Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 27
`Entered: March 26, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`NETFLIX, INC.,
`Petitioner,
`v.
`AFFINITY LABS OF TEXAS, LLC,
`Patent Owner.
`
`
`Case IPR2017-00122
`Patent 9,444,868 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
`JON B. TORNQUIST, Administrative Patent Judges.
`TORNQUIST, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 27
`Entered: March 26, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`NETFLIX, INC.,
`Petitioner,
`v.
`AFFINITY LABS OF TEXAS, LLC,
`Patent Owner.
`
`
`Case IPR2017-00122
`Patent 9,444,868 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
`JON B. TORNQUIST, Administrative Patent Judges.
`TORNQUIST, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`IPR2017-00122
`Patent 9,444,868 B2
`
`I. INTRODUCTION
`
`A. Background
`Netflix, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`inter partes review of claims 1–20 of U.S. Patent No. 9,444,868 B2 (Ex.
`1001, “the ’868 patent”). Affinity Labs of Texas, LLC (“Patent Owner”)
`filed a Preliminary Response to the Petition (Paper 8, “Prelim. Resp.”).
`Upon consideration of the Petition and the Preliminary Response, we
`determined that Petitioner had demonstrated a reasonable likelihood that it
`would prevail with respect to claims 1–20 of the ’868 patent. Paper 10, 16
`(“Institution Decision” or “Inst. Dec.”). Thus, we instituted inter partes
`review with respect to those claims. Id.
`Following the institution of trial, Patent Owner filed a Patent Owner
`Response (Paper 12, “PO Resp.”) that was essentially identical to its
`Preliminary Response, and Petitioner filed a Reply (Paper 13, “Pet. Reply”).
`An oral hearing was held on December 21, 2017, and a transcript of the oral
`hearing is included in the record. Paper 26 (“Tr.”).
`In support of its arguments, Petitioner relies upon the declaration
`testimony of Dr. Nader Mir (Ex. 1007). Patent Owner did not submit
`declaration testimony in support of its Preliminary Response or Patent
`Owner Response.
`We have jurisdiction under 35 U.S.C. § 6, and this Final Written
`Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`B. Related Proceedings
`The parties note that the ’868 patent, as well as related U.S. Patent
`No. 9,094,802 (“the ’802 patent”), are at issue in Affinity Labs of Texas, LLC
`v. Netflix, Inc., 1:15-cv-849-RP (W.D. Tex.). Pet. 3; Paper 7, 1. The parties
`
`2
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`IPR2017-00122
`Patent 9,444,868 B2
`further note that the ’802 patent is at issue in IPR2016-01701. Pet. 3; Paper
`7, 1.
`
`C. The ’868 Patent
`The ’868 patent is directed to a delivery system for digitally stored
`content, including audio, video, and textual information. Ex. 1001, 1:25–27,
`3:20–22, 3:52–57. The ’868 patent instructs that this information may be
`“formatted, segmented, compressed, modified, etc.” during communication
`to a user. Id. at 3:28–31. In one embodiment of the ’868 patent, the selected
`audio information may be wirelessly communicated using a “hybrid of
`wireless communication rates.” Id. at 6:12–15. In this method, “the selected
`audio information may first be transmitted to the electronic device via high-
`speed communication until enough information” is buffered into the memory
`of a recipient device. Id. at 6:12–19. Slower communication speeds may
`then be used to communicate additional selected audio information to the
`device. Id. at 6:19–22.
`
`D. Illustrative Claim
`Claim 1 is illustrative of the challenged claims and is reproduced
`below:
`1. A media system, comprising:
`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 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;
`
`3
`
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`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
`Ex. 1001, 18:56–19:24.
`
`E. Instituted Grounds of Unpatentability
`We instituted trial on the following grounds (Inst. Dec. 16):
`References
`Basis Claims Challenged
`Treyz1 and Fuller2
`§ 103 1–12, 14, 15, and 17–20
`
`Treyz, Fuller, and Glaser3
`
`§ 103 13 and 16
`
`
`1 US 6,678,215 B1, issued Jan. 13, 2004 (Ex. 1015).
`2 US 6,711,622 B1, issued Mar. 23, 2004 (Ex. 1016).
`3 US 6,985,932 B1, issued Jan. 10, 2006 (Ex. 1017).
`
`4
`
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`
`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, “[a] claim in an unexpired patent shall be
`given its broadest reasonable construction in light of the specification of the
`patent in which it appears.” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (upholding the use of the broadest
`reasonable interpretation standard). In determining the broadest reasonable
`construction, we presume that claim terms carry their ordinary and
`customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007). A patentee may define a claim term in a manner that
`differs from its ordinary meaning; however, any special definitions must be
`set forth in the specification with reasonable clarity, deliberateness, and
`precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes constructions for the terms “segment files,”
`“cellular telephone,” and “a different segment”/“the given segment.” Pet. 7–
`9. Patent Owner does not propose express constructions for the terms
`identified by Petitioner or any additional claim terms.
`Upon review of the record as a whole, we determine that the terms
`“available media” and “segment file” require express construction.
`available media
`Independent claims 1, 7, and 14 require an “available media.”
`Ex. 1001, 19:5, 19:49–50, 20:54. In IPR2014-00407, which was directed to
`related U.S. Patent No. 8,359,007 (“the ’007 patent”), we construed “an
`available media” to mean “content accessible from a source of audio, video,
`and/or textual information, such as songs or stations in a playlist,” but noted
`that the term is “not limited to a single file, song, or video, and may
`
`5
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`encompass, at a minimum, a collection of audio or video files.” Samsung
`Electronics Co. v. Affinity Labs of Texas, LLC, Case IPR2014-00407, slip.
`op. at 6 (PTAB July 21, 2014) (Paper 15). This construction was supported
`by dependent claims 12 and 13 of the ’007 patent, which recite that “the
`available media” may be a “collection of audio files” (claim 12) or a
`“collection of video files” (claim 13). Id. Patent Owner did not
`subsequently contest this construction in IPR2014-00407. See Samsung
`Electronics Co. v. Affinity Labs of Texas, LLC, Case IPR2014-00407, slip.
`op. at 6 (PTAB July 20, 2015) (Paper 48) (Final Written Decision); Affinity
`Labs of Texas, LLC v. Samsung Electronics Co., 669 F. App’x 576 (Fed. Cir.
`2016) (Rule 36 affirmance).
`Because the ’007 patent and the ’868 patent each claim benefit to the
`same parent application through a line of continuing applications, we must
`interpret the same terms within these patents consistently. See NTP, Inc. v.
`Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005) (“Because
`NTP’s patents all derive from the same parent application and share many
`common terms, we must interpret the claims consistently across all asserted
`patents.”). Moreover, neither party provides citations to intrinsic or extrinsic
`evidence in this proceeding to suggest a different construction of an
`“available media” should apply to the ’868 patent. Thus, upon review of the
`record as a whole, we construe an “available media” to include “content
`accessible from a source of audio, video, and/or textual information,” and
`note that the term is not limited to a single file, song, or video, and may
`encompass, at a minimum, a collection of audio or video files.4
`
`
`4 This construction is consistent with that provided in the Institution
`Decision, but incorporates the full construction of “available media”
`
`6
`
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`IPR2017-00122
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`
`segment files
`Independent claims 1 and 7 require “a plurality of independent
`
`segment files” and claim 14 requires “a plurality of media segment files
`associated with the available media.” Ex. 1001, 18:57, 19:49, 20:58–59.
`
`Petitioner contends the “segment files” recited in the challenged
`claims may comprise “a file that includes part of the content accessible from
`a source of audio, video, or textual information, such as songs or stations in
`a playlist or parts of an Internet radio broadcast.” Pet. 7–8 (citing Ex. 1007
`¶¶ 65–66). Patent Owner contends the claimed “segment files” must be
`“segments of the same available media,” such as an individual song or
`video. PO Resp. 27; see id. at 22 (“Independent claims 1, 7, and 14 each
`require a list or listing that contains a URL or network location for segments
`of an available media, such as a song or video, which is available at different
`output rates.”).
`
`The written description of the ’868 patent notes that “an audio file
`may be formatted, segmented, compressed, modified, etc. for the purpose of
`providing or communicating the audio invention.” Ex. 1001, 3:28–31. This
`disclosure supports a construction of “segment files” that includes portions
`of an individual audio file. As noted above, however, the term “available
`media” is not limited to an individual song or video file, and when the
`“available media” includes a collection of songs, videos, and/or Internet
`broadcasts, the term segment—which is generally defined as “[e]ach of the
`parts into which something is or may be divided”—is broad enough to
`
`
`provided in IPR2014-00407. Inst. Dec. 6; IPR2014-00407, slip. op. at 6
`(determining that “an available media” includes “content accessible from a
`source of audio, video, and/or textual information”).
`
`7
`
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`IPR2017-00122
`Patent 9,444,868 B2
`include files representing individual songs, videos, or Internet radio station
`content within this collection. Ex. 3001; Ex. 3002. The parties direct us to
`no portion of the claims, written description, or prosecution history of the
`’868 patent that would suggest this construction is overbroad or otherwise
`unreasonable.5 Thus, we determine that the broadest reasonable
`construction of the terms “segment files” and “independent segment files,”
`when used in conjunction with the terms “media” or an “available media,”
`includes files that represent part of the content accessible from a source of
`audio, video, or textual information, such as files that represent individual
`songs, videos, and/or Internet radio stations within a broader collection of
`audio of video files, as well as files that represent part of a single song,
`video, or Internet broadcast.6
`
`B. Alleged Failure to Provide Proposed Claim Constructions
`Patent Owner asserts that during proceedings before the district court
`Dr. Mir testified that the terms “segment files” and “independent segment
`files” are “confusing” and require one to “guess” as to their meaning and
`that one of ordinary skill in the art “would not understand with reasonable
`certainty what is being claimed” by the term “independent segment files.”
`PO Resp. 18–19 (citing Ex. 2001 ¶¶ 52, 56; Ex. 2003, 176:21-177:16).
`
`
`5 During oral argument, Patent Owner’s counsel indicated that it has “not
`taken a position on what independent segment files means in this
`proceeding,” other than its assertion that these files are of the same media.
`Tr. 31:12–32:5.
`6 This construction is consistent with that provided in the Institution
`Decision. Inst. Dec. 11 (noting that the term “segment” is “broad enough to
`encompass an individual song, video, or station contained within a broader
`collection of audio or video files”).
`
`8
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`Patent Owner also asserts that Petitioner argued before the district court that
`several claim terms of the ’868 patent are set forth in means-plus-function
`format, yet Petitioner failed to identify corresponding structure in this
`proceeding for these alleged mean-plus-function claim terms. Id. at 19–21.
`According to Patent Owner, “[Petitioner] 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 “[Petitioner’s]
`failure to identify a function and corresponding structure, or otherwise
`identify the scope and meaning” of the alleged mean-plus-function claim
`terms, “requires rejection of their obviousness arguments.” Id. at 19, 21.
`We are not persuaded by these arguments. First, the district court has
`determined that the claims of the ’868 patent are not in means-plus-function
`format, and neither party in this proceeding contends that the claims should
`be interpreted in this manner. Pet. Reply 6–7. Nor does Patent Owner
`contend that the prior art of record fails to disclose any of the claim
`limitations in question (“collection of instructions” and “engine”), whether
`construed as means-plus-function claim terms or not. See Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy.”)).
`Second, even if Dr. Mir could not identify the precise contours of
`several claim limitations under the claim construction standard applicable in
`the district court, Petitioner and Dr. Mir, applying the broadest reasonable
`construction standard in this proceeding, and considering the construction of
`“available media” and “portions of an available media” set forth in IPR2014-
`
`9
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`IPR2017-00122
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`00407, correctly concluded that the terms “segment files” and “independent
`segment files,” when considered in combination with the term an “available
`media,” are broad enough to include individual songs or videos within a
`broader media collection. Pet. 7–8, 18–19, 38–39, 52–53. Patent Owner
`does not explain persuasively why Petitioner’s and Dr. Mir’s constructions,
`either express or implied, for “segment files,” “independent segment files,”
`and “available media” in the Petition are incorrect, or why their
`identifications as to where these elements are disclosed in Treyz and Fuller
`are erroneous or unsupported by the evidence of record.7 Thus, we do not
`consider Dr. Mir’s prior testimony to be grounds for denying the Petition or
`for ignoring his uncontested testimony with respect to the claim terms in
`question. Pet. Reply 8 (“Dr. Mir did not ‘guess’ as to the meanings of claim
`terms. Rather, he was aware of a spectrum of technologies invoked by each
`ambiguous claim term, and identified elements in the prior art he knew was
`within the broadest reasonable interpretation of those terms.”).
`
`C. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) 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. See 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;
`
`7 Patent Owner did not depose Dr. Mir or present declaration testimony to
`rebut his opinions in this case.
`
`10
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`(3) the level of ordinary skill in the art; and (4) if in the record, objective
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`D. Level of Ordinary Skill in the Art
`Petitioner contends a person of ordinary skill in the art would have
`had “a Bachelor’s Degree in Electrical Engineering, Computer Science or
`Computer Engineering, or equivalent experience, and one to two years of
`experience in the field of computer networking and/or multimedia networks,
`particularly as those systems relate to media streaming technology.” Pet. 11
`(citing Ex. 1007 ¶ 41). Patent Owner does not address the level of ordinary
`skill in the art.
`Because Petitioner’s uncontested definition of the level of ordinary
`skill in the art is reasonable and consistent with the art of record, we adopt it
`for purposes of this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350,
`1355 (Fed. Cir. 2001) (noting that the prior art of record may reflect the
`level of ordinary skill in the art).
`
`E. Claims 1–12, 14, 15, and 17–20 over Treyz and Fuller
`Petitioner contends the subject matter of claims 1–12, 14, 15, and 17–
`20 would have been obvious over Treyz and Fuller. Pet. 12–62.
`
`1. Treyz
`Treyz is directed to devices that can receive and process audio and
`video files. Ex. 1015, 1:26–29, 8:63–9:7, Abstract. The device of Treyz
`may contain non-volatile memory, a processor, and a display that allows a
`user to view “text, graphics, and video.” Id. at 1:48–51, 9:4–6, 12:46–55,
`Fig. 10a. The device may also have a web browser that allows a user to
`
`11
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`interact with the Internet and select available content. Id. at 6:11–16, Fig.
`9b, Fig. 14.
`The device of Treyz may “handle audio such as prerecorded music,
`news, e-mail that is played using a voice-synthesizer, e-mail with voice
`attachments or other audio attachments, . . . Internet radio, . . . or any other
`suitable audio content.” Id. at 1:33–39. This audio content “may be
`provided in the form of a downloaded digital file (e.g., files in the MP-3
`format or any other suitable digital audio format)” or in the form of
`“streaming digital audio files.” Id. at 1:40–42, 1:56–60, 5:42–44, 9:20–23,
`Abstract (“An alarm clock radio is provided that handles downloaded audio
`files and streaming digital audio files.”).
`
`Using the device of Treyz, a “user may opt to be awakened by music,
`news, e-mail, voice mail, a standard alarm buzzer, or any other suitable
`audio source or combination of sources.” Id. at 3:42–44. In this process,
`audio from various sources “may be combined to form customized
`channels.” Id. at 3:45–47. “For example, if the user enjoys country music,
`classical music, and sports news, these types of content may be combined
`(e.g., from Internet radio channels) into a custom channel.” Id. at 3:47–50.
`The user may then “schedule how portions or segments of the audio from
`[the] various sources are to be played. For example, the user may select the
`content and the duration for desired audio segments.” Id. at 3:49–53.
`A web page may also be used to scroll through available Internet radio
`stations, with the user selecting from these radio stations “by clicking on
`links” for the stations or by “selecting the proper Internet addresses for the
`desired stations.” Id. at 5:13–42, 5:60–6:27. Figure 14 of Treyz, reproduced
`
`12
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`IPR2017-00122
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`below, is “an illustrative screen (e.g., a web page)” that may be used to
`remotely select audio content. Id. at 8:8–11, 21:49–54.
`
`
`Figure 14 is an illustrative web page for selecting audio content.
`Using the web page depicted in Figure 14, a user may “select from various
`content options using, for example, a drop-down menu, a pop-up list, direct
`alphanumeric entry, or any other suitable user interface.” Id. at 22:9–15.
`“After the user has selected the desired content for a given segment, the user
`may click on the corresponding cell in the duration column to supply a
`desired duration.” Id. at 22:15–18.
`Treyz explains that “the downloading of audio or the real time
`streaming of audio to an audio device requires that a communications path
`be established between the audio device and a desired audio source.” Id. at
`2:3–6. “Suitable communications technologies for providing audio to the
`audio device include technologies based on satellite systems, fiber optics,
`cable, wireless links, microwave links, free-space optical links,
`combinations of such technologies, etc.” Id. at 2:22–26; see also id. at 2:36–
`53 (noting that the audio device may communicate over paths that “provide
`higher quality signals or faster download times” as well as paths that require
`a “lower bandwidth approach”).
`
`13
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`2. Fuller
`Fuller is directed to a system for providing streaming audio and video
`data to multiple users. Ex. 1016, 1:14–17, 2:53–54. In Fuller, a web
`browser is used to review and select links for available content on a network.
`Id. at 4:45–49, 5:23–30, 8:30–36, Figs. 1–3. Figure 3 of Fuller, reproduced
`below, depicts a webpage presented to a user for selecting available content:
`
`
`Figure 3 “illustrates a web page that a user can use to access a
`streaming audio and video broadcast” (id. at 3:41–42).
`As shown in Figure 3 of Fuller, the list of available media presented to the
`user may include links for interactive network TV, live radio broadcasts,
`audio jukeboxes, and various camera feeds. Id. at 10:43–47, Fig. 3.
`Fuller explains that when a user clicks on “a link that will initiate
`streaming audio,” a Java applet for decoding the audio data is provided to
`the user. Id. at 8:30–41. A real-time server then prepares the audio data by
`“breaking the audio information into time periods,” compressing this audio
`information into “various sets of compressed data corresponding to different
`audio rates,” and storing the audio segments into memory. Id. at 9:15–24.
`Fuller further explains that when the request is for a video, the real-time
`
`14
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`server retrieves the requested video information in a format that it can use,
`such as a JPEG, MPEG, GIF, or AVI file, and compresses this information
`into a series of JPEG images, which may then be sent to the user in various
`formats, including “as part of a multipart MIME encoded file.” Id. at 5:55–
`58, 6:17–28, 6:60–65, 8:30–41, 9:49–67.
`In the system of Fuller, the Java applet installed on the client machine
`may request an initial quality of audio or video from the server. Id. at 8:37–
`51, 10:48–55. If the Java applet subsequently determines that the audio or
`video information is not being received by the client at a sufficient rate, it
`“can request a different rate of transmission.” Id. at 10:11–14. For example,
`the Java applet may request “a lower rate corresponding to a lower audio or
`video signal that will more appropriately match the bandwidth of the client.”
`Id. at 10:14–17.
`
`3. Analysis—Independent Claims 1, 7, and 14
`Petitioner provides detailed analysis, supported by the testimony of
`Dr. Mir, identifying where the combination of Treyz and Fuller discloses the
`subject matter of independent claims 1, 7, and 14. Pet. 18–35, 38–46, 52–
`55. For example, with respect to independent claim 1, Petitioner
`persuasively identifies the “downloaded audio files and streaming digital
`audio files” of Treyz, which are received from a variety of independent
`sources and may include “radio station content, e-mail, news and other audio
`content,” as the “plurality of independent segment files.” Id. at 18–19
`(citing Ex. 1015, 3:45–55, Figs. 1, 14, Abstract; Ex. 1007 ¶ 91). Petitioner
`also persuasively identifies the organized list of Internet radio stations in
`Treyz as the claimed “playlist,” and explains that Internet addresses, or
`URLs, are included for each station on the playlist. Id. at 25–26 (citing Ex.
`
`15
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`1015, 3:45–55, 4:50–5:3, 5:32–36, 5:49–59, 7:57–61, 8:41–46, 11:53–61,
`17:25–43, 20:11–22, 21:41–45, 23:10–16, Figs. 5, 9a, 9b, 10a; Ex. 1007 ¶
`101 (Dr. Mir testifying that links and Internet network addresses would be
`understood by one of ordinary skill in the art to be a URL)).
`Petitioner also persuasively demonstrates that two different segments
`of available media in Treyz and Fuller may have different formats that
`would result in outputting of the audio and video information at different
`rates. Id. at 19–23. First, Fuller discloses formatting audio data “into
`various sets of compressed data corresponding to different audio rates” and
`switching between these compressed audio and video files based upon the
`rate at which the information is being received by the client. Id. at 22–23
`(citing Ex. 1016, 5:63–67 (noting audio can be formatted in the G.711 and
`G.723 audio compression formats), 9:13–30 (describing the compression of
`audio information into various audio rates), 10:11–17 (“If it is the case that
`the audio, or the video, information is not being received by the client 112 at
`a sufficient data rate, the corresponding Java applet . . . can request a lower
`rate corresponding to a lower audio or video signal, that will more
`appropriately match the bandwidth available of the client 112.”)). Second,
`Treyz discloses a playlist of available media that contains both audio and
`video segments, and Petitioner persuasively explains that audio and video
`segment files would have different formats that “would result in different
`output rates from a buffer.” Id. at 23 (citing Ex. 1016, 5:66 (noting that
`audio may be compressed using G.711 and G.723 formats), 6:28 (noting that
`video data is formatted as a JPEG file); Ex. 1007 ¶¶ 52, 99).
`With respect to the reason to combine Treyz and Fuller, Petitioner
`contends that both references “concern the delivery of streaming multimedia
`
`16
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`IPR2017-00122
`Patent 9,444,868 B2
`content over an Internet-based client/server network” and that one of
`ordinary skill in the art would have been motivated to incorporate Fuller’s
`rate switching method in Treyz in order to prevent the input buffer from
`running out of data. Pet. 15–16 (asserting that a person of ordinary skill in
`the art would have understood that “if the client does not receive sufficient
`data, the input buffer for the audio/video decoders may run out of data, and
`hence the decoders would have nothing to output”); see also id. at 18
`(asserting that the combination of Treyz and Fuller is merely the
`combination of two elements, each performing the same function as it does
`separately, to yield predictable results). Petitioner also contends that one of
`ordinary skill in the art would have found it “obvious to provide the web
`browser of Treyz’s device with HTTP capabilities, as is expressly taught in
`Fuller, in order to provide a platform-independent solution.” Id. at 17.
`Patent Owner does not contest that one of ordinary skill in the art
`would have sought to combine the teachings of Treyz and Fuller, but
`contends independent claims 1, 7, and 14 would not have been obvious over
`Treyz and Fuller because the Internet radio links of Treyz do “not comprise
`links or network locations to segments of the same available media at
`different output rates as required by the claims.” PO Resp. 27; see also id. at
`22 (asserting that independent claims 1, 7, and 14 “each require a list or
`listing that contains a URL or network location for segments of an available
`media, such as a song or video, which is available at different output rates”).
`We are not persuaded by Patent Owner’s argument.
`Treyz discloses allowing a user to scroll through a list of songs,
`videos, and Internet radio stations that are available from one or more
`sources and then schedule how “portions or segments of the audio” from
`
`17
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`IPR2017-00122
`Patent 9,444,868 B2
`these various sources are to be played. Pet. 18–19, 25–26 (citing Ex. 1015,
`2:41–44, 3:45–55, 17:25–43, 20:11–22 (“The user may schedule how
`portions or segments of the audio from various sources are to be played.”),
`Figs. 9a, 9b, 14). Fuller discloses compressing selected audio and video
`information using different compression formats, which results in files that
`are available at different output rates. Id. at 21–23 (citing Ex. 1016, 5:63–
`67, 9:14–30); Ex. 1007 ¶ 99 (Dr. Mir testifying that video is typically
`encoded at a higher bitrate than audio). Thus, contrary to Patent Owner’s
`arguments, Petitioner and Dr. Mir persuasively demonstrate that the links in
`the Treyz and Fuller combination are to segments of the same available
`media that are available at different output rates.
`Patent Owner also argues that Petitioner and Dr. Mir improperly
`incorporate by reference the Board’s prior decisions in IPR2014-00407 and
`IPR2014-00408 to support their argument that “the list and message
`limitations are met by the prior art.” PO Resp. 28–29 (citing Pet. 25–26; Ex.
`1007 ¶ 101). We are not persuaded by this argument because, in addition to
`its citations to the Board’s prior decisions and Dr. Mir’s testimony,
`Petitioner provides numerous citations showing where the list and message
`limitations are disclosed in Treyz and Fuller. See, e.g., Pet 25–26 (citing Ex.
`1015, 3:45–55, 4:50–5:3, 5:49–59, 7:57–61, 8:41–46, 11:53–61, 17:25–43,
`20:11–22, 21:41–45, 22:7–18, 23:10–16, Figs. 5, 9a, 9b, 10a; Ex. 1016,
`8:42–58), 28–29 (citing Ex. 1007 ¶ 107).
`During oral argument, Patent Owner asserted that Petitioner has failed
`to explain where the Treyz and Fuller combination discloses a “file.”
`Tr. 47:11–50:7. This argument was not presented in the Patent Owner
`Response and is waived. Paper 11, 3 (“The patent owner is cautioned that
`
`18
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`IPR2017-00122
`Patent 9,444,868 B2
`any arguments for patentability not raised in the response will be deemed
`waived.”); see also Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed.
`Cir. 2016) (noting that the Board may not rely on a factual assertion made
`for the first time at oral argument); Office Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,768 (Aug. 14, 2012) (noting that no new evidence or arguments
`may be presented at the oral argument). Regardless, Petitioner presents
`persuasive, unrebutted evidence that the audio and video information of
`Treyz and Fuller is in the form of “files.” Ex. 1015, Abstract (“An alarm
`clock radio is provided that handles downloaded audio files and streaming
`digital audio files.”); Ex. 1016, 9:13–30 (Fuller disclosing segmenting audio
`information into time periods and storing this information in memory), 9:58–
`63 (formatting a video into JPEG frames and transmitting this information as
`“part of a multipart MIME encoded file”); Ex. 1007 ¶¶ 91–92; see also
`Tr. 50:8–16 (Patent Owner’s counsel stating that the combination of Treyz
`and Fuller “may very well” disclose a file).
`Upon review of the record as a whole, we find that Petitioner has
`identified where Treyz and Fuller teach or suggest every limitation of
`independent claims 1, 7, and 14. Pet. 18–35 (claim 1), 38–46 (claim 7), 52–
`55 (claim 14). And, because this analysis is reasonable and supported by
`evidence of record, we adopt it as our own. We also f
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