Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 29
`Entered: September 6, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GOOGLE LLC, MICROSOFT CORPORATION, and
`MICROSOFT MOBILE INC.,
`Petitioner,
`
`v.
`
`KONINKLIJKE PHILIPS N.V.,
`Patent Owner.
`_______________
`
`Case IPR2017-004471
`Patent 7,529,806 B1
`_______________
`
`
`Before KEVIN F. TURNER, ROBERT J. WEINSCHENK, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`1 Microsoft Corporation and Microsoft Mobile Inc. (collectively,
`“Microsoft”) filed a petition in IPR2017-01754, and Microsoft has been
`joined to this case.
`
`

`

`IPR2017-00447
`Patent 7,529,806 B1
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`
`I.
`INTRODUCTION
`Google LLC (“Google”) filed a Petition (Paper 2, “Pet.”) requesting
`an inter partes review of claims 1–16 (“the challenged claims”) of U.S.
`Patent No. 7,529,806 B1 (Ex. 1001, “the ’806 patent”). Koninklijke Philips
`N.V. (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim.
`Resp.”) to the Petition. On June 8, 2017, we instituted an inter partes
`review of claims 1–11 of the ’806 patent on the following grounds:
`Claims
`Statutory Basis
`Applied Reference(s)
`1–7 and 9–11 35 U.S.C. § 102(b)2 Synchronized Multimedia
`Integration Language (SMIL) 1.0
`Specification (June 15, 1998) (Ex.
`1003, “SMIL 1.0”)
`SMIL 1.0
`SMIL 1.0 and Kien A. Hua et al.,
`2PSM: An Efficient Framework for
`Searching Video Information in a
`Limited-Bandwidth Environment,
`7:5 Multimedia Systems, 396–408
`(Sept. 1999) (Ex. 1006, “Hua”)
`
`1–11
`1–11
`
`35 U.S.C. § 103(a)
`35 U.S.C. § 103(a)
`
`Paper 7 (“Dec. on Inst.”), 20–21.
`After institution, Microsoft Corporation and Microsoft Mobile Inc.
`(collectively, “Microsoft”) filed a petition in IPR2017-01754 requesting an
`inter partes review of the challenged claims of the ’806 patent and filed a
`motion requesting joinder to this case. Paper 15, 2. On November 29, 2017,
`we joined Microsoft to this case and terminated IPR2017-01754. Id. at 16–
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`which was enacted on September 16, 2011, made amendments to 35 U.S.C.
`§§ 102, 103. AIA § 3(b), (c). Those amendments became effective eighteen
`months later on March 16, 2013. Id. § 3(n). Because the application from
`which the ’806 patent issued was filed before March 16, 2013, any citations
`herein to 35 U.S.C. §§ 102, 103 are to their pre-AIA versions.
`
`2
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`IPR2017-00447
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`17; IPR2017-01754, Paper 17, 5. In this Decision, we refer to Google LLC,
`Microsoft Corporation, and Microsoft Mobile Inc. collectively as
`“Petitioner.”
`Also, after institution, Patent Owner filed a Response (Paper 11, “PO
`Resp.”) to the Petition, and Petitioner filed a Reply (Paper 16, “Pet. Reply”)
`to the Response. An oral hearing was held on February 13, 2018, and a
`transcript of the hearing is included in the record. Paper 24 (“Tr.”).
`On April 24, 2018, the Supreme Court held that a decision to institute
`under 35 U.S.C. § 314 may not institute on fewer than all claims challenged
`in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).
`As a result, we modified our Decision on Institution to include all the
`challenged claims and all the asserted grounds of unpatentability presented
`in the Petition. Paper 25, 2; Ex. 3001, 2. And, consistent with the parties’
`agreement, we authorized each party to file an additional brief addressing
`the challenged claims and asserted grounds of unpatentability included in
`our modified Decision on Institution. Paper 28, 2–3. Specifically, Patent
`Owner filed a Supplemental Response (Paper 26, “PO Supp. Resp.”) to the
`Petition, and Petitioner filed a Supplemental Reply (Paper 27, “Pet. Supp.
`Reply”) to the Supplemental Response.
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a).
`For the reasons set forth below, Petitioner has shown by a preponderance of
`the evidence that claims 1–11 of the ’806 patent are unpatentable, but
`Petitioner has not shown by a preponderance of the evidence that claims 12–
`16 are unpatentable.
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`
`A.
`Related Proceedings
`The parties indicate that the ’806 patent is the subject of the following
`cases in the United States District Court for the District of Delaware
`(“District Court”): Koninklijke Philips N.V. v. ASUSTeK Computer Inc., No.
`1:15-cv-01125 (D. Del.); Koninklijke Philips N.V. v. HTC Corp., No. 1:15-
`cv-01126 (D. Del.); Koninklijke Philips N.V. v. Visual Land, Inc., No. 1:15-
`cv-01127 (D. Del.); Koninklijke Philips N.V. v. Southern Telecom, Inc., No.
`1:15-cv-01128 (D. Del.); Koninklijke Philips N.V. v. Double Power
`Technology, Inc., No. 1:15-cv-01130 (D. Del.); Koninklijke Philips N.V. v.
`Yifang USA, Inc., No. 1:15-cv-01131 (D. Del.); and Koninklijke Philips N.V.
`v. Acer Inc., No. 1:15-cv-01170 (D. Del.). Pet. 2–3; Paper 4, 2–3.
`B.
`The ’806 Patent
`The ’806 patent relates to communicating content between computer
`systems. Ex. 1001, 1:6–9. The ’806 patent explains that prior systems for
`delivering content involved either streaming or downloading the content
`from a server to a client. Id. at 1:18–22, 1:42–44. According to the ’806
`patent, the streaming approach is undesirable because it uses proprietary
`technology that excludes third parties from developing custom server
`software or client applications. Id. at 1:31–41. The downloading approach
`also is undesirable because playback can only begin after the entire content
`file is downloaded. Id. at 1:51–58.
`The ’806 patent sought to improve on these prior systems by
`providing “an open architecture solution for content delivery in a download
`approach that allows for a low or negligible play-out latency.” Id. at 1:62–
`64. Specifically, the ’806 patent describes splitting a content file into
`multiple parts, with each part requiring a relatively short download time. Id.
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`at 1:65–66. The client device downloads the first part of the content file and
`begins playback while it downloads the other parts of the content file. Id. at
`1:67–2:12. As a result, the playback delay is determined by the download
`time of just the first part of the content file, rather than the entire content file.
`Id. at 1:67–2:1.
`C.
`Illustrative Claim
`Claims 1, 9, and 12 are independent. Claim 1 is reproduced below.
`1. A method of, at a client device, forming a media
`presentation from multiple related files, including a control
`information file, stored on one or more server computers within
`a computer network, the method comprising acts of:
`downloading the control information file to the client
`device;
`the client device parsing the control information file; and
`based on parsing of the control information file, the client
`device:
`identifying multiple alternative flies [sic] corresponding
`to a given segment of the media presentation,
`determining which files of the multiple alternative files to
`retrieve based on system restraints;
`retrieving the determined file of the multiple alternative
`files to begin a media presentation, wherein if the determined
`file is one of a plurality of files required for the media
`presentation, the method further comprises acts of:
`concurrent with the media presentation, retrieving a next
`file; and
`using content of the next file to continue the media
`presentation.
`Ex. 1001, 5:45–67.
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`
`II. ANALYSIS
`A.
`Level of Ordinary Skill in the Art
`Petitioner argues that a person of ordinary skill in the art would have
`had “an undergraduate degree in computer science or computer engineering,
`or the equivalent” and “3-5 years’ experience developing multimedia
`presentations using a markup language and/or developing software tools to
`automate the development of multimedia presentations, or equivalent
`academic experience (e.g., a master’s degree with a similar focus).” Pet. 15
`(citing Ex. 1002 ¶ 23). Patent Owner does not dispute Petitioner’s definition
`of the level of ordinary skill in the art. See PO Resp. 10. Patent Owner also
`does not provide its own definition. See id. Based on the evidence of
`record, including the types of problems and solutions described in the ’806
`patent and the asserted prior art, we adopt Petitioner’s definition of the level
`of ordinary skill in the art. Pet. 15; Ex. 1002 ¶¶ 22–23.
`B.
`Claim Construction
`The claims of an unexpired patent are interpreted using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear.3 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2144–45 (2016). “Under a broadest reasonable interpretation,
`words of the claim must be given their plain meaning, unless such meaning
`is inconsistent with the specification and prosecution history.” TriVascular,
`Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016). An applicant may
`provide a definition of a term in the specification with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
`3 We would construe the claim terms and phrases discussed below the same
`under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
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`1994). In the absence of such a definition, limitations are not to be read into
`the claims from the specification. In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993).
`1.
`a given segment of [a/the] media presentation
`Claims 1 and 9 recite “a given segment of [a/the] media presentation.”
`Ex. 1001, 5:54–55, 6:29–30. Petitioner proposes construing the phrase “a
`given segment of [a/the] media presentation” to mean “part or all of the
`media presentation.” Pet. 19. Petitioner argues that its proposed
`construction is supported by the claim language and specification of the ’806
`patent. Id. at 17–19. Patent Owner proposes construing the phrase “a given
`segment of [a/the] media presentation” to mean “a media presentation with
`multiple segments.” PO Resp. 11. Patent Owner argues that its proposed
`construction is supported by the claim language and specification of the ’806
`patent. Id.
`The dispute between the parties focuses on whether a media
`presentation can consist of only a single file or must have multiple segments.
`Pet. 17–19; PO Resp. 11. The ’806 patent consistently uses the term
`“segment” to indicate that a media presentation is divided into multiple
`segments. Ex. 1001, Abstract (“An electronic file, e.g., an MP3 file, is
`partitioned into a sequence of segments at the server side.”), 1:65–66 (“To
`this end the content file is split into multiple parts. Each part or segment
`requires a relatively short download time.”), 2:60–62, 2:67–3:2, 3:14–16,
`3:31–33, 4:15–26 (“The segmentation of the content file into separately
`downloadable segments . . . .”), 4:35–38, Fig. 1. In contrast, the ’806 patent
`does not use the term “segment” to refer to a media presentation that consists
`of only a single file. Id. at 2:7–9. Therefore, because Patent Owner’s
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`IPR2017-00447
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`proposed construction is consistent with the specification of the ’806 patent,
`we construe the phrase “a given segment of [a/the] media presentation” to
`mean “a media presentation with multiple segments.”4
`2.
`system restraints / system constraints
`Claim 1 recites “system restraints,” and claim 9 recites “system
`constraints.” Ex. 1001, 5:57, 6:33. Petitioner proposes construing the terms
`“system restraints” and “system constraints” to mean “constraints upon a
`system.” Pet. Reply 9. Petitioner argues that its proposed construction is
`supported by the specification of the ’806 patent. Id. at 9–11. Patent Owner
`proposes construing the terms “system restraints” and “system constraints”
`to mean “constraints on a system imposed by resources.” PO Resp. 14.
`Patent Owner argues that its proposed construction is supported by the
`specification of the ’806 patent. Id.
`For the reasons discussed below, we determine that Petitioner has
`shown by a preponderance of evidence that claims 1 and 9 are unpatentable
`even if we apply Patent Owner’s narrower proposed construction of the
`terms “system restraints” and “system constraints.” See infra Sections
`II.D.2, II.D.10. Therefore, we determine that it is unnecessary to resolve the
`parties’ dispute regarding the meaning of the terms “system restraints” and
`“system constraints” in order to resolve the parties’ disputes regarding the
`asserted grounds of unpatentability in this case. See Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms
`
`
`4 Our construction is consistent with the District Court’s determination that
`the term “media presentation” means “data having multiple segments.”
`Ex. 1014, 7.
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`need be construed that are in controversy, and only to the extent necessary to
`resolve the controversy.”).
`3. Means-Plus-Function Limitations
`Claim 12 recites several limitations that begin with the phrase “means
`for.” Ex. 1001, 6:41–62. The parties agree that these limitations of claim 12
`are means-plus-function limitations. Pet. 19–20; PO Supp. Resp. 1–2. We
`address the means-plus-function limitations of claim 12 in detail below. See
`infra Sections II.C.2, II.D.13.
`4.
`Remaining Claim Terms and Phrases
`Patent Owner proposes the following additional constructions:
`Claim Term or Phrase
`Proposed Construction
`a media presentation with multiple
`forming a media presentation from
`segments
`multiple related files, including a
`control information file (claim 1)
`alternative files (claims 1 and 9)
`
`alternative files for a given segment
`of a media presentation
`partitioning of media presentation
`partitioning of media presentation
`information between multiple
`between the multiple related files
`segments
`(claims 2, 3, and 6)
`PO Resp. 11–14. Petitioner does not propose express constructions for the
`terms and phrases above, but Petitioner disputes Patent Owner’s position
`that a media presentation must have multiple segments. Pet. 15–20; Pet.
`Reply 13–17.
`The dispute between the parties again focuses on whether a media
`presentation can consist of only a single file or must have multiple segments.
`Pet. 15–20; PO Resp. 11–14; Pet. Reply 13–17. As discussed above, we
`resolve that dispute by construing the phrase “a given segment of [a/the]
`media presentation” to mean “a media presentation with multiple segments.”
`See supra Section II.B.1. Therefore, we determine that it is unnecessary to
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`resolve the parties’ disputes regarding the meaning of the terms and phrases
`above in order to resolve the parties’ disputes regarding the asserted grounds
`of unpatentability in this case. See Vivid Techs., 200 F.3d at 803.
`C.
`Anticipation of Claims 1–7 and 9–13 by SMIL 1.0
`Petitioner argues that claims 1–7 and 9–13 are anticipated by SMIL
`1.0. Pet. 4. A claim is anticipated if each limitation of the claim is disclosed
`in a single prior art reference arranged as in the claim. Net MoneyIN, Inc. v.
`VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). We have considered
`the parties’ arguments and supporting evidence, and we determine that
`Petitioner has not shown by a preponderance of the evidence that claims 1–7
`and 9–13 are anticipated by SMIL 1.0.
`1.
`Claims 1 and 9
`Claims 1 and 9 recite, inter alia, “a given segment of [a/the] media
`presentation.” Ex. 1001, 5:54–55, 6:29–30. As discussed above, we adopt
`Patent Owner’s proposed construction of this phrase, namely that “a given
`segment of [a/the] media presentation” means “a media presentation with
`multiple segments.” See supra Section II.B.1. Petitioner’s anticipation
`analysis for claims 1 and 9 does not address a media presentation with
`multiple segments. See Pet. 25–26. Thus, Petitioner has not shown
`sufficiently that claims 1 and 9 are anticipated by SMIL 1.0. Nonetheless, as
`discussed below, Petitioner has shown sufficiently that claims 1 and 9 would
`have been obvious over SMIL 1.0. See infra Sections II.D.2, II.D.10.
`2.
`Claim 12
`Claim 12 recites, inter alia, “means for parsing, based on parsing of
`the control information file: identifying multiple alternative files
`corresponding to a give segment of the media presentation; determining
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`which file of the multiple alternative files to retrieve based on system
`constraints; [and] retrieving the determined file of the multiple alternative
`files to begin a media presentation.” Ex. 1001, 6:46–54. The parties agree
`that the above limitation of claim 12 is a means-plus-function limitation.
`Pet. 19–20; PO Supp. Resp. 1–2. To show the unpatentability of a claim
`including a means-plus-function limitation based on prior art, Petitioner
`must 1) identify the specific portions of the specification that describe the
`structure corresponding to the claimed function; and 2) specify where that
`structure or an equivalent is found in the cited prior art patents or printed
`publications. 37 C.F.R. §§ 42.104 (b)(3), (4); Fresenius USA, Inc. v. Baxter
`Int’l, Inc., 582 F.3d 1288, 1299–1300 (Fed. Cir. 2009) (affirming grant of
`JMOL of no invalidity because “Fresenius neither identified the structure in
`the specification that corresponds to the means for delivering dialysate nor
`compared it to the structures present in the prior art”).
`Petitioner does not identify in the Petition any corresponding structure
`for the above means-plus-function limitation of claim 12 or explain how
`SMIL 1.0 discloses that corresponding structure or an equivalent. See
`Pet. 19–20, 37–39; Pet. Supp. Reply 4–5. As discussed above, after
`institution, we joined Microsoft to this case based on the petition that
`Microsoft filed in IPR2017-01754. Paper 15, 2, 16–17. Microsoft’s petition
`identifies the corresponding structure for the above means-plus-function
`limitation of claim 12 as a client media player or multipurpose computing
`device that is programmed to perform the recited functions using the
`algorithm described in the following portions of the ’806 patent: 2:53–3:61,
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`4:20–26, and Figure 1.5 IPR2017-01754, Paper 1, 17–20. Microsoft’s
`petition, however, does not compare SMIL 1.0’s disclosure with the
`corresponding algorithm allegedly described in the ’806 patent (at 2:53–
`3:61, 4:20–26, and Figure 1), or otherwise explain how SMIL 1.0 discloses
`the corresponding algorithm allegedly described in the ’806 patent (at 2:53–
`3:61, 4:20–26, and Figure 1) or an equivalent. See id. at 36–38; Pet. Supp.
`Reply 4–5. Thus, even if we adopt the proposed corresponding structure set
`forth in Microsoft’s petition for the above means-plus-function limitation of
`claim 12, Petitioner has not shown sufficiently that claim 12 is anticipated
`by SMIL 1.0.6 See Fresenius, 582 F.3d at 1299–1300 (affirming grant of
`JMOL of no invalidity because “Fresenius neither identified the structure in
`the specification that corresponds to the means for delivering dialysate nor
`compared it to the structures present in the prior art”) (emphasis added).
`Petitioner argues that “[t]he Supreme Court’s decision in SAS
`Institutes, Inc. v. Iancu obligates the Board to ‘resolve the patentabilty’ of
`‘every claim the petitioner has challenged.’” Pet. Supp. Reply 1. Thus,
`according to Petitioner, we must either 1) determine that the means-plus-
`function limitations of claim 12 lack sufficient corresponding structure and
`are “indefinite”; or 2) construe the means-plus-function limitations of claim
`12 and “decide patentability on the merits under that construction.” Id. at 2.
`
`
`5 Microsoft’s proposed corresponding structure is consistent with the District
`Court’s identification of the corresponding structure. Ex. 1014, 9–10.
`6 Microsoft’s proposed corresponding structure is not set forth in Google’s
`Petition. Compare Pet. 19–20, with IPR2017-01754, Paper 1, 17–20. But,
`for the reasons discussed above, even if we consider Microsoft’s additional
`arguments, we reach the same conclusion, namely that Petitioner has not
`shown sufficiently that claim 12 is anticipated by SMIL 1.0.
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`As discussed above, even if we adopt the proposed corresponding structure
`set forth in Microsoft’s petition for the above means-plus-function limitation
`of claim 12, we determine that Petitioner has not met its burden to show that
`claim 12 is anticipated by SMIL 1.0.
`3.
`Claims 2–7, 10, 11, and 13
`Claims 2–7, 10, 11, and 13 depend from claims 1, 9, or 12. Ex. 1001,
`6:1–16, 6:35–39, 6:63–64. Because Petitioner has not shown by a
`preponderance of the evidence that claims 1, 9, or 12 are anticipated by
`SMIL 1.0, Petitioner also has not shown by a preponderance of the evidence
`that claims 2–7, 10, 11, and 13 are anticipated by SMIL 1.0. See supra
`Sections II.C.1, II.C.2.
`4.
`Summary
`For the foregoing reasons, Petitioner has not shown by a
`preponderance of the evidence that claims 1–7 and 9–13 are anticipated by
`SMIL 1.0.
`D. Obviousness of Claims 1–16 Over SMIL 1.0
`Petitioner argues that claims 1–16 would have been obvious over
`SMIL 1.0. Pet. 4. A claim is unpatentable as obvious under 35 U.S.C.
`§ 103(a) if the differences between the claimed subject matter and the prior
`art are such that the subject matter as a whole would have been obvious at
`the time the invention was made to a person having ordinary skill in the art
`to which the subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`398, 406 (2007). The question of obviousness is resolved on the basis of
`underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) when in evidence,
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`any objective indicia of non-obviousness. Graham v. John Deere Co., 383
`U.S. 1, 17–18 (1966).
`We have considered the parties’ arguments and supporting evidence.
`We determine that Petitioner has shown by a preponderance of the evidence
`that claims 1–11 would have been obvious over SMIL 1.0, but Petitioner has
`not shown by a preponderance of the evidence that claims 12–16 would have
`been obvious over SMIL 1.0.
`1.
`Overview of SMIL 1.0
`SMIL 1.0 is a specification for version 1 of the Synchronized
`Multimedia Integration Language (“SMIL”). Ex. 1003, 2. SMIL 1.0
`explains that an SMIL file is an Extensible Markup Language (“XML”) file.
`Id. at 3. SMIL 1.0 describes various elements that allow an author to, inter
`alia, describe the temporal behavior of a presentation as well as the layout of
`a presentation on a screen. Id. at 2.
`For example, SMIL 1.0 describes a seq element that allows an author
`to specify that certain media objects are played in sequence. Id. at 13 (“The
`children of a ‘seq’ element form a temporal sequence.”). The following is
`an example of a seq element:
`<seq>
` <audio src= “audio1” />
` <audio begin=“5s” src=“audio2” />
`</seq>
`Id. at 10. The seq element shown above specifies a sequence in which the
`file “audio1” is played first, then there is a five-second delay, and then the
`file “audio2” is played. Id.; Ex. 1002 ¶ 75.
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`SMIL 1.0 also describes a switch element that allows an author to
`specify a set of alternative media objects from which one is chosen. Ex.
`1003, 19. The following is an example of a switch element:
`<switch>
` <audio src=“joe-audio-better-quality” system-bitrate=“16000” />
` <audio src=“joe-audio” system-bitrate=“8000” />
`</switch>
`Id. at 22. The switch element shown above specifies that a different audio
`file may be chosen based on the system’s bitrate. Id.; Ex. 1002 ¶ 84.
`2.
`Claim 1
`Claim 1 recites “[a] method of, at a client device, forming a media
`presentation from multiple related files, including a control information file,
`stored on one or more server computers within a computer network.”
`Ex. 1001, 5:45–48. SMIL 1.0 teaches a media player (i.e., a client device)
`that forms a media presentation from multiple related files, including an
`SMIL file (i.e., a control information file), stored on a server. Pet. 10–11,
`21; Ex. 1002 ¶¶ 63–64, 66, 110–112; Ex. 1003, 3 (“SMIL documents are
`XML 1.0 documents.”), 15 (“The media object elements allow the inclusion
`of media objects into a SMIL presentation. Media objects are included by
`reference (using a URI). . . . When playing back a media object . . .”), 22
`(“The media player evaluates each of the ‘choices’ . . . one at a time,
`looking for an acceptable bitrate given the known characteristics of the link
`between the media player and media server.”).
`Claim 1 recites “downloading the control information file to the client
`device.” Ex. 1001, 5:49–50. SMIL 1.0 teaches downloading an SMIL file
`(i.e., a control information file) from a server to a media player (i.e., a client
`device). Pet. 10–11, 21–22, Ex. 1002 ¶¶ 113–116; Ex. 1003, 22 (“The
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`media player evaluates each of the ‘choices’ . . . one at a time, looking for
`an acceptable bitrate given the known characteristics of the link between the
`media player and media server.”). For example, SMIL 1.0 teaches
`downloading an SMIL file from “http://www.cwi.nl/somewhereelse.smi” to
`a media player. Pet. Reply 7; Ex. 1003, 25; Ex. 1012, 293:10–294:5.
`Patent Owner responds that SMIL 1.0 does not teach downloading a
`control information file to a media player.7 PO Resp. 41–44. Specifically,
`Patent Owner argues that Petitioner does not provide “a single citation to
`SMIL 1.0 to show the steps of downloading a control information file to a
`client device,” but instead “relies entirely on Dr. Bulterman’s declaration.”
`Id. at 41–42 (citing Pet. 21–22). Further, according to Patent Owner, an
`SMIL file could have been downloaded from a CD-ROM or other local
`drive, rather than a server. PO Resp. 42–44 (citing Ex. 2001 ¶¶ 132–133).
`Patent Owner points out that a book authored by Petitioner’s declarant, Dr.
`Dick Bulterman, states that an SMIL file can be stored locally. PO Resp. 43
`(citing Ex. 2008, 9).
`Patent Owner’s argument is not persuasive. Petitioner identifies
`specific portions of SMIL 1.0 that teach downloading a control information
`file to a media player. For example, Petitioner’s declarant, Dr. Bulterman,
`testifies that SMIL 1.0 describes a client-server architecture in which an
`SMIL file (i.e., a control information file) is downloaded from a server to a
`client. Pet. 21; Ex. 1002 ¶¶ 91–93, 113–116. To support that statement, Dr.
`Bulterman identifies a portion of SMIL 1.0 that describes a link between a
`media player and a media server. Ex. 1002 ¶¶ 91, 113; Ex. 1003, 22
`
`7 Patent Owner does not dispute that an SMIL file is a control information
`file. See PO Resp. 41–44; Ex. 1012, 288:4–14.
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`(“looking for an acceptable bitrate given the known characteristics of the
`link between the media player and media server”). In addition, Petitioner
`identifies a portion of SMIL 1.0 that describes downloading an SMIL file
`from “http://www.cwi.nl/somewhereelse.smi” to a media player. Pet. Reply
`7; Ex. 1003, 25; Ex. 1012, 293:10–294:5. In fact, Patent Owner
`acknowledged at the oral hearing that SMIL 1.0 teaches downloading a
`control information file to a media player. Tr. 33:16–34:6, 35:3–14. Even if
`it also is possible to store an SMIL file locally (e.g., on a CD-ROM), that
`does not detract from SMIL 1.0’s teaching of downloading an SMIL file
`from a server to a media player.
`Claim 1 recites “the client device parsing the control information
`file.” Ex. 1001, 5:51. SMIL 1.0 teaches that a media player parses the
`switch elements in an SMIL file in the order in which they occur. Pet. 14–
`15, 22; Ex. 1002 ¶¶ 65, 117; Ex. 1003, 19 (“An element is selected as
`follows: the player evaluates the elements in the order in which they occur in
`the switch element.”). Patent Owner responds that Petitioner “fails to
`establish that SMIL 1.0 discloses downloading a control information file to a
`client device and parsing the same.” PO Resp. 41 (emphasis omitted).
`However, other than the argument discussed above regarding downloading a
`control information file to a media player, Patent Owner does not present
`any specific argument regarding parsing the control information file. See id.
`at 41–44.
`Claim 1 recites “based on parsing of the control information file, the
`client device: identifying multiple alternative flies [sic] corresponding to a
`given segment of the media presentation, determining which files of the
`multiple alternative files to retrieve based on system restraints; and
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`retrieving the determined file of the multiple alternative files to begin a
`media presentation.” Ex. 1001, 5:52–59. SMIL 1.0 teaches that based on a
`media player’s parsing of the switch elements in an SMIL file, the media
`player identifies multiple alternative files for a given segment of a media
`presentation and determines which file to retrieve based on test attributes,
`such as a system’s bitrate. Pet. 14–15, 22–24; Ex. 1002 ¶¶ 118–122;
`Ex. 1003, 19 (“The switch element allows an author to specify a set of
`alternative elements from which only one acceptable element should be
`chosen.”), 20 (“[The] system-bitrate . . . attribute specifies the approximate
`bandwidth, in bits per second available to the system.”), 22 (“Choosing
`between audio resources with different bitrate.”). SMIL 1.0 also teaches
`that the media player then retrieves the selected file from a server. Pet. 24;
`Ex. 1002 ¶¶ 123–125; Ex. 1003, 19 (“The first acceptable element is
`selected.”), 22 (“The media player evaluates each of the ‘choices’ (elements
`within the switch) one at a time, looking for an acceptable bitrate given the
`known characteristics of the link between the media player and media
`server.”), 26 (“<video src=‘rtsp://foo.com/graph.imf’/>”).
`Patent Owner responds that SMIL 1.0 does not teach the identifying,
`determining, and retrieving steps of claim 1. PO Resp. 30–41. Specifically,
`Patent Owner argues that Petitioner “must identify a file within SMIL 1.0
`that, when parsed, allows a client device to perform the identifying,
`determining, and retrieving steps.” Id. at 31. According to Patent Owner,
`though, Petitioner instead “jumps from one snippet of code in SMIL 1.0 to
`another for different elements of a single claim.” Id. (citing Ex. 2001 ¶¶
`115–117).
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`Patent Owner’s argument is not persuasive. SMIL 1.0 is a
`specification for SMIL, and, thus, a person of ordinary skill in the art would
`have understood SMIL 1.0’s various teachings as a single language, rather
`than separate embodiments. Ex. 1002 ¶ 64; Ex. 1003, 2 (“This documents
`specifies version 1 of the Synchronized Multimedia Integration Language.”);
`Ex. 1012, 168:9–169:7, 170:21–171:7. Further, SMIL 1.0 teaches a body
`element that may contain various different child elements, including the seq
`and switch elements discussed above. Ex. 1002 ¶ 67; Ex. 1003, 9 (“The
`‘body’ element can contain the following children.”). This indicates that
`SMIL 1.0’s various teachings were intended to be used together. Ex. 1002 ¶
`67; Ex. 1003, 9.
`Nonetheless, even if we consider SMIL 1.0’s examples individually,
`at least one of the examples cited by Petitioner teaches the identifying,
`determining, and retrieving steps of claim 1. SMIL 1.0 describes a switch
`element as follows:
`The switch element allows an author to specify a set of
`alternative elements from which only one acceptable element
`should be chosen. . . . An element is selected as follows: the
`player evaluates the elements in the order in which they occur
`in