IPR2017-00122
`Patent 9,444,868 B2
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`NETFLIX, INC.
`Petitioner,
`
`v.
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`AFFINITY LABS OF TEXAS, LLC,
`Patent Owner
`
`
`
`
`
`Case IPR2017-00122
`Patent 9,444,868 B2
`
`
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`
`
`
`Patent 9,444,868 B2
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`IN THE 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
`
`
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
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`IPR2017-00122
`Patent 9,444,868 B2
`
`TABLE OF CONTENTS
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`Introduction .................................................................................................... 2
`I.
`Treyz-Fuller discloses a list of addresses to segments of available media ..... 4
`II.
`III. Dr. Mir’s positions on claim construction in the district court create no
`inconsistency ............................................................................................................. 6
`IV. Remarks regarding Affinity’s constitutional challenge .................................. 9
`V.
`Conclusion .................................................................................................... 10
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`1
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`IPR2017-00122
`Patent 9,444,868 B2
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`I.
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`INTRODUCTION
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`Affinity’s Patent Owner Response (“POR”) reiterates, verbatim, the
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`unpersuasive arguments it made in the Preliminary Patent Owner Response
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`(“Preliminary Response”). The POR does not address or respond to the Board’s
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`preliminary findings in the Institution Decision (“ID”). Nor does the POR provide
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`any additional evidentiary or expert support for those already-rejected arguments.
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`The only new argument Affinity presents is misplaced constitutionality challenge
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`that the Board cannot resolve here.
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`Substantively, Affinity’s POR raises again the same failed arguments the
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`Board already rejected in the Institution Decision. With respect to Grounds 1 and
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`2, Affinity argues that “[t]he availability of different Internet radio links a user can
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`select in Treyz does not comprise links or network locations to segments of the
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`same available media at different output rates as required by the claims.” POR at
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`27. Not so. As the Board held, this argument is unpersuasive because “an available
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`media” is disclosed in Treyz as “songs or stations in playlist or parts of an Internet
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`radio broadcast” and the claimed “segment” is “broad enough to encompass an
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`individual song, video, or station contained within a broader collection of audio or
`video files.” ID at 9-10. The Board concluded that the evidence presented in the
`Petition “demonstrates sufficiently that the links in Treyz and Fuller are to
`segments of an available media that are available at different output rates.” Id. at
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`2
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`IPR2017-00122
`Patent 9,444,868 B2
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`12. Affinity’s POR does not address its faulty argument or otherwise explain why
`this limitation is not met and therefore the argument should yet again be rejected.
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`The POR also repeats Affinity’s incorrect belief that Netflix and its expert
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`have taken inconsistent claim construction positions in this IPR and in the related
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`District Court case and, therefore, the Petition’s invalidity arguments are
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`speculative. As the Board previously found, Affinity’s arguments are misplaced.
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`They raise claim constructions issues that have not been presented to the Board—
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`Affinity has not argued that any of the claim terms are indeed means-plus-function
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`terms. Further, Netflix and its expert, while unable to “identify the precise
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`contours of certain claim limitations before the District Court, provided detailed
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`citations and arguments in this proceeding explaining where each limitation of the
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`challenged claims is disclosed in the recited prior art.” ID at 7. The POR does not
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`present any new claim construction position nor does it address the Board’s
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`findings on this issue and therefore these arguments remain unpersuasive.
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`In sum, neither Affinity’s failed substantive arguments nor any of its other
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`arguments made in the POR rebut the Board’s preliminary determination that the
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`Petition demonstrates that claims 1-20 of the ’868 patent would have been obvious
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`over the cited prior art. Accordingly, these claims should be cancelled.
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`3
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`IPR2017-00122
`Patent 9,444,868 B2
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`II. TREYZ-FULLER DISCLOSES A LIST OF ADDRESSES TO
`SEGMENTS OF AVAILABLE MEDIA
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`Affinity’s only substantive challenge to the two instituted Grounds is that the
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`disclosure identified in the Treyz reference supposedly does not disclose “the claim
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`elements, which require generating network links or addresses to segments of an
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`available media.” POR at 26. As mentioned in the Petition, the Board previously
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`found that Treyz discloses “a list of network addresses for a plurality of portions of
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`an available media” resulting in invalidation of the claims of a patent in the same
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`family of the ’868 patent. See Samsung Elecs. Co. v. Affinity Labs of Texas, LLC,
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`Case IPR2014-00408, Pet. at 23-24 (PTAB Jan. 31, 2014) (Paper 1) IPR2014-
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`00408; id., ID at 10-12; see also, Samsung Electronics Co. v. Affinity Labs of
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`Texas, LLC, Case IPR2014-00407, slip. op. at 22 (PTAB July 20, 2015) (Paper
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`48). That limitation is materially the same as the limitation at issue here, e.g., “the
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`list includes a first URL for the given segment file and a different URL for the
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`different segment file [of an available media]1 . . ..” Ex. 1001 at 18:65-67 (claim 1).
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`1 Claim 1 contains another limitation, “to receive an HTTP communication from
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`the remotely located requesting device that indicates a desire to access the
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`available media; to send information representing the playlist to the remotely
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`located requesting device …” making clear that the independent segment files for
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`4
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`IPR2017-00122
`Patent 9,444,868 B2
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`The main differences being the former uses the term “portions” and “network
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`addresses” instead of “segment[s]” and “URLs” used in the latter. As the Board
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`noted in the related IPR for Affinity’s other patent asserted against Netflix,
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`Affinity’s argument “assumes that a segment of an available media cannot
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`constitute an individual Internet radio station or song.” Netflix, Inc. v. Affinity Labs
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`of Texas, LLC, Case IPR2016-01701, Decision at 9-10 (PTAB March 2, 2017)
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`(Paper 9). As proposed in the Petition, the Board adopted its prior construction of
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`“an available media” and found that the term “segment … is generally defined as
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`‘[e]ach of the parts into which something is or may be divided.’” ID at 6, 11. In
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`the POR, Affinity did not contest the adopted construction of “an available media”
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`or the interpretation of “segment,” nor did it provide any alternative constructions.
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`As such, a “segment” can include “an individual song, video, or station contained
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`within a broader collection of audio or video files” as disclosed in Treyz. Id. at 11.
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`Therefore, consistent with the Board’s previous decisions in prior IPRs involving
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`Affinity’s claims reciting similar language, Treyz discloses this limitation.
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`The POR further argues that the Petition improperly incorporated by
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`reference materials and arguments from other proceedings. POR at 26-27. But as
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`which URLs are included in the playlist are for the “available media.” See Ex.
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`1001 at 19:3-7.
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`5
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`IPR2017-00122
`Patent 9,444,868 B2
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`the Board found in the ID, Netflix provided multiple citations to Treyz in support
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`of its assertion. ID at 12. The fact that Netflix additionally cited to prior Board
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`determinations with respect to claim elements in patents of the same family simply
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`provides additional persuasive reasons to find the same or similar elements in the
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`same prior art. Again, the POR is silent on this issue.
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`Accordingly, the POR does not rebut Netflix’s showing that, consistent with
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`the Board’s prior rulings as to the patents in the family of the ’868 patent, claims
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`1–12, 14, 15, and 17–20 are unpatentable under 35 U.S.C. § 103 as having been
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`obvious over Treyz and Fuller and claims 13 and 16 as having been obvious over
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`Treyz, Fuller, and Glaser.
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`III. DR. MIR’S POSITIONS ON CLAIM CONSTRUCTION IN THE
`DISTRICT COURT CREATE NO INCONSISTENCY
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`Throughout its response, Affinity alleges that Netflix has not done a proper
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`invalidity analysis because Netflix’s expert witness, Dr. Nader Mir, testified in the
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`related District Court proceeding that some claim terms in the ’868 patent were
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`indefinite and some terms were means-plus-function limitations that required
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`construction under 35 U.S.C. § 112, ¶ 6 (pre-AIA).
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`Initially, Affinity’s complaints about supposed inconsistencies in Netflix’s
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`arguments in the District Court litigation ignore its own inconsistencies. Having
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`convinced the District Court to preliminarily adopt its own arguments that none of
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`6
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`IPR2017-00122
`Patent 9,444,868 B2
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`the terms in the patents are subject to §112, ¶ 6, Affinity now turns around and
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`urges the Board to adopt the opposite conclusion in this proceeding. Netflix
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`argued in the District Court litigation that certain claim terms in claims 1, 8 and
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`11—terms reciting “collection of instructions” or “engine” for performing a
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`function—should be properly construed under §112, ¶ 6 even though the terms did
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`not use the “means” because they failed to recite a sufficiently definite structure.
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`See Williamson v. Citrix 792 F.3d 1339, 1348 (Fed. Cir. 2016). Netflix’s supposed
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`“inconsistencies” are justified by the difference in claim construction standards,
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`wherein this proceeding adopts a broader claim interpretation than the district
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`Court. See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016).
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`Means-plus-function treatment would interpret the claims to have a narrower
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`scope—i.e., to be limited to the structures disclosed in the specification—and there
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`is no inconsistency in arguing that the “broadest reasonable interpretation”
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`standard employed in this proceeding would not be as limited. Thus, properly
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`applying the BRI standard for these claim terms, Dr. Mir treated them as not
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`requiring means-plus-function analysis for purposes of these proceedings. In
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`contrast, there is no justification for arguing, as Affinity does, that the Board in this
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`proceeding should employ a narrower claim construction than that urged at the
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`District Court. Accordingly, the differences in the parties’ positions in this
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`proceeding as compared to the District Court cut against Affinity, not Netflix.
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`7
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`IPR2017-00122
`Patent 9,444,868 B2
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`Second, while several claim terms are ambiguous and therefore indefinite
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`under the District Court claim construction standard, under the BRI standard used
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`in this proceeding, Netflix and Dr. Mir provided pin-point citations to where each
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`limitation is found in the various prior art references. As the Board acknowledged
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`it its Institution Decision, “even if Petitioner and its declarant could not identify
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`the precise contours of certain claim limitations before the District Court, they
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`provide detailed citations and arguments in this proceeding explaining where each
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`limitation of the challenged claims is disclosed in the recited prior art.” ID at 7
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`(emphasis added). Dr. Mir did not “guess” as to the meanings of claim terms.
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`Rather, he was aware of a spectrum of technologies invoked by each ambiguous
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`claim term, and identified elements in the prior art he knew was within the
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`broadest reasonable interpretation of those terms.2 That is sufficient to show that
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`the prior art renders the challenged claims obvious.
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`2 Moreover, that a person of skill may not know, with reasonable certainty, the
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`scope of an invention does not preclude finding that prior art falls within that
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`scope. For example, a person of skill would know that a 10-foot pole meets a
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`limitation requiring a “pole” that is “around 10 feet long,” even though he may not
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`know whether a 9 or 8-foot pole falls within that scope.
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`8
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`IPR2017-00122
`Patent 9,444,868 B2
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`Moreover, despite is oft-repeated complaints regarding claim interpretation,
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`Affinity has not proposed a single construction in this proceeding for the terms it
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`complains Netflix failed to properly interpret. Nor has Affinity’s response disputed
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`the claim construction the Board preliminarily adopted in the Institution Decision.
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`Thus, Affinity’s claim construction related arguments do not rebut the obviousness
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`of its claims.
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`IV. REMARKS REGARDING AFFINITY’S CONSTITUTIONAL
`CHALLENGE
`Affinity argues that the IPR process is unconstitutional under the 7th
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`Amendment because it deprives the patent owner of its right to a trial by jury.
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`POR at 3-8. The Federal Circuit has already rejected similar arguments. For
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`example, in the MCM case, the Court reviewed a similar challenge to the
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`constitutionality of IPRs and held that “assigning review of patent validity to the
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`PTO is consistent with Article III.” MCM Portfolio LLC v. Hewlett-Packard Co.,
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`812 F.3d 1284, 1291 (Fed. Cir. 2015), cert. denied 137 S. Ct. 292 (2016). A
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`similar issue was raised on appeal to the Federal Circuit by Oil State Energy; the
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`Federal Circuit denied the appeal under Rule 36 without opinion. See Oil State
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`Energy Services, LLC, v. Greene’s Energy Group, LLC, 639 Fed. App’x 639 (Fed.
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`Cir. 2016), cert. granted, (U.S. Nov. 23, 2016) (No. 16-712). The Supreme Court
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`9
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`IPR2017-00122
`Patent 9,444,868 B2
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`of the United States has granted certiorari on Oil State but until that case is decided
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`the law remains unchanged.
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`In any case, Affinity’s constitutionality argument is directed to the wrong
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`forum – the PTAB cannot hear such challenges. As the Board correctly
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`acknowledged it “lacks authority to rule on the constitutional questions.” Sony
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`Corp. v. Cascades Projection LLC, Case No. IPR2015-01846, Dkt. No. 32, at 34-
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`35 (P.T.A.B. Jan. 11, 2017). That is because “challenges to the constitutionality of
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`a statute or regulation promulgated by an agency are beyond the power or the
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`jurisdiction of an agency.” Gilbert v. Nat'l Transp. Safety Bd., 80 F.3d 364, 366–
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`67 (9th Cir. 1996). Because the PTAB is an agency of the executive branch, it
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`does not and cannot determine the constitutionality of the statutes and regulations
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`it operates under. Nor does a party need to preserve such a challenge to later raise
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`it in Federal Court. Id. While it is unclear why Affinity seeks to burden the Board
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`with these arguments, it is clear that they are the province of the Federal Courts,
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`not the PTAB.
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`V. CONCLUSION
`For the foregoing reasons, Petitioner Netflix, Inc. respectfully requests an
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`order holding claims 1–12, 14, 15, and 17–20 of the ’868 patent unpatentable
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`under 35 U.S.C. § 103 as having been obvious over Treyz and Fuller and holding
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`10
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`IPR2017-00122
`Patent 9,444,868 B2
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`claims 13 and 16 of the ’868 patent unpatentable under 35 U.S.C. § 103 as having
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`been obvious over Treyz, Fuller, and Glaser.
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`Date: September 25, 2017
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`Respectfully submitted,
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`
`
`By: /Hector J. Ribera/
`Hector J. Ribera (Reg. No. 54,397)
`Marton Ribera Schumann & Chang LLP
`548 Market St. Suite 36117
`San Francisco, CA 94104
`Email: hector@martonribera.com
`Tel: (415) 360-2511
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`Attorneys for Petitioner, Netflix, Inc.
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`11
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`IPR2017-00122
`Patent 9,444,868 B2
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`CERTIFICATE OF WORD COUNT PURSUANT TO 37 C.F.R. § 42.24(D)
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`The undersigned hereby certifies that, based on the word-processing system
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`used to prepare the above paper, the word count for the above Reply is 2,121,
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`which is less than the 5,600 allowed under 37 CFR § 42.24(c)(1).
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`
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`Date: September 25, 2017
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`
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`By: /Hector J. Ribera/
`Hector J. Ribera (Reg. No. 54,397)
`Marton Ribera Schumann & Chang LLP
`548 Market St. Suite 36117
`San Francisco, CA 94104
`Email: hector@martonribera.com
`Tel: (415) 360-2511
`
`Attorneys for Petitioner, Netflix, Inc.
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`12
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`IPR2017-00122
`Patent 9,444,868 B2
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`CERTIFICATE OF SERVICE PURSUANT TO
`37 C.F.R. § 42.6
`
`Pursuant to 37 CFR § 42.6(e)(4) the undersigned certifies that on September
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`25, 2017, a complete and entire copy of this Petitioner’s Reply to Patent Owner’s
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`Response and any supporting exhibits were provided via electronic mail, to the
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`Patent Owner by serving the e-mail addresses of record as follows:
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`
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`
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`ATTN: Ryan M. Schultz (Reg. No. 65,134)
`RSchultz@RobinsKaplan.com
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`Sui Li (Reg. No. 74,617)
`SLi@RobinsKaplan.com
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`
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`Date: September 25, 2017
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`
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`By: /Hector J. Ribera/
`Hector J. Ribera (Reg. No. 54,397)
`Marton Ribera Schumann & Chang LLP
`548 Market St. Suite 36117
`San Francisco, CA 94104
`Email: hector@martonribera.com
`Tel: (415) 360-2511
`
`Attorneys for Petitioner, Netflix, Inc.
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`13
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