`
`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 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 ............................................................................................................... vi
`I.
`Introduction ...................................................................................................... 1
`II.
`Inter Partes Review Proceedings Violate Affinity’s Constitutional
`Rights. .............................................................................................................. 3
`III. The ’868 Patent ................................................................................................. 8
`IV. Overview of the Prior Art ...............................................................................12
`V. Legal Standard ................................................................................................14
`VI. Netflix and its expert take inconsistent and speculative positions
`regarding the meaning and scope of the challenged claims. .........................14
`A. Netflix bears the burden to show obviousness of the challenged
`claims. ........................................................................................................16
`B. Netflix cannot establish obviousness where its expert’s analysis of
`the meaning and scope of the challenged claims is based on
`speculation. ................................................................................................18
`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. .........................................................18
`Netflix was required to identify corresponding structure for the
`terms it alleges are construed under § 112 ¶ 6. ...................................19
`VII. Netflix failed to properly analyze the differences between the
`independent claims and the prior art, instead incorporating significant
`analysis by reference......................................................................................22
`A. Netflix has not met its burden to show all limitations are obvious for
`Grounds 1 and 2. ........................................................................................26
`VIII. Conclusion ......................................................................................................29
`
`
`
`2.
`
`ii
`
`

`

`Table of Authorities
`
`Page(s)
`
`Cases
`A.C. Dispensing Equipment Inc. v. Prince Castle LLC,
`Case IPR2014-00511, slip op. (PTAB Sept. 10, 2014) ...................................... 28
`Arnstein v. Porter,
`154 F.2d 464 (2d Cir. 1946) ................................................................................. 6
`Atlas Roofing Co. v. Occupational Safety and Health Review Comm’n,
`430 U.S. 442 (1977) .......................................................................................... 5, 6
`BlackBerry Corp. v. MobileMedia Ideas, LLC,
`Case IPR2013-00036, slip op. (PTAB Mar. 7, 2014)......................................... 17
`Blackberry Corp. v. Mobilemedia Ideas LLC,
`IPR2013-00016, Paper 32 (PTAB Feb. 25, 2014) .................................... 7, 17, 19
`Bond v. United States,
`131 S.Ct. 2355 (2011) ........................................................................................... 4
`Brown v. Duchesne,
`60 U.S. 183 (1857) ................................................................................................ 5
`CFMT, Inc. v. Yieldup Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .................................................................... 16, 22
`Consol. Fruit-Jar Co. v. Wright,
`94 U.S. 92 (1876) .................................................................................................. 5
`Dairy Queen, Inc. v. Wood,
`369 U.S. 469 (1962) .............................................................................................. 6
`Ex parte Wood & Brundage,
`22 U.S. 603 (1824) ................................................................................................ 7
`Feltner v. Columbia Pictures Television, Inc.
`523 U.S. 340 (1998) .............................................................................................. 6
`Garmin Int’l Inc. v. Cuozzo Speed Tech. LLC,
`IPR2012-00001, Paper 26 (PTAB Mar. 5, 2014) ................................................. 8
`
`iii
`
`

`

`Granfinanciera v. Nordberg,
`492 U.S. 33 (1989) ................................................................................................ 6
`Hopkins Mfg’g Corp. v. Cequent Performance Prods., Inc.,
`Case IPR2015-00616, slip op. (PTAB Aug. 17, 2015) ...................................... 28
`IBM Corp. v. Intellectual Ventures II LLC,
`Case IPR2014-00673, slip op. (PTAB Dec. 23, 2014) ....................................... 28
`In re Cuozzo Speed Techs.,
`793 F.3d 1268 (Fed. Cir. 2015) ............................................................................ 8
`In re Donaldson Co.,
`16 F.3d 1189 (Fed. Cir. 1994) ............................................................................ 20
`In re Donaldson Co.,
`16 F.3d at1193 .................................................................................................... 21
`In re NTP, Inc.,
`654 F. 3d 1279 (Fed. Cir. 2011) ......................................................................... 17
`In re Tech. Licensing Corp.,
`423 F.3d 1286 (Fed. Cir. 2005) ............................................................................ 7
`KSR Int’l Co. v. Teleflex Inc.,
`127 S. Ct. 1727 (2007) .................................................................. 2, 16, 19, 27, 29
`Micron Tech., Inc. v. Innovative Memory Sys., Inc.,
`Case IPR2016-00324, slip op. (PTAB June 13, 2016) ................................. 17, 19
`Murray v. Hoboken Land & Improv. Co.,
`59 U.S. 272 (1856) ................................................................................................ 4
`Oracle Corp. v. Crossroads Sys., Inc.,
`Case IPR2014-01177, slip op. (PTAB Jan. 28, 2015) ........................................ 28
`Ross v. Bernhard,
`396 U.S. 531 (1970) .............................................................................................. 6
`Star Sci., Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) .......................................................................... 16
`
`iv
`
`

`

`Stern v. Marshall,
`131 S.Ct. 2594 (2011) ........................................................................................... 4
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015) .................................................................... 14, 20
`Statutes
`35 U.S.C. § 103 ...................................................................................................... 2, 3
`35 U.S.C. § 112 ¶ 6 ............................................................................................ 19, 21
`35 U.S.C. § 261 .......................................................................................................... 1
`35 U.S.C. § 316 .......................................................................................................... 7
`35 U.S.C. § 316(e) ............................................................................................... 1, 14
`Other Authorities
`37 C.F.R. § 42.100(b) ................................................................................................ 8
`37 C.F.R. § 42.104(b)(3) .................................................................................... 20, 21
`37 C.F.R. § 42.120 ..................................................................................................... 1
`U.S. Const. art. I, § 8, cl. 8 ......................................................................................... 4
`U.S. Const. art. III, §2, cl. 1 ....................................................................................... 3
`
`
`
`v
`
`

`

`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
`
`
`
`vi
`
`

`

`Pursuant to 37 C.F.R. § 42.120, Patent Owner Affinity Labs of Texas, LLC
`
`(“Affinity Labs”) submits this 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
`Inter partes review proceedings unconstitutionally remove adjudication of
`
`private patent rights from Article III courts in violation of the separation of powers,
`
`the Seventh Amendment. Federal law demands that “patents shall have the
`
`attributes of personal property.” 35 U.S.C. § 261. Further, the common law
`
`treatment of patent rights established that patent rights must be adjudicated in an
`
`Article III court before a jury. Patent rights have always been and continue to be
`
`private property rights. Through inter partes review, Congress improperly created
`
`an alternate unconstitutional venue for adjudicating patent rights outside of Article
`
`III courts and without a jury as guaranteed by the Seventh Amendment. Therefore,
`
`inter partes review is unconstitutional and this Board should vacate its institution
`
`decision.
`
`Even if inter partes review is constitutional, Affinity Labs respectfully
`
`disagrees with the Board’s analysis in the institution decision. Netflix’s petition
`
`suffers from at least three key defects and fails to demonstrate a proposition of
`
`unpatentability by a preponderance of the evidence for the challenged claims. 35
`
`1
`
`

`

`U.S.C. § 316(e). 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
`
`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
`
`2
`
`

`

`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.
`
`II.
`
`Inter Partes Review Proceedings Violate Affinity’s Constitutional
`Rights.
`On June 12, 2017, the United States Supreme Court granted certiorari in Oil
`
`States vs. Greene’s Energy Group, et al. Dkt. 16-712 (U.S. June 12, 2017). By
`
`taking this case, the Supreme Court will address the constitutionality of having an
`
`Article I tribunal extinguish patent rights. Specifically, the Supreme Court will
`
`decide “[w]hether inter partes review – an adversarial process used by the Patent
`
`and Trademark Office (PTO) to analyze the validity of existing patents – violates
`
`the Constitution by extinguishing private property rights through a non-Article III
`
`forum without a jury.” Id.
`
`Removing adjudication of Affinity’s private patent right from an Article III
`
`court violates the separation of powers. Article III of the Constitution directs that
`
`“[t]he judicial power shall extend to all cases, in law and equity, arising under this
`
`Constitution, the laws of the United States, and treaties made, or which shall be
`
`made, under their authority.” U.S. Const. art. III, §2, cl. 1. The separation of power
`
`between the judiciary, executive, and legislative branches serves “to protect each
`
`branch of government from incursion by the others” and to “protect the individual
`
`3
`
`

`

`as well.” Bond v. United States, 131 S.Ct. 2355, 2365 (2011). “Article III could
`
`neither serve its purpose in the system of checks and balances nor preserve the
`
`integrity of judicial decision-making if the other branches of the Federal
`
`Government could confer the Government’s ‘judicial Power’ on entities outside
`
`Article III.” Stern v. Marshall, 131 S.Ct. 2594, 2609 (2011). Only a limited set of
`
`rights—those properly within the public rights exception—may be adjudicated
`
`outside of an Article III court in accordance with the separation of powers
`
`established by the Constitution. Murray v. Hoboken Land & Improv. Co., 59 U.S.
`
`272, 284 (1856) (“[T]here are matters, involving public rights . . .which congress
`
`may or may not bring within the cognizance of the courts of the United
`
`States . . . .”).
`
`Patent rights are private rights. The Constitution gives Congress the power
`
`“[t]o promote the Progress of Science and useful Arts.” U.S. Const. art. I, § 8, cl. 8.
`
`Congress, however, was not granted the power to do so in any manner. Instead, the
`
`Constitution explicitly established the means to do so—“by securing for limited
`
`Times to Authors and Inventors the exclusive Right to their respective Writings
`
`and Discoveries.” Id. This constitutional creation of a private right can “scarcely be
`
`questioned” as the rights to inventions “belong to the inventors.” The Federalist
`
`No. 43, at 214 (James Madison) (L. Goldman ed. 2008). Thus, a patent is an
`
`exclusive private property right derived from the Constitution. As a property right
`
`4
`
`

`

`rooted in the Constitution, patent rights are private rights that do not fall within the
`
`public rights exception, and must be adjudicated in an Article III court. Atlas
`
`Roofing Co. v. Occupational Safety and Health Review Comm’n, 430 U.S. 442,
`
`458 (1977). Controlling Supreme Court precedent has repeatedly recognized the
`
`constitutional foundation and private nature of patent rights. See e.g., Brown v.
`
`Duchesne, 60 U.S. 183, 197 (1857) (“For, by the laws of the United States, the
`
`rights of a party under a patent are his private property; and by the Constitution of
`
`the United States, private property cannot be taken for public use without just
`
`compensation.”); Consol. Fruit-Jar Co. v. Wright, 94 U.S. 92, 96 (1876) (“[A]
`
`patent for an invention is as much property as a patent for land. The right rests on
`
`the same foundation, and is surrounded and protected by the same sanctions.”).
`
`The Seventh Amendment guarantees Affinity the right to litigate its private
`
`patents right before a jury. Congress may devise novel causes of action involving
`
`public rights free from the strictures of the Seventh Amendment if it assigns their
`
`adjudication to tribunals without statutory authority to employ juries as factfinders.
`
`But it lacks the power to strip parties contesting matters of private right of their
`
`constitutional right to a trial by jury. As the Court recognized in Atlas Roofing, to
`
`hold otherwise would be to permit Congress to eviscerate the Seventh
`
`Amendment’s guarantee by assigning to administrative agencies or courts of equity
`
`all causes of action not grounded in state law, whether they originate in a newly
`
`5
`
`

`

`fashioned regulatory scheme or possess a long line of common-law forebears. 430
`
`U.S., at 457-458. The Constitution nowhere grants Congress such puissant
`
`authority. “[L]egal claims are not magically converted into equitable issues by
`
`their presentation to a court of equity,” Ross v. Bernhard, 396 U.S. 531, 538
`
`(1970), nor can Congress “conjure away the Seventh Amendment by mandating
`
`that traditional legal claims be brought there or taken to an administrative
`
`tribunal.” Granfinanciera v. Nordberg, 492 U.S. 33, 42 n.4 (1989) (
`
`The Seventh Amendment has consistently afforded owners of statutorily
`
`created intellectual property the right to a trial before a jury. See Markman, 517
`
`U.S. 370, 377 (1996); Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946) (“That
`
`it is founded solely on a statute does not deprive either party of a right to a trial by
`
`jury . . . .”); see, e.g., Feltner v. Columbia Pictures Television, Inc. 523 U.S. 340,
`
`355 (1998); Dairy Queen, Inc. v. Wood, 369 U.S. 469, 477, 479-80 (1962). Patents,
`
`trademarks, and copyrights are all subject to preissuance examination, but the
`
`associated administrative and regulatory schemes do not permit Congress to deny
`
`intellectual property owners the right to assert and defend their private property
`
`rights before juries. By creating alternative administrative avenues for litigation of
`
`private patent rights without a jury, Congress has eviscerated the Seventh
`
`Amendment’s guarantees of a jury trial.
`
`6
`
`

`

`Issues of patent validity have historically been decided exclusively before a
`
`jury. See Ex parte Wood & Brundage, 22 U.S. 603, 615 (1824) (ordering a jury
`
`trial on the issue of whether a patent should be repealed). It is true that the Federal
`
`Circuit has held that where a patent owner seeks only equitable relief for violation
`
`of its patent rights, it is not entitled to a jury trial. See In re Tech. Licensing Corp.,
`
`423 F.3d 1286, 1291 (Fed. Cir. 2005) (“[S]eeking only equitable relief on its claim
`
`of infringement, confers no jury trial right on TLC.”). However, Affinity has at no
`
`point consented to the adjudication of its patent rights separate from a jury trial by
`
`pursuing only equitable relief, and Affinity has never consented to inter partes
`
`review proceedings.
`
`There are stark differences between inter partes review and litigation before
`
`a jury in an Article III court. Unlike in an Article III court, there is no presumption
`
`of validity in inter partes review. Blackberry Corp. v. Mobilemedia Ideas LLC,
`
`IPR2013-00016, Paper 32, at 20 (PTAB Feb. 25, 2014) (“There is no presumption
`
`of validity as to the challenged claims or substitute claims in an inter partes
`
`review.”). A party challenging a patent in court can only overcome the
`
`presumption of patent validity by presenting clear and convincing evidence of
`
`invalidity. A lower standard applies in inter partes review, and the Petitioner need
`
`only prove invalidity by a preponderance of evidence. 35 U.S.C. § 316. In addition,
`
`the standard for claim construction is more liberal in inter partes review
`
`7
`
`

`

`proceedings as compared to district court litigation. The PTAB construes claims
`
`based on the “broadest reasonable construction in light of the specification as it
`
`would be interpreted by one of ordinary skill in the art.” 37 C.F.R. § 42.100(b); see
`
`In re Cuozzo Speed Techs., 793 F.3d 1268 (Fed. Cir. 2015). Correct claim
`
`constructions are necessary for accurate determinations of patent validity. The
`
`PTAB also recognizes “in inter partes review, discovery is limited as compared to
`
`that available in district court litigations. Limited discovery lowers the cost,
`
`minimizes the complexity, and shortens the period required for dispute resolution.”
`
`Garmin Int’l Inc. v. Cuozzo Speed Tech. LLC, IPR2012-00001, Paper 26 at 4-7
`
`(PTAB Mar. 5, 2014). However, limited discovery stymies a patent owner’s ability
`
`to fully investigate and present evidence in defense of its private patent rights. In
`
`conclusion, this Board should vacate the institution decision because Affinity’s
`
`right to a jury trial under the Seventh Amendment has been eviscerated by
`
`Congress’s establishment of inter partes review as a quick and cheap alternative
`
`means of litigation.
`
`III. The ’868 Patent
`The ’868 patent issued on September 13, 2016 and is entitled “System to
`
`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,
`
`8
`
`

`

`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
`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
`
`9
`
`

`

`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.
`
`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
`
`10
`
`

`

`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.
`
`14. A media system, comprising:
`
`an electronic device comprising a display, a buffering component, a
`
`11
`
`

`

`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.
`
`IV. 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).
`
`U.S. Patent No. 6,678,215 (“Treyz”), entitled “Digital Audio Devices,” was
`
`12
`
`

`

`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
`
`through the Java audio applet. Id. at 9:43-45.
`
`13
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`U.S. Patent No. 6,985,932 (“Glaser”) is entitled “Multimedia communications
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`system and method for providing audio on demand to subscribers” and was filed
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`on January 25, 1999. Glaser covers “a real-time, audio-on demand system which
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`may be implemented using only the processing capabilities of the CPU within a
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`conventional personal computer” and seeks to provide an audio data transmission
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`rate at “about 1 kilobyte per second” by using “an audio compression of
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`approximately 22 to 1.” Ex. 1017 at 1:63-66, 2:32-40.
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`V. Legal Standard
`“In an inter partes review . . . the petitioner shall have the burden of proving a
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`proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C.
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`§ 316(e).
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`VI. 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
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`his analysis of the prior art compared with the challenged claims is based on
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`speculation. For independent claims 1 and 7, for example, Netflix and its expert
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`contend that “there is no way to tell what is meant” by the claimed “plurality of
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`independent segment files.” See Amended Declaration of Nader Mir in Support of
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`Netflix’s Opening Claim Construction Br., Ex. 2001 ¶ 52. Further, for independent
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`claim 1 and dependent claims 8 and 11, Netflix alleges the “collection of
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`instruction” and “engine” terms are means-plus-function terms under Williamson v.
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`14
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`Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015), and that the terms fail to
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`connote definite structure to one of ordinary skill in the art. See Netflix’s Opening
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`Claim Construction Br., Ex. 2002 at 16-25; Markman Hearing Tr., Ex. 2003 at
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`121:16-25, 126:7-14 (claim 1) & 127:21-129:4 (claim 11) (“But there is nothing at
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`all that shows me a structure [for digital engine].”).
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`Dr. Mir’s sworn testimony and declaration in the district court litigation
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`contradict his sworn declaration submitted with this petition. For the benefit of
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`Netflix and this petition, Dr. Mir has no problem determining what is covered by
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`the challenged claims to compare the claim limitations to the prior art. Compare
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`Ex. 1007 ¶¶ 91-92, 130, & 163 (analyzing “plurality of independent segment files”
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`and “plurality of media segment files”), with Ex. 2001 ¶ 52 (alleging “there is no
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`way to tell what is meant” by the claimed “plurality of independent segment files”)
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`and Ex. 2003 at 176:21-177:16 (testifying that the term “plurality of independent
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`segment files” is “totally confusing to me,” that “segment file itself is nonsense to
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`me,” and that he can only “guess” at the meaning of the term because “it’s really
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`confusing”). Because Netflix bears the burden to establish obviousness by a
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`preponderance of the evidence, Dr. Mir’s contradictory testimony cannot suffice to
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`meet Netflix’s burden. To the extent the Board gives any weight to Dr. Mir’s
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`analysis, Dr. Mir’s sworn declaration and more-recent testimony to the