`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`NETFLIX, INC.
`Petitioner,
`v.
`
`AFFINITY LABS OF TEXAS, LLC
`Patent Owner
`______________
`
`Patent No. 9,444,868
`Issued: September 13, 2016
`Filed: January 23, 2015
`Inventors: Russell W. White/Kevin R. Imes
`Title: System to Communicate Media
`______________
`
`Inter Partes Review No. IPR2017-00122
`___________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`i
`
`

`

`Table of Contents
`
`Page
`
`Table of Contents ...................................................................................................... ii
`Table of Authorities ................................................................................................. iii
`Exhibit List ................................................................................................................. v
`I.
`Introduction ...................................................................................................... 1
`II. The ’868 Patent ................................................................................................. 2
`III. Overview of the Prior Art ................................................................................. 6
`IV. Legal Standard .................................................................................................. 8
`V. Netflix and its expert take inconsistent and speculative positions
`regarding the meaning and scope of the challenged claims. ........................... 8
`A. Netflix bears the burden to show obviousness of the challenged
`claims. ........................................................................................................10
`B. Netflix cannot establish obviousness where its expert’s analysis of
`the meaning and scope of the challenged claims is based on
`speculation. ................................................................................................12
`1.
`Netflix’s expert testified that several terms of the challenged
`claims were “confusing” and as such, he would have to “guess”
`to find their scope and meaning. .........................................................12
`Netflix was required to identify corresponding structure for the
`terms it alleges are construed under § 112 ¶ 6. ...................................13
`VI. Netflix failed to properly analyze the differences between the
`independent claims and the prior art, instead incorporating significant
`analysis by reference......................................................................................16
`A. Netflix has not met its burden to show all limitations are obvious for
`Grounds 1 and 2. ........................................................................................20
`VII. Netflix’s petition is redundant of the exact same art and argument
`already before the Examiner. .........................................................................23
`VIII. Conclusion ......................................................................................................27
`
`2.
`
`ii
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`

`

`Table of Authorities
`
`Page(s)
`
`Cases
`A.C. Dispensing Equipment Inc. v. Prince Castle LLC,
`Case IPR2014-00511, slip op. (PTAB Sept. 10, 2014) ...................................... 22
`BlackBerry Corp. v. MobileMedia Ideas, LLC,
`Case IPR2013-00036, slip op. (PTAB Mar. 7, 2014)......................................... 11
`CFMT, Inc. v. Yieldup Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .................................................................... 11, 16
`Hopkins Mfg’g Corp. v. Cequent Performance Prods., Inc.,
`Case IPR2015-00616, slip op. (PTAB Aug. 17, 2015) ...................................... 22
`IBM Corp. v. Intellectual Ventures II LLC,
`Case IPR2014-00673, slip op. (PTAB Dec. 23, 2014) ....................................... 22
`In re Donaldson Co.,
`16 F.3d 1189 (Fed. Cir. 1994) ............................................................................ 14
`In re Donaldson Co.,
`16 F.3d at1193 .................................................................................................... 15
`In re NTP, Inc.,
`654 F. 3d 1279 (Fed. Cir. 2011) ......................................................................... 11
`KSR Int’l Co. v. Teleflex Inc.,
`127 S. Ct. 1727 (2007) .................................................................................passim
`Micron Tech., Inc. v. Innovative Memory Sys., Inc.,
`Case IPR2016-00324, slip op. (PTAB June 13, 2016) ................................. 11, 13
`Nora Lighting, Inc. v. Juno Mfg., LLC,
`Case IPR2015-00601, slip op. (PTAB Aug. 12, 2015) ...................................... 23
`Oracle Corp. v. Crossroads Sys., Inc.,
`Case IPR2014-01177, slip op. (PTAB Jan. 28, 2015) ........................................ 22
`Prism Pharma Co., Ltd. v. Choongwae Pharma Corp.,
`Case IPR2014-00315, slip op. (PTAB July 8, 2014).......................................... 24
`
`iii
`
`

`

`Samsung Elecs. Co. v. Affinity Labs of Texas, LLC,
`Case IPR2014-00408 (PTAB Jan. 31, 2014) .......................................... 24, 25, 26
`Star Sci., Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) .......................................................................... 11
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015) ...................................................................... 9, 14
`Statutes & Other Authorities
`35 U.S.C. § 103 .......................................................................................................... 1
`35 U.S.C. § 112 ¶ 6 ............................................................................................ 13, 15
`35 U.S.C. § 316(e) ..................................................................................................... 8
`35 U.S.C. § 325(d) ....................................................................................... 23, 24, 26
`37 C.F.R. § 42.104(b)(3) .................................................................................... 14, 15
`37 C.F.R. § 42.107 ..................................................................................................... 1
`37 C.F.R. § 42.108(c) ................................................................................................. 8
`
`
`
`
`
`iv
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`

`

`Exhibit List
`
`
`Exhibit No.
`Ex. 2001
`
`Description
`Amended Declaration of Nader Mir in Support of Netflix’s
`Opening Claim Construction Brief
`
`Ex. 2002
`Ex. 2003
`
`Ex. 2004
`
`Netflix’s Opening Claim Construction Brief
`
`Excerpts of Transcript for Markman Hearing held in
`Netflix, Inc. v. Affinity Labs of Texas, LLC
`
`Excerpts from the Prosecution History of U.S. Patent No.
`9,444,868
`
`
`
`v
`
`

`

`Pursuant to 37 C.F.R. § 42.107, Patent Owner Affinity Labs of Texas, LLC
`
`(“Affinity Labs”) submits this Preliminary Response to the above-captioned
`
`Petition for Inter Partes Review of U.S. Patent No. 9,444,868 (the “’868 patent”)
`
`filed by Netflix, Inc. (“Petitioner”).
`
`I.
`
`Introduction
`Netflix’s petition suffers from at least three key defects and fails to
`
`demonstrate a reasonable likelihood of success on any asserted ground of invalidity
`
`of the challenged claims. First, Netflix’s IPR is based on admittedly speculative
`
`expert testimony regarding the scope and meaning of the challenged claims. Both
`
`grounds for invalidity in the petition are based on obviousness under 35 U.S.C.
`
`§ 103. As such, Netflix was required under KSR to identify the scope and meaning
`
`of the claims and compare them to the prior art. Netflix failed to meet its burden to
`
`establish obviousness because under Netflix’s own expert testimony, the scope and
`
`meaning of the independent claims can only be determined with speculation and
`
`the differences between the challenged claims and the prior art cannot be
`
`ascertained. Thus, the factual inquiries necessary to establish obviousness cannot
`
`be conducted, and Netflix has not met its burden to show obviousness.
`
`Second, Netflix failed to properly analyze the differences between the claims
`
`and the prior art, instead relying on an overly broad reading of the claims and
`
`improperly incorporating by reference its expert report and previous IPR
`
`1
`
`

`

`proceedings on a different patent to identify the claim elements in the prior art. For
`
`example, Netflix identifies a list of internet radio stations to meet several
`
`limitations of the independent claims. But a list of multiple different media items
`
`does not meet the claim elements, which require a list for different segments of the
`
`available media. Instead of analyzing the claims to the prior art, Netflix merely
`
`cites to previous IPR proceedings on a different patent to analyze these elements.
`
`Netflix does not address these deficiencies in their petition and instead relies on
`
`overly-broad interpretations of the claims and improper incorporation by reference
`
`of the prior IPR proceeding without identifying why the missing elements would
`
`be obvious. Thus, Netflix failed to meet its burden to show that all elements of the
`
`claims are obvious over the prior art.
`
`Third, Netflix’s petition is redundant because it primarily relies on art and
`
`arguments presented in a previous IPR proceeding involving a different patent.
`
`Before the challenged claims were issued, these exact same arguments and prior
`
`art were before the Examiner and the Examiner determined the challenged claims
`
`are valid. Instituting an IPR proceeding based on the same art and arguments
`
`already before the Examiner is a gross waste of administrative and party resources,
`
`and Netflix’s petition should be denied as redundant.
`
`II. The ’868 Patent
`The ’868 patent issued on September 13, 2016 and is entitled “System to
`
`2
`
`

`

`communicate media.” The ’868 patent claims priority to U.S. Patent Application
`
`No. 09/537,812 (the “’812 application”) with an effective filing date of March 28,
`
`2000. The ’812 application broadly addressed the problem of accessing, managing,
`
`and communicating digital audio and video content. In doing so, the ’812
`
`application disclosed a number of inventions relating to the creation of a new
`
`media eco-system which included a portable electronic device, such as an MP3
`
`player or cellular phone, at its heart.
`
`The ’868 patent contains three independent claims, all directed at systems for
`
`delivering streaming media. Generally, the claims cover a system to deliver
`
`streaming media where the media item is cut into segments that are formatted at
`
`multiple bitrates for output at a remote display device. A list is generated and sent
`
`to the remote device to begin streaming, the list sent in response to an HTTP
`
`communication from the remote device. The list includes URLs or network
`
`addresses that tell the remote device where and in what order the user’s device
`
`should request the segments of the media content. The remote device can then
`
`choose to download sequential segments of different sizes based upon the device’s
`
`current network connection or the device’s CPU performance. The three
`
`independent claims are reproduced below.
`
`1. A media system, comprising:
`
`a plurality of independent segment files, wherein a given segment file
`
`3
`
`

`

`of the plurality of independent segment files has a given format and a
`different segment of the plurality of independent segment files has a
`different format, further wherein the given format facilitates an
`outputting of information in the given segment file at a given rate
`that is different than a rate associated with the different format;
`
`a playlist that comprises a list, and the list includes a first URL for the
`given segment file and a different URL for the different segment file;
`
`a network-based communication system operable: to distribute media
`content to a remotely located requesting device; to receive an HTTP
`communication from the remotely located requesting device that
`indicates a desire to access the available media; to send information
`representing the playlist to the remotely located requesting device; to
`send information representing the given segment file to the remotely
`located requesting device; and, to send information representing the
`different segment file to the remotely located requesting device; and
`
`a plurality of remote devices configured to request media, wherein
`each of the plurality of remote devices comprises: (1) an internal
`memory system; (2) a collection of instructions stored in the internal
`memory system that is operable when executed to utilize information
`representing the playlist, to request a streaming delivery of the
`information representing the given segment file, and to request a
`streaming delivery of the information representing the different
`segment file; and (3) a buffer configured to output the information
`representing the given segment file at the given rate and to output
`information representing the different segment file at the rate, which
`is different than the given rate.
`
`4
`
`

`

`7. A media system, comprising:
`
`a plurality of independent segment files that represent an available
`media, wherein a given segment file of the plurality of independent
`segment files has a given compression format and a different
`segment file of the plurality of independent segment files has a
`different compression format, further wherein the given compression
`format facilitates an outputting of information in the given segment
`file at a first rate that is different than a second rate associated with
`the different compression format;
`
`a list including a given address for the given segment file and a
`different address for the different segment file;
`
`a content delivering system comprising an electronic device operable
`as a communication device and a plurality of memory devices
`operable to store information, the content delivering system
`configured to receive an HTTP communication from a remote
`requesting device that indicates a desire to access the available
`media, to send the list in response to receiving the HTTP
`communication, to receive an HTTP communication that indicates a
`request for the given segment file, to stream data representing the
`given segment file, to receive an HTTP communication that indicates
`a request for the different segment file, and to stream data
`representing the different segment file; and
`
`the electronic device comprising a housing component at least
`partially defining an enclosure, a transceiver communicatively
`coupled to a communications network, and a processor located
`within the enclosure.
`
`5
`
`

`

`14. A media system, comprising:
`
`an electronic device comprising a display, a buffering component, a
`transceiver, and a memory system, wherein the electronic device is
`configured to utilize HTTP in connection with receiving a streaming
`delivery of an available media;
`a collection of instructions stored in the memory system and operable
`when executed to allow the electronic device: (1) to utilize HTTP to
`request a file comprising a listing of URLs for a plurality of media
`segment files associated with the available media; (2) to utilize the
`listing of URLs to request a given one of the plurality of media
`segment files; (3) to receive information representing the given one
`of the plurality of media segment files; (4) to utilize the listing of
`URLs to request another one of the plurality of media segment files,
`wherein the given one has a given compression format and the other
`one has a different compression format; and
`the buffering component of the electronic device configured: to output
`information in the given one of the plurality of media segment files
`at a given rate, and to output information in the another one of the
`plurality of media segment files at a rate that is different than the
`given rate.
`
`III. Overview of the Prior Art
`Netflix’s petition relies on two grounds of invalidity based on two references
`
`for most of the claims, U.S. Patent No. 6,678,215 (“Treyz”, Ex. 1015) and U.S.
`
`Patent No. 6,711,622 (“Fuller”, Ex. 1016), and one additional reference for two
`
`dependent claims, U.S. Patent No. 6,985,932 (“Glaser”, Ex. 1017).
`
`6
`
`

`

`U.S. Patent No. 6,678,215 (“Treyz”), entitled “Digital Audio Devices,” was
`
`filed on March 20, 2000 and issued on January 13, 2004. Treyz relates to an
`
`improved audio device, namely “alarm clocks, clock radios, or the like.” Ex. 1015
`
`at 1:28-30. The alarm clock audio devices of Treyz can handle audio signals other
`
`than traditional radio broadcasts, such as internet music content, MP3s, email
`
`content, or other audio content formats. Id. at 1:32-38.
`
`U.S. Patent 6,711,622 (“Fuller”), entitled “Video and Audio Streaming for
`
`Multiple Users,” was filed on December 31, 1997 and issued on March 23, 2004.
`
`Fuller describes a system and method of providing streaming audio and video data
`
`to multiple users. Ex. 1016 at 2:14-16. To provide the requested content, Fuller
`
`only discloses the implementation of a Java applet executing on a personal
`
`computer. Id. at 8:55-65. Fuller defines Java as “a programming language whose
`
`programs (called applets) can travel over the Internet for use by clients . . . Many
`
`browsers include Java capabilities so Java applets require no installation.” Id. at
`
`4:29-36. Fuller discloses that the server-supplied Java applet can be used to vary
`
`the rate of data transmission dependent upon the availability of the client’s
`
`bandwidth. Id. at 10:11-17. The client receives the compressed audio data,
`
`decompresses the audio data as commanded by the Java audio applet, and plays the
`
`audio information through its audio system. Id. at 9:34-37. The web server will
`
`continue serving the data as long as the client is connected to the web server
`
`7
`
`

`

`through the Java audio applet. Id. at 9:43-45.
`
`U.S. Patent No. 6,985,932 (“Glaser”) is entitled “Multimedia communications
`
`system and method for providing audio on demand to subscribers” and was filed
`
`on January 25, 1999. Glaser covers “a real-time, audio-on demand system which
`
`may be implemented using only the processing capabilities of the CPU within a
`
`conventional personal computer” and seeks to provide an audio data transmission
`
`rate at “about 1 kilobyte per second” by using “an audio compression of
`
`approximately 22 to 1.” Ex. 1017 at 1:63-66, 2:32-40.
`
`IV. Legal Standard
`“In an inter partes review . . . the petitioner shall have the burden of proving a
`
`proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C.
`
`§ 316(e). “Inter partes review shall not be instituted for a ground of unpatentability
`
`unless the Board decides that the petition supporting the ground would demonstrate
`
`a reasonable likelihood that at least one of the claims challenged in the petition is
`
`unpatentable.” 37 C.F.R. § 42.108(c).
`
`V. Netflix and its expert take inconsistent and speculative positions
`regarding the meaning and scope of the challenged claims.
`In the district court proceedings, Netflix’s expert Dr. Nader Mir admitted that
`
`his analysis of the prior art compared with the challenged claims is based on
`
`speculation. For independent claims 1 and 7, for example, Netflix and its expert
`
`contend that “there is no way to tell what is meant” by the claimed “plurality of
`
`8
`
`

`

`independent segment files.” See Amended Declaration of Nader Mir in Support of
`
`Netflix’s Opening Claim Construction Br., Ex. 2001 ¶ 52. Further, for independent
`
`claim 1 and dependent claims 8 and 11, Netflix alleges the “collection of
`
`instruction” and “engine” terms are means-plus-function terms under Williamson v.
`
`Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015), and that the terms fail to
`
`connote definite structure to one of ordinary skill in the art. See Netflix’s Opening
`
`Claim Construction Br., Ex. 2002 at 16-25; Markman Hearing Tr., Ex. 2003 at
`
`121:16-25, 126:7-14 (claim 1) & 127:21-129:4 (claim 11) (“But there is nothing at
`
`all that shows me a structure [for digital engine].”).
`
`Dr. Mir’s sworn testimony and declaration in the district court litigation
`
`contradict his sworn declaration submitted with this petition. For the benefit of
`
`Netflix and this petition, Dr. Mir has no problem determining what is covered by
`
`the challenged claims to compare the claim limitations to the prior art. Compare
`
`Ex. 1007 ¶¶ 91-92, 130, & 163 (analyzing “plurality of independent segment files”
`
`and “plurality of media segment files”), with Ex. 2001 ¶ 52 (alleging “there is no
`
`way to tell what is meant” by the claimed “plurality of independent segment files”)
`
`and Ex. 2003 at 176:21-177:16 (testifying that the term “plurality of independent
`
`segment files” is “totally confusing to me,” that “segment file itself is nonsense to
`
`me,” and that he can only “guess” at the meaning of the term because “it’s really
`
`confusing”). Because Netflix bears the burden to establish obviousness by a
`
`9
`
`

`

`preponderance of the evidence, Dr. Mir’s contradictory testimony cannot suffice to
`
`meet Netflix’s burden. To the extent the Board gives any weight to Dr. Mir’s
`
`analysis, Dr. Mir’s sworn declaration and more-recent testimony to the district
`
`court opining that he could not construe the claims—dated October 7, 2016 and
`
`given on November 9, 2016, respectively—should be considered over his
`
`declaration submitted with this petition because he testified under oath regarding
`
`his district court opinions after he submitted the declaration for this petition on
`
`October 19, 2016. As discussed further below, the Board should deny Netflix’s
`
`petition because Netflix and its expert cannot conduct a proper four-factor
`
`obviousness analysis of the challenged claims without speculation.1
`
`A. Netflix bears the burden to show obviousness of the challenged
`claims.
`As set out by the Supreme Court, the framework for an obviousness inquiry
`
`requires four distinct factors: determining (1) “the scope and content of the prior
`
`art,” (2) the “differences between the prior art and the claims at issue,” (3) “the
`
`level of ordinary skill in the pertinent art,” and (4) whether secondary
`
`considerations of non-obviousness are relevant to the determination. KSR Int’l Co.
`
`v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007) (citing Graham v. John Deere Co. of
`
`
`1 Affinity Labs has disputed Netflix’s claim construction positions in the district
`
`court litigation and reserves all rights to dispute these positions going forward.
`
`10
`
`

`

`Kansas City, 383 U.S. 1, 17 (1966)). “[O]bviousness requires a suggestion of all
`
`limitations in a claim.” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342
`
`(Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)). Further,
`
`obviousness determinations must be made without “any hint of hindsight.” Star
`
`Sci., Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1375 (Fed. Cir. 2011). The
`
`patent-in-suit may not be used “as a guide through the maze of prior art references,
`
`combining the right references in the right way so as to achieve the result of the
`
`claims in suit.” In re NTP, Inc., 654 F. 3d 1279, 1299 (Fed. Cir. 2011).
`
`“If the scope and meaning of the claims cannot be determined without
`
`speculation, the differences between the challenged claims and the prior art cannot
`
`be ascertained.” Micron Tech., Inc. v. Innovative Memory Sys., Inc., Case
`
`IPR2016-00324, slip op. at 8 (PTAB June 13, 2016) (Paper 11); see also
`
`BlackBerry Corp. v. MobileMedia Ideas, LLC , Case IPR2013-00036, slip op. at
`
`19–20 (PTAB Mar. 7, 2014) (Paper 65) (citing In re Steele, 305 F.2d 859, 862–63
`
`(CCPA 1962) and reasoning that “the prior art grounds of unpatentability must fall,
`
`pro forma, because they are based on speculative assumption as to the meaning of
`
`the claims”). “Without ascertaining the proper claim scope, [the Board] cannot
`
`conduct a necessary factual inquiry for determining obviousness—ascertaining
`
`differences between the claimed subject matter and the prior art.” Blackberry, slip
`
`op. at 20 (citing Graham v. John Deere, 383 U.S. at 17–18).
`
`11
`
`

`

`B. Netflix cannot establish obviousness where its expert’s analysis of
`the meaning and scope of the challenged claims is based on
`speculation.
`1. Netflix’s expert testified that several terms of the challenged
`claims were “confusing” and as such, he would have to “guess”
`to find their scope and meaning.
`Netflix’s expert, Dr. Mir, offered a declaration and testified in the district
`
`court litigation opining that several terms of the challenged independent claims
`
`were “confusing,” and thus he could not construe the challenged claims without
`
`speculation. For example, in independent claims 1 and 7, he opined that “there is
`
`no way to tell what is meant by ‘independent segment files.’” Ex. 2001 ¶ 52. Dr.
`
`Mir further testified that the terms “segment files” and “independent segment files”
`
`are “totally confusing to me” and “segment file itself is nonsense to me.” Ex. 2003
`
`at 176:21-177:16. Additionally, he testified that he can only “guess” at the
`
`meaning of the term because “it’s really confusing.” Id. at 177:8-10. Thus, in Dr.
`
`Mir’s opinions, “one of ordinary skill in the art . . . would not understand with
`
`reasonable certainty what is being claimed by the term ‘plurality of independent
`
`segment files’” in independent claims 1 and 7. See Ex. 2001 ¶ 56. Further, Dr.
`
`Mir’s opinion and testimony generally on “segment files” applies equally to
`
`independent claim 14, which claims a “plurality of media segment files.”
`
`Dr. Mir’s sworn testimony and declaration to the district court compel denial
`
`of this petition. As Dr. Mir admitted on the witness stand under oath to the district
`
`12
`
`

`

`court, he cannot construe the terms of the challenged independent claims 1 and 7 to
`
`consider their scope without speculation. Because the terms are “really confusing,”
`
`he can only “guess” at their meaning. Ex. 2003 at 177:8-10. Thus, Netflix cannot
`
`meet its burden to show all four factors of the obviousness inquiry under KSR. As
`
`the Board has routinely found, “[i]f the scope and meaning of the claims cannot be
`
`determined without speculation, the differences between the challenged claims and
`
`the prior art cannot be ascertained.” Micron Tech, slip op. at 8. This is an essential
`
`factual inquiry necessary to establish Netflix’s obviousness case. Netflix cannot
`
`meet its burden to show obviousness where it and its expert must speculate in order
`
`to construe the challenged claims and compare them to the prior art, and the
`
`petition should be denied.
`
`2. Netflix was required to identify corresponding structure for the
`terms it alleges are construed under § 112 ¶ 6.
`Further, Netflix and its expert have alleged that several terms in dependent
`
`claims 8 and 11 are subject to § 112 ¶ 6, yet Netflix did not identify any function or
`
`structure for this petition as required by the Board’s rules. Construing a means-
`
`plus-function limitation under 35 U.S.C. § 112 ¶ 6 involves two steps: (1)
`
`identifying the claimed function and (2) identifying in the specification the
`
`corresponding structure that performs the claimed function.” Blackberry, slip op. at
`
`8 (citing Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205,
`
`120 (Fed. Cir. 2003)). Further, Netflix was required to “identify the specific
`
`13
`
`

`

`portions of the specification that describe the structure, material, or acts
`
`corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). Netflix’s
`
`failure to identify the function and structure for the terms it alleges are means-plus-
`
`function elements shows that Netflix failed to meet its burden to construe the
`
`challenged claims and compare the differences to the prior art. As such, Netflix’s
`
`obviousness case must fail.
`
`Means-plus-function interpretations apply the same standard for both district
`
`court and patent office proceedings. See In re Donaldson Co., 16 F.3d 1189, 1193
`
`(Fed. Cir. 1994) (“[B]ecause no distinction is made in paragraph six between
`
`prosecution in the PTO and enforcement in the courts, or between validity and
`
`infringement, we hold that paragraph six applies regardless of the context in which
`
`the interpretation of means-plus-function language arises.”). In Netflix’s claim
`
`construction brief to the district court, Netflix alleged that the “collection of
`
`instructions” claim term in independent claim 1, along with the “engine” terms in
`
`dependent claims 8 and 11, are means-plus-function claims under Williamson v.
`
`Citrix Online, LLC. See Ex. 2002 at 16-25. Further, Dr. Mir testified that the
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`“collection of instructions” term in claim 1 does not connote definite structure to
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`one of ordinary skill in the art. Ex. 2003 at 121:16-25, 126:7-14. Based on this
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`testimony, Netflix argued to the district court that “there’s nothing that connotes
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`sufficiently definite structure to one of ordinary skill” and the “presumption against
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`14
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`

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`means plus function claim would be overcome and this should be construed as a
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`means plus function claim.” Id. at 126:15-20. Specifically, Dr. Mir concluded that
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`“one of ordinary skill in the art, reviewing the patents would not know what type
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`of software or programming the invention uses to achieve the stated functions in . .
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`. claim 1 of the ’868 patent.” Ex. 2001 ¶ 73. Similarly, Dr. Mir testified that the
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`claimed “engine” terms have “nothing at all that shows me a structure.” Ex. 2003
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`at 127:21-129:4.
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`Netflix’s failure to identify a function and corresponding structure, or
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`otherwise identify the scope and meaning of these terms, requires denial of this
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`petition. As discussed above, Netflix was required to construe the challenged
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`claims and compare the claims to the prior art to establish obviousness. Yet Netflix
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`and its expert repeatedly argued to the district court that the “collection of
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`instructions” and “delivery resource” terms were means-plus-function elements.
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`And under Federal Circuit precedent, the standard for § 112 ¶ 6 is the same for
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`patent office proceedings as it is for district court litigation. See In re Donaldson
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`Co., 16 F.3d at1193. Thus, Netflix cannot establish obviousness in this petition
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`based on the testimony of its expert Dr. Mir without identifying function and
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`structure as required by 37 C.F.R. § 42.104(b)(3). Because Netflix failed to do so,
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`the petition should be denied as to claims 1-6, 8, and 11.
`
`15
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`

`

`VI. Netflix failed to properly analyze the differences between the
`independent claims and the prior art, instead incorporating significant
`analysis by reference.
`To meet its burden on obviousness, Netflix was required to determine the
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`scope and content of the prior art and the differences between the prior art and the
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`claims at issue. Further, Netflix was required to show that all limitations of the
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`claimed methods are suggested by the prior art. See CFMT, Inc., 349 F.3d at 1342.
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`Instead of conducting a proper obviousness analysis, Netflix instead relied on an
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`overly-broad reading of the claims and incorporation by reference to find the claim
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`limitations in the prior art. Netflix therefore failed to meet its burden to show the
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`claimed independent methods and system are obvious in the petition and Netflix’s
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`petition should be denied.
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`Independent claims 1, 7, and 14 each require a list or listing that contains a
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`URL or network location for segments of an available media, such as a song or
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`video, which is available at different output rates. Ex. 1001 at 18:65-68, 19:59-60,
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`20:58-59. After the available media is formatted into segments, the system sends a
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`list in response to an HTTP communication and facilitates delivery of the segments
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`at different rates, wherein the rates are rates at which a streaming media can be
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`output at a remote display device. Id. at 19:1-24, 19:61-20:6, 20:55-21:6. Thus, the
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`list includes the network locations or addresses necessary for the remote display
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`device to request segments of the media using HTTP communications at varying
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`16
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`

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`output rates during the stream. The list claim elements are highlighted below for
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`the independent claims.
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`1. A media system, comprising:
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`a plurality of independent segment files, wherein a given segment file
`of the plurality of independent segment files has a given format and a
`different segment of the plural