Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 22
`Entered: December 26, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`WEBPOWER, INC.,
`
`FRIENDFINDER NETWORKS INC., STREAMRAY INC., WMM, LLC,
`WWM HOLDINGS, LLC, and MULTIMEDIA, LLC,
`
`DUODECAD IT SERVICES LUXEMBOURG S.À R.L.,
`ACCRETIVE TECHNOLOGY GROUP INC., ICF TECHNOLOGY, INC.,
`RISER APPS LLC, and STREAMME, INC. (f/k/a VUBEOLOGY, INC.),
`
`Petitioner,
`
`v.
`
`WAG ACQUISITION, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01238
`Patent 8,122,141 B2
`____________
`
`
`
`Before TREVOR M. JEFFERSON, BRIAN J. McNAMARA, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`571-272-7822
`
`
`
`
`
`Paper 22
`Entered: December 26, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`WEBPOWER, INC.,
`
`FRIENDFINDER NETWORKS INC., STREAMRAY INC., WMM, LLC,
`WWM HOLDINGS, LLC, and MULTIMEDIA, LLC,
`
`DUODECAD IT SERVICES LUXEMBOURG S.À R.L.,
`ACCRETIVE TECHNOLOGY GROUP INC., ICF TECHNOLOGY, INC.,
`RISER APPS LLC, and STREAMME, INC. (f/k/a VUBEOLOGY, INC.),
`
`Petitioner,
`
`v.
`
`WAG ACQUISITION, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01238
`Patent 8,122,141 B2
`____________
`
`
`
`Before TREVOR M. JEFFERSON, BRIAN J. McNAMARA, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2016-01238
`Patent 8,122,141 B2
`
`
`In response to a Petition (Paper 1, “Pet.”) filed by WebPower, Inc., we
`instituted an inter partes review of claims 10–23 of U.S. Patent No.
`8,122,141 B2 (“the ’141 patent”). Paper 7 (“Dec.”), 22–23. We
`subsequently joined FriendFinder Networks Inc., Steamray Inc., WWM,
`LLC, WWM Holdings, LLC, Multi Media, LLC, Duodecad IT Services
`Luxembourg S.à r.l., Accretive Technology Group, Inc., ICF Technology,
`Inc., Riser Apps LLC, and StreamMe, Inc. (f/k/a Vubeology, Inc.) as parties
`to the proceeding. Papers 12, 13. We refer collectively to all petitioners
`herein as “Petitioner.”
`During the trial, WAG Acquisition, LLC (“Patent Owner”) timely
`filed a Response (Paper 11, “PO Resp.”), to which Petitioner timely filed a
`Reply (Paper 15, “Reply”). An oral hearing was held on September 25,
`2017, and a copy of the transcript was entered into the record. Paper 21
`(“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`claims on which we instituted trial. Based on the record before us, Petitioner
`has shown, by a preponderance of the evidence that claims 10–23 are
`unpatentable.
`
`
`I. BACKGROUND
`A. The ’141 Patent
`The ’141 patent describes a system for streaming media, such as audio
`or video, via the Internet with reduced playback interruptions. Ex. 1001, col.
`4, ll. 39–44. A number of factors can affect the continuity of streaming
`media, including the quality of a user’s connection with the Internet,
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`variations in Internet traffic that may cause congestion at various points
`along the route that data flows, and the dropping of data packets by
`overloaded routers. Id. at col. 2, ll. 10–30. The ’141 patent describes a
`buffering system for streaming media that seeks to limit such deficiencies.
`Id. at col. 4, ll. 33–35.
`Figure 1 of the ’141 patent is reproduced below.
`
`
`Figure 1 is a schematic diagram that illustrates elements of a streaming
`media buffering system. Id. at col. 10, ll. 7–9. Server 12 is connected to the
`Internet for transmitting sequenced streaming-media data elements. Id. at
`col. 10, ll. 22–25. Associated with server 12 are buffer manager 16 and
`first-in–first-out (“FIFO”) buffer 14, which stores at least one of the data
`elements for transmission. Id. at col. 10, ll. 25–27. Buffer manager 16
`receives the media data, supplies the media data in order to FIFO buffer 14,
`and maintains pointers 24a–24n into the buffer for user computers,
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`indicating the last media data element that has been sent to respective users
`and thus indicating the next element or elements to be sent. Id. at col. 10, ll.
`30–38. Once FIFO buffer 14 is full, the oldest data elements in the buffer
`are deleted as new elements are received. Id. at col. 10, ll. 38–40. A
`predetermined number of data elements are kept in FIFO buffer 14. Id. at
`col. 10, ll. 40–41.
`At least one user computer 18 is connected to server 12 via the
`Internet. Id. at col. 10, ll. 45–46. User buffer 20 is associated with user
`computer 18 and stores a predetermined number of the media data elements.
`Id. at col. 10, ll. 47–49. Buffer manager 22, associated with user computer
`18, receives and stores a predetermined number of media data elements
`received by the media player, plays the data out sequentially as audio and/or
`video, and deletes media data elements from buffer 20 as they are played out
`to approximately maintain the predetermined number of data elements in the
`user’s buffer. Id. at col. 10, ll. 53–59, col. 8, ll. 31–34.
`In an alternative embodiment, buffer manager 22 (or the media
`source) provides for sequentially numbering the media data elements and
`does not maintain a pointer into buffer 20 for each user. Id. at col. 8, ll. 38–
`40. “Instead, the media player buffer manager in the user computer
`maintains a record of the serial number of the last data element that has been
`received.” Id. at col. 8, ll. 40–42. By using standard data communications
`protocol techniques, “such as TCP,” user computer 18 transmits requests to
`server 12 for data elements specified by their serial numbers. Id. at col. 8, ll.
`42–46. Server 12 responds with the requested data elements, depending
`“upon the reliable transmission protocol” to assure delivery, with user
`computer 18 then continuing with additional data requests for the duration of
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`playing the streamed material. Id. at col. 8, ll. 46–50. “In this manner, the
`user computer, not the server, maintains the record of the highest data
`element number stored in the user computer buffer.” Id. at col. 8, ll. 50–52.
`
`
`B. Illustrative Claims
`Independent claims 10 and 19 are illustrative of the claims at issue,
`and are reproduced below.
`10. A server for distributing streaming media via a data
`communications medium such as the Internet 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, said user system being assumed
`to have a media player for receiving and playing the streaming
`media on said user system, which is operable to obtain media
`data elements from said server by transmitting requests to said
`server to send one or more specified media data elements, said
`server comprising
`
`at least one data storage device, memory for storing
`machine-readable executable routines and for providing a
`working memory area for routines executing on the server, a
`central processing unit for executing the machine-readable
`executable routines, an operating system, at least one connection
`to the communications medium, and a communications system
`providing a set of communications protocols for communicating
`through said at least one connection;
`routine containing
`
`a machine-readable, executable
`instructions to cause the server to assign serial identifiers to the
`sequential media data elements comprising the program;
`
`a machine-readable, executable
`routine containing
`instructions to cause the server to receive requests from the user
`system for one or more media data elements specifying the
`identifiers of the requested data elements; and
`
`a machine-readable, executable
`routine containing
`instructions to cause the server to send media data elements to
`the user system responsive to said requests, at a rate more rapid
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`than the rate at which said streaming media is played back by a
`user.
`
`
`Id. at col. 13, l. 63–col. 14, l. 28.
`
`
`19. A non-transitory machine-readable medium on which there
`has been recorded a computer program for use in operating a
`computer to prepare streaming media content for transmission by
`a server wherein said server responds to user requests for media
`data elements identified by a serial identifier, said program
`recorded on said non-transitory machine readable medium
`comprising a routine to store and serially identify sequential data
`elements comprising said streaming media content, in a format
`capable of being served to users by said server.
`
`
`Id. at col. 14, ll. 49–58.
`
`
`C. Instituted Grounds of Unpatentability
`Petitioner relies on the following references. Pet. 7–10.
`Chen
`US 5,822,524
`Oct. 13, 1998
`Ex. 1002
`Carmel US 6,389,473 B1 May 14, 2002
`Ex. 1003
`
`M. H. Willebeek-LeMair, K. G. Kumar, and E. C. Snible,
`Bamba—Audio and video streaming over the Internet, 42 IBM
`J. Res. Develop. 269 (March, 1998) (Ex. 1004) (“Willebeek”)
`
`International Standard ISO/IEC 11172-1, Information
`Technology—Coding of moving pictures and associated audio
`for digital storage media at up to about 1,5 Mbit/s—Part 1:
`Systems (ISO/IEC, August 1993) (Ex. 1018) (“ISO-11172-1”)
`
`International Standard ISO/IEC 11172-2, Information
`Technology—Coding of moving pictures and associated audio
`for digital storage media at up to about 1,5 Mbit/s—Part 2:
`Video (ISO/IEC, August 1993) (Ex. 1019) (“ISO-11172-2”)
`
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`Chen
`Chen and Willebeek
`Chen and ISO-11172
`Carmel
`
`Carmel and ISO-11172
`
`
`International Standard ISO/IEC 11172-3, Information
`Technology—Coding of moving pictures and associated audio
`for digital storage media at up to about 1,5 Mbit/s—Part 3:
`Audio (ISO/IEC, August 1993) (Ex. 1020) (“ISO-11172-3”)1
`
`We instituted trial on the following bases. Dec. 22–23.
`Reference(s)
`Basis(es)
`Claim(s) Challenged
`§ 102(b)
`19, 20, and 23
`§ 103(a)
`21
`§ 103(a)
`22
`§ 102(a)
`10, 11, 13–21, and 23
`§ 102(e)
`§ 103(a)
`
`12 and 22
`
`D. Real Parties in Interest and Related Proceedings
`In addition to the parties identified in the caption, real parties in
`interest with one or more of the petitioners include Various, Inc., Interactive
`Network, Inc., DataTech Global, LLC, DataTech Systems, LLC, Docler
`Media, LLC, 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, Web Mind Licenses KFT,
`and Gattyàn Group S.à r.l. Pet. 2; FriendFinder Networks Inc. et al. v. WAG
`Acquisition, LLC, Case No. IPR2017-00786, Paper 2, 1–2; Duodecad IT
`Services Luxembourg S.à r.l. v. WAG Acquisition, LLC, Case No. IPR2017-
`
`
`1 In its challenges, Petitioner refers collectively to ISO-11172-1,
`ISO-11172-2, and ISO-11172-3 as “ISO-11172.” Because the challenges
`involving these references are all under 35 U.S.C. § 103(a), and because
`their description of the same standard provides a self-evident reason to
`combine their teachings, we do not address whether they are properly
`considered as a single reference or as three separate references.
`
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`00820, Paper 2, 2. Patent Owner identifies only itself as a real party in
`interest. Paper 4, 2.
`The parties identify the following matters as involving the ’141
`patent: (1) WAG Acquisition, LLC v. Sobonito Investments, Ltd., No. 2A14-
`cv-1661-ES-MAH (D.N.J.); (2) WAG Acquisition, LLC v. Multi Media, LLC,
`No. 2:14-cv-2340-ES-MAH (D.N.J.); (3) WAG Acquisition, LLC v. Data
`Conversions, Inc., No. 2:14-cv-2345-ES-MAH (D.N.J.); (4) WAG
`Acquisition, LLC v. Flying Crocodile, Inc., No. 2:14-cv-2674-ES-MAH
`(D.N.J.); (5) WAG Acquisition, LLC v. Gattyàn Group S.à r.l., No. 2:14-cv-
`2832-ES-MAH (D.N.J.); (6) WAG Acquisition, LLC v. FriendFinder
`Networks Inc., No. 2:14-cv-3456-ES-MAH (D.N.J); (7) WAG Acquisition,
`LLC v. Vubeology, Inc., No. 2:14-cv-4531-ES-MAH (D.N.J.); (8) WAG
`Acquisition, LLC v. Gamelink Int’l Ltd. No. 2:15-cv-3416-ES-MAH
`(D.N.J.); (9) WAG Acquisition LLC v. WebPower, Inc., No. 2:15-cv-3581-
`ES-MAH (D.N.J.); and (10) WAG Acquisition, LLC v. MFCXY, Inc., No.
`2:14-cv-3196-ES-MAH (D.N.J.). Pet. 2, Paper 4, 2–3.
`The ’141 patent is also the subject of IPR2015-01037, and a
`continuation of the ’141 patent, U.S. Patent No. 8,327,011 B2, is the subject
`of IPR2015-01033 and IPR2016-01161. The petitions for institution of an
`inter partes review were denied for each of those proceedings. In addition,
`two other related patents were the subject of further inter partes review
`proceedings: (1) U.S. Patent No. 8,185,611 B2 was the subject of IPR2015-
`01035 and IPR2016-01162, both of whose petitions for institution of an inter
`partes review were denied; and (2) U.S. Patent No. 8,364,836 was the
`subject of IPR2015-01036, for which a final written decision was issued by
`the Board on October 20, 2016.
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`II. ANALYSIS
`A. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 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); Office Patent Trial Practice Guide, 77
`Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`Petitioner asserts that, in this proceeding, “no constructions are
`necessary,” and “proposes . . . that all claim terms of the ’141 patent take on
`their ordinary and customary meaning that the terms would have to one of
`ordinary skill in the art.” Pet. 10. Patent Owner does not expressly address
`claim construction in its Response. Nevertheless, the parties’ arguments
`regarding the prior art apply different understandings of the term “rate,”
`which is recited in independent claim 10 as part of the limitation “a
`machine-readable, executable routine containing instructions to cause the
`server to send media data elements to the user system responsive to said
`requests, at a rate more rapid than the rate at which said streaming media is
`played back by the user” (emphases added).
`Patent Owner implicitly applies a construction in which it construes
`“rate” as the rate at which data elements are sent on an individual link to the
`user system, while Petitioner applies a broader construction in which the
`“rate” may collectively include the overall rate achieved with multiple links
`to the user system. Compare, e.g., Pet. 56 with PO Resp. 4. Because the
`import of this distinction is clearer when applied to the prior art, we discuss
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`Patent 8,122,141 B2
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`it more fully below. We discern nothing in the express language of the
`claim, nor in the Specification of the ’141 patent, that compels a
`construction of “rate” limited to the rate at which data are sent over an
`individual link. The broader construction applied by Petitioner is reasonable
`in light of the Specification of the ’141 patent.
`
`
`B. Legal Principles
`Petitioner makes both anticipation and obviousness challenges. A
`claim is unpatentable as anticipated under 35 U.S.C. § 102 if a single prior-
`art reference expressly or inherently describes each limitation set forth in the
`claim. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed.
`Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
`631 (Fed. Cir. 1987).
`A claim is unpatentable for obviousness under 35 U.S.C. § 103 if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of non-
`obviousness, i.e., secondary considerations.2 Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966).
`
`
`2 The parties do not address secondary considerations, which, accordingly,
`do not form part of our analysis.
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`Additionally, the obviousness inquiry typically requires an analysis of
`“whether there was an apparent reason to combine the known elements in
`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
`(Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG
`v. C. H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)).
`To prevail on its challenges, Petitioner must demonstrate by a
`preponderance of the evidence that the claims are unpatentable. 35 U.S.C.
`§ 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes review], the petitioner has
`the burden from the onset to show with particularity why the patent it
`challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc. 815 F.3d
`1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter
`partes review petitions to identify “with particularity . . . the evidence that
`supports the grounds for the challenge to each claim”)). This burden never
`shifts to Patent Owner. See Dynamic Drinkware, LLC. v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v.
`Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the
`burden of proof in inter partes review). Furthermore, Petitioner does not
`satisfy its burden of proving obviousness by employing “mere conclusory
`statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed.
`Cir. 2016).
`
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`
`C. Level of Skill in the Art
`Petitioner’s declarant, Nathaniel Polish, Ph.D., asserts that a person of
`ordinary skill in the art “would have had a B.S. degree in computer science
`or electrical engineering (or comparable degree) and two years of experience
`in networking or streaming media, or a M.S. in computer science or
`electrical engineering (or comparable degree).” Ex. 1005 ¶ 21. Dr. Polish
`further states that “[t]hese descriptions are approximate, and a higher level
`of education or specific skill might make up for less experience, and vice-
`versa.” Id. ¶ 22.
`Neither Patent Owner nor its declarant, Mung Chiang, Ph.D., proffers
`a characterization of the education and experience of a person of ordinary
`skill, although Dr. Chiang attests that his own qualifications permit him to
`provide an opinion, “including what a person having ordinary skill in the art
`would have understood.” Ex. 2001 ¶ 10.
`We find Dr. Polish’s statement of the level of ordinary skill in the art
`reasonable, and adopt it for this Final Written Decision.
`
`
`D. Carmel
`Carmel describes a method for streaming live or prerecorded media
`from a server to multiple client computers over the Internet. Ex. 1003, col.
`2, ll. 1–21. Figure 2 of Carmel is reproduced below.
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`Figure 2 is a schematic illustration of a computer broadcast network. Id. at
`col. 5, ll. 43–45. System 32 comprises transmitting computer 34 (which
`receives audiovisual input from devices 22), a plurality of clients 30, and
`network server 36, all of which communicate over network 28. Id. at col. 6,
`ll. 28–35. After preparing a multimedia sequence, computer 34 uploads the
`sequence over network 28, thereby allowing clients 30 connected with server
`36 to receive the multimedia sequence in substantially real time. Id. at col.
`6, l. 50–col. 7, l. 17.
`Figure 3A of Carmel is reproduced below.
`
`
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`Figure 3A schematically illustrates the structure of broadcast data generated
`by computer 34, “typically corresponding to a multimedia data sequence.”
`Id. at col. 7, ll. 19–23. Data stream 40 comprises a series of data slices 42,
`44, 46, 48, etc., with each slice containing a segment of video and/or audio
`data that corresponds to a respective, successive time interval T1, T2, T3, etc.
`Id. at col. 7, ll. 22–25. Each slice is stored as a corresponding file with a
`running slice index 1, 2, 3, . . . N, and perhaps also a time stamp that
`indicates a real time at which the data in the file were recorded or an elapsed
`time relative to the beginning of the stream. Id. at col. 7, ll. 27–32. An
`index file that comprises a slice ID is uploaded to a server, with the slice ID
`indicating the index of the file in the data stream that was most recently
`uploaded. Id. at col. 7, ll. 59–64. Each time a new file is uploaded, the slide
`ID is updated. Id. at col. 7, ll. 65–66.
`Figure 4 of Carmel is reproduced below.
`
`
`Figure 4 schematically illustrates communication between computer 34 and
`server 36 over network 28. Id. at col. 9, ll. 10–13. According to Carmel,
`computer 34 “should preferably ensure that there is sufficient
`communication bandwidth between the computer and the server.” Id. at col.
`9, ll. 13–17. Accordingly, the computer may open multiple links 60, 62, 64,
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`66, 68, 70, multiple of which may “operate simultaneously” over a single
`line or each of which may be “routed differently from the other links”
`through different lines. Id. at col. 9, ll. 17–23.
`Computer 34 monitors the rate of data being transmitted over each of
`the links, and allocates files according to the data rates, perhaps varying file
`sizes by adjusting slice durations T1, T2, T3, etc. Id. at col. 9, ll. 31–37.
`Carmel notes that “[t]he bandwidth open for transmission between computer
`34 and server 36 is effectively roughly equal to a sum of the bandwidths of
`the plurality of open links.” Id. at col. 9, ll. 37–39. A similar process is
`performed when server 36 sends data stream 40 to client computers 30, but,
`in addition, client computer 30 can read the index file and determine from
`which slice to begin receiving the data stream. Id. at col. 8, ll. 1–9.
`
`
`1. Anticipation of Claim 10 by Carmel
`Petitioner challenges claim 10 as anticipated by Carmel. Pet. 65.
`Several limitations of claim 10 correspond to limitations recited in
`independent method claim 1, on which we did not institute review, and
`Petitioner refers to its analysis of claim 1 for those limitations. Id. We have
`accordingly reviewed Petitioner’s analysis for claim 1, id. at 50–62, as well
`as its identification of which elements of claim 10 have counterparts in claim
`1, see id. at 31–38, and conclude that Petitioner demonstrates, by a
`preponderance of the evidence, that claim 10 is anticipated by Carmel. We
`highlight aspects of that analysis below for emphasis, especially including
`the single aspect of Petitioner’s analysis that Patent Owner contests in its
`Response (whether Carmel discloses sending media data elements to a user
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`system “at a rate more rapid than the rate at which the streaming media is
`played back by a user”). See PO Resp. 3–14.
`With respect to the structural components of the server recited in
`claim 10, Petitioner contends that these “would have been common to any
`server as of the filing date of the application leading to the ’141 patent,” and
`supports that contention with testimony by Dr. Polish. Id. (citing Ex. 1005
`¶ 43). Such servers include the Sun Microsystems and Windows NT servers
`explicitly disclosed by Carmel. Id. (citing Ex. 1003, col. 1, ll. 34–38, col. 6,
`ll. 40–44; Ex. 1005 ¶ 43). On this point, we credit the testimony of Dr.
`Polish, which is uncontested by Patent Owner. In addition, we agree with
`Petitioner’s identification of explicit disclosure in Carmel of aspects of these
`elements. Pet. 65 (citing Ex. 1003, col. 1, ll. 34–38 (disclosing operating
`system), col. 7, ll. 55–58 (disclosing memory), col. 6, ll. 36–40 (disclosing
`network connection), col. 6, ll. 50–56 (disclosing communications
`protocols)).
`In addition, Petitioner adequately identifies disclosure in Carmel of
`sequential media data elements (in the form of data slices 42 shown in
`Figure 4, reproduced above) that are transmitted from the server to a user’s
`media player. See id. at 53–56. Petitioner also adequately identifies
`disclosure of assigning serial identifiers to the sequential media data
`elements in the form of the running slice indexes 1, 2, 3, . . . N. See id. 54–
`56. As Petitioner contends, Carmel describes causing the server to receive
`requests from the user system for such media data elements, specifying such
`identifiers. See id.
`With respect to claim 10’s recitation of “instructions to cause the
`server to send media data elements to the user system responsive to said
`
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`requests, at a rate more rapid than the rate at which said streaming media is
`played back by the user,” i.e., the only limitation that Patent Owner
`expressly contests, the Petition identifies multiple disclosures. First, the
`Petition observes that Carmel expresses an objective that “the data rate
`should be generally equal to or faster than the rate at which the data are
`generated at the transmitting computer.” Id. at 56 (quoting Ex. 1003, col. 2,
`ll. 51–59). In addition, the Petition highlights Carmel’s description of
`responsive adjustments made to accommodate the detection of lag:
`Computer 34 monitors the time codes as file 40 is transmitted,
`and clients 30 similarly monitor the time codes as the file is
`received, in order to ensure that the transmission or reception is
`“keeping up” with the input of the data to the computer. In the
`event that a lag is detected, steps are taken to increase the data
`transmission or reception rate, as described further herein below.
`For example, as shown in FIG. 3A, time intervals T1, T2, T3, etc.,
`are not all equal, but rather are adjusted by computer 34 in
`response to the transmission rate. Alternatively or additionally,
`the compression level of the data is varied, as is likewise
`described below, so as to adjust the data streaming rate to the
`available bandwidth over one or more channels between
`computer 34 and server 36, and/or between server 36 and client
`30.
`
`Ex. 1003, col. 7, ll. 35–49. We agree with Petitioner that the portions of
`Carmel it cites disclose the limitation.
`Patent Owner disputes such a finding, contending that “the Petition
`fails to explain what Carmel means by ‘the data rate’ in this disclosure [that
`‘the data rate should be generally equal to or faster than the rate at which the
`data are generated at the transmitting computer’].” PO Resp. 4. According
`to Patent Owner, “[t]he Petition does not explain or provide any basis as to
`why the words ‘data rate’ necessarily refer to the rate at which the server in
`
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`Carmel sends individual slices 42-48 to a user system.” Id. (emphasis
`added). Patent Owner contends that, in context, Carmel’s reference to the
`“data rate” “is actually addressing the bandwidth of the available
`transmission channel and not the rate at which individual media data
`elements are sent.” Id. at 5 (citing Ex. 2001 ¶¶ 16–17). Patent Owner
`supports this reading of Carmel with testimony of Dr. Chiang. Ex. 2001
`¶¶ 16–17.
`We do not understand Petitioner’s argument to be that the individual
`slices of Carmel are transmitted at a rate faster than the rate at which they
`are generated. Rather, Petitioner’s argument is based on the overall rate at
`which slices are sent to a user system, which may include the parallel
`transmission of such slices over the multiple links disclosed by Carmel. See
`Reply 3 (“A first way Carmel describes increasing the transmission rate
`(thus recovering from lag) is by opening additional download links”
`(emphasis added)). In this respect, the parties essentially agree on what
`Carmel discloses, which is consistent with our independent reading of
`Carmel: transmission on individual links is below the generation rate, but
`the overall transmission rate across multiple links may be above the
`generation rate. See Tr. 8:11–15 (Petitioner agreeing that the data rate in
`Carmel for each individual link would still be below the playback rate),
`23:23–24:10 (Patent Owner agreeing). Whether Carmel discloses the
`limitation thus depends on whether “rate” in the claim is construed to be
`limited to the rate on an individual link or may more broadly encompass the
`rate across multiple links. As we note above, we discern nothing in the
`express language of the claim nor in the Specification of the ’141 patent that
`compels the more narrow reading Patent Owner implicitly applies.
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`We questioned the parties extensively about this distinction at the oral
`hearing. E.g., Tr. 6:5–7:9, 19:2–19, 21:14–23:9, 23:23–24:10. Several
`points are worthy of note.
`First, Patent Owner asserted at the oral hearing that it “disclaim[s]”
`anything that does not operate by an individual link, i.e. “that the claim
`covers a situation where each media data element is sent in response to a
`request for an element by its serial identifier, and those are each sent faster
`than the playback rate.” Id. at 21:22–26. Patent Owner also asserted that
`“[i]f there could be a multichannel implementation I don’t know that we
`have to disclaim that in order to avoid this art.” Id. at 22:1–2. Although the
`’141 patent has not expired, Patent Owner has not filed a motion to amend
`the claims, nor any other paper that would act as a disclaimer of the scope
`defined by the broadest reasonable interpretation of the claims in light of the
`Specification. See 35 U.S.C. § 316(a)(9); 37 C.F.R. § 42.121(a) (authorizing
`a patent owner to file one motion to amend a patent after conferring with the
`Board). Accordingly, notwithstanding the response to a question at the oral
`hearing, Patent Owner has not formally effected any disclaimer of claim
`scope.
`Second, Patent Owner contends that Petitioner’s arguments are
`“nowhere in the petition” and that the argument that the download rate is
`increased with additional download links “didn’t even come up in the reply.”
`Tr. 19:19–23. We disagree with the latter contention because the Reply
`specifically argues that “[a] first way Carmel describes increasing the
`transmission rate (thus recovering from lag) is by opening additional
`download links.” Reply 3. We find that argument, as well as other certain
`arguments made in the Reply, to be properly responsive to Patent Owner’s
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`position in its Response that Carmel does not disclose sending media data
`elements to the user system at a rate that exceeds the playback rate.
`Although such arguments expand on the Petition’s position that the
`limitation is disclosed by Carmel, they do not rely on newly submitted
`evidence. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,767 (Aug. 14, 2012). And they relevantly address Patent Owner’s
`implicit construction of the claims at issue.
`For example, as the Reply observes, Carmel explains that “[w]hen the
`data stream comprises multimedia data, the data rate should be generally
`equal to or faster than the rate at which the data are generated at the
`transmitting computer.” Reply 2 (quoting Ex. 1003, col. 2, ll. 51–59). We
`agree with Petitioner that, because Carmel thus describes a transmission rate
`that is, at least sometimes, “faster” than the rate at which multimedia data
`are generated or played, it meets the claim limitation. See id.
`Furthermore, we agree with Petitioner that, “[e]ven if the data rate
`refers to the overall bandwidth of the channel,” as Patent Owner contends,
`“the claim 10 limitation is still met.” Id. at 7. Patent Owner agrees that
`“Carmel teaches adjusting the timing and encoding of slices so as to
`maximize usage of the total available bandwidth, thereby removing any
`inter-slice ‘gaps,’ and thus to maintain transmission of slices at about the
`playback rate.” PO Resp. 7 (citing Ex. 2001 ¶¶ 20–21) (emphasis added).
`When cross-examined, Patent Owner’s expert, Dr. Chiang, explained that
`“[i]f it is transmitted slightly faster than playback rate and then slightly
`lower, slightly higher, slightly lower, which is what ‘about playback rate’
`means,” “jitter” would advantageously be avoided in playback. Ex. 1022,
`92:14–22. We agree with Petitioner that this testimony is consistent with its
`
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`IPR2016-01238
`Patent 8,
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