throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 15
`Entered: June 5, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`DUODECAD IT SERVICES LUXEMBOURG S.À R.L.,
`ACCRETIVE TECHNOLOGY GROUP, INC., ICF TECHNOLOGY, INC.,
`RISER APPS LLC, and STREAMME, INC. (f/k/a VUBEOLOGY, INC.),
`Petitioners,
`
`v.
`
`WAG ACQUISITION, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00820
`Patent 8,122,141 B2
`____________
`
`
`
`Before TREVOR M. JEFFERSON, BRIAN J. McNAMARA, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`DECISION
`Petition for Inter Partes Review and Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F.R. § 42.122(b)
`
`
`On January 31, 2017, Duodecad IT Services Luxembourg S.à r.l.,
`Accretive Technology Group, Inc., ICF Technology, Inc., Riser Apps LLC,
`and StreamMe, Inc. (“Petitioners”) filed a Petition (Paper 2, “Pet.”) to
`
`

`

`IPR2017-00820
`Patent 8,122,141 B2
`
`
`
`institute an inter partes review of claims 1–28 of U.S. Patent No. 8,122,141
`B2 (“the ’141 patent”); and (2) a Motion for Joinder (Paper 3, “Mot.”) with
`IPR2016-01238 (“the related IPR”), which was instituted on January 4,
`2017. On February 21, 2017, WAG Acquisition, LLC (“Patent Owner”)
`filed an Opposition to the Motion for Joinder (Paper 8, “Opp.”), to which
`Petitioners replied on February 27, 2017 (Paper 9, “Reply”). On March 20,
`2017, Patent Owner waived filing of a Preliminary Response to the Petition.
`Paper 14.
`We grant the Motion for Joinder, joining Petitioners as parties to the
`related IPR, and dismiss the Petition.
`
`
`I. BACKGROUND
`A. The ’141 Patent
`The ’141 patent discloses a system for streaming media, such as audio
`or video, via the Internet with reduced playback interruptions. Ex. 1001,
`col. 4, ll. 39–44. Data interruptions can be recovered while a media player
`continues to play the audio or video material. Id. at col. 4, ll. 48–50.
`Figure 1 of the ’141 patent is reproduced below.
`
`
`
`2
`
`

`

`IPR2017-00820
`Patent 8,122,141 B2
`
`
`
`
`Figure 1 is a schematic diagram that illustrates elements of a streaming
`media buffering system. Id. at col. 10, ll. 7–9. Server 12 is connected to the
`Internet for transmitting sequenced streaming-media data elements. Id. at
`col. 10, ll. 22–25. Associated with server 12 are buffer manager 16 and
`first-in–first-out (“FIFO”) buffer 14, which stores at least one of the data
`elements for transmission. Id. at col. 10, ll. 25–27. Buffer manager 16
`receives the media data, supplies the media data in order to FIFO buffer 14,
`and maintains pointers 24a–24n into the buffer for user computers,
`indicating the last media data element that has been sent to respective users
`and thus indicating the next element or elements to be sent. Id. at col. 10, ll.
`30–38. Once FIFO buffer 14 is full, the oldest data elements in the buffer
`are deleted as new elements are received. Id. at col. 10, ll. 38–40. A
`3
`
`
`
`

`

`IPR2017-00820
`Patent 8,122,141 B2
`
`
`
`predetermined number of data elements are kept in FIFO buffer 14. Id. at
`col. 10, ll. 40–41.
`At least one user computer 18 is connected to server 12 via the
`Internet. Id. at col. 10, ll. 45–46. User buffer 20 is associated with user
`computer 18 and stores a predetermined number of the media data elements.
`Id. at col. 10, ll. 47–49. Buffer manager 22, associated with user computer
`18, receives and stores a predetermined number of media data elements
`received by the media player, plays the data out sequentially as audio and/or
`video, and deletes media data elements from buffer 20 as they are played out
`to maintain approximately the predetermined number of data elements in the
`user’s buffer. Id. at col. 10, ll. 53–59, col. 8, ll. 31–34.
`
`
`B. Illustrative Claims
`Independent claims 10 and 19 are illustrative of the claims at issue:
`
`10. A server for distributing streaming media via a data
`communications medium such as the Internet to at least one user
`system of at least one user, the streaming media comprising a
`plurality of sequential media data elements for a digitally
`encoded audio or video program, said user system being assumed
`to have a media player for receiving and playing the streaming
`media on said user system, which is operable to obtain media
`data elements from said server by transmitting requests to said
`server to send one or more specified media data elements, said
`server comprising
`
`at least one data storage device, memory for storing
`machine-readable executable routines and for providing a
`working memory area for routines executing on the server, a
`central processing unit for executing the machine-readable
`4
`
`
`
`
`
`

`

`IPR2017-00820
`Patent 8,122,141 B2
`
`
`
`executable routines, an operating system, at least one connection
`to the communications medium, and a communications system
`providing a set of communications protocols for communicating
`through said at least one connection;
`routine containing
`
`a machine-readable, executable
`instructions to cause the server to assign serial identifiers to the
`sequential media data elements comprising the program;
`
`a machine-readable, executable
`routine containing
`instructions to cause the server to receive requests from the user
`system for one or more media data elements specifying the
`identifiers of the requested data elements; and
`
`a machine-readable, executable
`routine containing
`instructions to cause the server to send media data elements to
`the user system responsive to said requests, at a rate more rapid
`than the rate at which said streaming media is played back by a
`user.
`
`
`Ex. 1001, col. 13, l. 63–col. 14, l. 28.
`
`
`19. A non-transitory machine-readable medium on which there
`has been recorded a computer program for use in operating a
`computer to prepare streaming media content for transmission by
`a server wherein said server responds to user requests for media
`data elements identified by a serial identifier, said program
`recorded on said non-transitory machine readable medium
`comprising a routine to store and serially identify sequential data
`elements comprising said streaming media content, in a format
`capable of being served to users by said server.
`
`
`Id. at col. 14, ll. 49–58.
`
`
`C. References
`Petitioners rely on the following references. Pet. 7–10.
`
`
`
`
`5
`
`

`

`IPR2017-00820
`Patent 8,122,141 B2
`
`
`
`
`
`Ex. 1002
`Ex. 1003
`
`Oct. 13, 1998
`US 5,822,524
`Chen
`Carmel US 6,389,473 B1 May 14, 2002
`
`M. H. Willebeek-LeMair, K. G. Kumar, and E. C. Snible,
`Bamba—Audio and video streaming over the Internet, 42 IBM
`J. RES. DEVELOP. 269 (March, 1998) (Ex. 1004) (“Willebeek”)
`
`International Standard ISO/IEC 11172-1, Information
`Technology—Coding of moving pictures and associated audio
`for digital storage media at up to about 1,5 Mbit/s—Part 1:
`Systems (ISO/IEC, August 1993) (Ex. 1018) (“ISO-11172-1”)
`
`International Standard ISO/IEC 11172-2, Information
`Technology—Coding of moving pictures and associated audio
`for digital storage media at up to about 1,5 Mbit/s—Part 2:
`Video (ISO/IEC, August 1993) (Ex. 1019) (“ISO-11172-2”)
`
`International Standard ISO/IEC 11172-3, Information
`Technology—Coding of moving pictures and associated audio
`for digital storage media at up to about 1,5 Mbit/s—Part 3:
`Audio (ISO/IEC, August 1993) (Ex. 1020) (“ISO-11172-3”)1
`
`
`D. Asserted Grounds of Unpatentability
`Petitioners challenge claims 1–28 of the ’141 patent on the following
`grounds. Pet. 4–5.
`
`
`1 In their challenges, Petitioners refer collectively to ISO-11172-1,
`ISO-11172-2, and ISO-11172-3 as “ISO-11172.” Because the challenges
`involving these references are all under 35 U.S.C. § 103(a), and because
`there is a self-evident reason to combine their teachings, we do not address
`whether they are properly considered as a single reference or as three
`separate references.
`
`6
`
`

`

`IPR2017-00820
`Patent 8,122,141 B2
`
`
`
`Reference(s)
`
`Chen
`
`Chen and Willebeek
`Chen and ISO-11172
`Carmel
`
`Carmel and Willebeek
`Carmel, Willebeek, and ISO-
`11172
`Carmel and ISO-11172
`
`
`Basis(es)
`§ 102(b)
`
`§ 103(a)
`§ 103(a)
`§ 102(a)
`§ 102(e)2
`§ 103(a)
`§ 103(a)
`
`Claims Challenged
`1, 2, 4–7, 9–11, 13–16, 18–20,
`23, 24, and 26–28
`8, 17, and 21
`3, 12, 22, and 25
`10, 11, 13–21, and 23
`
`1, 2, 4–9, 24, and 26–28
`3 and 25
`
`§ 103(a)
`
`12 and 22
`
`E. Related Proceedings
`The parties identify the following matters as involving the ’141
`patent: (1) WAG Acquisition, LLC v. Sobonito Investments, Ltd., No. 2A14-
`cv-1661-ES-MAH (D.N.J.); (2) WAG Acquisition, LLC v. Multi Media, LLC,
`No. 2:14-cv-2340-ES-MAH (D.N.J.); (3) WAG Acquisition, LLC v. Data
`Conversions, Inc., No. 2:14-cv-2345-ES-MAH (D.N.J.); (4) WAG
`Acquisition, LLC v. Flying Crocodile, Inc., No. 2:14-cv-2674-ES-MAH
`(D.N.J.); (5) WAG Acquisition, LLC v. Gattyàn Group S.à r.l., No. 2:14-cv-
`2832-ES-MAH (D.N.J.); (6) WAG Acquisition, LLC v. FriendFinder
`Networks Inc., No. 2:14-cv-3456-ES-MAH (D.N.J); (7) WAG Acquisition,
`LLC v. Vubeology, Inc., No. 2:14-cv-4531-ES-MAH (D.N.J.); (8) WAG
`Acquisition, LLC v. Gamelink Int’l Ltd. No. 2:15-cv-3416-ES-MAH
`
`
`2 Page 4 of the Petition asserts that claims 10, 11, 13–21, and 23 are
`challenged “under 35 U.S.C. § 102(b) as anticipated by Carmel,” but page 8
`of the Petition alleges that Carmel “is prior art under at least 35 U.S.C.
`§ 102(a) and (e).”
`
`7
`
`
`
`

`

`IPR2017-00820
`Patent 8,122,141 B2
`
`(D.N.J.); (9) WAG Acquisition LLC v. WebPower, Inc., No. 2:15-cv-3581-
`ES-MAH (D.N.J.); and (10) WAG Acquisition, LLC v. MFCXY, Inc., No.
`2:14-cv-3196-ES-MAH (D.N.J.). Pet. 2, Paper 7, 2–3.
`In addition, the parties identify the following inter partes reviews as
`involving the ’141 patent: IPR2015-01037, IPR2016-01238, IPR2016-
`01656, and IPR2017-00786. Of these, review has been instituted in
`IPR2016-01238 and IPR2016-01656, but denied in IPR2015-01037. Like
`this proceeding, a motion for joinder with IPR2016-01238 was filed in
`IPR2017-00786. We have concurrently issued a decision in IPR2017-00786
`granting joinder with IPR2016-01238.
` A continuation of the ’141 patent, U.S. Patent No. 8,327,011 B2, is
`the subject of IPR2015-01033, IPR2016-01161, and IPR2016-01655;
`institution was denied in each of those proceedings. Two other related
`patents are the subject of further inter partes review proceedings: U.S.
`Patent No. 8,185,611 is the subject of IPR2015-01035, IPR2016-01162, and
`IPR2016-01657, with institution denied in each of those proceedings; and
`U.S. Patent No. 8,364,839 is the subject of IPR2015-01036, IPR2016-01239,
`IPR2016-01658, IPR2017-00784, IPR2017-00785, and IPR2017-01179.
`
`
`II. ANALYSIS
`In the related IPR, we instituted an inter partes review of claims 10–
`23 on the following bases:
`Reference(s)
`
`Chen
`Chen and Willebeek
`
`Basis(es)
`§ 102(b)
`§ 103(a)
`8
`
`Claim(s) Challenged
`19, 20, and 23
`21
`
`
`
`
`
`

`

`Basis(es)
`§ 103(a)
`§ 102(a)
`§ 102(e)
`§ 103(a)
`
`IPR2017-00820
`Patent 8,122,141 B2
`
`
`
`Reference(s)
`Chen and ISO-11172
`Carmel
`
`Claim(s) Challenged
`
`22
`10, 11, 13–21, and 23
`
`12 and 22
`
`Carmel and ISO-11172
`
`WebPower, Inc. v. WAG Acquisition, LLC, Case IPR2016-01238, slip op. at
`22–23 (PTAB Jan. 4, 2017) (Paper 7).
`The Petition in this proceeding challenges the same claims challenged
`in the related IPR on the same grounds of unpatentability, and relies on the
`same evidence and arguments. Pet. 4–5, Mot. 1. In addition to representing
`that the Petition is substantively identical to the petition in the related IPR,
`Petitioners “request that the institution of the accompanying Petition be
`limited to the grounds instituted” in the related IPR. Mot. 2. Petitioners
`agree to “adhere to all applicable deadlines” in the related IPR, to
`“coordinate all filings with” the petitioner in the related IPR, not to seek
`additional depositions or deposition time, and to “coordinate deposition
`questioning and hearing presentations with” the petitioner in the related IPR.
`Id. at 1–2.
`In light of these representations and agreements, and in light of Patent
`Owner’s waiver of filing a Preliminary Response, we determine that
`Petitioners have demonstrated sufficiently that the arguments in the Petition
`warrant institution of an inter partes review under 35 U.S.C. § 314 with
`respect to the grounds instituted in the related proceeding. A party may be
`joined to an instituted inter partes review in accordance with the following
`statutory provision:
`
`
`
`9
`
`

`

`IPR2017-00820
`Patent 8,122,141 B2
`
`(c) JOINDER.—If the Director institutes an inter partes
`review, the Director, in his or her discretion, may join as a party
`to that inter partes review any person who properly files a
`petition under section 311 that the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
`
`35 U.S.C. § 315(c); see 37 C.F.R. § 42.122. As the moving party,
`Petitioners bear the burden of proving that they are entitled to the requested
`relief. 37 C.F.R. § 42.20(c).
` Patent Owner opposes joinder because “the instant Petition and
`motion are second bites at the apple for Petitioners, and Petitioners have
`failed to explain why the instant grounds and arguments were not raised in
`prior (and timely) petition.” Opp. 1. Patent Owner observes that, but for the
`exception provided by 35 U.S.C. § 315(b) for a request for joinder, the
`Petition would be time barred, arguing that “Petitioners had their chance,”
`with one of the Petitioners having “filed an IPR petition against the ’141
`Patent in 2015, within a year of having been served with a complaint
`alleging infringement of the ’141 Patent.” Id. Petitioners reply that joinder
`will promote efficiency by consolidating issues and that Patent Owner does
`not refute the “Dell” factors outlined by Petitioner in its Motion for Joinder.
`Reply 1–4.
`Based on the facts and circumstances discussed above, we determine
`that Petitioners have met their burden of demonstrating that their joinder to
`the related proceeding is warranted. We have considered Patent Owner’s
`argument that at least one of the Petitioners could have raised the arguments
`10
`
`
`
`
`
`

`

`IPR2017-00820
`Patent 8,122,141 B2
`
`
`
`and evidence in its 2015 petition. Although the fact that a petition includes
`arguments and evidence that reasonably could have been raised in an earlier
`petition may weigh against joinder, the decision to grant or deny joinder is
`made “on a case-by-case basis, taking into account the particular facts of
`each case, substantive and procedural issues, and other considerations.” See
`Unified Patents, Inc. v. PersonalWeb Techs., LLC, Case IPR2014-00702,
`slip op. at 3 (PTAB July 24, 2014) (Paper 12); Dell Inc. v. Network-1 Sec.
`Solutions, Inc., Case IPR2013-00385, slip op. at 3 (PTAB July 29, 2013)
`(Paper 17). Because Patent Owner is already defending the related IPR, and
`because there will be no schedule change or separate filings by Petitioners in
`the related IPR, Patent Owner will not be prejudiced. Accordingly, we
`conclude that the Motion for Joinder should be granted, and the Petition
`dismissed so that all further filings are made in the related proceeding to
`which Petitioners are joined.
`
`
`III. ORDER
`
`It is
`ORDERED that Petitioners’ Motion for Joinder is granted and that
`Petitioners are hereby joined as parties to IPR2016-01238;
`FURTHER ORDERED that the grounds of unpatentability on which
`trial was instituted in IPR2016-01238 are unchanged and remain the only
`grounds on which trial has been instituted;
`
`
`
`11
`
`

`

`IPR2017-00820
`Patent 8,122,141 B2
`
`
`
`FURTHER ORDERED that the Scheduling Order and any
`modifications thereto entered in IPR2016-01238 shall govern the schedule of
`the joined proceeding;
`FURTHER ORDERED that the joined parties in IPR2016-01238 shall
`file all papers jointly in the joined proceeding as consolidated filings, and
`will identify each such paper as “Consolidated,” except for papers that
`involve fewer than all of the parties;
`FURTHER ORDERED that the Petition is dismissed;
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2016-01238; and
`
`FURTHER ORDERED that the case caption in IPR2016-01238 shall
`be modified in accordance with the attached example to reflect joinder of
`Petitioners, as well as joinder of the petitioners of IPR2017-00786, who are
`concurrently joined to IPR2016-01238 by a Decision in IPR2017-00786.
`
`
`
`
`
`
`
`
`12
`
`

`

`IPR2017-00820
`Patent 8,122,141 B2
`
`
`
`PETITIONER:
`
`Kevin O'Brien
`Matt Dushek
`Richard Wells
`BAKER & MCKENZIE LLP
`kevin.obrien@bakermckenzie.com
`matt.dushek@bakermckenzie.com
`richard.wells@bakermckenzie.com
`
`Brian Bodine
`Alan Minsk
`Adriane Scola
`LANE POWELL PC
`bodineb@lanepowell.com
`minska@lanepowell.com
`scolaa@lanepowell.com
`
`PATENT OWNER:
`
`Ronald Abramson
`LEWIS BAACH PLLC
`ronald.abramson@lbkmlaw.com
`
`Ernest Buff
`ERNEST D. BUFF & ASSOCIATES, L.L.C.
`ebuff@edbuff.com
`
`
`
`13
`
`

`

`
`
`
`
`
`Paper XX
`Entered: XX
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Example Case Caption for Joined Proceeding
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`WEBPOWER, INC.,
`
`FRIENDFINDER NETWORKS INC., STEAMRAY INC., WMM, LLC,
`WMM HOLDINGS, LLC, and MULTI MEDIA, LLC,
`
`DUODECAD IT SERVICES LUXEMBOURG S.À R.L.,
`ACCRETIVE TECHNOLOGY GROUP, INC., ICF TECHNOLOGY, INC.,
`RISER APPS LLC, and STREAMME, INC. (f/k/a VUBEOLOGY, INC.),
`
`Petitioner,
`
`v.
`
`WAG ACQUISITION, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-01238
`Patent 8,122,141 B2
`_______________
`
`
`
`
`

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