IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`U.S. Patent No.:
`Inventor(s):
`Issue Date:
`Appl. No.:
`Filing Date:
`Title:
`Attorney Docket
`No.:
`
`
`
`9,444,868
`Russell W. White, Kevin R. Imes
`September 13, 2016
`14/747,002
`June 23, 2015
`System to communicate media
`
`2016-NETFLIX-00003
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 9,444,868
`
`
`
`

`
`TABLE OF CONTENTS
`I. 
`INTRODUCTION ........................................................................................... 1 
`II.  MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ........................... 3 
`A. 
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ............................ 3 
`B. 
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ..................................... 3 
`C. 
`Lead and Back-Up Counsel and Service Information Under 37 C.F.R.
`§ 42.8(b)(3) and (4) .......................................................................................... 5 
`Payment of Fees – 37 C.F.R. § 42.103 ............................................................ 5 
`III. 
`IV.  REQUIREMENTS UNDER 37 C.F.R. § 42.104 ............................................ 5 
`A.  Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................. 5 
`B. 
`Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ............ 6 
`C. 
`Claim Construction under 37 C.F.R. §§ 42.104(b)(3) .......................... 7 
`SUMMARY OF THE CHALLENGED PATENT AND THE LEVEL OF
`V. 
`ORDINARY SKILL IN THE ART ........................................................................... 9 
`A. 
`Effective Filing Date ............................................................................. 9 
`B. 
`Specification .......................................................................................... 9 
`C. 
`Prosecution History ............................................................................. 10 
`D. 
`The Level of Ordinary Skill in the Art ................................................ 11 
`E. 
`Claim Listing ....................................................................................... 12 
`IDENTIFICATION OF WHERE EACH ELEMENT OF EACH claim is
`VI. 
`found in the prior art ................................................................................................ 12 
`A.  Ground 1: Treyz and Fuller render obvious claims 1-12, 14, 15, and
`17-20 in light of the knowledge of a POSITA .............................................. 12 
`B. 
`Ground 2: Treyz, Fuller, Glaser, and the knowledge of a POSITA
`render obvious claim 13, 16 .......................................................................... 63 
`VII.  CONCLUSION .............................................................................................. 66 
`
`
`
`
`
`
`ii
`
`

`
`TABLE OF EXHIBITS
`
`1005
`
`Description
`Ex.
`1001 U.S. Patent No. 9,444,868 (“White”)
`1002 Claim Listing
`1003 U.S. Patent Application No. 09/537,812
`1004 Affinity Labs of Texas, LLC v. Netflix, Inc., Case No. 1:15-cv-00849, Dkt.
`No. 60 (W.D. Tex., Sept. 21, 2016)
`Affinity Labs of Texas, LLC’s Identification of Asserted Claims and
`Initial and Preliminary Infringement Contentions for U.S. Patent No.
`9,444,868
`1006 Excerpts from File History for U.S. Pat. No. 9,444,868
`1007 Declaration of Nader Mir, Ph.D.
`1008 U.S. Patent No. 8,688,085 (“White I”)
`1009 Affinity Labs of Texas, LLC v. Amazon.com, Inc.; Amazon Digital
`Services, Inc., Case No. 6:15-cv-00029, Dkt. No. 68 (W.D. Tex.,
`September 23, 2015)
`1010 Affinity Labs of Texas, LLC v. DirecTV, LLC et al., Case No. 6:15-cv-
`00030, Dkt. No. 58 (W.D. Tex., July 7, 2015)
`1011 U.S. Patent No. 8,359,007 (“White II”)
`1012 Juga Kivijarvi et al., A comparison of lossless compression methods for
`medical images, Computerized Medical Imaging and Graphics 22 (1998)
`1013 Affinity Labs of Texas v. Samsung Electronics et al., Case No. 2015-1933,
`Summary Affirmance (Fed. Cir. May 9, 2016)
`1014 Howard Shelanski, The Speed Gap: Broadband Infrastructure and
`Electronic Commerce, Berkeley Technology Law Journal (1999)
`1015 U.S. Patent No. 6,678,215 (“Treyz”)
`
`iii
`
`

`
`Description
`Ex.
`1016 U.S. Patent No. 6,711,622 (“Fuller”)
`1017 U.S. Patent No. 6,985,932 (“Glaser”)
`1018 ITU-T Recommendation G.991.1, International Telecommunication
`Union (October 1998)
`1019 Data Over Cable Interface Specifications; Cable Modem Termination
`System—Network Side Interface Specification; SP-CMTS-NSII01-
`960702 (1996)
`1020 C.V. of Nader Mir, Ph.D.
`1021 U.S. Patent No. 6,389,473 (“Carmel”)
`1022 Vinton G. Cerf and Robert E. Kahn, A Protocol for Packet Network
`Interconnection, IEEE Trans. on Communications, May 5, 1974 (“Cerf”)
`1023 RFC2032 – Request for Comments (RFC) RTP Payload Format for H.261
`Video Streams, October 1997 (“RFC2032”)
`1024 RFC2326 – Request for Comments (RFC) Real Time Streaming Protocol
`(RTSP), April 1998 (“RFC2326”)
`1025 RFC2616 – Request for Comments (RFC) Hypertext Transfer Protocol
`(HTTP), June 1999 (“RFC2616”)
`1026 Excerpts from Jamie Jaworski, Java 2 Platform Unleashed, Sams (1999)
`1027 RFC1889 – Request for Comments (RFC) RTP: A Transport Protocol for
`Real-Time Applications, January 1996 (“RFC1889”)
`1028 U.S. Patent No. 5,812,786 (“Seazholtz”)
`1029 Excerpt from IBM Dictionary of Computing (1994)
`1030 George Kennedy and Bernard Davis, Electronic Communication Systems,
`Macmillan/McGraw-Hill School Publishing Company (4th ed., 1993)
`1031 RFC1630 – Request for Comments (RFC) Universal Resource Identifiers
`in WWW, June 1994 (“RFC1630”)
`
`iv
`
`

`
`Description
`Ex.
`1032 U.S. Patent No. 6,041,345 (“Levi”)
`1033 Stokes et al., Development of a MPEG Data Stream Characterization for
`Use with ATM Networks, 1995
`1034 Universal Serial Bus Specification, Revision 1.1 (September 23, 1998)
`1035 Compaq Prosignia Notebooks Spec Comparison (May 8, 1999)
`1036 Gary Hoffman and Daniel Moore, IEEE 1394: A Ubiquitous Bus, IEEE
`Computer Society Press (March 5-9, 1995)
`1037 RFC1738 – Uniform Resource Locators (URL) (December 1994)
`1038 Extensible Markup Language (XML) 1.0; W3C Recommendation 10-
`February-1998 (archived February 13, 1998)
`1039 Affinity Labs of Texas, LLC v. Samsung Electronics Co. Ltd et al.,
`Appeal No. 2016-1208 (Fed. Cir. Oct. 17, 2016)
`1040 Declaration of Professor Kevin C. Almeroth in Support of Affinity Labs
`of Texas, LLC’s Opening Claim Construction Brief (October 7, 2016)
`
`v
`
`

`
`I.
`
`INTRODUCTION
`Netflix, Inc. (“Netflix” or “Petitioner”) hereby respectfully requests inter
`
`partes review (“IPR”) under 35 U.S.C. §§ 311-319 for claims 1-20 (“Challenged
`
`Claims”) of U.S. Patent No. 9,444,868 to White et al., titled “System to
`
`Communicate Media” (“’868 patent,” Ex. 1001).
`
`The ’868 patent is assigned to Affinity Labs of Texas, LLC (“Affinity”).
`
`Affinity’s founder, Russel White, a patent attorney, is a named inventor on the
`
`’868 patent and related patents. But as repeatedly found in prior lawsuits, Mr.
`
`White did not invent anything new. Decisions analyzing Affinity’s patents, both in
`
`the Office and in district courts, have found invalid claims or claims lacking
`
`patentable subject matter. Despite these repeated failures, Affinity’s continued
`
`business consists of filing continuation applications claiming priority to its original
`
`March 28, 2000, application, No. 09/537,812 (“’812 application,” Ex. 1003) with
`
`new claims that simply rearrange words from previously invalidated claims. The
`
`’868 patent is the latest to issue and, within a week of issuance, was asserted
`
`against Netflix. See Ex. 1004.
`
`Since Affinity began its litigation campaign, U.S. District Courts have held
`
`two patents in this family ineligible for patent protection under 35 U.S.C. § 101,
`
`the Board has invalidated claims of three other continuations in IPR proceedings,
`
`and the Federal Circuit has found that the specification “does not disclose any
`
`1
`
`

`
`particular mechanism for wirelessly streaming content to a handheld device.”
`
`Affinity v. Amazon.com Inc., --- F.3d ---- 2016 WL 5335502, *3 (Sep. 23, 2016).
`
`In 2015, Affinity filed for the ’868 patent as a seventh-generation
`
`continuation of the ’812 application. Affinity now asserts that “the inventions
`
`detailed in the ’812 application … underpin the streaming technology known
`
`generally as Hypertext Transfer Protocol adaptive bitrate (HTTP ABR) streaming.”
`
`Ex. 1004 ¶17; Ex. 1005. But the Board has already found that bitrate-switching
`
`streaming was not new when the ’812 application was filed. In IPR2014-00407
`
`(“’407 IPR”), the Board held that the challenged claims of U.S. Patent No.
`
`8,359,007 (“’007 patent”)—another Affinity patent related to the ’868 patent
`
`claiming the same bitrate-switching idea—were unpatentable in view of the
`
`combination of two references asserted in this petition, Treyz (Ex. 1015) and Fuller
`
`(Ex. 1016). In doing so, the Board found that Fuller, “discloses the benefit of
`
`using two different transmission rates to deliver streaming media.” ’407 IPR, Final
`
`Written Decision (Paper 48) (“FWD”), p. 12. The Federal Circuit summarily
`
`affirmed the Board’s decision. See Ex. 1039.
`
`The same invalidating combination of references used in the ’407 IPR—
`
`Treyz and Fuller—also renders obvious most of the claims of the ’868 patent. The
`
`remaining claims, which simply add conventional buffer functionality, are
`
`rendered obvious by the Treyz-Fuller combination in view Glaser (Ex. 1017). Dr.
`
`2
`
`

`
`Nader Mir, an expert in the field of networking and streaming, demonstrates this
`
`obviousness in his supporting declaration (Ex. 1007). Based on this prior art,
`
`Netflix requests cancellation of claims 1-20 of the ’868 patent.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(A)(1)
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`The real party in interest is Netflix, Inc.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`The ’868 patent is the subject of a patent infringement lawsuit brought by
`
`Affinity in the Western District of Texas, Case No. 1:15-cv-00849. U.S. Patent
`
`No. 9,094,802 (“’802 patent”) is also the subject of the same suit. Netflix has
`
`petitioned for IPR of the ’802 patent in IPR2016-01701.
`
`Other sibling patents to the ’868 patent have been the subject of adverse
`
`decisions in District Courts and at the Board. These sibling patents are all
`
`continuations of the same parent ’812 application, share the same specification,
`
`and have substantively similar claims. In two District Court cases, recently
`
`affirmed by the Federal Circuit,1 Judges Manske and Smith found every claim of
`
`two of these sibling patents, U.S. Patent Nos. 7,970,379 and 8,688,085, to be
`
`ineligible for patenting under 35 U.S.C. § 101 and, in doing so, found the claims
`
`provided no inventive concept. Ex. 1009, p. 6; Ex. 1010, pp. 14, 19. As stated by
`
`
`1 Affinity v. Amazon.com Inc., --- F.3d ---- 2016 WL 5335502 (Sep. 23, 2016);
`Affinity v. DirecTV, LLC, --- F.3d ---- 2016 WL 5335501 (Sep. 23, 2016).
`
`3
`
`

`
`Judge Smith, “[t]he ’085 patent solves no problems, includes no implementation
`
`software, designs no system.” Ex. 1009, p. 6. The claims of the ’085 patent are
`
`substantively similar to those of the ’868 patent, allegedly including the “bitrate-
`
`switching” feature. In fact, invalidated claim 16 of the ’085 patent is similar to the
`
`independent claims of the ’868 patent. Compare Ex. 1001, 18:56-19:24, 19:48-
`
`20:10, 19:49-21:6 with Ex. 1008 (’085 patent), 20:6-20:24, 20:30-36.
`
`Three other siblings to the ’868 patent have had claims rendered
`
`unpatentable by the Board. First, in IPR2014-00209 and -00212, the Board held
`
`claims 16, 19 and 20 of U.S. Patent No. 7,953,390 unpatentable. This decision too
`
`was recently affirmed by the Federal Circuit. Ex. 1013. Second, in IPR2014-
`
`01181, -01182 and -01184, the Board held claims 1-3 and 5-14 of U.S. Patent No.
`
`8,532,641 unpatentable in light various combinations of art. Third—and most
`
`relevant here—in the ’407 IPR, the Board held claims 1, 2, 5-8, and 10 of the ’007
`
`patent unpatentable in light of Treyz and Fuller. The claims of the ’007 patent are
`
`strikingly similar to Challenged Claims, which add more words but not substance.
`
`See Ex. 1007, ¶¶79-81.
`
`Affinity cannot escape these prior invalidity rulings on similar claims by
`
`simply rearranging claim limitations. Given the extensive overlap in claim
`
`language between the unpatentable claims of the ’007 patent and the claims of the
`
`’868 patent at issue here, to promote judicial economy and to the extent feasible,
`
`4
`
`

`
`Netflix respectfully requests that this proceeding be assigned to the same panel that
`
`presided over IPR2014-00209, -00212, and IPR2014-00407, -00408 (Judges
`
`Turner, Pettigrew, and Tornquist).
`
`C. Lead and Back-Up Counsel and Service Information Under 37
`C.F.R. § 42.8(b)(3) and (4)
`
`Hector Ribera (Reg. No. 54,397)
`Marton Ribera Schumann & Chang LLP
`300 Valley Street, Suite 301
`Sausalito, CA 94965
`Email: hector@martonribera.com
`Tel: (415) 360-2512
`
`
`David D. Schumann (Reg. No. 53,569)
`Marton Ribera Schumann & Chang LLP
`300 Valley Street, Suite 301
`Sausalito, CA 94965
`Email: david@martonribera.com
`Tel: (415) 360-2513
`
`Petitioner consents to electronic service by delivering the documents to the
`
`email addresses of primary and backup counsel.
`
`III. PAYMENT OF FEES – 37 C.F.R. § 42.103
`Petitioner pays the fee for this petition as required by 37 C.F.R. § 42.15(a)
`
`contemporaneously with the filing of this petition.
`
`IV. REQUIREMENTS UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies pursuant to 37 C.F.R. § 42.104(a) that the ’868 patent is
`
`available for IPR and that Petitioner is not barred or estopped from requesting an
`
`IPR challenging the validity of the Challenged Claims on the grounds identified in
`
`the petition.
`
`5
`
`

`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`Netflix respectfully requests cancellation of claims 1-20. Netflix presents
`
`one main unpatentability challenge based on the combination of Treyz and Fuller
`
`(combined with Glaser for two dependent claims).
`
` U.S. Patent No. 6,678,215 (“Treyz”), Ex. 1015. Treyz was filed on March 20,
`
`2000, claims priority to a provisional application filed on December 28, 1999,
`
`and issued on January 13, 2004. Treyz is therefore prior art to the ’868 patent
`
`under 35 U.S.C. § 102(e).
`
` U.S. Patent No. 6,711,622 (“Fuller”), Ex. 1016. Fuller was filed on December
`
`13, 1997 and issued on March 23, 2004. Fuller is therefore prior art to the ’868
`
`patent under 35 U.S.C. § 102(e).
`
` U.S. Patent No. 6,895,932 (“Glaser”), Ex. 1017. Glaser was filed on January
`
`25, 1999 and issued on January 10, 2006. Glaser is therefore prior art to the
`
`’868 patent under 35 U.S.C. § 102(e).
`
`The below table details the grounds related to the combinations of Treyz,
`
`Fuller, and Glaser, in light of the knowledge of a person of ordinary skill in the art
`
`at the time of the invention (“POSITA”), around March of 2000:
`
`Ground
`1
`2
`
`References
`Basis
`Claims
`1-12, 14, 15, 17-20 § 103 Treyz and Fuller
`13, 16
`§ 103 Treyz, Fuller, and Glaser
`
`
`
`6
`
`

`
`C. Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`Pursuant to § 42.100(b) and solely for purposes of this IPR, Netflix
`
`construes the claim language such that terms are given their broadest reasonable
`
`interpretation (“BRI”) in light of the specification. Terms not specifically listed
`
`and construed below should be given their plain and ordinary meaning under the
`
`BRI. See 37 C.F.R. § 42.100(b). Because the standard for claim construction at
`
`the PTO is different than that used in U.S. District Court litigation, Netflix reserves
`
`the right to argue different constructions for terms in the ’868 patent as appropriate
`
`in other proceedings. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364,
`
`1369 (Fed. Cir. 2004); MPEP § 2111.
`
`1.
`“segment files”
`In the ’407 IPR, the Board construed the term “portions of an available
`
`media” as “parts 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.” ’407 IPR, FWD, p. 6. In the ’868 patent, Affinity claims “segment
`
`files.” For example, claim 1 of the ’007 patent recited “a list of network addresses
`
`for a plurality of portions of an available media, …” Id., p. 5. Claim 1 of the ’868
`
`patent recites “a plurality of independent segment files … 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” and claim 4 adds that “the plurality of
`
`7
`
`

`
`independent segment files comprise serial component parts of the available
`
`media …” Although the original specification does not mention “segment files,”
`
`following the reasoning from the Board, the broadest reasonable interpretation of
`
`the plurality of segment files are portions of the available media in the form of
`
`files. Accordingly, under the BRI, a “segment file” is 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. See Ex.
`
`1007, ¶¶65-66.
`
`2.
`“cellular telephone”
`In the ’407 IPR, the Board construed the term “cellular telephone” to mean
`
`“a telephone with access to a cellular radio system so it can be used over a wide
`
`area, without a physical connection to a network.” ’407 IPR, FWD, p. 6. The
`
`same construction should apply here. See Ex. 1007, ¶¶65-66.
`
`3.
`
`“a different segment” (claim 1) /
`“the given segment” (claims 6, 12)
`Claims 6 and 12 depend from claims 1 and 7 respectively. Both dependent
`
`claims refer to “the given segment” but omit the word “file.” Likewise, claim 1
`
`recites “a different segment” but omits the word “file.” These elements lack
`
`antecedent basis. Claims 1 and 7 do not mention any “segment”; only segment
`
`files. Accordingly, a POSITA would understand the terms “the given segment” in
`
`8
`
`

`
`claims 6 and 12 and “the different segment” in claim 1, in the context of claims 1
`
`and 7, to actually refer to segment files. See Ex. 1007, ¶¶65-66.
`
`V.
`
`SUMMARY OF THE CHALLENGED PATENT AND THE LEVEL
`OF ORDINARY SKILL IN THE ART
`A. Effective Filing Date
`Given the statutory limits of the scope of IPR, for purposes of this petition
`
`only, Netflix does not challenge the lack of written description for the claims of the
`
`’868 patent in the ’812 application and all of its children but notes that the priority
`
`date to which the ’868 patent is entitled is no earlier than its filing date on June 23,
`
`2015. Netflix will challenge the written description in other proceedings.
`
`B.
`Specification
`The ’868 patent, like its sibling patents, is directed to a system for delivering
`
`media. Ex. 1007, ¶¶35-36. As Figure 1 illustrates, the system consists of four
`
`components labeled according to their generic computer names: (1) a “storage
`
`device 105 operable to store information”; (2) a “[d]igital engine 101 … operable
`
`to maintain information associated with the selected audio information” and “in
`
`association with an Internet website configured to provide access to selectable
`
`information”; (3) a “[c]ommunication engine 102 … to wirelessly communicate
`
`the selected information to [a] electronic device”; and (4) an “electronic device
`
`[103] operable to receive wireless communications.” Ex. 1001, 3:41, 3:52-54, 4:3-
`
`5, 3:47-49, 4:2-3.
`
`9
`
`

`
`In this system, “communications networks having less or slower transfer
`
`rates” or “high-speed wireless communication networks may be used to
`
`communicate the selected audio information.” Ex. 1001, 6:3-8; 5:59-6:12. For
`
`example, high-speed networks can be used until enough information has been
`
`communicated and buffered into a memory. Id., 6:15-19. “Upon communication
`
`of a certain percentage of the selected audio information, slower communication
`
`speeds may then be used to communicate additional selected audio information.”
`
`Id., 6:19-22.
`
`The specification also describes the process whereby a user selects media
`
`content to be delivered, a playlist based on the selection is created, the information
`
`associated with the playlist is obtained, and then depending on how the media is to
`
`be sent (i.e., via wireless or wire), the media is formatted for the appropriate type
`
`of transmission. Id., 14:39-14:49.
`
`C.
`Prosecution History
`The ’868 patent, which issued from Application No. 14/747,002, was filed
`
`on June 23, 2015 (Ex. 1006, p. 16), a month before the FWD in the ’407 IPR
`
`invalidated the “bitrate-switching” claims in the ’007 sibling patent. See ’407 IPR,
`
`FWD (dated July 20, 2015). Despite the Board’s findings in the ’407 IPR, its
`
`decision was not discussed in the correspondence between the Patent Owner and
`
`10
`
`

`
`the Examiner; it was listed as an entry within hundreds of pages of references
`
`submitted across eleven information disclosure statements.
`
`The first office action allowed most claims as filed and rejected claims 7-13
`
`under 35 U.S.C. § 101. Ex. 1006, p. 12. Affinity responded by amending the
`
`rejected claims to recite an “electronic device,” “memory devices,” a “housing,” a
`
`“transceiver,” and a “processor” and argued that the “rejection is overcome, as the
`
`system of claim 7 clearly recites statutory subject matter, namely specific
`
`hardware, including an electronic device and multiple memory devices.” Id., p. 10.
`
`In response to the amendment, the claims were allowed on July 7, 2016, just over a
`
`year after being filed. Id., p. 1. This continuation application, never part of the
`
`’407 IPR, avoided the need for explanation as to why these claims overcome the
`
`Treyz-Fuller prior art that the Board found rendered obvious the similar claims of
`
`the ’007 patent.
`
`D. The Level of Ordinary Skill in the Art
`The level of ordinary skill a POSITA in the relevant field for the ’868 patent
`
`around the claimed priority date (March 28, 2000) would have had is 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. Ex. 1007, ¶41.
`
`11
`
`

`
`E. Claim Listing
`Exhibit 1002 is a claim listing that enumerates each claim element.
`
`VI.
`
`IDENTIFICATION OF WHERE EACH ELEMENT OF EACH
`CLAIM IS FOUND IN THE PRIOR ART
`A. Ground 1: Treyz and Fuller render obvious claims 1-12, 14, 15,
`and 17-20 in light of the knowledge of a POSITA
`1.
`Overview of Treyz (Ex. 1015)
`Treyz, titled “Digital Audio Devices,” discloses an audio device for
`
`downloading and/or streaming media content over the Internet. See Ex. 1015,
`
`Abst.; Ex. 1007, ¶¶70-72. The device of Treyz is able to place and receive calls
`
`using “cellular telephone transmissions.” Ex. 1015, 1:65-2:2, 2:22-35, 3:13-14,
`
`16:52-60. The device may communicate over wired or wireless means. Id., 1:65-
`
`2:2, 2:22-35, 2:41, 7:62-64, 13:36-41, Fig. 10a.
`
`Treyz allows the user to select media content from a list of available media
`
`on the network using an Internet web browser. See Ex. 1015, Fig. 9b, 17:25-43. It
`
`accesses a number of media sources. Id., Figs. 1 and 2. The user can customize the
`
`content with a “schedule of content to be played.” Id., 21:50-51. The schedule is
`
`depicted as a list of segments in Figure 14, reproduced below.
`
`12
`
`

`
`
`
`Customized stations, along with other settings, may be stored remote from
`
`the Treyz device in an “Internet-based” or “remotely-accessed” service. Id., 3:67-
`
`4:3, 5:60-6:5; see also id., 5:6-12, 6:11-15, 22:19-24. The content order and
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`duration “settings may be downloaded to the audio device for use by the audio
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`device … in determining which types of content to provide to the user….” Id.,
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`5:8-12. Treyz is not limited to audio; if the device “has a display, [then] text,
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`graphics, and video may be displayed on the display.” Id., 9:4-6.
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`Treyz further teaches that the device “may have appropriate communications
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`hardware and software to support various communications functions.” Id., 2:36-
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`38. Specifically, the device “may have … a modem, a telephone modem, a cellular
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`modem, an integrated services digital network (ISDN) modem, a digital subscriber
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`line (DSL) modem, a cable modem, or any other suitable communications
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`circuitry.” Id., 2:38-44; see also id., Fig. 4 (depicting a device with modem
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`circuitry and short- and long-range communications circuitry). Treyz further
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`provides that “[t]he choice of which of these arrangements to use may be based on
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`economic and quality issues. For example, using higher bandwidth paths such as
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`DSL paths may provide higher quality signals or faster download times, but may
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`require more expensive hardware than using a lower bandwidth approach based,
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`e.g., on a telephone line modem.” Id., 2:47-53. Treyz also teaches that the media
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`streams can be “buffered using local memory to improve its quality.” Id., 1:59-60.
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`2.
`Overview of Fuller (Ex. 1016)
`Fuller discloses a web-based audio/video streaming system. Ex. 1016,
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`Abst., 1:15-17; Ex. 1007, ¶¶73-75. In Fuller, a web browser is used to select links
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`for available content on a network. Ex. 1016, 4:46-49, 8:30-36, Figs. 1-3. When a
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`link is selected, the user selects a transmission speed and desired video frame rate.
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`Id., Figs. 4, 5 and 10:11-17. Based on the selection, the server selects a
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`transmission rate for the selected audio or video content. Id., 10:56-11:6.
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`Fuller also teaches transmission rate switching in streaming media. The
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`Fuller server transmits one or more Java applets to the client. Id., 8:37-41. These
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`applets decode audio and video data and monitor the rate at which the client
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`receives and processes information from the server. Id., 8:37-41, 10:11-17. If the
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`audio or video data are not being received or processed at a sufficient rate, the
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`client may instruct the server to change the rate of transmission to “more
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`appropriately match the bandwidth availability of the client.” Id., 10:11-17. Fuller
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`describes allowing a user to adjust the video and/or audio output rates causing the
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`Java applet to request a corresponding rate change from the web server. See id.,
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`10:11-17, 10:61-11:6.
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`3. Motivation to Combine Treyz and Fuller
`The Board already agreed that “one of ordinary skill in the art would have
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`sought to use, and would have had a reasonable expectation of success in
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`implementing, Fuller’s idea of transmission rate switching in Treyz.” ’407 IPR,
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`FWD, pp. 15, 17-18.
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`A POSITA would recognize the benefits of configuring the Treyz device to
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`request portions of media content for delivery at different communication rates, as
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`taught in Fuller. Ex. 1007, ¶¶82-86. Adding these features to the Treyz device
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`would provide for efficient use of transmission bandwidth and improved quality of
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`the streaming media transmission. Id. Both Treyz and Fuller concern the delivery
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`of streaming multimedia content over an Internet-based client/server network. See,
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`e.g., Ex. 1016, 1:14-17, 2:53-56; Ex. 1015, Abst.; Ex. 1007, ¶¶82-86. Therefore, a
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`POSITA would have been motivated to look to Fuller’s teachings of transmission
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`rate switching in connection with Treyz’s streaming system. Ex. 1007, ¶¶82-86.
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`Fuller recognizes that, if a client is not receiving data at a “sufficient” rate,
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`then the client advantageously “can request a different rate of transmission.” See,
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`e.g., Ex. 1016, 10:11-14; Ex. 1007, ¶84. As taught by Fuller, a POSITA would
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`recognize that a client receiving an audio and/or video stream using Treyz’s device
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`may have difficulty receiving data at a sufficient rate to provide uninterrupted
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`playback. Ex. 1007, ¶84. Indeed, Treyz recognizes that a buffer may improve the
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`quality of streaming audio. Ex. 1015, 13:59-63. A POSITA would understand that
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`if the client does not receive sufficient data, the input buffer for the audio/video
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`decoders may run out of data, and hence the decoders would have nothing to
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`output, resulting in substantial and perceivable quality degradation. Ex. 1007, ¶85.
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`In view of Treyz’s purpose of providing wireless access to streaming multimedia
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`content available on the Internet, a POSITA would have been motivated to address
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`this problem using Fuller’s disclosure concerning switching communication rates
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`for the efficient and uninterrupted delivery of streaming content. Id.
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`This is further supported by Treyz’s express disclosure that “[t]he audio may
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`also be streamed … using a streaming audio player (e.g., using a streaming media
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`player from … Real Networks or the like). Id., 14:30-31. By March 2000,
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`RealNetworks had filed patents related to its bitrate switching technology. See,
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`e.g., Ex. 1017, 3:35-40, 21:5-23:19. Fuller further explains that its approach
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`provides an alternative to the custom approach provided by RealNetworks and can
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`be implemented with a “platform independent video and audio streaming system
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`that does not require the user to download additional programs beyond the
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`functionalities found in a browser.” Ex. 1016, 1:61-2:23, 2:26-50. Thus, a
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`POSITA would have been motivated to combine the “platform independent”
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`bitrate switching of Fuller as an alternative to the Real Networks implementation
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`of the streaming system proposed in Treyz so it would not require specialized
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`server or client software.
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`A POSITA, knowledgeable in the field of “computer networking and/or
`
`multimedia networks … as those systems relate to media streaming technology”
`
`reading Treyz in 2000 would have immediately understood that its system used
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`HTTP communications. For example, Treyz describes that “a web page including
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`information on various available stations may be used to help the user select the
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`desired stations. … The user may set up the stations for the clock radio that the
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`user is interested in by clicking on links for stations that the user is interested in or
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`by otherwise selecting the proper Internet addresses for the desired stations.” Ex.
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`1015, 5:27-36. As the Applicants admit, before their invention web browsers were
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`already “conventional.” Ex. 1001, 10:18-21. Moreover, it would have been
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`obvious to provide the web browser of Treyz’s device with HTTP capabilities, as
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`is expressly taught by Fuller in order to provide a platform-independent solution.
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`Ex. 1015, 6:11-27; Ex. 1007, ¶85. In any case, a POSITA would know that
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`conventional web browsers displayed web pages with clickable links and Internet
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`addresses delivered over the Internet using HTTP communications. Ex. 1007,
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`¶¶50, 85. HTTP was the dominant protocol for web browsers to access web pages
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`on the Internet prior to March 2000. Id., ¶85. Such functionality was standard by
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`then and would be desirable to facilitate access to various web pages on the
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`Internet using the standard protocol, HTTP. Id.
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`Further, it would have been obvious to combine Treyz with Fuller because,
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`in combination, each element (e.g., Treyz’s device and Fuller’s teachings of
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`streaming multimedia content at two different communication rates and a web
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`browser utilizing HTTP) performs the same function as it does separately, yielding
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`predictable results. Id.
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`4.
`Limitation 1P
`Treyz discloses a system for delivering media over the Internet. See, e.g.,
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`Ex. 1015, Abst., 7:45-48, 8:54-62, 13:64-14:48, Fig. 1, Fig. 5; see also Ex. 1007,
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`¶90. The system may deliver video, audio, and text content. Ex. 1015, 8:64-9:6.
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`Fuller discloses this limitation, too. Ex. 1016, 2:53-54, 8:18-19; see also Ex. 1007,
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`¶90.
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`5.
`Limitation 1.1.1
`The Treyz device can receive “downloaded audio files and streaming digital
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`audio files” and other media files from a variety of independent sources, including
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`“radio station content, e-mail, news and other audio content.” Ex. 1015, Abst.; see
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`also id., Fig 1. A user can create a custom channel consisting of a series of
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`segments from the sources to be played sequentially. Id., 3:45-55, Fig. 14; see also
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`Ex. 1007, ¶91. “The user may schedule how portions or segments