Trials@uspto.gov
`571-272-7822
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`
`
`
`
`Paper No. 10
`Filed: May 10, 2017
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AT&T SERVICES, INC.,
`Petitioner,
`
`v.
`
`CONVERGENT MEDIA SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01237
`Patent 8,914,840 B2
`____________
`
`
`
`Before JAMESON LEE, KEN B. BARRETT, and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`Grant of Motion for Joinder
`37 C.F.R. §§ 42.108, 42.122(b)
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 10
`Filed: May 10, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AT&T SERVICES, INC.,
`Petitioner,
`
`v.
`
`CONVERGENT MEDIA SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01237
`Patent 8,914,840 B2
`____________
`
`
`
`Before JAMESON LEE, KEN B. BARRETT, and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`Grant of Motion for Joinder
`37 C.F.R. §§ 42.108, 42.122(b)
`
`
`
`
`
`IPR2017-01237
`Patent 8,914,840 B2
`
`
`I. INTRODUCTION
`
`A. Background
`On April 3, 2017, AT&T Services, Inc. (“Petitioner”) filed a Petition
`(Paper 1, “Pet.”) to institute inter partes review of claims 1–5, 16, 18–20,
`24, 32, 34, 35, 37, 38, 42, 44, 47, 51–56, and 59–62 (“the challenged
`claims”) of U.S. Patent No. 8,914,840 B2 (Ex. 1031, “the ’840 patent”),
`together with a Motion for Joinder to join Case IPR2016-01814 (Paper 3,
`“Mot.”). See Mot. 2. We instituted trial in Case IPR2016-01814 on March
`3, 2017. See Netflix, Inc. v. Convergent Media Solutions, LLC, Case
`IPR2016-01814, slip op. at 23–24 (PTAB Mar. 3, 2017) (Paper 7).
`Convergent Media Solutions, LLC, (“Patent Owner”, “CMS”) waived its
`right to file a Preliminary Response to the Petition (Paper 8), but filed an
`Opposition to the Motion for Joinder (Paper 9, “Opp.”). AT&T filed a
`Reply to CMS’ Opposition (Paper 10, “Reply”).
`Absent AT&T’s Motion for Joinder, AT&T’s Petition would be
`barred under 35 U.S.C. § 315(b) because it was filed more than one year
`after AT&T was served with a complaint alleging infringement of the ’840
`patent. See Opp. 4; Exs. 2001, 2002 (showing Petitioner was served with a
`complaint alleging infringement of the ’840 patent on November 10, 2015,
`and answered the complaint on November 30, 2015). However, as
`explained in § II.E infra, because the time bar does not apply to petitions
`that are (a) filed with a motion for joinder, and (b) within one month of the
`institution decision of the inter partes review sought to be joined, AT&T’s
`Petition is not time-barred. See 37 C.F.R. §§ 42.101(b), 42.122(b).
`Accordingly, upon consideration of the Petition, and in the absence of
`a preliminary response from Patent Owner, we are persuaded, under
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`35 U.S.C. § 314(a), that Petitioner has demonstrated a reasonable likelihood
`that it would prevail in showing the unpatentability of the challenged claims
`of the ’840 patent. Accordingly, we institute an inter partes review of these
`claims.
`
`B. Related Matters
`Petitioner identifies the following as matters that could affect, or be
`affected by, a decision in this proceeding: Convergent Media Solutions LLC
`v. AT&T Inc., Case No. 3:15-cv-02156 (N.D. Tex.), the latter being a lead
`case consolidating individual cases brought by Convergent Media Solutions
`LLC against AT&T Inc., Netflix, Inc., and Roku, Inc. Pet. 2. Patent Owner
`identifies the same matters, indicating the individual cases brought against
`Netflix and Roku have been settled, and joint stipulations for their dismissal
`from the consolidated case have been filed. Paper 5, 2. Patent Owner also
`identifies the following instituted inter partes review as a matter that could
`affect, or be affected by, a decision in this proceeding: Netflix, Inc. v.
`Convergent Media Solutions LLC, Case IPR2016-01814 (PTAB 2016). Id.
`at 3.
`
`C. Evidence Relied Upon
`
`Reference
`
`Date
`
`Exhibit
`
`Zintel
`
`US 6,910,068 B2
`
`Mar. 16, 2001 (filed) Ex. 1003
`
`Elabbady
`
`US 7,483,958 B1
`
`Mar. 26, 2002 (filed) Ex. 1004
`
`Palm
`
`Katz
`
`
`
`US 2001/0042107 A1
`
`Jan. 8, 2001 (filed)
`
`Ex. 1006
`
`US 7,103,906 B1
`
`Sept. 29, 2000 (filed) Ex. 1033
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`Petitioner also relies on the Declaration of Andrew Wolfe, Ph.D. Ex. 1028.
`
`
`D. The Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`References
`Elabbady, Palm, and
`Zintel
`Elabbady, Palm,
`Zintel, and Katz
`
`Basis
`
`§ 103(a)
`
`§ 103(a)
`
`Claims Challenged
`1–5, 16, 18–20, 24, 32, 34, 35, 37,
`38, 44, 47, 51–53, 56, and 59–62
`42, 54, and 55
`
`
`
`II. ANALYSIS
`
`A. The ’840 Patent
`The ’840 patent relates to systems and methods for navigating
`hypermedia using multiple coordinated input/output device sets. Ex. 1031,
`3:4–6. The method allows “a user and/or an author to control what
`resources are presented on which device sets.” Id. at 3:6–8. The device sets
`may include laptops, desktops, tablets, personal digital assistants (PDAs),
`televisions (TVs), set-top boxes, video cassette recorders (VCRs) and digital
`video recorders (DVRs). Id. at 16:29–36, 18:25–19:40. The term
`hypermedia refers to “any kind of media that may have the effect of a non-
`linear structure of associated elements,” and includes “graphics, video, and
`sound.” Id. at 7:4–13. The ’840 patent characterizes video and sound as
`examples of “continuous media,” or a “representation of ‘content’ elements
`that have an intrinsic duration, that continue (or extend) and may change
`over time.” Id. at 19:65–20:2.
`The multiple input/output device sets described in the ’840 patent may
`be coordinated using “a device set management process that performs basic
`setup and update functions . . . to pre-identify and dynamically discover
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`device sets.” Ex. 1031, 37:28–35. This management process can “be based
`on and compatible with related lower-level processes and standards defined
`for linking such existing devices and systems . . . based on UPnP, HAVi,
`OSGi, Rendezvous and/or the like.” Id. at 37:38–42. The process enables
`basic communications among the devices in the device set, and “provide[s]
`discovery, presence, registration, and naming services to recognize and
`identify devices as they become available to participate in a network, and to
`characterize their capabilities.” Id. at 37:42–47.
`Claims 1 and 59–61 of the’840 patent are independent. Claim 1,
`reproduced below, is illustrative. Each of the other challenged claims
`depends from claim 1or claim 61.
`1. A method for use in a second computerized
`device set which
`is configured for wireless
`communication using a wireless communications
`protocol that enables wireless communication with
`a first computerized device set, wherein the first and
`second computerized device sets include respective
`first and second continuous media players, the
`method comprising:
`
`receiving discovery information that is obtained at
`the second computerized device set in accordance
`with a device management discovery protocol that
`is implemented at a communication layer above an
`internet protocol layer, and wherein the discovery
`information allows a determination to be made at
`the second computerized device set that the first
`computerized device set is capable of receiving and
`playing continuous media content;
`
`enabling navigation of a listing of on-demand
`continuous media content items, the on-demand
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`continuous media content items being available to
`be accessed and presented on demand;
`
`making available to a user a first user interface that
`allows the user to select from the listing a particular
`on-demand continuous media content item to be
`presented to the user, wherein the particular on-
`demand continuous media content item includes a
`set of encoded video data;
`
`making available to the user a second user interface
`that allows the user to select to have the particular
`on-demand continuous media content
`item
`presented on either one of the first computerized
`device set and the second computerized device set;
`
`wherein, in the event the user selects, via the second
`user interface, to have the particular on-demand
`continuous media content item presented on the
`second computerized device set, causing the second
`continuous media player to decode the particular
`on-demand continuous media content item for
`presentation on the second computerized device set;
`
`wherein, in the event the user selects, via the second
`user interface, to have the particular on-demand
`continuous media content item presented on the first
`computerized device set, causing to be wirelessly
`transmitted, in accordance with a wireless local area
`network protocol, at least a resource indicator,
`wherein the resource indicator comprises at least
`one of a URL, URI, and URN, from the second
`computerized device set to the first computerized
`device set, wherein the resource indicator facilitates
`obtaining the particular on-demand continuous
`media content item for presentation to the user on
`the first computerized device set; and
`
`the second computerized device set
`wherein
`includes a portable computerized device set.
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`Ex. 1031, 163:52–67, 164:51–67, 165:1–18.
`B. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable interpretation 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, 2142–46 (2016). Consistent with the rule of broadest
`reasonable interpretation, claim terms are generally given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. See In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms which are in
`controversy need to be construed and only to the extent necessary to resolve
`the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999).
`Petitioner requests construction of a single term that appears in all of
`the independent claims: “the resource indicator comprises at least one of a
`URL, URI, and URN.” Pet. 8. We explicitly construe this term below. We
`also explicitly construe the term “a unified media selection and presentation
`user interface” recited in claim 47. All other terms of the ’840 patent do not
`need to be explicitly construed, and are deemed to have their plain and
`ordinary meaning.
`1. the resource indicator comprises at least one of a URL, URI,
`and URN
`Petitioner argues this term, appearing in claim 1, should be construed
`to mean “the resource indicator includes at least one URL, URI, or URN.”
`Pet. 8. Petitioner argues this construction is supported by claims 56–58,
`which depend from claim 1, and respectively require the resource indicator
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`to be a URL (claim 56), a URI (claim 57), or a URN (claim 58). Id.
`Petitioner argues that because claims 56–58 cannot be broader than claim 1,
`the resource indicator required by claim 1 must be at least one of a URL,
`URI, or URN, and not at least one of each of them. Id. at 9. Petitioner
`further argues that URLs (Uniform Resource Locators) and URNs (Uniform
`Resource Names) are known alternatives for identifying resources, and are
`particular examples of URIs (Uniform Resource Identifiers). Id. (citing Ex.
`1038, 484).
`After considering the Specification and claims, we agree with
`Petitioner that the plain and ordinary meaning of the term “the resource
`indicator comprises at least one of a URL, URI, and URN” is that “the
`resource indicator includes at least one URL, URI, or URN.” The ’840
`patent indicates that URLs, URIs, and URNs are typical mechanisms for
`addressing Internet resources. Ex. 1031, 7:34–37. Claims 56–58,
`respectively, specifically require the resource indicator to be either a URL,
`URI, or URN. Id. at 169:1–6. Thus, a resource indicator comprising at least
`one of a URL, URI, and URN, as recited in claims 1 and 59–61 refers to a
`resource indicator that is at least one member of the group consisting of a
`URL, URI, and URN.
`2. unified media selection and presentation user interface
`The term “unified media selection and presentation user interface”
`appears in claim 47, which depends from claim 1, in the phrase:
`the first user interface and the second user interface
`together comprise a unified media selection and
`presentation user interface, wherein the unified
`media selection and presentation user interface
`presents user input controls for selection of the
`particular on-demand continuous media content
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`item and for selection of either one of the first
`computerized device
`set
`and
`the
`second
`computerized device set for presentation of the
`particular on-demand continuous media content
`item.
`
`Ex. 1031, 167:64–168:5 (emphasis added). Other than in claim 47, the term
`“unified media selection and presentation user interface” does not appear in
`the Specification. We construe the term to have its ordinary and customary
`meaning, as would have been understood by one of ordinary skill in the art.
`The term “unify” means “to make into a unit or a coherent whole: UNITE.”
`Ex. 3001, 1290 (Webster’s Ninth New Collegiate Dictionary (Merriam-
`Webster, 1989)). The term “unite” means “to become one or as if one,” and
`“to act in concert.” Id. at 1291 (emphasis added). Thus, for purposes of this
`Decision, we find the plain and ordinary meaning of the term “unified media
`selection and presentation user interface” to mean one or more user
`interfaces that, together, present controls for selecting continuous media
`content and a continuous media content presentation device.
`C. Alleged Obviousness of Claims 1–5, 16, 18–20, 24, 32, 34, 35, 37,
`38, 44, 47, 51–53, 56, and 59–62 over Elabbady, Palm, and Zintel
`Petitioner argues claims 1–5, 16, 18–20, 24, 32, 34, 35, 37, 38, 44, 47,
`51–53, 56, and 59–62 of the ’840 patent would have been obvious under 35
`U.S.C. § 103(a) in view of the combination of Elabbady, Palm, and Zintel.
`Pet. 24–60. Upon review of the Petition, and for the reasons discussed
`below, we are persuaded that Petitioner has demonstrated a reasonable
`likelihood of establishing the unpatentability of claims 1–5, 16, 18–20, 24,
`32, 34, 35, 37, 38, 44, 47, 51–53, 56, and 59–62 over the combination of
`Elabbady, Palm, and Zintel.
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`1. Overview of Elabbady (Ex. 1004)
`Elabbady discloses “methods and systems for sharing media content
`between various devices,” and “incorporates by reference the entire
`disclosure of” U.S. Provisional Application No. 60/278,804. Ex. 1004, 1:7–
`17. Figure 2A of Elabbady is reproduced below.
`
`
`Figure 2A of Elabbady is a block diagram of a media content sharing
`environment.
`
`Device 202 provides a media cataloging service 203 to devices 206a-d
`and 300 Devices 202, 206a-d, and 300 can be any of a “variety of different
`devices that can be used to provide features/capabilities associated with
`sharing media content.” Id. at 5:66–7:2. These can include PCs, laptops,
`desktops, notebooks, tablets, PDAs, TVs, STBs, digital versatile disc (DVD)
`players, and the like. Id. at 3:23–46. Media content refers to “any form of
`information that may be shared, processed, and/or played or otherwise
`reproduced,” and includes audio, video, and multimedia data. Id. at 6:66–
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`7:5. Any of devices 202, 206a-d, and 300 can play media content, and can
`be coupled to media server 210 having database 212 of shareable media
`content. Id. at 5:32–45, 8:57–62, Fig. 2A. Media server 210 can provide an
`Internet-based service, such as a radio program service, a television service,
`or the like, to devices 202, 206a-d, and 300. Id. at 5:34–39.
`Local network 204, which connects devices 202, 206a-d, and 300, can
`be established using “a Universal Plug-and-Play (UPnP) protocol that
`provides a peer-to-peer network capability that can support various devices
`through wired and/or wireless connections.” Ex. 1004, 5:54–58. UPnP
`networked devices provide controllable services that are controlled via
`control points. Ex. 1005, 1–4. 1 For example, an UPnP device can provide a
`media cataloging service that gathers information about media content
`located on other UPnP networked devices, and creates and publishes a
`catalog of information about the media content. Ex. 1004, 6:7–23; Ex. 1005,
`1–2, 27, 29, 32. The published catalog includes metadata about the media
`content, including URLs identifying the location of the media content on the
`network. Ex.1004, 6:30-36, 10:18-23; Ex.1005, 19–20, 27. Control points
`(CPs) on UPnP networked devices discover the media catalog and provide
`user interfaces for browsing and selecting media content for playback. Ex.
`1004, 12:18–25, Figs. 2A and 3; Ex. 1005, 1–4, 15–17. Control points can
`reside on various networked devices such as digital audio/video (DAV)
`players and PDA’s that are used to remotely control other networked
`devices. Ex. 1005, 16–17, 45–46. A control point on a remote control
`
`1 Exhibit 1005 is U.S. Provisional Application No. 60/278,804, and is
`incorporated by reference in its entirety into Elabbady. See Ex. 1004, 1:6–
`7–11.
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`device (e.g., a PDA) can select media content and a media device, and
`instruct the media device to play the media content by sending a PLAY
`command to the selected media device with a URL of the selected media
`content. Ex. 1005, 15–17.
`2. Overview of Palm (Ex. 1006)
`Palm discloses a multimedia discovery system consisting of media
`devices 105 networked to media servers 115 on local or wide area networks.
`Ex. 1006 ¶¶ 7, 43, Fig. 1. Figure 1 of Palm is reproduced below.
`
`Figure 1 of Palm illustrates a home-network based multimedia discovery
`system. Id. ¶ 14. Media devices 105 can be TVs, STBs, PCs, laptops, PDAs
`or similar devices. Id. ¶¶ 64–65, 71. Media devices 105 can automatically
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`discover local or remote media servers 115 using UPnP protocol, and use a
`graphical user interface (GUI) to browse, select, and receive media content
`stored on media servers 115. Id. ¶¶ 7, 43–42, 55–61, 73–79. The media
`content can be audio or video, including all or parts of a song, album, and
`the like. Id. at ¶¶ 21, 53. When a user of device 105 selects media content,
`a URL identifying the media content is sent to media device 105 to allow
`media device 105 to retrieve and play the content from media server 115.
`Id. ¶¶ 80–83, 88.
`3. Overview of Zintel (Ex. 1003)
`Zintel discloses UPnP device 102, which “makes itself known and
`available for communication with other entities on a network” through a set
`of discovery, description, control, eventing, and presentation processes. Ex.
`1003, 2:62–67, Fig. 1. Device 102 broadcasts an initial discovery message
`that allows other UPnP devices 103 on the network learn about the
`capabilities of device 102 by requesting its device description from a URL
`contained in the discovery message. Id. at 2:67–3:3. The device description
`includes a list of URLs for other devices embedded in device 102, as well as
`for services provided by device 102 and its embedded devices, such as URLs
`for control, eventing, and presentation services. Id. at 3:8–10.
`UPnP networks enable third party device and resource control so that
`“any device can transfer . . . A/V [audio/video] data streams from any device
`on the network, to any device on the network, under the control of any
`device on the network.” Ex. 1003, 6:48–52 (emphases added). Control of
`UPnP devices and resources is enabled by Control Points (CPs), which are
`“typically implemented on devices that have a user interface.” Id. at 6:64–
`65. Control Points can “aggregate the control of multiple Controlled
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`Devices (the universal remote),” and can “initiat[e] the transfer of data to or
`from a Controlled Device.” Id. at 7:4–8. Control Points can be located on
`various types of devices, such as PCs, TVs, STBs, handheld computers,
`smart phones, and the like. Id. at 7:8–11. Controlled Devices can include
`VCRs, DVD players, audio/video playback devices, PCs, handheld
`computers, smart phones, and the like. Id. at 7:25–29. UPnP devices can be
`both Controlled Devices offering controllable services, and Control Points
`for controlling devices and services. Id. at 7:11–14.
`4. Reasons to combine Elabbady, Palm, and Zintel
`Petitioner argues a person of ordinary skill in the art would have
`combined the teachings of Elabbady, Palm, and Zintel because “the
`references provide similar and complementary teachings to achieve the same
`goals.” Pet. 21. Petitioner argues Elabbady teaches using a PDA as a
`control point for browsing and selecting media content, and playing the
`selected content on a selected device, and Palm teaches the PDA can itself
`be the device that downloads and plays selected media content. Id. at 22.
`Therefore, Petitioner argues, the combination teaches using a PDA to
`browse and select media content, and to choose to play the media content on
`the PDA itself or on another device. Id. Petitioner argues a person of
`ordinary skill in the art would have been motivated to combine the teachings
`of Elabbady and Palm because the combination would have allowed
`Elabbady’s selected media content to be played back on the PDA when other
`media players were not available. Id.
` Petitioner further argues a person of ordinary skill in the art would
`have been motivated to combine the teachings of Elabbady and Palm, both
`of which describe UPnP connected devices, in the manner proposed by
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`Petitioner, because “Zintel even points out that UPnP can be used in the
`kinds of systems described in Elabbady and Palm, i.e., ‘to initiate and
`control the transfer of . . . A/V data streams from any device on the network,
`to any device on the network, under the control of any device on the
`network.’” Pet. 22 (quoting Ex. 1003, 5:26–29).
`We are persuaded, on this record, that Petitioner has provided
`reasoning with rational underpinnings to support combining the teachings of
`Elabbady, Palm, and Zintel in the manner proposed by Petitioner. Petitioner
`has identified familiar elements known in the art from Elabbady and Palm,
`which are implemented using UPnP protocol. Zintel explicitly teaches using
`UPnP protocol to implement systems like those described in Elabbady and
`Palm in order “to initate and control the transfer of . . . A/V data streams
`from any device on the network, to any device on the network, under the
`control of any device on the network.” Ex. 1003, 5:26–29. Thus, Zintel
`explicitly provides reasoning for combining the features of Elabbady and
`Palm that allow media content to be transferred from any device on the
`network, to any device, under the control of any device.
`5. Comparison of Claims 1–5, 16, 18–20, 24, 32, 34, 35, 37, 38, 44,
`47, 51–53, 56, and 59–62 to the Combination of Elabbady, Palm,
`and Zintel
`Petitioner has demonstrated how each of the limitations required by
`claims 1–5, 16, 18–20, 24, 32, 34, 35, 37, 38, 44, 47, 51–53, 56, and 59–62
`is adequately accounted for by the combined teachings of Elabbady, Palm,
`and Zintel. See Pet. 24–60.
`For example, claim 1 recites a method for use in a second
`computerized device set that is configured for wireless communication with
`a first computerized device set, and requires receiving discovery information
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`via a device management discovery protocol that is implemented at a
`communication layer above an internet protocol layer, and that allows the
`second computerized device set to determine that the first computerized
`device set is capable of receiving and playing continuous media content. Ex.
`1031, 163:59–67. The ’840 patent discloses the discovery management
`protocol can be, for example, UPnP protocol. Id. at 37:38–42.
`Elabbady and Palm both disclose using UPnP protocol for device
`discovery. Pet. 26; see also Ex. 1004 5:54–65; Ex. 1006 ¶¶ 76–77. Zintel
`discloses UPnP device discovery involves requesting and receiving device
`description documents “to learn the capabilities of a Controlled Device,”
`such as the services provided by the Controlled Device, and how to interact
`with and control those services. Pet. 26–27 (quoting Ex. 1003 8:57–67)
`(emphasis omitted); see also Ex. 1003 27:55–67. Zintel discloses UPnP
`device discovery is implemented at a communication layer above the IP
`(Internet Protocol) layer because device description documents are requested
`and provided using HTTP (HyperText Transfer Protocol), which is a
`communication layer implemented above the IP layer. Pet. 28–29; see also
`Ex. 1003, 20:54–58, 25:47–58, Fig. 27. Elabbady discloses how a PDA
`(second device) receives discovery information from a digital A/V player
`(first device) that “allow[s] the PDA to determine [the digital A/V] player is
`capable of receiving and playing continuous media content.” Pet. 29–30.
`For example, the received discovery information indicates the digital A/V
`player provides AVTransport service, and is therefore capable of receiving
`and playing continuous media content. Pet. 29; Ex. 1005, 7. We are
`persuaded that Petitioner has sufficiently accounted for this claim limitation.
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`Claim 1 requires enabling navigation of a listing of continuous media
`content items that are available to be accessed and presented on demand.
`Ex. 1031, 164:51–54. Elabbady and Palm both disclose enabling the
`navigation of a catalog of continuous media content that the user can select
`to be streamed on demand. Pet. 30–31; see also Ex. 1004, 12:18–21; Ex.
`1005, 1–2; Ex. 1006 ¶ 43. We are persuaded that Petitioner has sufficiently
`accounted for this claim limitation.
`Claim 1 requires making a first user interface available to the user at
`the second computerized device set to allow the user to select media content
`that can be presented on demand, including encoded video data. Ex. 1031,
`164:55–59. Elabbady discloses a PDA Control Point having a user interface
`that allows the user to browse and select media content from a media catalog
`service. Pet.31; Ex. 1004, 11:15–17, 12:18–21; Ex. 1005, 2, 15–16. The
`media content can be encoded video selectable on demand. Pet. 32; Ex.
`1004, 6:66–7:10; Ex. 1005, 7, 27, 61. We are persuaded that Petitioner has
`sufficiently accounted for this claim limitation.
`Claim 1 requires making a second user interface available to the user
`at the second computerized device set to allow the user to have the selected
`media content presented on either the first or second computerized device
`sets. Ex. 1031, 164:60–64. Elabbady discloses the PDA Control Point
`allows a user to select a media playback device on which to play selected
`media content, where the media playback device is selected from a list of
`media playback devices on the network. Pet. 32–33; Ex. 1005, 16. Palm
`discloses the PDA itself can be a media playback device on the network.
`Pet. 33–34; Ex. 1006 ¶¶ 65, 71. Therefore, Petitioner argues, the combined
`teachings of Elabbady and Palm suggest “a PDA could be used to browse
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`the catalog and then select a playback device, one of which would be the
`PDA itself.” Pet. 33. Petitioner argues combining the teachings of Elabbady
`and Palm in this way would have been “consistent with Zintel’s teachings
`that ‘UPnP makes it possible to initiate and control the transfer of . . . A/V
`data streams from any device on the network, to any device on the network,
`under the control of any device on the network.’” Pet. 34 (quoting Ex. 1003,
`5:26–31) (emphases added). We are persuaded that Petitioner has
`sufficiently accounted for this claim limitation.
`Claim 1 requires the second computerized device set to decode the
`selected media content for presentation when the user chooses to present the
`selected media content on the second computerized device set. Ex. 1031,
`164:65–165:4. Elabbady discloses how a selected device, which could be
`the PDA itself per the teachings of Palm, decodes received content for
`presentation. Pet. 34; see also Ex. 1004 10:32–42; Ex. 1005, 2, 4. We are
`persuaded that Petitioner has sufficiently accounted for this claim limitation.
`Claim 1 requires the second computerized device set to wirelessly
`transmit a URL, URI, or URN to the first computerized device set to help
`the first computerized device set obtain the selected media content when the
`user chooses to present the selected media content on the first computerized
`device set. Ex. 1031, 165:5–16. Elabbady discloses how the PDA Control
`Point (second device) wirelessly transmits a URL for selected media content
`to a selected digital A/V player (first device). Pet. 35–36; see also Ex. 1005,
`15–17, 42. Petitioner argues the URL facilitates obtaining the media content
`because “the URL allows the digital A/V player to download the content.”
`Pet. 35; Ex. 1005, 16. We are persuaded that Petitioner has sufficiently
`accounted for this claim limitation.
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`Finally, claim 1 requires the second computerized device set to
`include a portable computerized device set. Ex. 1031, 165:17–18. Elabbady
`discloses how the PDA Control Point (i.e., a portable computerized device)
`allows a user to browse, select, and play media content. Pet. 36–37; Ex.
`1003, 7:7–13; Ex. 1005, 16; Ex. 1006 ¶¶ 65, 71. We are persuaded that
`Petitioner has sufficiently accounted for this claim limitation.
`Petitioner has demonstrated how the combined teachings of Elabbady,
`Palm, and Zintel adequately accounts for each of the limitations required by
`claim 1 for the reasons discussed above. Petitioner has similarly shown how
`the combined teachings of Elabbady, Palm, and Zintel adequately accounts
`for each of the limitations required by claims 2–5, 16, 18–20, 24, 32, 34, 35,
`37, 38, 44, 47, 51–53, 56, and 59–62. See Pet. 37–60. For example, claim
`47 depends from claim 1, and further requires the first user interface and the
`second user interface together comprise a unified media selection and
`presentation interface. Ex. 1031, 167:64–168:5. Petitioner argues the
`combination of Elabbady and Palm teaches a first user interface allow
`content selection, and a second user interface allowing selection of first or
`second playback device sets. Pet. 51. Petitioner, relying on its expert,
`argues a person of ordinary skill in the art would have understood from these
`disclosures that the two interfaces could have been integrated to provide a
`unified media selection and presentation interface on the PDA. Id. (citing
`Ex. 1009 ¶¶ 201–202; Ex. 1028 ¶ 307).
`Accordingly, on this record, we are persuaded that Petitioner has
`shown a reasonable likelihood that it would prevail in establishing the
`unpatentability of claim 1–5, 16, 18–20, 24, 32, 34, 35, 37, 38, 44, 47, 51–
`53, 56, and 59–62 over Elabaddy, Palm, and Zintel.
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`D. Alleged Obviousness of Claims 42, 54, and 55 over Elabbady,
`Palm, Zintel, and Katz
`Petitioner alleges claims 42, 54, and 55 of the ’840 patent would have
`been obvious under 35 U.S.C. § 103(a) over Elabbady, Palm, Zintel, and
`Katz. Pet. 1. We have reviewed the Petition, and are persuaded that
`Petitioner has demonstrated a reasonable likelihood of establishing the
`unpatentability of claims 42, 54, and 55 over the combination of Elabbady,
`Palm, Zintel, and Katz.
`1. Overview of Katz
`Katz discloses a multiple device media-on-demand system that allows
`client devices to receive media from a media server over a network
`regardless of the type of client device. Ex, 1033, 5:19–25. Client devices
`can include, e.g., PCs, TVs, laptops, desktops, handheld devices, and mobile
`phones. Id. at 5:55–63. The network can be cable or fiber-based, and can
`use various networking protocols such as Ethernet, TCP/IP, and X.25. Id. at
`5:64–6:14. The media server can deliver media to a particular “client
`device in a format consonant with the properties of the client device which
`can include device type [and] acceptable media format.” Id. at 5:25–28.
`Deliverable media formats can include, e.g., MPEG1, MPEG2, and
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