Trials@uspto.gov
`571-272-7822
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`Paper No. 15
`Filed: March 26, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`STINGRAY DIGITAL GROUP, INC.,
`Petitioner,
`
`v.
`
`MUSIC CHOICE,
`Patent Owner.
`____________
`
`Case IPR2018-00114
`Patent 9,357,245 B1
`____________
`
`
`Before MITCHELL G. WEATHERLY, GREGG I. ANDERSON, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge HORVATH.
`
`Opinion Concurring filed by Administrative Patent Judge WEATHERLY.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`and
`Denying Motion for Joinder
`37 C.F.R. §§ 42.108, 42.122(b)
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 15
`Filed: March 26, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`STINGRAY DIGITAL GROUP, INC.,
`Petitioner,
`
`v.
`
`MUSIC CHOICE,
`Patent Owner.
`____________
`
`Case IPR2018-00114
`Patent 9,357,245 B1
`____________
`
`
`Before MITCHELL G. WEATHERLY, GREGG I. ANDERSON, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge HORVATH.
`
`Opinion Concurring filed by Administrative Patent Judge WEATHERLY.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`and
`Denying Motion for Joinder
`37 C.F.R. §§ 42.108, 42.122(b)
`
`
`
`
`
`
`IPR2018-00114
`Patent 9,357,245 B1
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`I. INTRODUCTION
`
`A. Background
`Stingray Digital Group, Inc., (“Petitioner”) filed a Petition to institute
`inter partes review of claims 1–10 and 12–17 (“the challenged claims”) of
`U.S. Patent No. 9,357,245 B1 (Ex. 1001, “the ’245 patent”). Paper 1
`(“Pet.”), 1, 4. Because the Petition would otherwise be time-barred pursuant
`to 35 U.S.C. § 315(b), Petitioner also filed a Motion for Joinder under
`35 U.S.C. § 315(c) to join this Petition to Stingray Digital Group, Inc. v.
`Music Choice, Case No. IPR2017-01193 (PTAB Oct. 10, 2017) (“Stingray-
`193”). Id. at 1; see also Paper 3, 1. Subsequent to the filing of the present
`Petition and Motion for Joinder, Music Choice (“Patent Owner”) disclaimed
`claims 1–9, 12–14, 16, and 17 of the ’245 patent. See Stingray-193, Ex.
`2002. Patent Owner also filed a Preliminary Response. Paper 10 (“Prelim.
`Resp.”).
`
`Upon consideration of the Petition and Preliminary Response, we are
`not persuaded, under 35 U.S.C. § 314(a), that Petitioner has demonstrated a
`reasonable likelihood that it would prevail in showing the unpatentability of
`at least one of the remaining challenged claims (i.e., claims 10 and 15) of the
`’245 patent. Accordingly, we decline to institute an inter partes review of
`the challenged claims, and deny Petitioner’s Motion for Joinder.
`
`B. Related Matters
`Petitioner identifies the following as matters that could affect, or be
`affected by, a decision in this proceeding: Music Choice v. Stingray Digital
`Group, Inc., Case No. 2:16-cv-00586-JRG-RSP (E.D. Tex.); Stingray
`Digital Group, Inc. v. Music Choice, Case No. IPR2017-01193 (PTAB Oct.
`
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`Patent 9,357,245 B1
`10, 2017) (challenging the patentability of claims 1–9, 12–14, 16, and 17 of
`the ’245 patent); and Stingray Digital Group, Inc. v. Music Choice, Case No.
`IPR2017-01192 (PTAB Oct. 19, 2017) (challenging the patentability of U.S.
`Patent No. 8,769,602 B1 (“the ’602 patent”), from which the ’245 patent
`descends) (“Stingray-192”). Pet. 1–2. Patent Owner identifies the same
`matters, as well as U.S. Patent Nos. 7,275,256, 7,926,085, 8,769,602, and
`9,451,300, from which the ’245 patent also descends. Paper 5, 2–3.
`
`C. Evidence Relied Upon
`
`Reference
`
`Publication Date
`
`Exhibit
`
`Mackintosh WO 00/19662 Apr. 6, 2000
`
`Ex. 1004
`
`
`Petitioner also relies upon the Declaration of Michael Shamos, Ph.D. (Ex.
`1003).
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`Reference
`Basis
`Claims Challenged
`Mackintosh
`§ 102(b)
`1–9, 12–14, 16, and 17
`Mackintosh
`§ 103(a)
`10 and 15
`
`II. ANALYSIS
`
`A. The ’245 Patent
`The ’245 patent is directed toward a system and method for providing
`an interactive, visual complement to one or more audio programs. Ex. 1001,
`Abstract. Figure 1 of the ’245 patent is reproduced below.
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`Figure 1 is a block diagram of audio/video system 100 for providing
`audio/video programming to consumers. Id. at 2:63–65. System 100
`includes audio subsystem 102 having playlist 110, video subsystem 104,
`first transmission system 190, second transmission system 170, receivers
`180, and audio/video devices 182. Id. at 4:10–36. Playlist 110 contains
`programmed sound recordings for transmission to listeners of system 100
`over a broadcast channel, and is typically generated on a periodic basis (e.g.,
`daily or weekly). Id. at 4:11–16. Audio subsystem 102 transmits the
`programmed sound recordings to first transmission system 190, which
`further transmits the recordings to second transmission system 170, which
`transmits the recordings to audio/video receivers 180. The latter are coupled
`to audio/video devices 182 that reproduce the sound recordings for system
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`subscribers. Id. at 4:22–34. Audio/video receivers 180 may be, e.g., set-top
`boxes, and audio/video devices 182 may be, e.g., televisions. Id. at 4:34–36.
`Video subsystem 104 generates a data packet upon receiving a trigger
`from audio subsystem 102. Ex. 1001, 4:37–39, 6:30–35. The trigger
`identifies the sound recording, information about the sound recording, and
`the channel broadcasting the sound recording. Id. at 6:30–35. The
`generated data packet contains a video image specification that specifies a
`visual complement to the audio broadcast. Id. at 4:39–44. The video image
`specification includes one or more visual media asset identifiers, where
`visual media assets can be graphic images, videos, text messages, and other
`media assets. Id. at 4:45–52. For example, the video image specification
`may include the name of a song, artist, and album associated with the song
`currently broadcast by transmission system 170. Id. at 4:54–67. The video
`image specification “may also specify the screen position where each
`identified asset is to be displayed” on a subscriber’s screen. Id. at 4:47–49.
`The data packet containing the video image specification can be an XML or
`HTML file. Id. at 5:31–39. Once generated, the data packet is transmitted
`from video subsystem 104 to first transmission system 170. Id. at 5:40–47.
`Transmission system 170 parses the data packet received from video
`subsystem 104, and uses the information contained in the video image
`specification to generate and transmit a video image to audio/video receivers
`180. Ex. 1001, 5:63–6:2. The video image may be encoded according to a
`Moving Pictures Expert Group (MPEG) standard, a National Television
`Standards Committee (NTSC) standard, or another video signal standard.
`Id. at 6:10–13. The video image is then displayed by audio/video devices
`182. Id. at 6:2–3. To generate the video image from the video image
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`specification, transmission system 170 preferably has access to storage unit
`185 containing those visual media assets identified by visual media asset
`identifiers in the video image specification. Id. at 5:48–56. Alternatively,
`the visual media assets can be stored in storage unit 186 of video subsystem
`104, and video subsystem 104 can transmit the visual media assets to
`transmission system 170. Id. at 5:57–62.
`Figure 2 of the ’245 patent is reproduced below.
`
`
`Figure 2 is an illustration of the locations on a TV screen (i.e., audio/video
`device) where visual media assets can be displayed. Ex. 1001, 2:66–67. For
`example, when audio/video device 182 receives and plays a song from U2’s
`Joshua Tree album, the Joshua Tree album cover is displayed at location
`202, and the name of the song, as well as U2 and Joshua Tree are displayed
`at location 204. Id. at 4:56–67.
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`Claims 1 and 12 of the ’245 patent are independent claims.
`Challenged claims 10 and 15 depend from claims 1 and 12, respectively.
`Claim 1 is a method claim, and is reproduced below.
`1. A method for providing a visual complement to an audio
`stream, comprising:
`transmitting, from a first transmission system to a second
`transmission system, audio data corresponding to a selected
`song; and
`transmitting a data packet that was generated using an identifier
`identifying the selected song, wherein the data packet includes a
`media asset identifier identifying a media asset and further
`includes song information associated with the selected song, the
`song information comprising the title of the song and the name
`of the artist who recorded the song, wherein
`the step of transmitting the data packet comprises transmitting
`the data packet to a receiving system that is configured such
`that, in response to receiving the data packet, the receiving
`system automatically generates a video image using the
`information included in the data packet and automatically
`outputs the generated video image such that it is received by a
`display device that is operable to display the video image to a
`user of the display device without the user having to select a
`menu item, and
`the generated video image includes the song information
`comprising the title of the song and the name of the artist.
`
`
`Ex. 1001, 15:62–16:19. Claim 10 depends from claim 1, and requires the
`generated video image to be encoded according to an MPEG standard. Id. at
`16:55–57. Claim 12 is an apparatus claim, and is reproduced below.
`12. A system for providing a visual complement to an audio
`service, the system comprising:
`
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`an audio transmission system configured to transmit audio data
`corresponding to a sound recording specified in a playlist for a
`linear audio channel; and
`a receiving system, comprising a receiver and a video image
`generator, the receiving system being configured to:
`i) in response to receiving a data packet that was generated
`using an identifier identifying the sound recording, generate a
`video image in accordance with information included in the
`data packet, wherein the data packet includes a media asset
`identifier identifying a media asset and further includes sound
`recording information associated with the sound recording, the
`sound recording information comprising the title of the sound
`recording and the name of the artist who recorded the sound
`recording; and
`ii) automatically output the generated video image such that it
`is received at a display device operable to display the video
`image to a user of the display device without the user having to
`select a menu item, wherein
`the generated video image includes the song information
`comprising the title of the song and the name of the artist, and
`the receiving system is configured to retrieve the identified
`media asset and use the retrieved media asset in generating the
`video image.
`Id. at 16:63–17:23. Claim 15 depends from claim 12, and requires the
`generated video image to be encoded according to an MPEG standard. Id. at
`17:31–33.
`
`B. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016). Consistent with the rule of broadest reasonable
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`interpretation, claim terms are generally given their plain and ordinary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire patent disclosure. See In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms which are in
`controversy need to be construed and only to the extent necessary to resolve
`the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.
`Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`Petitioner contends that all claim terms, except for the term “video
`image specification,” should be given their plain and ordinary meaning. Pet.
`7–8. We decline to construe the term “video image specification,” because
`it is not needed to resolve any controversy in this proceeding. Patent Owner
`contends claims 10 and 15 require “generat[ing] a video image” by virtue of
`their dependency from claims 1 and 12, respectively, where the generated
`video image is “encoded according to an MPEG standard.” Prelim. Resp.
`11. Therefore, Patent Owner requests construction of the term “generat[ing]
`a video image [that] is encoded according to an MPEG standard.” Id.
`1. generating a video image
`Neither party specifically asks for this term to be construed. In
`Stingray-192, we construed this term to mean “creating a set of image data
`that can be stored, transmitted, received, and decoded to render a video
`image on a display device, including video and still images.” See Stingray-
`192, Paper 6, 21. This construction is supported by the Specification, which
`discloses “generat[ing] a video image based on [a] video image
`specification,” where the video image specification “specifies one or more
`visual media asset identifiers” that can be “graphic image files (e.g., GIF
`
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`files, JPEG files, bitmap files, etc.), video files (e.g., MPEG files, AVI files),
`text messages, etc.” Ex. 1001, 2:10–13, 4:41–48, 4:50–52.
`2. generating a video image, wherein the video image is
`encoded according to an MPEG standard
`Claims 10 and 15 modify the “generat[ing] a video image” term
`recited in claims 1 and 12, respectively, by requiring the generated video
`image to be “encoded according to a Moving Pictures Experts Group
`(MPEG) standard.” Ex. 1001, 16:11–12, 16:55–57.
`Patent Owner contends the term “generating a video image” that is
`“encoded according to an MPEG standard” as required by claims 10 and 15
`should be construed to mean “creating image data that is encoded according
`to an MPEG standard.” Prelim. Resp. 12. Patent Owner argues this
`construction is supported by the Specification, which discloses a video
`image generator that “convert[s] [an] HTML document to an MPEG video
`presentation” by “convert[ing] the HTML document into an MPEG I-frame
`followed by null P-frames.” Id. at 12–13 (quoting Ex. 1001, 11:47–52).
`Petitioner does not propose an express construction for this term. See Pet.
`7–8.
`
`As discussed in section II.B.1, supra, the term “generat[ing] a video
`image” is construed to mean “creating a set of image data that can be stored,
`transmitted, received, and decoded to render a video image on a display
`device, including video and still images.” This construction, however, must
`be narrowed within the context of claims 10 and 15, which require the
`generated video image to be MPEG encoded, to mean “creating MPEG
`video image data that can be stored, transmitted, received, and decoded to
`render video on a display device.”
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`C. Petitioner’s Challenge to Claims 1–9, 12–14, 16, and 17
`As noted in section I.A, supra, Patent Owner has disclaimed these
`claims, rendering Petitioner’s challenge moot. See Stingray-193, Ex. 2002.
`
`D. Petitioner’s Challenge to Claims 10 and 15
`1. Overview of Mackintosh
`Mackintosh discloses “systems and methods for providing enhanced
`features for the delivery of broadcast material to a listener, viewer or, more
`generally, a user.” Ex. 1004, 3:6–8. Mackintosh provides supplemental
`materials to the user “in a coordinated fashion such that they relate to the
`actual broadcast materials . . . being streamed or otherwise delivered to the
`user.” Id. at 3:10–12. Supplemental materials can include “images, video
`clips, audio clips, data, or other materials that may be provided to the user in
`conjunction with the broadcast materials.” Id. at 3:18–20. For example,
`Mackintosh discloses the transmission of “radio broadcast materials over the
`Internet,” such as “a plurality of tracks that can be streamed to a user via the
`Internet.” Id. at 3:24–27. The tracks (i.e., music tracks or songs) can be
`“provided along with program data that can indicate, for example, an
`identification of the track, the type of track, and other pertinent or relevant
`information regarding the particular track.” Id. at 3:27–32.
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`Figure 5 of Mackintosh is reproduced below.
`
`
`Figure 5 is a block diagram showing radio station 204 providing a broadcast
`to user terminal 212 via Internet Service Provider (ISP) 208. Ex. 1004,
`5:20–22. Radio station 204 broadcasts material to ISP 208, which then
`transmits the broadcast material to user terminals 212 via the Internet. Id. at
`10:31–32, 12:13–14. The original broadcast can be provided in AM, FM, or
`digital format, and can consist of pre-programmed material. Id. at 11:1–8.
`The broadcast material can include a current radio broadcast and associated
`program data such as cut codes indicating the tracks in the radio broadcast,
`advertising data, and format data indicating the type of music broadcast or
`the type of product advertised. Id. at 10:32–35, 11:28–35, 12:13–14. The
`format data can be used to key particular pieces or categories of
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`supplemental material to the broadcast. Id. at 12:1–2. User terminal 212,
`which can be any general purpose audio/video player capable of playing the
`broadcast and supplemental material, plays the broadcast and supplemental
`material to a user. Id. at 12:21–26.
`
`ISP 208 provides program data associated with the broadcast,
`including a cut number and category, to either data server 214 or user
`terminal 212. Ex. 1004, 12:17–20. When provided to user terminal 212, the
`program data is forwarded to data server 214. Id. at 12:29–33. Data server
`214 uses the program data to retrieve supplemental materials such as images,
`videos, audios, or text that is associated with the program data, or to retrieve
`URLs or other information identifying the location where supplemental
`materials can be found on supplemental servers 216. Id. at 13:10–16. Data
`server 214 returns the supplemental materials or location information for the
`supplemental materials to user terminal 212. Id. at 13:16–21. User terminal
`212 receives the supplemental materials, or uses the location information to
`retrieve the supplemental materials from supplemental servers 216, and
`“plays” or displays the supplemental materials to the user while the user
`listens to the broadcast. Id. at 13:22–29. This allows the system to provide
`the user with, e.g., a track number, artist, album title, album image, links to
`purchase the album, promotional materials, concert schedules, other images
`or videos relating to the album or artist, or virtually any other information
`related to the current track broadcasted by radio station 204. Id. at 13:34–
`14:5.
`The supplemental material provided to user terminal 212 can be
`
`displayed or “played” on a media player such as the media player shown in
`Figure 7, which is reproduced below.
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`Figure 7 is an illustration of a media player’s user interface according to one
`embodiment of Mackintosh. Ex. 1004, 5:26–27. The user interface includes
`data window 302, player interface 304, history window 306, and advertising
`window 308. Id. at 15:34–36. Player interface 304 includes user selectable
`controls such as volume 312, status display 314, on-air display 316, and
`station list 318. Id. at 16:1–5. Data window 302 includes areas to display
`track image 322, track information 324, buy now button 326, and additional
`information selection area 328. Id. at 16: 11–15. When “user terminal 212
`is provided with URL’s [sic] to retrieve supplemental materials, the URL’s
`[sic] can be used to retrieve some or all of the information provided” in data
`window 302. Id. at 16:17–19. Track image 322 can be an album image, i.e.,
`a picture, image, or graphical representation of the album containing the
`song currently being played. Id. at 16:22–24. Track information 324 can
`display the artist’s name, the title, the album, and any other information
`related to the currently playing song. Id. at 16:35–17:3. User terminal 212
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`can retrieve and display the track/album image 322 and track information
`324 automatically upon receipt without user interaction. Id. at 17:8–10.
`Additional information selection area 328 can provide user selectable menus
`or icons that allow the user to obtain additional information or supplemental
`materials related to the currently playing track, such as concert schedules,
`tickets, merchandizing or other information. Id. at 17:13–20. This
`information is generally not retrieved by user terminal 212 until it is
`requested by clicking an icon or otherwise interacting with the menu
`provided in additional information selection area 328. Id. at 17:24–27.
`2. Claim 10
`Claim 10 depends from and includes all the limitations of claim 1 and,
`therefore, requires a receiving system that “automatically generates a video
`image using the information included in [a received] data packet,” where the
`“generated video image includes the song information comprising the title of
`the song and the name of the artist.” See Ex. 1001, 16:8–12, 16:17–19,
`16:55–57; 35 U.S.C. § 112 ¶ 4.
`Petitioner argues Mackintosh discloses this limitation in the form of
`user terminal 212. Pet. 25. First, Petitioner argues the ’245 patent uses the
`term “video image” to refer to various types of visual materials, including
`still and video images. Id. at 25–26 (citing Ex. 1001, 4:47–53). Next,
`Petitioner argues Mackintosh discloses user terminal 212 automatically
`generates and displays a “video image” from a received data packet by
`displaying a still image in the media player that includes an artist’s name
`(Fastball), song title (“The Way”), album name (“All the Pain Money Can
`Buy”), and record label (“PDG/Hollywood”). Id. at 26–27 (quoting Ex.
`1004, 28:16–18); see also Ex. 1004, Fig. 12.
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`As discussed in section II.B.3, supra, claim 10 narrows the meaning
`of “generat[ing] a video image” by further requiring the generated video
`image to be “encoded according to a Moving Pictures Experts Group
`(MPEG) standard.” Ex. 1001, 16:55–57. Petitioner argues this limitation
`would have been obvious in view Mackintosh because a person of ordinary
`skill in the art would have been well aware of the use of MPEG standards in
`image and video processing prior to the invention claimed in the ’245 patent.
`Pet. 60. For example, Petitioner argues Mackintosh discloses using either
`Microsoft’s NetShow or Real Networks’ SureStream G2 encoder, both of
`which support MPEG encoding. Id. at 61 (quoting Ex. 1004, 27:4–6) (citing
`Ex. 1003 ¶¶ 81–98). Petitioner further argues that the media player
`displayed on Mackintosh’s user terminal 212 displays supplemental
`materials related to the music being played, including videos. Id. at 62
`(citing Ex. 1004, 3:6–4:13, 6:6–13, 7:20–23, 13:11–13, 13:24–14:5, Figs. 7,
`12). Petitioner argues a person of ordinary skill in the art would have known
`that the videos displayed by Mackintosh’s media player were MPEG
`encoded because “MPEG encoding standards were well-known . . . and
`Mackintosh disclosed software that employed MPEG encoding.” Id.
`Petitioner further argues a person of ordinary skill in the art would have
`known that “displaying videos to end users would entail displaying MPEG-
`encoded videos because MPEG was a conventional encoding scheme for
`video content on the Internet at the time.” Id. at 62–63.
`Patent Owner argues that even though a person of ordinary skill in the
`art would have understood that the supplemental materials received and
`displayed by Mackintosh’s user terminal 212 could have been MPEG
`encoded videos, that fact alone is “insufficient to establish that Mackintosh
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`discloses, teaches, or suggests generating a video image encoded according
`to an MPEG standard as required by claims 10 and 15.” Prelim. Resp. 33.
`Relying on the testimony of Dr. Ross, Patent Owner contends receiving and
`generating MPEG-encoded content are not the same, and generally require
`two different devices. Id. (citing Ex. 2004 ¶ 57). In particular, a first device
`is generally required to generate and transmit MPEG-encoded videos, and a
`second device is required to receive, decode, and display the MPEG-
`encoded videos. Id. Patent Owner argues Mackintosh’s user terminal 212 is
`the second type of device, i.e., one that receives, decodes, and displays
`MPEG-encoded videos rather than one that generates MPEG-encoded
`videos. Id.
`Patent Owner further argues that not only has Petitioner failed to
`articulate a reason why a person of ordinary skill in the art would have
`modified Mackintosh’s user terminal 212 to generate MPEG-encoded video
`from received supplemental materials, but that such a person would have
`had no reason to do so. Prelim. Resp. 34–35 (citing Ex. 2004 ¶¶ 58–64). In
`particular, relying on the testimony of Dr. Ross, Patent Owner argues that to
`display received supplemental materials, Mackintosh’s user terminal 212
`simply has to render the supplemental materials into a frame buffer, and
`output the frame buffer to a display. Id. at 35–36 (citing Ex. 2004 ¶¶ 58–
`60). Patent Owner further argues that neither of these steps require user
`terminal 212 to MPEG-encode the received supplemental materials. Id.
`Patent Owner further argues that modifying user terminal 212 to MPEG-
`encode received supplemental materials would introduce both latency
`(encoding/decoding time) and cost (MPEG encoder) into Mackintosh’s
`system, with no apparent benefit. Id. at 37–38 (citing Ex. 2004 ¶¶ 62–64).
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`Consequently, Patent Owner argues a person of ordinary skill in the art
`would not have modified user terminal 212 to MPEG-encode received
`supplemental materials.
`We are persuaded by Patent Owner’s argument. When user terminal
`212 receives a data packet containing information related to a song (e.g.,
`song title, artist name, related song video), it automatically converts that
`information from its native format (e.g., ASCII for text or MPEG for video)
`into a bitmapped format that is written to user terminal 212’s frame buffer
`for output to user terminal 212’s display. Both experts agree this is how user
`terminal 212 ultimately displays the supplemental materials it receives. See
`Ex. 2004 ¶¶ 59–60; Ex. 2006, 24:19–25:13. Thus, although user terminal
`212 “automatically generates a video image using the information included
`in the data packet” as required by claim 1 in the form of a bitmapped video
`image written to its frame buffer, user terminal 212 does not automatically
`generate a “video image [that] is encoded according to a Moving Pictures
`Experts Group (MPEG) standard” as required by claim 10.
`We are not persuaded by Petitioner’s argument that a person of
`ordinary skill in the art would have modified user terminal 212 to MPEG
`encode received supplemental materials. Rather, we are persuaded by Patent
`Owner’s argument that a skilled artisan would not have modified user
`terminal 212 in this way because doing so would have negatively impacted
`the video processing latency and cost of user terminal 212 with no apparent
`benefit. Nor are we persuaded by Petitioner’s argument that a person of
`ordinary skill in the art would have modified user terminal 212 to MPEG-
`encode received supplemental materials because Mackintosh discloses using
`Microsoft’s NetShow or Real Networks’ SureStream G2 encoder.
`
`
`
`18
`
`
`
`IPR2018-00114
`Patent 9,357,245 B1
`Mackintosh discloses using either of these encoders to compress the audio
`signal broadcast from on-air system 501 (e.g., radio broadcaster 204), and to
`merge the compressed audio signal with the cut codes corresponding to the
`broadcasted track. See Ex. 1004, 26:24–27:13, Figs. 5, 10. Mackintosh
`discloses on-air system 501 (e.g., radio broadcaster 204) performs this audio
`encoding prior to transmitting the digitized audio signal to broadcast server
`509 (e.g., ISP 208), which then digitally transmits the compressed audio
`signal over the Internet to a client computer (e.g., user terminal 212) running
`a media player 510 that decompresses and plays the audio. Id. at 27:18–29,
`Figs. 5, 10. Thus, Mackintosh teaches using the NetShow or SureStream G2
`encoder to encode audio rather than video, and to do so prior to transmitting
`the audio to user terminal 212 rather than after receiving the audio at user
`terminal 212.
`Accordingly, for the reasons discussed above, Petitioner has failed to
`demonstrate Mackintosh teaches or suggests a “receiving system [that]
`automatically generates a video image,” wherein “the video image is
`encoded according to a Moving Pictures Experts Group (MPEG) standard”
`as required by claim 10. Petitioner, therefore, has failed to demonstrate a
`reasonable likelihood of showing claim 10 is unpatentable as obvious over
`Mackintosh.
`3. Claim 15
`Claim 15 depends from and includes all the limitations of claim 12,
`including a receiving system to “generate a video image in accordance with
`information included in [a received] data packet,” where the “generated
`video image includes the song information comprising the title of the song
`and the name of the artist.” See Ex. 1001, 17:1–7, 17:18–20, 17:31–33; 35
`
`
`
`19
`
`
`
`IPR2018-00114
`Patent 9,357,245 B1
`U.S.C. § 112 ¶ 4. Claim 15 further requires the generated video image to be
`“encoded according to a Moving Pictures Experts Group (MPEG) standard.”
`Ex. 1001, 17:31–33.
`Petitioner’s analysis of the “receiving system” limitations of claims 12
`and 15 (i.e., a receiving system configured to generate a video image that is
`encoded in MPEG format) is substantially similar to, and relies upon,
`Petitioner’s analysis of the corresponding limitations recited in claims 1 and
`10 as discussed in section II.D.2, supra. See Pet. 46–49, 63. For the reasons
`discussed there, we find Petitioner has failed to demonstrate a reasonable
`likelihood of showing claim 15 is unpatentable as obvious over Mackintosh.
`
`E. Motion for Joinder
`The parties agree that the Petition was filed on October 23, 2017,
`more than 1 year after Petitioner received a complaint alleging infringement
`of the ’245 patent. See Pet. 1; Paper 7, 3. Thus, the Petition would
`ordinarily be time barred under 35 U.S.C. § 315(b). This time bar, however,
`“shall not apply to a request for joinder.” Id. As noted in section I.A, supra,
`Petitioner has requested joinder of this inter partes with the inter partes
`review instituted for trial in Stingray-193. See Paper 3, 1.
`The Director is granted the discretion, once an inter partes review has
`been instituted, to “join as a party to that inter partes review any person who
`properly files a petition under section 311 that the Director . . . determines
`warrants the institution of an inter partes review under section 314.”
`35 U.S.C. § 315(c). As discussed in section II.D, supra, this Petition does
`not warrant the institution of an inter partes review. Accordingly, we deny
`
`
`
`20
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`
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`IPR2018-00114
`Patent 9,357,245 B1
`not only the Petition, but Petitioner’s motion for joinder to the inter partes
`review instituted in Stingray-193.1
`
`III. CONCLUSION
`We have reviewed the Petition and Patent Owner’s Preliminary
`Response to the same. We have considered all of the evidence and
`arguments presented by Petitioner and Patent Owner, and have weighed and
`assessed the entirety of this evidence as a whole. We find, on this record,
`that (1) Petitioner’s challenge to claims 1–9, 12–14, 16, and 17 are moot
`because Patent Owner has disclaimed these claims, and (2) Petitioner has
`failed to demonstrate a reasonable likelihood of showing that claims 10 and
`15 are unpatentable as obvious over Mackintosh.
`Accordingly, we deny the Petition, and decline to institute inter partes
`review of any claim challenged in the Petition. Moreover, because joinder is
`predicated upon determining the Petition “warrants the institution of an inter
`partes review under section 314,” we deny Petitioner’s Motion for Joinder.
`35 U.S.C. § 315(c).
`
`
`1 Because the Petition does not warrant institution, we need not address
`Patent Owner’s argument that 35 U.S.C. § 315(c) does not permit so-called
`“same-party” joinder, i.e., that th
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