ACQUISITION, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01036
`Patent 8,364,839 B2
`____________
`
`
`
`
`Before GLENN J. PERRY, TREVOR M. JEFFERSON, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`PERRY, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
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`IPR2015-01036
`Patent 8,364,839 B2
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`I. INTRODUCTION
`This is a Final Written Decision entered in an inter partes review
`instituted pursuant to 35 U.S.C. § 314. For reasons discussed below, we
`determine that Petitioner has shown by a preponderance of the evidence that
`claims 1, 3, 4, 6, 8, 10, 11, 13, 15, 17, 18, and 20 of U.S. Patent No.
`8,364,839 B2 (Ex. 1001, “the ’839 patent”) are unpatentable. However,
`Petitioner has not established by a preponderance of evidence that claims 7,
`14, and 21 are unpatentable.
`
`
`
`A. Procedural History
`Duodecad IT Services Luxembourg S.à r.l., Friendfinder Networks
`Inc., and Streamray Inc., (collectively, “Duodecad” or “Petitioner”) filed a
`Petition (Paper 2, “Pet.”), to institute an inter partes review of claims 1–21
`(the “challenged claims”) of U.S. Patent No. 8,364,839 (“the ’839 patent”).
`35 U.S.C. § 311. WAG Acquisition, LLC (“WAG” or “Patent Owner”)
`timely filed a Preliminary Response (Paper 6, “Prelim. Resp.”) contending
`that the petition should be denied as to all challenged claims. We instituted
`an inter partes review of claims 1, 3, 4, 6–8, 10, 11, 13–15, 17, 18, 20 and
`21 of the ’839 patent.
`After institution of trial, Patent Owner timely filed a Patent Owner
`Response (Paper 11, “Resp.”) and Petitioner filed a Reply (Paper 13,
`“Reply”). We heard oral argument on July 18, 2016. A transcript of the
`argument was entered into the record. Paper 16 (“Tr.”).
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`B. Real Parties in Interest
`Petitioner identifies the following real parties-in-interest: Docler
`USA, LLC, Duodecad IT Services Luxembourg S.à r.l., Docler Holding S.à
`r.l., Gattyàn Family Irrevocable Trust (including Mr. György Gattyàn in his
`capacity as Grantor and Investment Advisor), Duodecad IT Services
`Hungary KFT, Gattyàn Group S.à r.l., FriendFinder Networks Inc.,
`StreamRay Inc., WMM, LLC, WMM Holdings, LLC, Multi Media LLC,
`Various, Inc., Interactive Network, Inc., Data Tech Global, LLC, and
`DataTech Systems, LLC. Pet. 2. Patent Owner does not challenge
`Petitioner’s statement of real parties in interest.
`
`
`
`C. Related Matters
`Petitioner states that Patent Owner asserted the ’839 patent in eight
`pending litigations: WAG Acquisition, LLC v. Sobonito Investments, Ltd.,
`Case No. 2:14-cv-1661-ES-JAD (D.N.J.); WAG Acquisition, LLC v. Multi
`Media, LLC, Case No. 2:14-cv-2340-ES-JAD (D.N.J.); WAG Acquisition,
`LLC v. Data Conversions, Inc., Case No. 2:14-cv-2345-ES-JAD (D.N.J.);
`WAG Acquisition, LLC v. Flying Crocodile, Inc., Case No. 2:14-cv-2674-
`ES-MAH (D.N.J.); WAG Acquisition, LLC v. Gattyàn Group S.à r.l., Case
`No. 2:14-cv-2832-ES-JAD (D.N.J.); WAG Acquisition, LLC v. MFCXY, Inc.,
`Case No. 2:14-cv-3196-ES-MAH (D.N.J.); WAG Acquisition, LLC v.
`FriendFinder Networks Inc., Case No. 2:14-cv-3456-ES-JAD (D.N.J.); and
`WAG Acquisition, LLC v. Vubeology, Inc., Case No. 2:14-cv-04531-ES-JAD
`(D.N.J.). Pet. 2.
`In addition to this inter partes review, Petitioner filed petitions for
`inter partes reviews of U.S. Patent No. 8,185,611 (“the ’611 patent”), U.S.
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`Patent No. 8,122,141 and U.S. Patent No. 8,327,011. The ’839 patent states
`on its face that it is a continuation of the ’611 patent, involved in IPR2015-
`01035. Prelim. Resp. 13, Ex. 1001. Petitions in related inter partes reviews
`IPR2015-01033 (U.S. Patent No. 8,327,011), IPR2015-01035 (U.S. Patent
`No. 8,185,611), and IPR2015-01037 (U.S. Patent No. 8,122,141) were
`denied.
`
`
`D. The ‘839 Patent
`1. Described Invention
`The ’839 patent, titled “Streaming Media Delivery System,” issued on
`January 29, 2013. It describes users viewing or listening to streaming
`content over Internet connections encounter interruptions (“drops outs”) due
`to transmission delays and losses. Ex. 1001, 2:16–23. The ’839 patent
`addresses a “need for improved systems and methods for delivering
`streaming content over the Internet or other communications medium, which
`facilitate continuous transmission of streaming content, respond on demand
`without objectionable buffering delay, and perform without disruption or
`dropouts.” Id. at 3:24–29.
`The ’839 patent tells us that Internet streaming, as practiced in the
`prior art, relied on a server transmitting streaming media continuously at the
`playback rate of the media, where the playback rate corresponds to the
`frames-per-second at which the media was encoded for playback at normal
`speed. Id. at 1:30–2:15. Data in each frame can be encoded using Constant
`Bit Rate (CBR) or Variable Bit Rate (VBR) encoding. Id.
`A client device for receiving and playing a streamed transmission
`(e.g., a computer running media player software) typically used a playback
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`buffer (user buffer) for collecting frames of data being streamed. The client
`would not begin playback until the user buffer was filled to a specified level.
`The user buffer thus provided a reservoir of data available in the event of
`packet loss or delay, corresponding to the playback time of the amount of
`media initially buffered. If losses or delays occurred during transmission,
`the content of the user buffer (reservoir of data) would shrink as playback
`continued during the period of such losses or delays. See, e.g. Ex. 1001,
`2:16−38. Because playback continued at the playback rate, the buffer did
`not refill after depletion, other than by suspending playback and waiting for
`it to refill. Startup of playback always had to wait for the user buffer
`initially to accumulate data to a specified level, which required a noticeable
`startup delay.
`The ’839 patent approach uses the server’s built-in transport
`mechanism, e.g., the server’s TCP stack, as a control mechanism. Id. at 8:9–
`13. The server buffer sends data, via the transport mechanism, to the user
`buffer. At any time, the connection between the server and user buffers, as
`moderated by the server’s transport mechanism, sends as much data as the
`transport mechanism will accept, and sends the data as fast as the connection
`will allow. Id. at 10:24–33.
`The server buffer is pre-filled before a user joins the stream and
`transmission starts. Id. at 8:31–44. Pre-filling of the server buffer can be
`rapid if the data comes from disk storage. If joining a live (real time)
`transmission in progress, the server buffer is already filled at the time the
`user joins the stream. Once the server buffer is sufficiently full, the server
`buffer sends its contents, as fast as the connection will support, to the user
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`system, to rapidly fill the “user buffer” (the playback buffer at the client).
`The user system can then start playing almost instantaneously. Id.
`After initial fast transfer of the server buffer contents when the user
`connects, the system enters a steady state in which (1) the server buffer
`continues to fill at the playback frame rate, and (2) the server buffer
`effectively runs at “empty” in this steady state, because all data going into it
`is sent immediately to the client as fast as possible by the transport
`mechanism. In the steady state condition, because data elements inserted
`into the buffer from the source are sent immediately out to the client, the
`transmission speed from the server buffer matches the constant fill rate of
`the server buffer. Id. at 7:65–8:4. The user buffer continues to be filled at
`the playback rate while playing out at the same rate, and thus it remains full.
`During steady state, Transmission Control Protocol (TCP) senses if a
`transmission interruption or delay occurs and temporarily stops accepting
`data, causing data to “back up” in the server buffer and correspondingly to
`deplete in the user buffer. Id. at 8:4–8. When the interruption or delay
`clears, the “backed up” data is sent to the client side as fast as the connection
`will support, emptying the accumulated data in the server buffer, restoring
`the user buffer, and resuming the steady state operation. Id. at 10:24–33.
`For multiple user streaming, the ’839 patent describes that a “unique
`pointer,” assigned to each user, identifies by “serial number” either the last
`data element that was sent to that user, or the next data element to be sent.
`Ex. 1001, 11:16–18.
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`2. Illustrative Claim
`Claim 1 is illustrative:
`1. A method for distributing streaming media via the Interact [sic]
`to at least one user system of at least one user, the streaming
`media comprising a plurality of sequential media data elements
`for a digitally encoded audio or video program encoded for
`playback at a playback rate, the user system being assumed to
`have a user buffer for receiving media data and facilities to play
`back the streaming media at the playback rate for viewing or
`listening by said at least one user, from a server having a server
`buffer for buffering sequential media data elements, said
`method comprising:
`loading the server buffer with streaming media data elements;
`sending an initial amount of streaming media data elements to the
`user system at an initial sending rate more rapid than the
`playback rate; and
`thereafter, sending further streaming media data elements to the
`user system at about the playback rate and filling the server
`buffer or moving a data window through the server buffer at
`about the playback rate;
`wherein the initial amount of streaming media data elements, and
`the initial sending rate, are sufficient for the user system to
`begin playing back the streaming media while the user buffer
`continues to fill;
`wherein the further streaming media data elements are received at
`about the playback rate by the user system if there are no
`interruptions in the transmission of streaming media data
`elements between the server and the user system; and
`wherein said method further comprises detecting if any
`interruptions in the transmission of streaming media data
`elements between the server and the user system have occurred
`such that streaming media data elements that have been sent by
`the server to the user system have been delayed or not received
`by the user system.
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`E. Instituted Challenges
`We instituted inter partes review the grounds as set forth in the
`following table:
`Reference(s)
`
`Basis
`
`Claim(s) challenged
`
`Chen1 and Chen File
`History (“FH”)2
`
`Chen, Chen FH, and
`ISO-111723
`
`
`
`35 U.S.C. § 103
`
`1, 4, 6–8, 11, 13–15,
`18, 20, and 21
`
`35 U.S.C. § 103
`
`3, 10, and 17
`
`II. DISCUSSION
`A. Claim Interpretation
`The Board interprets unexpired claims using the “broadest reasonable
`construction in light of the specification of the patent in which [they]
`appear[].” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard as the claim interpretation standard to be
`applied in inter partes reviews). Under this standard, we interpret claim
`terms using “the broadest reasonable meaning of the words in their ordinary
`usage as they would be understood by one of ordinary skill in the art, taking
`into account whatever enlightenment by way of definitions or otherwise that
`may be afforded by the written description contained in the applicant’s
`specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
`We presume that claim terms have their ordinary and customary meaning.
`
`1 U.S. Patent 5,822,524, issued October 13, 1998 (Ex. 1004, “Chen”).
`2 File History of U.S. Application 505,488 (Ex. 1005, “Chen FH”).
`3 International Standard Reference number ISO/IEC 11172-1:1993(E)
`(Ex. 1006, “ISO-11172”).
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`See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016)
`(“Under a broadest reasonable interpretation, words of the claim must be
`given their plain meaning, unless such meaning is inconsistent with the
`specification and prosecution history.”); In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is
`the meaning that the term would have to a person of ordinary skill in the art
`in question.” (internal quotation marks omitted)). A patentee, however, may
`rebut this presumption by acting as his or her own lexicographer, providing a
`definition of the term in the specification with “reasonable clarity,
`deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
`In our Decision to Institute, we made preliminary constructions of the
`following claim terms/phrases: “playback rate,” “at about the playback rate”
`“the initial amount of streaming media data elements, and the initial sending
`rate, are sufficient for the user system to begin playing back the streaming
`media while the user buffer continues to fill,” “sending to the user system
`[the] unsent streaming media elements in the server buffer at a sending rate
`more rapid than the playback rate,” and “provided from a live broadcast;”
`and “for each of the plurality of user systems, maintaining a record of the
`last streaming media data element that had been sent to the user system.”
`The parties have not further argued claim construction and we hereby
`adopt our preliminary constructions as final along with our reasoning
`expressed in our Decision to Institute.
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`B. Overview of the References
`1. Overview of Chen (Ex. 1004)
`Chen describes a system for the “just-in-time” retrieval of multimedia
`files over a computer network. Ex. 1004, [54]. Figure 1 of Chen is
`reproduced below.
`
`
`Figure 1 is a schematic illustration showing client machine 20 receiving data
`streamed from server machine 21 over a network. Data packets are loaded
`into a “server control stream buffer” 1 for streaming over data channel 6.
`Streamed packets are accumulated in “client agent packet buffer” 31 for
`playback. Id. at 4:21, 4:65−5:44, Fig. 1.
`Chen describes “normal,” “rush,” and “pause” transmission modes for
`streaming from a server to a user. Id. at 6:1−15 (emphasis omitted). It
`describes a “water mark” model for buffering streaming content. Id. at
`6:16−54. The server buffer is like a water bucket having high and low
`“water marks.” Id. Water exits the bucket through a spout similar to data
`exiting a packet buffer as its content is delivered to a user. Id. When water
`in the bucket is at a level between the water marks, transmission occurs in
`the normal mode. Id. The normal mode carries out frame level pacing, i.e.,
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`transmission at the playback rate. Id. at 10:3−4. When the amount of data
`falls below the low mark, the transmission mode changes to “rush.” Id. at
`6:42−47 (emphasis omitted). In rush mode, frame level pacing is ignored
`and data is transmitted as fast as possible. Id. at claims 18, 29; Figure 6.
`
`2. Overview of Chen FH (Ex. 1005)
`Chen FH shows that during prosecution of the application eventually
`issuing as Chen, patent applicant submitted a Declaration in accordance with
`37 C.F.R. § 1.131 for the purpose of predating (“swearing behind”) a cited
`reference. Ex. 1005, 77−79. That Declaration references a “Quick Video
`Server” (“QVS Sever”) exhibit document alleged to describe a commercial
`embodiment of Chen. Id. at 77. The Declaration includes a claim chart
`mapping the technical documents provided for the QVS server to the then-
`pending claims. Id. at 112–119. Page 86 of the Chen FH describes a
`protocol used by the QVS server and is reproduced below.
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`The QVS Server Protocol describes “pause,” “normal,” and “rush”
`transmission modes. Rush mode is described as “transmit data as fast as
`possible, subject to the Round-Robin sharing with other active streams.” Ex.
`1005, 86.
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`3. Overview of ISO-11172 (Ex. 1006)
`ISO-11172 is a standard published by the International Organization
`for Standardization (“ISO”) describing coding of moving pictures and
`associated audio for digital storage media (MPEG-1). Petitioner relies upon
`ISO-11172 only to the extent that this standard describes encoding at a
`“constant bit rate” or at a “variable bit rate.” Pet. 60.
`
`
`C. Availability of Chen FH as Prior Art
`1. Petitioner’s Contentions
`The Petition states that Chen FH was publicly available upon grant of
`Chen, and thus was publicly available as of October 13, 1998. Pet. 14−15.
`Per 37 C.F.R. § 1.11(a), as of the date the Chen patent issued, the file history
`of Chen became “open to inspection by the public, and copies [thereof
`could] be obtained upon the payment of the [prescribed] fee.” Id. As such,
`Chen FH would be prior art under at least 35 U.S.C. § 102(b).
`According to Petitioner, “[t]he person of ordinary skill is a
`hypothetical person who is presumed to be aware of all the pertinent prior
`art.” Custom Accessories, Inc. v. Jeffrey-Allan Indus., 807 F.2d 955, 962
`(Fed. Cir. 1986). According to Dr. Polish, Petitioner’s Declarant, the Chen
`File History was publicly available upon grant of Chen, and thus was
`publicly available as of October 13, 1998. Ex. 1003 ¶ 46. Thus, according
`to Petitioner, the Chen FH was “otherwise made available” and qualifies as a
`publically accessible prior art publication. Reply 3.
`Petitioner also argues that Chen FH was “disseminated,” even though
`it is sufficient that the Chen FH was “otherwise made available.” Thus,
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`according to Petitioner, Chen FH qualifies as a publically accessible prior art
`publication. Reply 3–4.
`Petitioner also argues that Chen provides a “roadmap” to the Chen
`FH. Reply 4. According to Petitioner, the Chen FH would be found by
`persons interested and ordinarily skilled in the subject matter or art
`exercising reasonable diligence. The proper inquiry is whether such a
`person—after finding and recognizing the clear relevance of Chen to the
`subject matter of the ’839 patent—would look to Chen’s file history.
`Petitioner argues that, framed properly, such a person is faced with
`just one file history to consider. According to Petitioner, exercising
`reasonable diligence includes looking at a single file history of the subject
`patent. Petitioner relies upon the Federal Circuit’s endorsement of one of
`ordinary skill’s use of the file history to understand the scope of an issued
`patent. Takeda Pharm. Co. v. Teva Pharm. USA, Inc., 668 F. Supp. 2d 614,
`621 n.16 (D. Del. 2009). “The prosecution history constitutes a public record
`of the patentee’s representations concerning the scope and meaning of the
`claims, and competitors are entitled to rely on those representations when
`ascertaining the degree of lawful conduct, such as designing around the
`claimed invention.” Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222
`F.3d 951, 957 (Fed. Cir. 2000).
`Dr. Polish states that one of ordinary skill reading Chen would
`reasonably look to Chen’s file history. Ex. 1015 at 47:8–11 (“[Y]ou would
`be motivated to look to that file history for a clarification of how the startup
`would be.”) Pet. 22 (discussing motivation); Ex. 1003 ¶ 55.
`Petitioner argues that Patent Owner misreads the Federal Circuit
`precedent when it suggests that there must be something “in Chen to indicate
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`that someone should look further, beyond the disclosure[.]” Resp. 9.
`Petitioner argues that Patent Owner would require Chen to include a
`statement explicitly referencing that more information is available in the file
`history. Petitioner argues that Patent Owner’s position is unreasonable.
`Petitioner argues that the specific information that eventually becomes part
`of a file wrapper is not known at the time the specification is written—
`therefore such a specific reference cannot be made in the specification.
`According to Petitioner, in general, all file histories include additional
`information about their resultant patents; requiring generic boiler plate
`statements in all specifications that the patent has a file history would be
`unnecessarily stating the obvious.
`Petitioner relies further upon Bruckelmyer v. Ground Heaters, Inc.,
`445 F.3d 1374, 1379 (Fed. Cir. 2006) holding that a person of ordinary skill
`in the art would have located a Canadian patent application (its file history)
`because an issued patent (of that application) had the same subject matter of
`interest. Petitioner argues that in Bruckelmyer, it was the subject matter of
`the disclosure in the prior art patent and the patent-at-issue (thawing frozen
`ground) that was found to be the “roadmap to the application file” that
`included the additional disclosure not found in the prior art patent. Id.
`Petitioner argues that no express suggestion to search the file history was
`present in the issued patent or necessary to the holding in Bruckelmyer.
`According to Petitioner, the simple fact that the prior art patent disclosed
`subject matter of interest was found to be sufficiently pertinent to “conclude
`that no reasonable trier of fact could find that a person of ordinary skill in
`the art interested in the subject matter of the patents in suit and exercising
`reasonable diligence could not locate the [] application.” Id.
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`Similarly here, Petitioner argues, the Chen issued patent discloses the
`same subject matter as the ’839 patent. Petitioner argues that a person of
`ordinary skill in the art working in Chen’s field (i.e., the field of the ’839
`patent) would have located the related Chen FH. Petitioner argues to
`conclude otherwise would, as noted by the Bruckelmyer Court, be
`“inconsistent” with the “[c]ontrolling” decision in In re Wyer, 655 F.2d 221,
`226 (CCPA 1981). Bruckelmyer, 445 F.3d at 1379. In Wyer, Petitioner
`argues, the court held that a person of ordinary skill in the art would have
`located “a foreign patent application” based only on “information in a
`published abstract.” Bruckelmyer, 445 F.3d at 1378-1379 (citing to Wyer,
`655 F.2d at 222). Petitioner argues that, like Bruckelmyer, there is no
`dispute here that the Chen patent was classified and indexed, and the
`information provided in the Chen patent goes well beyond that of the
`abstract of Wyer found to be a sufficient “roadmap.” Thus, Petitioner
`concludes, a person of ordinary skill in the art exercising reasonable
`diligence could locate the Chen FH. Reply 4–7.
`Petitioner further argues that Patent Owner misunderstands the role of
`the Examiner. Reply 7. According to Petitioner, without any of its own
`evidence of one of ordinary skill in the art, Patent Owner resorts to a straw
`man argument as to whether a Patent Examiner is required to
`“indiscriminately review the file history of every potential Section 102 or
`103 patent reference uncovered in a search.” Resp. 7–8. Petitioner argues
`that Patent Owner wrongly contends that examiners do not review file
`histories for prior art. Id. at 8.
`Section 901 of the MPEP, titled “Prior Art,” expressly provides that
`“[i]n the examination of an application, it is sometimes necessary to inspect
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`the application papers of some previously abandoned application
`(provisional or non-provisional) or granted patent.” MPEP 901.01(a).
`“[M]atter canceled from the application file wrapper of a U.S. patent or U.S.
`application publication may be used as prior art as of the patent or
`publication date, respectively, in that it then constitutes prior public
`knowledge or prior public availability under pre-AIA 35 U.S.C. 102(a) or 35
`U.S.C. 102(a)(1).” MPEP 901.01 (emphasis added); see also MPEP 2127
`(“Domestic and Foreign Patent Applications as Prior Art.”). The MPEP
`goes on to instruct examiners how to obtain application papers to inspect
`them for use as prior art. See MPEP 901.01(a). A Patent Examiner may be
`considered to be one of ordinary skill in the art. See St. Clair Intellectual
`Prop. Consultants, Inc. v. Canon Inc., 412 Fed. Appx. 270, 276 (Fed. Cir.
`2011); In re Lee, 277 F.3d 1338, 1345 (Fed. Cir. 2002). And, an Examiner
`has reason to look to application papers for prior art, as evidenced by the
`MPEP discussed above.
`
`2. Patent Owner’s Contentions
`Patent Owner admits that “[i]t is undisputed that the Chen FH was
`available from the PTO on request.” Resp. 6. Although Patent Owner
`acknowledges (Resp. 3) that Chen FH could be requested from the PTO as
`of the date of issuance of the Chen patent, Patent Owner argues that Chen
`FH is not a “printed publication” pursuant to 35 U.S.C. § 102(b). Resp. 3–
`10. According to Patent Owner, the law requires that a purported printed
`publication be either “disseminated” or “otherwise made available” to the
`extent that a person of ordinary skill in the art exercising reasonable
`diligence could locate it. Resp. 4–5.
`
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`IPR2015-01036
`Patent 8,364,839 B2
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`According to Patent Owner, reasonable diligence at the time of the
`invention would not have led to Chen FH because there is no indication,
`whether in the abstract or elsewhere in the Chen patent, of the existence of
`the reference subject matter in Chen FH. Resp. 9. Patent Owner argues that
`there is nothing in Chen to indicate that someone should look further,
`beyond the disclosure in the specification itself, to review the file history for
`some additional information underlying the patent application. Id.
`According to Patent Owner, a researcher would have no way of knowing to
`look for such additional disclosure and nothing in the Chen patent, whether
`in the abstract or elsewhere provides any clue, much less a “roadmap” to
`such additional disclosure. Id. Patent Owner argues that a researcher
`exercising reasonable diligence would have no reason based on what is in
`the Chen reference itself, to look behind the patent specification in the
`reasonable expectation of finding additional relevant disclosure. Id. Patent
`Owner also contends that Examiners do not review file histories for prior art.
`Resp. 8.
`
`3. Analysis
`The Chen patent issued prior to the development of electronic “image
`file wrapper” retrieval through the USPTO’s online PAIR system (USPTO’s
`online file history retrieval system), and indeed to this day Chen FH is not
`accessible through PAIR.
`A given reference is publicly accessible upon a satisfactory showing
`that such document has been [1] disseminated, or [2] otherwise made
`available to the extent that persons interested and ordinarily skilled in the
`subject matter or art exercising reasonable diligence, can locate it. SRI Int’l,
`Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194–95 (Fed. Cir. 2008.
`
`
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`Even though Chen issued prior to the USPTO PAIR system, Chen FH was
`and remains easily requisitioned by any interested person from the USPTO
`by making the appropriate request and paying the appropriate fee.
`Petitioner states, without contradiction, that when one orders the file
`history of the Chen patent, the paper describing rush mode (page 86 of the
`FH) automatically comes with the file history. There is nothing extra to
`order. It is an actual part of the file history that anyone ordering the file
`history automatically receives.
`File histories are commonly ordered by those performing reasonable
`diligence who have an interest in a patent. Chen describes subject matter
`that is close enough to the challenged patent that one interested in the subject
`matter of the ’839 patent would, in the exercise of due diligence, locate the
`Chen patent and be interested in its file history. We agree with Patent
`Owner that nothing in Chen specifically points to its file history. However,
`we find that test to be inappropriately limiting. It is undisputed that Chen
`FH was fully available to anyone who ordered it. We find that one of
`ordinary skill, being aware of Chen, would consult its file history. We
`conclude, based on the record as fully developed, that Chen FH is available
`as prior art against the challenged claims.
`
`D. Starting Operation of Chen in “Rush” Mode
`1. Petitioner’s Contentions Regarding Rush Mode
`Petitioner provides a detailed “read” of claims 1, 2, 4, 6–9, 11, 13–16,
`18, 20, and 21 on Chen and Chen FH, relying on the supporting declaration
`of Nathaniel Polish, Ph.D. (Ex. 1003). Pet. 21–38. For all instituted
`challenges (including this one), Petitioner asserts that Chen meets certain of
`the claim limitations if the arrangement described by Chen is initially
`
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`operated in “rush” mode; and it would have been obvious to do so in light of
`Chen FH, which describes initial operation in rush mode.
`Petitioner notes that during prosecution of the application leading to
`the Chen Patent, the applicant submitted a Section 131 declaration to predate
`a cited reference. The included technical documents relate to a “QVS
`server,” which applicant declared was the reduction to practice of the
`claimed invention. Ex. 1005. The Declaration of Mon-Song Chen under 37
`C.F.R. § 1.131 (Ex. 1005 at 77–79) included a claim chart mapping the
`technical documents provided for the QVS server to the pending claims. Ex.
`1005, 112–119. Petitioner argues that one of ordinary skill would therefore
`have been motivated to combine the teachings of Chen with the teachings of
`the Chen FH regarding the QVS server – the stated commercial
`implementation of the teachings of Chen – to arrive at a complete
`embodiment that provides for, inter alia, selecting the mode when a file is
`opened. Pet. 22 (citing Ex. 1003 ¶ 55).
`Petitioner notes that the Chen FH discloses three transmission modes,
`and notes that data is “rushed” to the client upon opening of a multimedia
`file. Pet. 23 (citing Ex. 1005, 86). Chen further describes that the normal
`mode is used most of the time for transmission of data. Ex. 1004, 6:16–39.
`As described in the Chen FH, in the normal mode, data is transmitted
`according to time and the “player’s playout rate.” Pet. 23 (citing Ex. 1005,
`86).
`
`Petitioner argues that Chen teaches that the mode that is used at the
`start of transmission is the rush mode. At this stage, the buffer will be empty
`– i.e., below the watermark – and Chen teaches using the rush mode in those
`conditions. Although Chen does not include an explicit disclosure as to
`
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`which of the modes is used when a transmission is started, one of ordinary
`skill in the art would have selected the rush mode for the common sense
`reason of selecting the one of the two disclosed modes that minimizes start
`delay. Pet. 23 (citing Ex. 1003 ¶ 58).
`According to Petitioner, this is the mode chosen in Chen’s
`commercial embodiment. Pet. 24 (citing Ex. 1005, 86). Petitioner
`concludes that one of ordinary skill would have been particularly motivated
`to select this mode to arrive at a complete implementation and to minimize
`start delay. Pet. 24 (citing Ex. 1003 ¶ 59).
`Petitioner points to Chen’s server including a stream buffer. Chen,
`Ex. 1004 at 5:17–34. In the embodiment claimed, the stream buffer is small,
`having only 1–5 frames. Id. at claims 16, 27, and 42. Thus, in the normal
`mode where transmission is paced at the playback rate and the stream buffer
`is therefore filling and emptying at about the playback rate, the stream buffer
`fills at “about” the playback rate to avoid overflow or underflow conditions.
`
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