Paper 10
`Trials@uspto.gov
`571-272-7822 Entered: August 18, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMAZON.COM, INC. and AMAZON WEB SERVICES, INC.,
`Petitioner,
`
`v.
`
`BROADCOM CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-00811
`Patent 7,296,295 B2
`____________
`
`
`
`
`
`
`Before JAMES B. ARPIN, BARBARA A. PARVIS, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
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`IPR2017-00811
`Patent 7,296,295 B2
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`I. INTRODUCTION
`
`Amazon.com, Inc. and Amazon Web Services, Inc. (collectively,
`“Petitioner”) filed a Petition requesting inter partes review of claims 1–27 of
`U.S. Patent No. 7,296,295 B2 (“the ’295 patent,” Ex. 1001). Paper 2
`(“Pet.”). Broadcom Corporation (“Patent Owner”) filed a Preliminary
`Response. Paper 7 (“Prelim. Resp.”). Pursuant to 37 C.F.R. § 42.4(a), we
`have authority to determine whether to institute review.
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides that an inter partes review may not be
`instituted unless the information presented in the Petition shows “there is a
`reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.”
`After considering the Petition, the Preliminary Response, and
`associated evidence, we determine that Petitioner has demonstrated a
`reasonable likelihood of prevailing in showing the unpatentability of claims
`12–22 and 24–27. Thus, we institute an inter partes review as to those
`claims.
`
`The ’295 Patent
`A.
`The ’295 patent is directed generally to systems and methods for
`reformatting media content, such as video content, and distributing that
`content over a network.1 Ex. 1001, Abstract, 2:32–3:11. The Specification
`acknowledges that it was known to send media files between locations over
`
`
`1 Petitioner asserts that the earliest effective filing date for the ’295 patent is
`December 11, 2002. Pet. 9 (citing Ex. 1001 at [60]). At this time, Patent
`Owner does not contest this assertion. For purposes of this preliminary
`proceeding, we accept Petitioner’s assertion.
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`a network. Id. at 2:1–10. Further, at the time of the invention, various
`formats for media files existed in the art. Id. at 4:2–11. However, the
`Specification asserts that there is a problem when files are “sent from a
`source location to a destination location without the source having any
`knowledge of the format capabilities of devices[, i.e., device profiles,] at the
`destination location.” Id. at 2:13–16.
`The Specification and claims of the ’295 patent describe
`implementation of a server-based transcoding and distribution architecture.
`In particular, the ’295 patent is directed generally to a system for
`reformatting media content including a first server operatively coupled to a
`network, a second server operatively coupled to the first server, and a first
`and a second communications devices operatively coupled to the network.
`Id. at 2:34–38, 2:44–48. The first communications device sends a device
`profile of the first communications device to the first server, and the second
`communications device sends media content to the first server. Id. at 2:48–
`50. The second server receives the media content from the first server, and
`the second server reformats the media content based on the device profile of
`the first communications device. Id. at 2:51–53. The Specification states
`that the term “reformat” is synonymous with the term “transcode.” Id. at
`5:42–45. Embodiments of the system may vary according to differing
`functions of the first and second communications devices and their
`interactions with the servers. Id. at 2:38–43; 2:54–3:4.
`In another embodiment, a method may include, for
`example, one or more of the following: receiving, by a server, a
`device profile of a communications device and media content
`destined for the communications device, the server being
`operatively coupled to the communications device via a network;
`
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`and reformatting, by the server, the media content based on the
`device profile.
`Id. at 3:5–11.
`
`B. Illustrative Claims
`
`Claims 1 and 12 are independent. Claim 1 recites a system for
`reformatting media content, and claim 12 recites a method for reformatting
`media content. Claims 2–11 depend directly from claim 1, and claims 13–
`27 depend directly or indirectly from claim 12. Claims 1 and 12 are
`illustrative and are reproduced below:
`1.
`A system for reformatting media content, comprising:
`a first server operatively coupled to a network;
`a second server operatively coupled to the first server;
`a first communications device operatively coupled to the
`network, the first communications device sending a device
`profile of the first communications device to the first server; and
`a second communications device operatively coupled to
`the network, the second communications device sending media
`content to the first server,
`wherein the second server receives the media content from
`the first server and wherein the second server reformats the
`media content based on the device profile of the first
`communications device.
`Ex. 1001, 13:48–62.
`12. A method for reformatting media content, comprising:
`receiving, by a first server, a device profile of a first
`communications device;
`receiving, by a second server operatively coupled to the
`first server, media content destined for the first communications
`device, the second server being operatively coupled to the first
`communications device via a network; and
`
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`reformatting, by the second server, the media content
`based on the device profile received by the first server.
`Id. at 14:37–46.
`
`Applied References and Declaration
`C.
`Petitioner relies upon the following references and declaration:
`Exhibit No. References and Declaration
`1002
`Prosecution History of the ’295 patent
`1003
`Declaration of Jon B. Weissman, Ph.D.
`1005
`European Patent Application Publication No. 0992922 to
`Bhagwat et al., earliest U.S. priority claimed Oct. 2, 1998,
`publ’d Apr. 12, 2000 (“Bhagwat”)
`U.S. Patent Application Publication No. 2003/0110234 to
`Egli et al., filed Nov. 8, 2001, publ’d June 12, 2003
`(“Egli”)
`International Publication No. WO 01/86511 A2 to Kirani,
`earliest U.S. priority claimed May 11, 2000, publ’d Nov.
`15, 2001 (“Kirani)
`U.S. Patent Application Publication No. 2002/0199190 to
`Su, earliest U.S. priority claimed Feb. 2, 2001, publ’d
`Dec. 26, 2002 (“Su”)
`B. Hansen, The Dictionary of Computing & Digital
`Media, 278 (1999)
`
`1006
`
`1007
`
`1008
`
`1009
`
`Pet. iii.
`
`Asserted Grounds of Unpatentability
`D.
`Petitioner challenges claims 1–27 of the ’295 patent based on the
`asserted grounds of unpatentability set forth in the table below. Pet. 3.
`Challenged Claim(s) Basis
`Reference(s)
`1–6, 8–12, 19–23, and
`35 U.S.C. § 102(b)
`Bhagwat
`25–27
`13, 14, 16–18, and 24
`7
`15
`
`35 U.S.C. § 103(a)
`35 U.S.C. § 103(a)
`35 U.S.C. § 103(a)
`
`Bhagwat and Kirani
`Bhagwat and Su
`Bhagwat, Kirani, and
`Su
`Egli
`
`12, 19–22, and 25–27
`
`35 U.S.C. §§ 102(a),
`(b), or (e)
`
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`Challenged Claim(s) Basis
`1–6, 8–11, and 23
`35 U.S.C. § 103(a)
`13, 14, 16–18, and 24
`35 U.S.C. § 103(a)
`7
`35 U.S.C. § 103(a)
`15
`35 U.S.C. § 103(a)
`
`Reference(s)
`Egli and Bhagwat
`Egli and Kirani
`Egli, Bhagwat, and Su
`Egli, Kirani, and Su
`
`II. ANALYSIS
`Claim Construction
`A.
`In an inter partes review, “[a] claim in an unexpired patent that will
`not expire before a final written decision is issued shall be given its broadest
`reasonable construction in light of the specification of the patent in which it
`appears.” 37 C.F.R. § 42.100(b). In determining the broadest reasonable
`construction, we presume that claim terms carry their ordinary and
`customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007). This presumption may be rebutted when a patentee, acting
`as a lexicographer, sets forth an alternate definition of a term in the
`specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`1. Server (Claims 1 and 12)
`
`Petitioner proposes a construction for the term “server,” which
`appears in each independent claim. Pet. 4. Specifically, Petitioner argues
`that the term “server” means “computer equipment or software that provides
`one or more services.” Id. Patent Owner disagrees and contends that the
`term “server” cannot include software alone. Prelim. Resp. 7.2
`
`
`2 Construction of the term “server” was not disputed during prosecution. See
`Ex. 1002.
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`Petitioner argues that the ’295 patent discloses that “a server provides
`one or more services. For example, the patent discloses servers that provide
`services, such as format conversion, media exchange, and media storage.”
`Pet. 4 (citing Ex. 1001, 4:46–62, Fig. 1). Moreover, Petitioner argues that
`the ’295 patent describes the server as both hardware and software.
`For example, the patent discloses that the external processing
`hardware support 305 may include “at least one server such as
`centralized Internet server, a peer-to-peer server, or a cable
`headend.” The ‘295 patent also discloses that “[t]he server may
`alternatively be distributed over various hosts or remote PC’s.”
`The patent’s Figure 10 shows Distributed Server Elements 1004
`that interact with the Media Exchange Software’s Distributed
`Server Management.
`Pet. 4–5 (emphasis added; citing Ex. 1001, 9:26–37, 12:47–53; Fig. 10).
`Further, Petitioner argues that a person of ordinary skill in the art at the time
`of filing of the ’295 patent would have understood the term “server” to
`encompass both hardware and software. See Ex. 1003 ¶¶ 48–51. As further
`evidence of such a person’s understanding of the term “server,” Petitioner
`asserts that The Dictionary of Computing & Digital Media, published in
`1999, confirms a POSITA’s understanding of “server.” Pet. 5 n. 8. This
`dictionary defines “server” as: “A software program that provides a service
`to a client . . . . A networked computer that provides a service for other
`computers connected to it.” Ex. 1003 ¶ 51 (quoting Ex. 1009, 278).3
`
`
`3 Similarly, the MICROSOFT COMPUTER DICTIONARY defines “server” in two
`ways. First, “[o]n a local area network (LAN), [a server is] a computer
`running administrative software that controls access to the network and its
`resources, such as printers and disk drives, and provides resources to
`computers functioning as workstations on the network”; and, second, “[o]n
`the Internet or other network, [a server is] a computer or program that
`responds to commands from a client. For example, a file server may contain
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` Patent Owner disagrees and contends that Petitioner’s construction is
`unreasonably broad and contradicts the teachings of the claims and
`Specification of the ’295 patent. Prelim. Resp. 5. Initially, Patent Owner
`contends that because the ’295 patent teaches that servers are coupled
`operatively to a network (see e.g., Ex. 1001, Abstract), to communications
`devices (id. at 3:7–9), and to other servers (id. at cl. 12), the term “server”
`cannot refer to software alone because software cannot be “coupled” to
`hardware. Prelim. Resp. 6. Nevertheless, Petitioner’s declarant’s testimony
`and both the dictionary cited by Petitioner and the dictionary consulted by
`the panel suggest otherwise.
` Patent Owner further contends that the ’295 patent describes
`embodiments of a media exchange network with a “single central server” or
`optionally, with “a multiple server architecture” (id. (citing Ex. 1001, 4:49–
`53)), and also discloses servers that “provide temporary or archival storage
`of digital media” (id. (citing Ex. 1001, 5:7–17)). Patent Owner also
`contends that the ’295 patent discloses that media exchange networks may
`include external hardware processing support, “such as a centralized Internet
`server, a peer-to-peer server, or a cable headend.” Id. (citing Ex. 1001,
`9:33–35; see also id. at Fig. 3). Patent Owner contends that each of these
`components is hardware. Id. Although Patent Owner acknowledges that the
`’295 patent discloses that a server may be distributed among multiple hosts,
`Patent Owner contends, however, that such hosts are hardware, and, thus,
`the distributed server also is hardware. Id. at 7 n. 1 (citing Ex. 1001, Fig. 3).
`
`
`an archive of data or program files; when a client submits a request for a file,
`the server transfers a copy of the file to the client.” MICROSOFT COMPUTER
`DICTIONARY 474 (5th ed. 2002) (Ex. 3001) (emphasis added).
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` Moreover, Patent Owner contends that the Specification uses the term
`“software” only in specific instances and only to refer to specific types of
`software, not to servers. Id. at 7–8 (citing Ex. 1001, 5:21–22, 5:24, 6:10,
`8:50–53, 9:22–23, 9:66, 10:35, 10:62, 13:24, cl. 8, 9, 16, 17, Figs. 4, 10, 11).
`Nevertheless, even if Patent Owner is correct that the identified
`embodiments refer to hardware, these are only exemplary embodiments;
`and, without more, we do not limit the construction of a claim term to the
`exemplary embodiments disclosed in the patent’s specification.
` Patent Owner also contends that relying on a dictionary definition that
`goes beyond the specification is improper. Id. at 8–9. As noted above,
`however, Petitioner only relies upon the dictionary definition to show how a
`person of ordinary skill in the art would have understood the term at the time
`of the filing of the ’295 patent. To the extent that we find that a dictionary
`definition comports with the use of the term “server” in the claims or the
`Specification of the ’295 patent, or both, it is not improper for us to consider
`the definition in our construction of the term “server.”
` Finally, Patent Owner contends that the Petitioner’s proposed
`construction is inconsistent with the recitations of claims 3 and 8 of the
`’295 patent. Id. at 7. In particular, claim 3 recites that “the second server
`stores the device profile of the first communications device.” Ex. 1001,
`14:1–4 (emphasis added); see id. at 16:7–10 (claim 23). Patent Owner
`contends that “pure software is not capable of storage.” Prelim. Resp. 7;
`but see Ex. 1003 ¶¶ 49–51; Ex. 3001, 474 (“For example, a file server may
`contain an archive of data or program files; when a client submits a request
`for a file, the server transfers a copy of the file to the client.” (Emphasis
`
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`added.)). Thus, on this record, we are not persuaded that software cannot
`store data.
`Claim 8 recites that “one or more of the first communications device,
`the second communications device, the first server and the second server
`comprises a software platform that can provide one or more of user-interface
`functionality, distributed storage functionality and networking
`functionality.” Ex. 1001, 14:16–21 (emphasis added); see id. at 14:62–67
`(claim 16). Patent Owner contends that software cannot comprise a
`“software platform.” Prelim. Resp. 7. Although we agree that a “software
`platform” may suggest that the server that comprises the “software platform”
`is itself hardware, claim 8 is a dependent claim and its limitations do not
`necessarily narrow the scope of the term “server” in independent claim 1,
`from which claim 8 depends. Furthermore, claim 8 does not require that any
`recited server comprises a software platform because the limitations of claim
`8 can be met if the first or second communications device comprises a
`software platform. In any event, the fact that a server may be hardware does
`not mean that the term “server” cannot also refer only to software.
`Having considered both parties’ arguments and evidence, on this
`record and for purposes of this Decision, we are persuaded that Petitioner’s
`proposed construction of the term “server” as “computer equipment or
`software that provides one or more services” is the broadest reasonable
`interpretation of that term.
`
`2. Other Claim Terms
`
`Neither party offers specific constructions of other terms in the
`challenged claims. Only terms which are in controversy in this preliminary
`proceeding need to be construed at this time, and then only to the extent
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`necessary to resolve the controversy. See Wellman, Inc. v. Eastman Chem.
`Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (explaining that “claim terms
`need only be construed ‘to the extent necessary to resolve the controversy’”)
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999)). For purposes of this Decision, no other claim terms
`require express construction.
`
`Principles of Law
`B.
`To establish anticipation, each and every element of the challenged
`claim, arranged as recited in that claim, must be found in a single prior art
`reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed.
`Cir. 2008) (citing In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“[T]he
`[prior art] reference must clearly and unequivocally disclose the claimed
`[invention] or direct those skilled in the art to the [invention] without any
`need for picking, choosing, and combining various disclosures not directly
`related to each other by the teachings of the cited reference.”)). While the
`elements must be arranged or combined in the same way as in the claim,
`“the reference need not satisfy an ipsissimis verbis test,” i.e., identity of
`terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
`2009).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. 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;
`
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`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art;4 and (4) objective evidence of
`nonobviousness.5 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`Asserted Grounds for Unpatentability Based on Bhagwat
`C.
`1. Anticipation by Bhagwat (Claims 1–6, 8–12, 19–23, and 25–27)
`Petitioner argues Bhagwat anticipates claims 1–6, 8–12, 19–23, and
`25–27 and relies upon the Declaration of Dr. Weissman (Ex. 1003) to
`support its arguments. Pet. 3, 17–39. For the reasons set forth below, we
`deny institution on this ground.
`
`a. Bhagwat (Ex. 1005)
`
`We begin our analysis of this ground with an overview of Bhagwat.
`Bhagwat discloses systems and methods for reformatting data to reduce
`download times of web content. Ex. 1005, Abstract, ¶¶ 1, 2. Bhagwat
`transcodes, i.e., reformats, media content to allow for faster content
`download onto devices, such as mobile phones, that may experience low-
`bandwidth links. Id., ¶¶ 2, 3, 11. Bhagwat’s Figure 2 is reproduced below.
`
`
`4 Petitioner proposes an assessment of the level of ordinary skill in the art.
`Pet. 16–17; see Ex. 1003 ¶ 46. Petitioner’s declarant, Dr. Weissman,
`exceeds this assessed level. Ex. 1003 ¶¶ 3–9, 46–49. At this time, Patent
`Owner does not propose an alternative assessment. For purposes of this
`Decision, and to the extent necessary, we adopt Petitioner’s assessment.
`5 Patent Owner does not present arguments or evidence of such secondary
`considerations in the Preliminary Response.
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`Figure 2 depicts HTTP proxy engine 220, which receives data requests 222
`from client 230 and forwards those requests to web server 210. Id. ¶ 12.
`Further, HTTP proxy engine 220 receives response data 226 from web
`server 210. Id. Response data 226 (i.e., HTML pages and GIF and JPEG
`images) are routed to object transcoder 240 via HTTP proxy engine 220 for
`reformatting (i.e., transcoding) and forwarded (path 228) via HTTP proxy
`engine 220 to client 230. Id. Bhagwat explains that:
`Typically, a number of transcoding parameters are specified to
`the transcoder 240 in order to achieve the desired quality/size
`reduction of the object contained in the response data 226.
`Transcoding proxies in use today either use a static set of policies
`250 or use some form of user specified preferences 260 via path
`265 to determine the transcoding parameters. When a fixed set
`of transcoding parameters are applied to all objects, results are
`not always beneficial. In fact, in many cases, transcoding leads
`to poorer performance.
`Id. (emphasis added). Thus, Bhagwat’s Figure 2 depicts a “static”
`embodiment of Bhagwat’s system, but Bhagwat teaches the advantages of
`using parameters tailored to the displaying devices.
`Bhagwat’s Figure 3 depicts different embodiment of a system for
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`reformatting data and is reproduced below.
`
`
`Figure 3 depicts a “dynamic” embodiment of Bhagwat’s system, in which
`user preferences 260 are delivered to dynamic policy module 370, rather
`than directly to object transcoder 240. Dynamic policy module 370
`determines the set of parameters of transcoding used by object transcoder
`240, image size and delay predictor module 375 gathers characteristics of
`the object to be transcoded, user preference module 360 gathers quality
`preferences specified by a user of client 230, and bandwidth estimation
`module 380 estimates available network bandwidth. Id. ¶ 31. Dynamic
`policy module 370 dynamically adjusts the parameters of transcoding using
`the input received from image size and delay predictor module 375, user
`preferences module 360, and bandwidth estimation module 380 for the
`purpose of improving satisfaction for the user, and the transcoding system
`provides feedback to the user about the level of transcoding performed. Id.
`In particular, “[t]he user preferences module [360] preferably further collects
`the characteristics such as display size, resolution, & CPU speed of said one
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`of the devices, and provides those characteristics to the dynamic policy
`module.” Id. ¶ 32.
`In the embodiment shown [in Figure 3], the policy module 370
`employs a number of criteria, including: the characteristics of
`the data (e.g., size of the images, current encoding efficiency,
`structural role in the HTML page) as determined by the content
`analysis flow diagram (shown in Figure 5), the current estimate
`of the bandwidth on the proxy-to-client and server-to-proxy links
`(shown in Figure 10), the characteristics of the client,
`particularly the client display capabilities, and the user
`preferences concerning the preferred rendering of the data
`(shown as the user slide bar preferences in Figure 11).
`Id. ¶ 49 (emphasis added). Similarly, Bhagwat’s Figure 4 (not shown)
`discloses essentially the embodiment of Figure 3 with the addition of multi-
`resolution cache 410 to HTTP proxy engine 220. Id. ¶¶ 51–54. Bhagwat
`teaches that “[c]aches are useful in HTTP proxies to provide reduced
`response time for repeated data requests (by the same or different clients) for
`the same data object.” Id. ¶ 51. In particular, “when additional data requests
`occur, the HTTP proxy 220 first checks its cache 410 to see if an ‘up-to-
`date’ version of the data object is available at the requested resolution or
`transcoding level.” Id. ¶ 54; see also id. ¶ 57 (“Figure 5 shows an example
`flow diagram for the dynamic policy module 370 of Figures 3 and 4.”).
`
`b. Independent Claim 1
`i. Petitioner’s Arguments
`Petitioner relies upon Bhagwat’s disclosure with respect to Figures 2–
`4 to disclose the elements of claim 1. Pet. 17–25. Referring to Bhagwat’s
`Figure 2, Petitioner argues generally that Bhagwat discloses each and every
`element of claim 1. Pet. 18. In particular, Petitioner provides an annotated
`version of Bhagwat’s Figure 2, reproduced below, showing the alleged
`
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`correspondence between the components of HTTP proxy system 200 and the
`elements of claim 1.
`
`
`Annotated Figure 2 shows that Petitioner maps the “first server” of claim 1
`on Bhagwat’s HTTP proxy engine 220, the “second server” on object
`transcoder 240, the “first communications device” on client 230, and the
`“second communications device” on server 210. Id. at 17–18. Each of these
`components communicates across a network. See Pet. 19 (citing Ex. 1005
`¶¶ 10, 12, 31, Fig. 1).
`
`We note, in particular, that claim 1 recites “a first communications
`device operatively coupled to the network, the first communications device
`sending a device profile of the first communications device to the first
`server.” Ex. 1001, 13:52–55. Again referring to Figure 2, Petitioner argues
`that client 230 corresponds to the first communications device and that
`client 230 is coupled operatively to the system’s communications network,
`as shown, for example, in Bhagwat’s Figures 1 and 2. Pet. 21–22 (citing
`Ex. 1005 ¶¶ 13, 31 (“dynamic” embodiment)). For example, Bhagwat
`discloses “a plurality of clients and a plurality of servers [are] connected via
`a communication network.” Id. at 22 (quoting Ex. 1005 ¶ 47 (“dynamic”
`
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`embodiment)). In particular, Petitioner asserts that Bhagwat’s client 230
`sends its device profile to the first server, i.e., HTTP proxy engine 220. Id.
`(citing Ex. 1005 ¶¶ 31, 32 (“dynamic” embodiment). For example,
`Petitioner notes that Bhagwat discloses that the “proxy . . . determin[es]
`parameters of the object [and] retriev[es] preferences of the user” and the
`proxy “examin[es] preferences specified by a user of the client device.” Id.
`(quoting Ex. 1005 ¶ 36 (emphasis added; “dynamic” embodiment)).
`Thus, Petitioner equates the recitation in claim 1 that the first
`communications device “send[s]” its device profile to the first server with
`Bhagwat’s teaching that the HTTP proxy engine 220 determin[es]” object
`parameters and “retriev[s]”user preferences. Pet. 22. However, Petitioner
`does not explain why the Bhagwat’s acts of “determining” and “retrieving”
`disclose the recited “sending,” and, without such an explanation, we are not
`persuaded that “determining” and “retrieving” by HTTP proxy engine 220
`disclose “sending” by client 230.
`Further, Petitioner equates the recitation in claim 1 of the first
`communications device’s “device profile” with Bhagwat’s “preferences
`specified by a user.” Pet. 22 (emphases added). Initially, we note that
`neither Bhagwat’s Figure 2, nor its Figure 3 or 4, discloses user preferences
`delivered to HTTP proxy engine 220. See Ex. 1005, Figs. 2–4. Instead,
`Bhagwat’s Figure 2 depicts user preferences module 260 operatively
`coupled to object transcoder 240 (see Ex. 1005 ¶ 12), and Bhagwat’s
`Figures 3 and 4 depict user preferences module 260 operatively coupled to
`dynamic policy module 370 (see id. ¶ 49). Moreover, although Petitioner
`argues that “[u]sers of client 230 provide user preferences to engine 220 via
`a user interface” (Pet. 23 (citing Ex. 1005 ¶¶ 35, 49, Fig. 11)), we do not find
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`such a disclosure in the cited portions of Bhagwat. Bhagwat’s Paragraph 35
`states that
`[t]he system preferably further comprises displaying a slide bar
`on said one of the client’s display for collecting the user specified
`preferences. In a system as described, the user of said one of the
`clients can preferably specify the tradeoff between download
`time and data quality through the use of a graphical user interface
`with a slide bar.
`(Emphasis added.) However, this discloses the transmission of “user
`specified preferences,” rather than “device profiles.” Further, as depicted in
`Bhagwat’s Figures 2–4, these user preferences are delivered to user
`preferences module 260 via path 265. See Ex. 1005 ¶ 12. In addition,
`Bhagwat’s Paragraph 49 states that “the policy module 370 employs a
`number of criteria, including: . . . the characteristics of the client, particularly
`the client display capabilities, and the user preferences concerning the
`preferred rendering of the data (shown as the user slide bar preferences in
`Figure 11).” (Emphasis added.) Thus, Bhagwat discloses that the
`capabilities of the client, as well as the user preferences, are employed by
`dynamic policy module 370. See also Ex. 1005, Fig. 5 (depicting the
`operative coupling of user preferences module 260 to policy function 565).
`Moreover, “[t]he policy function 565 is responsible for collecting
`input from three different sources (image size predictor 375, bandwidth
`estimator 380, user preference selector 260) and subsequently selecting
`transcoding parameters in accordance with the steps shown in [Bhagwat’s]
`Figure 8.” Id. ¶ 63. Consequently, we are not persuaded that Petitioner
`demonstrates that Bhagwat discloses this element of claim 1.
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`ii. Patent Owner’s Contentions
`
`Patent Owner contends that Bhagwat fails to disclose each and every
`element of claim 1 for three reasons. First, as noted above, Patent Owner
`contends that the term server is limited to hardware and that server cannot
`refer to “pure software.” Prelim. Resp. 11; see supra Section II.A.1. For the
`reasons set forth above, on this record, we are not persuaded that the
`interpretation of the term “server” may be limited to hardware.
`Consequently, on this record and for purposes of this Decision, we are not
`persuaded that the “servers” recited in claim 1 are not disclosed by software
`modules operating on a device (e.g., a computer) or devices (see Ex. 1001,
`9:36–37 (“The server may alternatively be distributed over various hosts or
`remote PC’s.”)). See Prelim. Resp. 11–12.
`Second, Patent Owner contends that, even assuming that “servers” can
`be software, the servers recited in claim 1 cannot be software because
`software cannot be “operatively coupled” to hardware (e.g., a network). Id.
`at 14; see Ex. 1001, 13:50. Patent Owner provides no support for this
`contention, and it is contrary to the Specification of the ’295 patent, which
`states that:
`the [personal
`The [media processing systems (MPS’s)],
`computers(PC’s)], and/or the [media peripheral (MP’s)] may
`include, for example, functional software to support interaction
`with the various elements of the media exchange network 100 in
`accordance with various embodiments of the present invention.
`Ex. 1001, 6:8–12 (emphasis added); see also id. at 8:50–58 (“Set-top-boxes
`may be software enhanced to create an MPS that provides full media
`exchange network interfacing and functionality via a TV screen with a TV
`guide look-and-feel.” (Emphasis added.)).
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`Third, Patent Owner contends that Petitioner attempts to read the
`
`recitation of “device profiles” from claim 1 onto Bhagwat’s “user
`preferences” but that Petitioner fails to demonstrate (1) that “user
`preferences” disclose “device profiles” (Prelim Resp. 16 n.3) and (2) that
`“user preferences” are sent from Bhagwat’s client 230 to the HTTP proxy
`engine 220 (id. at 16). For the reasons set forth above, we agree with Patent
`Owner and are not persuaded that Bhagwat discloses this element of claim 1.
`
`c. Independent Claim 12
`i. Petitioner’s Arguments
`
`Petitioner relies upon Bhagwat’s disclosure with respect to Figures 2–
`5