IPR2016-00174
`Patent 8,090,862
`
`DOCKET NO.: 2211726-00122US1
`Filed on behalf of Unified Patents Inc.
`By: David L. Cavanaugh, Reg. No. 36,476
`
`Michael Van Handel, Reg. No. 68,292
`
`Daniel V. Williams, Reg. No. 45,221
`
`Wilmer Cutler Pickering Hale and Dorr LLP
`
`1875 Pennsylvania Ave., NW
`
`Washington, DC 20006
`Tel: (202) 663-6000
`Email: David.Cavanaugh@wilmerhale.com
`
`Jonathan Stroud, Reg. No. 72,518
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, D.C., 20009
`Tel: (202) 805-8931
`Email: jonathan@unifiedpatents.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`
`
`
`
`
`
`
`
`UNIFIED PATENTS INC.
`Petitioner
`
`
`
`v.
`
`Nonend Inventions N.V.
`Patent Owner
`
`IPR2016-00174
`Patent 8,090,862
`
`PETITIONER’S REPLY
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`
`
`

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`TABLE OF CONTENTS
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`IPR2016-00174
`Patent 8,090,862
`
`
`I. 
`
`II. 
`
`INTRODUCTION ........................................................................................... 1 
`
`CLAIM CONSTRUCTIONS .......................................................................... 2 
`
`A. 
`
`B. 
`
`“streamed” ............................................................................................. 2 
`
`“another” ............................................................................................... 3 
`
`III.  NONEND FAILS TO PROVIDE SUFFICIENT EVIDENCE OF PRIOR
`INVENTION ................................................................................................... 5 
`
`A.  Nonend has Provided Insufficient Evidence to Establish
`Conception ............................................................................................. 6 
`
`B. 
`
`Nonend has not Shown Diligence in Constructively
`Reducing their Invention to Practice ..................................................... 7 
`
`IV.  NONEND FAILS TO OVERCOME PETITIONER’S SHOWING THAT
`THE CHALLENGED CLAIMS ARE ANTICIPATED ................................. 8 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`Shastri Discloses a System that Operates Without
`Interruption ............................................................................................ 8 
`
`A POSA would Recognize that Shastri Passes Video
`from a Buffer to a Video Renderer While Switching
`Between Channels ................................................................................. 9 
`
`Shastri Discloses Receiving a Sample of Another Part of
`Media Content Over a Second Channel .............................................. 12 
`
`Shastri Discloses that the Received Sample is a Part of
`the Media Content ............................................................................... 14 
`
`V.  NONEND FAILS TO OVERCOME PETITIONER’S SHOWING THAT
`THE CHALLENGED CLAIMS ARE OBVIOUS ....................................... 16 
`
`A.  Goldszmidt Discloses Initiating a Request for at Least a
`Part of the Item of Content over a Second
`Communication Channel ..................................................................... 16 
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`IPR2016-00174
`Patent 8,090,862
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`B. 
`
`C. 
`
`It Would Be Obvious to Modify Goldszmidt to Pass
`Video from a Buffer to a Video Renderer While
`Switching Between Channels .............................................................. 19 
`
`Nonend’s Arguments are Insufficient to Rebut the Prima
`Facie Case of Obviousness Based on Goldszmidt and
`Lumelsky .............................................................................................. 21 
`
`VI.  CONCLUSION .............................................................................................. 23 
`
`
`
`ii
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`IPR2016-00174
`Patent 8,090,862
`
`I.
`
`INTRODUCTION
`
`Nonend’s Patent Owner Response does not rebut the showing that the
`
`challenged claims are unpatentable, especially in view of the multiple grounds of
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`unpatentability instituted by the Board. First, Nonend relies on inadequate
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`evidence in its attempt to antedate the Shastri reference. Even the inventors agree
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`that none of the e-mails or fax(es) cited by Nonend disclose the claim limitations
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`of the ’862 patent. There is nothing in the e-mails to indicate that they even relate
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`to the ’862 patent. And Nonend has not provided evidence that accounts for the
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`entire period during which diligence must be shown.
`
`Nonend’s arguments also fail to overcome Petitioner’s showing that the
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`challenged claims are anticipated. Shastri discloses a system designed to operate
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`without interruption when switching channels. Further, a person of ordinary skill
`
`in the art (POSA) would recognize that, to make such uninterrupted playback
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`feasible, Shastri would play content out of its buffer while the switching process
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`occurs. Shastri also discloses that, during playback of media, another part of the
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`same media content is received by the client as a sample. Thus, Shastri streams a
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`part of the item of content to a stream target at the receiving media player, while
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`another part of the item of content is being received by the receiving media player
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`over the second communication channel, as recited in the claims. Nonend’s efforts
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`to change the construction of claim terms are unavailing.
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`IPR2016-00174
`Patent 8,090,862
`Finally, Nonend’s arguments fail to overcome the showing of obviousness
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`with respect to the challenged claims. Goldszmidt discloses initiating a request for
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`at least a part of an item of content over a second communication channel. A
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`POSA reading Goldszmidt would understand the advantages of buffering media
`
`content in providing uninterrupted playback, and would be motivated to modify
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`Goldszmidt to play content out of a buffer during a switch to a different channel. A
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`POSA also would have been motivated to modify Goldszmidt to include redundant
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`components and media segmentation markers, such as that taught by Lumelsky, to
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`ensure that switching between streaming sessions would occur seamlessly and
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`without losing continuity of a streaming session. Nothing provided in the Patent
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`Owner’s Response should disturb the findings of the Board or rebut the prima facie
`
`case set forth in the Petition.
`
`II. CLAIM CONSTRUCTIONS
`A.
`“streamed”
`In the Decision on Institution, the Board construed the term “streamed” to
`
`mean “transmitted continuously such that the content may be played by the
`
`receiver while the transmission is occurring.” (Paper No. 10 at 12). While
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`Petitioner believes the ’862 patent supports a broader definition of “streamed” (see
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`Paper No. 2 at 9-10), Petitioner adopts the Board’s construction herein.
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`IPR2016-00174
`Patent 8,090,862
`In his declaration, Dr. Hale appears to offer a new construction for the term
`
`“streamed.” (EX2016 at ¶ 6 (“[I]t is my opinion that ‘streamed’ should be defined
`
`as ‘transmitted such that transmission and playback of content can occur
`
`simultaneously’”)). However, in his deposition testimony, Dr. Hale conceded that
`
`he believed his proposed construction to be equivalent to the construction adopted
`
`by the Board. (EX1013 at 32:6-11). Thus, to the extent that the declaration relies
`
`on a new construction of “streamed,” the expert, in his deposition, reverted back to
`
`the construction adopted by the Board in the Decision on Institution.
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`“another”
`
`B.
`Despite not having previously proposed a construction for the term, Nonend
`
`now argues that “[a]nother” part of the content means a different part of the
`
`content, not the same part of the content. (Paper 14 at 10). Nonend points to Dr.
`
`Hale’s declaration, where Dr. Hale contends that “‘another part of the item of
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`content’ must refer to data from a different location in the media content file or
`
`data object” and that “‘another part of the item of the content’ must refer to a
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`different or distinct collection of data identified by a different or distinct location in
`
`the object or file.” (See Paper 14 at 11; see also EX 2016 at ¶ 9 (emphases
`
`removed)). Petitioner disagrees.
`
`As previously noted, “another part of the item of content” should be
`
`interpreted to mean “any part of the item of content, whether the same or different
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`IPR2016-00174
`Patent 8,090,862
`than any other part of the item of content.” (See Paper 2 at 10-11 (emphasis
`
`added); see also EX1006 at ¶ 31). For example, a second part of an item of content
`
`can be “another” part if it is a partial copy of a first part of the item of content, if it
`
`is a segment of the item of content that includes or excludes segments contained
`
`within a first part of the item of content, or if it is a replica of a first part of the item
`
`of content. (EX1018 at ¶ 5).
`
`Nonend appears to disagree that “another part of the item of content” could
`
`be a copy of a part of the item of content. However, as acknowledged by Dr. Hale
`
`during his deposition, referring to a copy as “another” is a grammatically correct
`
`use of the term. (See EX1013 at 33:10-34:5 (agreeing that calling a second copy of
`
`the ’862 patent “another copy” was a grammatically correct use of the term
`
`“another”); see also EX1018 at ¶ 6). The adjective “another” can mean, for
`
`example, “one more” or “an additional.” (See definition of adjective “another,”
`
`EX1017 at 57).
`
`While the ’862 patent does not define “another part of the item of content”
`
`(see Paper 2 at 10-11), the context for the term “another” based on the specification
`
`supports the grammatical use of the term discussed above. The phrase “another
`
`part of the item of content” appears only in the claims and the abstract1 of the ’862
`
`patent. Nonend points to various passages of the ’862 patent as allegedly showing
`
`
`1 The Abstract was added by Amendment on October 5, 2011. (EX1016).
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`IPR2016-00174
`Patent 8,090,862
`that different, subsequent data packages are received on the second communication
`
`channel. (See Paper 14 at 10-11). Similarly, Dr. Hale alleges that “another part of
`
`the item of the content” must refer to data from a different location in the media
`
`file or data object, or a different or distinct collection of data identified by a
`
`different or distinct location in an object or file.” (EX2016 at ¶ 9 (emphases
`
`removed)). However, these alleged meanings of “another part of the item of
`
`content” are not reflected in the claims of the ’862 patent. (EX1018 at ¶ 7).
`
`The ’862 patent discloses that, in requesting content, a node specifies the
`
`portion of the item of content it wishes to receive. (See EX1001 at 9:48-49
`
`(“Consumer node 5 [agrees] with [nodes] 4 and 3 what is wants to receive”); see
`
`also id. at 13:27-32 (“The incoming request from a Consumer Node . . . consists
`
`of . . . a request for a specific part of the media stream”). The ’862 patent does not
`
`disclose or otherwise suggest that the requested part of the media stream could not
`
`be a copy of a part that the node has already received. (EX1018 at ¶ 8).
`
` Thus, “another part of the item of content” should be construed, consistent
`
`with the ordinary and customary meaning of the term “another,” to mean “any part
`
`of the item of content, whether the same or different than any other part of the item
`
`of content.” (EX1018 at ¶ 9).
`
`III. NONEND FAILS TO PROVIDE SUFFICIENT EVIDENCE OF
`PRIOR INVENTION
`
`Nonend argues that the Shastri reference is not prior art. (Paper 14 at 11-
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`5
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`IPR2016-00174
`Patent 8,090,862
`13). The ’862 patent claims priority to Netherlands Patent Application No.
`
`1017388, which was filed on February 16, 2001. (EX1001). Shastri was filed on
`
`November 30, 2000 and published May 30, 2002. (EX1002). Thus Shastri
`
`qualifies as prior art to the ’862 patent under 35 U.S.C. § 102(e). Nonend relies on
`
`inventor declarations and other documents as allegedly showing conception and
`
`diligence in an attempt to antedate Shastri. (Paper 14 at 11-13). However, the
`
`evidence identified by Nonend is insufficient, for at least the reasons provided
`
`below.
`
`A. Nonend has Provided Insufficient Evidence
`Conception
`
`to Establish
`
`The evidence relied upon by Nonend does not establish conception prior to
`
`November 30, 2000. Nonend relies primarily on declarations submitted by the
`
`inventors (Paper 14 at 12); however, this testimony alone should be given little
`
`weight. (See Rosco Inc. v. Miror Lite Co. 304 F.3d 1373, 1382 (Fed. Cir. 2002)
`
`(“It is well established that a party claiming his own prior inventorship must
`
`proffer evidence corroborating his testimony”)).
`
`The documents Nonend identifies as allegedly corroborating the inventor
`
`testimony are insufficient. (See Paper 14 at 12-13; see also EX2018 at ¶¶ 4, 6;
`
`EX2019 at ¶¶ 4, 6; EX2020-EX2027; EX2029). None of the documents
`
`demonstrate conception of the claimed invention prior to November 30, 2000. See
`
`Singh v. Brake, 317 F.3d 1334, 1340 (Fed. Cir. 2002) (“A conception must
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`Patent 8,090,862
`encompass all limitations of the claimed invention”)). In fact, during their
`
`depositions, the inventors conceded that their e-mails do not illustrate the technical
`
`details ultimately claimed in the ’862 patent. (See EX1014 at 24:24-37:9; see also
`
`EX1015 at 22:2-35:2). And while the inventors allege that the e-mails demonstrate
`
`they were in the process of filing the Netherlands patent application (see EX1014
`
`at 24:24-37:9; see also EX1015 at 22:2-35:2), to which the ’862 patent claims
`
`priority, none of the e-mails indicate any relation to that application (EX2022-
`
`2027). During their depositions, the inventors also conceded that the fax (see
`
`EX2029) identified by Nonend fails to describe the combination of elements
`
`recited in the ’862 patent claims (see EX1014 at 39:2-45:1; see also EX1015 at
`
`35:3-38:11)). Moreover, this fax is dated nearly a month after the priority date of
`
`the Shastri reference. (See EX2029).
`
`Thus, Nonend has provided insufficient evidence of conception.
`
`B. Nonend has not Shown Diligence in Constructively Reducing their
`Invention to Practice
`
`Nonend has provided insufficient evidence that the inventors diligently
`
`worked on constructively reducing their invention to practice up to the time in
`
`which the Netherlands patent application was filed. For example, Nonend does not
`
`cite evidence accounting for the entire period between the alleged time of
`
`conception and the time the foreign patent application was filed. (See, e.g.,
`
`Creative Compounds, LLC v. Starmark Laboratories, 651 F.3d 1303, 1312-13
`
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`IPR2016-00174
`Patent 8,090,862
`(Fed. Cir. 2011) (“Merely asserting diligence is not enough; a party must ‘account
`
`for the entire period during which diligence is required’”)). As discussed above in
`
`Section III.A, none of the e-mails cited by Nonend even indicate whether they
`
`relate to the Netherlands patent application to which the ’862 patent claims
`
`priority. Nonend also has not accounted for the time periods between the dates of
`
`the e-mails, or for the period of time between December 12, 2000 and February 16,
`
`2001, when the Netherlands patent application was filed.
`
`Thus, the evidence provided by Nonend is insufficient to establish diligence.
`
`IV. NONEND FAILS TO OVERCOME PETITIONER’S SHOWING
`THAT THE CHALLENGED CLAIMS ARE ANTICIPATED
`A.
`Shastri Discloses a System that Operates Without Interruption
`Nonend argues that Shastri does not disclose a system that switches between
`
`channels without interruption. (Paper 14 at 14). Nonend points in particular to a
`
`passage in Shastri that states “[a] slight pause in playback of video content may be
`
`noticed.” (Paper 14 at 14 (citing paragraph [0057] of Shastri) (emphasis added)).
`
`However, in addition to this passage, Shastri discloses that dynamic switching is
`
`transparent to a user (see EX1002 at ¶¶ [0071], [0011], [0013] (emphasis added)),
`
`that dynamic selection between servers “may occur a number of times during
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`active playback” of content (see id. at ¶ [0032] (emphasis added), and that dynamic
`
`switching occurs “during active viewing” of media such that “multimedia selection
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`from a new server may begin streaming from the point left off at the original server
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`IPR2016-00174
`Patent 8,090,862
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`without interruption” (see id. at ¶ [0033] (emphases added)).
`
`Based on the entirety of Shastri’s disclosure, a POSA would understand
`
`Shastri’s system is designed to switch channels during playback without
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`interruption in playback. (EX1018 at ¶ 11). Indeed, during his deposition,
`
`Nonend’s expert conceded this point. (See EX1013 at 42:3-22 (“My general
`
`understanding of the meaning of uninterruptability, as used by Shastri, is . . . the
`
`perceptually seamless . . . presentation of multimedia to a user); see also id. at
`
`43:15-44:2 (“[For me, the alternative to transparently switching] would be a
`
`switching that occurs that would be observable or obvious to a user, and the way in
`
`which that would be obvious would be if there was an interruption in the delivery
`
`or rendering of the multimedia content”); 52:12-17 (“I don’t dispute that
`
`[operat[ing] transparently to the user is] an intent of the invention [of Shastri]”).
`
`Nonend’s expert also conceded that Shastri’s disclosure of a pause that “may” be
`
`noticed also meant that a pause “may not” be noticed. (See id. at 53:1-12).
`
`Thus, Shastri discloses switching between channels without interruption.
`
`(EX1018 at ¶ 11).
`
`B. A POSA would Recognize that Shastri Passes Video from a Buffer
`to a Video Renderer While Switching Between Channels
`
`As discussed above in Section IV.A, Shastri discloses a system that switches
`
`between channels without interrupting playback of media content. To make such a
`
`switch without interruption, a POSA would recognize that Shastri must continue to
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`IPR2016-00174
`Patent 8,090,862
`pass content that has already been received and buffered from a first server to a
`
`video renderer while the switch occurs. (See Paper 2 at 19-20; see also EX1006 at
`
`¶ 56; EX1018 at ¶ 12).
`
`Nonend’s argument that Shastri does not disclose this element appears to
`
`depend on whether this element is inherent to Shastri. (Paper 14 at 16). Nonend’s
`
`expert also indicated that only a question of inherency was considered in forming
`
`his opinion. (See EX1013 at 40:8-20; see also id. at 41:10-17). However, Unified
`
`Patent’s argument with respect to Shastri was that a POSA, reading Shastri, would
`
`recognize that to make such a switch without interruption, packets of the content
`
`item that have already been received from the initial server and buffered by the
`
`media player must continue to be passed to the video renderer while the switch
`
`takes place. (Paper 2 at 19). It is well-established that references can inherently
`
`disclose elements, and that references can also implicitly disclose elements. For
`
`example, an element can be implicitly disclosed by a reference where a POSA
`
`reading a reference would draw an inference that the claimed limitation is
`
`disclosed. See, e.g., In re Baxter Travenol Labs, 952 F.2d 388, 390-91 (Fed. Cir.
`
`1991).
`
`A POSA would have recognized this element as having been disclosed by
`
`Shastri. (See EX1006 at ¶ 56; see also EX1018 at ¶ 12). Nonend argues that
`
`Unified Patents’ expert conceded it would be possible to playback media without
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`IPR2016-00174
`Patent 8,090,862
`interruption and without playing content out of the buffer while switching
`
`channels. (Paper 14 at 17). However, Nonend’s argument takes a portion of Dr.
`
`Eldering’s deposition out of context. In his deposition, Dr. Eldering made clear
`
`that, while he couldn’t say it was impossible to build some unknown system that
`
`can switch between channels without interrupting playback and without playing
`
`content out of the buffer while the switch is made, it certainly was not the teaching
`
`of Shastri. (EX2028 at 63:12-17). Dr. Eldering was clear that his declaration was
`
`focused on the system of Shastri, and that in his view, a POSA would understand
`
`the system of Shastri to necessarily operate as per the claim limitation, and that
`
`this would also be the logical conclusion of a POSA reading Shastri. (See EX2028
`
`at 57:20-58:1 (“Shastri does necessarily operate as per the claim limitation”); see
`
`also EX2028 at 53:5-54:2 (“In the architecture taught by Shastri . . ., that is the
`
`logical conclusion that that’s how Shastri works”).
`
`Nonend and Dr. Hale argue that a particular buffering scheme exists that
`
`does not read on the claim limitation. Nonend describes this buffering scheme as
`
`operating by (1) receiving data on a first channel, (2) completing processing of that
`
`data, and (3) only then receiving data from a second channel. (Paper 14 at 16-17).
`
`Dr. Hale argues that given a particular hardware implementation with adequate
`
`processing performance, these steps could be performed quickly enough so that no
`
`interruption is presented to the user in playback. (EX2016 at ¶¶ 14, 15). However,
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`IPR2016-00174
`Patent 8,090,862
`Petitioner’s position does not rest on some hypothetical hardware implementation,
`
`but on the teachings of Shastri, which describes a particular architecture invented
`
`in year 2000. (See EX1018 at ¶ 14).
`
`Moreover, when presented with Nonend’s alternative buffering scheme, Dr.
`
`Eldering made clear that no engineer focused on providing uninterrupted playback
`
`would design a system using this scheme. (See EX2028 at 61:23-62:14 (“Q So it
`
`can be any system in the world . . ., so long as it meets those limited constraints
`
`that I put on it. Is it at all technically possible to have a system like that where the
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`playback to the user would not be noticed[?] . . . [A] I don’t know. . . . What
`
`you’ve just described is what every telecom engineer would avoid. They would
`
`get fired if they built that because you would never let the buffer empty because it
`
`takes a while to do the processing of the video. You’ve got to decode the bits and
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`put them up on the screen”); see also EX1018 at ¶ 13).
`
`Thus, it is clear that a POSA would understand Shastri as teaching that, to
`
`switch without interruption, the content already received and buffered from the
`
`first server must continue to be passed to the video renderer while the switch takes
`
`place. (EX1018 at ¶ 14).
`
`C.
`
`Shastri Discloses Receiving a Sample of Another Part of Media
`Content Over a Second Channel
`Nonend argues that Shastri does not disclose sampling “another part of the
`
`content” as recited in the ’862 patent claims, because Shastri discloses sampling
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`IPR2016-00174
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`the same data as that being received on the first channel, not “another part.”
`
`(Paper 14 at 18). Nonend’s argument fails for at least two reasons.
`
`First, Shastri discloses that the same media file is sampled as the media file
`
`being currently received, not the “same data” as alleged by Nonend. (See EX1002
`
`at ¶ [0062] (“Step 71 includes establishing a connection with the alternate server
`
`and the initiation of streaming of the same file being provided by the original
`
`server of step 65.”) (emphasis added); see also id. at ¶ [0048] (“the same media
`
`content [is very briefly accepted] from the second test server”) (emphasis added).
`
`Nowhere does Shastri disclose that the sampled part of the media content is the
`
`same data from the media content as the data which has already been received on
`
`the first channel, and a POSA would recognize that any portion of the same content
`
`file could be sampled. (EX1018 at ¶ 16).
`
`Second, even if it were true that the media content in Shastri is the same data
`
`as data which has already been received on the first channel, this sampled data
`
`would still be “another part.” That is, this media content received over the second
`
`channel is different than the media content received from the first channel if for no
`
`other reason than that they are separate copies received from separate servers. (See
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`EX1002 at ¶ [0032]; see also EX1018 at ¶ 17).
`
`Nonend appears to argue for a construction of “another” that excludes a
`
`copy from being “another.” (See Paper 14 at 10-11). However, even Nonend’s
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`expert admitted that it is grammatically proper to call a second copy of the ’862
`
`patent “another copy,” even though the text of the two copies is the same. (See
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`EX1013 at 33:10-34:5).
`
`Thus, Shastri discloses receiving a sample of another part of the media
`
`content over a second channel while playing a part of the media content received
`
`over a first channel. (EX1018 at ¶ 18).
`
`D.
`
`Shastri Discloses that the Received Sample is a Part of the Media
`Content
`Nonend argues that Shastri does not disclose that the sampled content is
`
`actually received. (Paper 14 at 18). This is incorrect. Shastri makes clear that the
`
`media content is briefly streamed to the media player, so that QoS statistics can be
`
`sampled. (See EX1002 at [0062] (“Step 71 includes establishing a connection with
`
`the alternate server and the initiation of streaming of the same file being provided
`
`by the original server of step 65. Step 71 occurs only for a brief period as required
`
`to establish a sample of the current bit rate of data transfer”); see also id. at [0048]
`
`(“separate connections are opened with alternate servers for the purpose of
`
`obtaining a sampling of QoS data by very briefly accepting the same media content
`
`from the second test server”) (emphasis added); EX1018 at ¶ 19).
`
`Additionally, it is clear that this sample of the media content is received by
`
`Shastri’s media player. For example, Shastri discloses that DSS module 29 and
`
`network module 31 are part of player P, which is “adapted to play media content
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`IPR2016-00174
`Patent 8,090,862
`streamed thereto.” (See EX1002 at ¶ [0032]; see also id. at ¶¶ [0033], [0036]).
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`This is clearly illustrated in Figure 2, where a box illustrating a “Player” surrounds
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`both network module 31 and DSS 29. (See id. at Fig. 2). Shastri discloses that
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`DSS 29 acts in cooperation with network module 31 to “establish a connection
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`with alternate media servers . . . for the purpose of accomplishing a small scale
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`data transfer wherein a reasonable QoS estimate of each alternate server contacted
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`may be obtained.” (See id. at ¶ [0042]). Additionally, paragraph [0048] of Shastri,
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`which discloses “accepting the same media content from the second test server,”
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`also discloses that it is an input layer 45 of DSS 29 that receives the server test data
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`from the sampled server. (See id. at ¶ [0048]; see also EX1018 at ¶ 19).
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`In his declaration, Nonend’s expert points to paragraphs [0036] and [0038]
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`of Shastri as allegedly showing that only QoS data is received by the player, not
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`media content. (EX2016 at ¶ 20). However, it is clear that the QoS data described
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`in these paragraphs is QoS data received from the current server. (See EX1002 at
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`¶ [0036] (“In addition to receiving . . . QoS data from a current server, module 31
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`has a capability of . . . receiving data from another server[]”); ¶ [0039] (“A QoS
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`module 41 is provided and enabled to record current QoS data originating from a
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`current server”)). Other paragraphs of Shastri make clear that, in addition to
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`receiving this QoS data, DSS module 29 receives sampled media content from
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`other servers to formulate QoS estimates for the other servers. (See EX1002 at ¶
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`IPR2016-00174
`Patent 8,090,862
`[0041] (“DSS module 29 is capable of utilizing current QoS performance statistics
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`from a current server . . . in comparison with estimated QoS performance
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`capabilities compiled from sampling alternate servers”); see also id. at ¶ [0043]
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`(“DSS module 29 may be programmed to . . . check with each server in list 43 for
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`the purpose of formulating a QoS estimate for each alternate server”)). Shastri
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`further explains that this media content sample is received by the media player for
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`determining QoS only, and is not buffered or rendered for display. (See id. at ¶
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`[0048] (“The sample taken is not rendered for display, but simply monitored for bit
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`rate”); see also id. at ¶ [0049] (“[C]ertain playback statistics are not available for
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`sampled servers because the media content sampled is not buffered or rendered”);
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`EX1018 at ¶ 20).
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`Thus, it is clear that the player of Shastri receives the media content sample.
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`(EX1018 at ¶ 21).
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`V. NONEND FAILS TO OVERCOME PETITIONER’S SHOWING
`THAT THE CHALLENGED CLAIMS ARE OBVIOUS
`A. Goldszmidt Discloses Initiating a Request for at Least a Part of the
`Item of Content over a Second Communication Channel
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`Nonend argues that each of the claims of the ’862 patent require that certain
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`data be received on a first communication channel, that a request for certain other
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`data be made on a second communication channel, and that the requested data be
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`received over the same second communication channel. (Paper 14 at 19).
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`Patent 8,090,862
`However, Nonend appears to be misreading the claims to require that the request
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`be sent over the second communication channel. (See EX1018 at ¶ 22). Claim 1
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`actually recites, inter alia:
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`“initiating a request for at least a part of the item of content over a
`second communication channel operationally coupled to the receiving
`media player; and
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`receiving, in response to initiating the request, one or more data
`packages corresponding to at least a part of the item of content, over
`the second communication channel.”
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`(EX1001 at 15:9-14). Claims 12 and 18 include similar limitations. (See id. at
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`16:1-7; see also id. at 16:42-48).
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`
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`When read together with the next limitation in the claim, it is clear that the
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`request is a request to receive content over a second communication channel. This
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`is particularly apparent when considering the disclosure of the ’862 patent. With
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`the exception of the claims, the term “communication channel” does not appear in
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`the ’862 patent. (See, e.g., EX1013 at 93:3-17). However, the ’862 patent
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`describes that, in opening a media stream, a consumer node input manager (IM)
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`requests another node for connection. (EX1001 at 14:3-15). The other node then
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`returns the media stream. (Id. at 14:16). Similarly, the ’862 patent describes that,
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`when failing to connect to a node, a consumer node request a connection with
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`another node by sending a connection request. (Id. at 14:36-49). These passages
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`IPR2016-00174
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`make clear that a connection is not established until after it has been requested.
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`(EX1018 at ¶ 23).
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`Additionally, other than in the claims, the term “initiating” appears in only
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`the title and abstract of the ’862 patent. The title reads “initiating an alternative
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`communication channel for receiving streaming content” (EX1001 at Title) and the
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`abstract reads “initiating, from the consumer node, a second connection over the
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`network to a production node” (EX1001 at Abstract). Both of these passages relate
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`to opening a second connection, rather than communicating a request over the
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`same second connection over which media content is received. (EX1018 at ¶ 24).
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`A POSA reading the ’862 patent would not interpret this claim to require
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`that a request be sent over a second communication channel. (EX1018 at ¶¶ 25,
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`27). For example, a POSA would understand “initiating a request” to mean taking
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`one or more steps that result in a request. (Id.). Nothing in the phrase suggests
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`sending a request. (Id.). Thus, in the context of the ’862 patent, and certainly
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`under a broadest reasonable interpretation, a POSA would understand “initiating a
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`request for at least a part of the item of content over a second communication
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`channel” to mean initiating a request, where the request is a request to receive at
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`least a part of the item of content over a second communication channel. (Id.).
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`Moreover, even if Nonend’s interpretation of the claim were accepted,
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`Goldszmidt teaches requesting and receiving data on the same channel. Nonend is
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`correct that Goldszmidt discloses an example where requests for streaming media
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`are passed through a control server. (See Paper 14 at 19). However, Goldszmidt
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`also provides an example where requests and media streams are passed to
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`reflectors. (EX1004 at 14:61-15:13). In th