IPR2018-01498
`Patent 9,380,282
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`AMAZON.COM, INC.,
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`Petitioner,
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`v.
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`CUSTOMPLAY, LLC,
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`Patent Owner.
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`
`
`Case IPR2018-01498
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`Patent 9,380,282
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`
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`PATENT OWNER’S RESPONSE
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`IPR2018-01498
`Patent 9,380,282
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`TABLE OF CONTENTS
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`
`
`I.
`
`INTRODUCTION ........................................................................................... 1
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`A. The Institution Decision .............................................................................. 2
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`1. Grounds 1a and 1b ................................................................................. 2
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`2. Grounds 2a-2b ....................................................................................... 3
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`3. Grounds 3a and 3b ................................................................................. 4
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`II.
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`OVERVIEW OF THE ’282 PATENT ............................................................ 4
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`A. The Challenged Claims ............................................................................... 5
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`B. Prosecution History ..................................................................................... 5
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`C. Concurrent Litigation Between the Parties ................................................. 7
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`III. CLAIM CONSTRUCTION ............................................................................ 7
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`A. Petitioner’s Total Failure to Construe the Claims ....................................... 7
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`B. Patent Owner’s Proposed Claim Constructions .......................................... 7
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`IV. THE ASSERTED PRIOR ART REFERENCES ............................................ 8
`
`A. McIntire et al., U.S. Publication 2007/0250901 (“McIntire”) .................... 8
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`B. Dey et al., U.S. Patent No. 6,965,890 (“Dey”) ............................................ 8
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`C. Abecassis U.S. Patent No. 6,038,367 (“Abecassis”) ................................... 8
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`D. Bergen et al., U.S. Patent No. 6,956,573 (“Bergen”) .................................. 9
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`E. Reimer et al., U.S. Patent No. 5,696,905 (“Reimer”) ................................. 9
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`i
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`IPR2018-01498
`Patent 9,380,282
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`F. Armstrong et al., U.S. Publication No. 2007/0003223 (“Armstrong”) ....... 9
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`V.
`
`ITS BURDEN OF
`PETITIONER HAS FAILED TO CARRY
`ESTABLISHING A REASONABLE LSIKELIHOOD ON ANY
`PROPOSED GROUND OF UNPATENTABILITY ...................................... 9
`
`A. The Petition is Fundamentally Flawed ........................................................ 9
`
`B. Ground 1a—Petitioner Has Not Carried Its Burden on Obviousness of
`Claims 4, 9, 12, 14, 16, and 19 in View of McIntire and Dey ..................13
`
`1. Claim 4 ................................................................................................13
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`a. “retrieving, from a plurality of video frame identifiers, a first video
`frame identifier that is responsive to the request location, and
`contemporaneously retrieving a second video frame identifier that is
`different from the first video frame identifier that is responsive to a
`location that is prior to the request location; and” ..........................20
`
`b. “displaying information associated with the first video frame
`identifier, and contemporaneously displaying information associated
`with the second video frame identifier that is different from the
`information associated with the first video frame identifier.” ..........21
`
`i. McIntire Is Deficient ..................................................................21
`
`ii. Dey Fails To Remedy McIntire’s Deficiencies ........................22
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`iii. Impermissible Change In McIntire’s Principle Of Operation .24
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`2. Claims 9, 14, 12, and 19 ......................................................................25
`
`3. Claim 16 - “receiving from the user a request for additional
`information relating to the information associated with the second
`video frame identifier; and enabling a displaying of additional
`information in response to the request for additional information.” ..25
`
`C. Ground 1b—Petitioner Has Not Carried Its Burden on Obviousness of
`Claims 7, 8, and 18 in View of McIntire, Dey, and Abecassis .................27
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`ii
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`IPR2018-01498
`Patent 9,380,282
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`1. Claim 7 - “pausing the playing in response to the request for
`information; resuming the playing at a beginning of a video clip that
`is responsive to the request location” .................................................27
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`2. Claim 8 ................................................................................................30
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`a. “receiving from the user a request for additional information”,
`“pausing the playing in response to the request for additional
`information; resuming the playing at a beginning of a video clip that
`is responsive to the request location.” ..............................................30
`
`3. Claim 18 -- “pausing the playing in response to the request for
`additional information; resuming, following a termination of the
`displaying of additional information, the playing at a beginning of a
`video clip that is responsive to the request location” .........................31
`
`D. Ground 2a—Petitioner Has Not Carried Its Burden on Obviousness of
`Claims 4, 9, 12, 14, 16, and 19 in View of Bergen and Reimer ...............31
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`1. Claim 4 ................................................................................................31
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`a. “identifying a request location that is responsive to the request for
`information;” ....................................................................................32
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`i. Bergen Fails ...............................................................................32
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`ii. Petitioner Does Not Establish Obviousness in view of Reimer
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`35
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`iii. Improper Change In the Principle Of Operation .....................36
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`b. “retrieving, from a plurality of video frame identifiers, a first video
`frame identifier that is responsive to the request location, and
`contemporaneously retrieving a second video frame identifier that is
`different from the first video frame identifier that is responsive to a
`location that is prior to the request location; and” ..........................38
`
`c. “displaying information associated with the first video frame
`identifier, and contemporaneously displaying information associated
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`iii
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`IPR2018-01498
`Patent 9,380,282
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`with the second video frame identifier that is different from the
`information associated with the first video frame identifier.” ..........39
`
`2. Claims 9, 12, 14, 16, and 19 ................................................................40
`
`E. Ground 2b—Petitioner Has Not Carried Its Burden on Obviousness of
`Claims 7, 8, and 18 in View of Bergen, Reimer, and Abecassis ..............40
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`1. Claim 7 ................................................................................................40
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`2. Claim 8 ................................................................................................42
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`3. Claim 18 ..............................................................................................42
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`F. Ground 3a—Petitioner Has Not Carried Its Burden on Obviousness of
`Claims 4, 9, 12, 14, 16, and 19 in View of Armstrong .............................42
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`1. Claim 4 ................................................................................................45
`
`a. “identifying a request location that is responsive to the request for
`information;” ....................................................................................45
`
`b. “retrieving, from a plurality of video frame identifiers, a first video
`frame identifier that is responsive to the request location,” ............46
`
`c. “contemporaneously retrieving a second video frame identifier that is
`different from the first video frame identifier and that is responsive to
`a location that is prior to the request location; and .........................49
`
`d. “displaying information associated with the first video frame
`identifier, and contemporaneously displaying information associated
`with the second video frame identifier that is different from the
`information associated with the first video frame identifier.” ..........50
`
`2. Claim 9 - “receiving from the user a request for additional information
`relating to the information associated with the first video frame
`identifier; and enabling a displaying of additional information in
`response to the request for additional information.” ...........................57
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`3. Claim 16 ..............................................................................................59
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`iv
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`IPR2018-01498
`Patent 9,380,282
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`G. Ground 3b—Petitioner Has Not Carried Its Burden on Obviousness of
`Claim 7 in View of Armstrong, Alone or in Combination with Abecassis –
`“pausing the playing in response to the request for information; resuming
`the playing at a beginning of a video clip that is responsive to the request
`location” ....................................................................................................60
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`VI. CONCLUSION ..............................................................................................65
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`IPR2018-01498
`Patent 9,380,282
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`
`Cases
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`TABLE OF AUTHORITIES
`
`Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034 (Fed. Cir. 2016) ........................17
`
`Colas Sols., Inc. v. Blacklidge Emulsions, Inc., 759 F. App'x 986 (Fed. Cir. 2019)
`
` ..............................................................................................................................41
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009)
`
` ..............................................................................................................................16
`
`Endo Pharms. Sols., Inc. v. Custopharm Inc., 894 F.3d 1374 (Fed. Cir. 2018) ......41
`
`Graham v. John Deere Co., 383 U.S. 1 (1966) ......................................................... 4
`
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356 (Fed. Cir. 2016) .......................... 4
`
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, (Fed. Cir. 2016) .....................43
`
`In re NuVasive, 842 F.3d 1376 (Fed. 2016) .............................................................43
`
`K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362 (Fed. Cir. 2014) ................13
`
`King Pharm., Inc. v. Eon Labs., Inc., 616 F.3d 1267 (Fed. Cir. 2010) ...................41
`
`KSR Int’l Co. v. Teleflex, Inc., 500 U.S. 398 (2007) ................................................. 4
`
`McGinley v. Franklin Sports, Inc., 262 F.3d 1339 (Fed. Cir. 2001) .......................13
`
`Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336 (Fed. Cir.
`
`2018) ....................................................................................................................41
`
`Pers. Web Techs., LLC v. Apple, Inc., 917 F.3d 1376 (Fed. Cir. 2019) ..................42
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`Plas-Pak Indus., Inc. v. Sulzer Mixpac AG, 600 Fed. App’x. 755 (Fed. Cir. 2016)
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` ..............................................................................................................................27
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`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348 (Fed.
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`Cir. 2013) .............................................................................................................13
`
`R.J. Reynolds Vapor Co. v. Fontem Holdings 1 BV, (IPR2018-00629) ..................27
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`Ricoh Co., Ltd. v. Quanta Comput. Inc., 550 F.3d 1325 (Fed. Cir. 2008) ..............16
`
`SAS institute Inc. v. Iancu, 138 S. Ct. 1348 (2018) .................................................26
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`Synopsys, Inc. v. ATopTech, Inc., 685 F. App’x 951 (Fed. Cir. 2017) ....................41
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`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617
`
`F.3d 1296 (Fed. Cir. 2010) ...................................................................................43
`
`U.S. Water Servs., Inc. v. Novozymes A/S, No. 2018-2075, 2019 WL 1762690 (Fed.
`
`Cir. Apr. 19, 2019) ...............................................................................................41
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`Other Authorities
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`(https://en.wikipedia.org/wiki/Video_clip) ..............................................................35
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`IPR2018-01498
`Patent 9,380,282
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`TABLE OF EXHIBITS
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`Exhibit No.
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`Description
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`2021
`
`Declaration of Dr. Clifford Reader in Support of Patent Owner’s
`Response
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`2022
`
`Resume of Dr. Clifford Reader
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`viii
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`IPR2018-01498
`Patent 9,380,282
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`
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`Pursuant to 37 C.F.R. § 42.120, patent owner CustomPlay, LLC (“Patent
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`Owner”) submits the following response to the petition for inter partes review (Paper
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`1, (the “Petition” or “Pet.”) filed by petitioner Amazon.com, Inc. (“Petitioner”)
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`challenging claims 4, 7-9, 12, 14, 16, 18, and 19 of U.S. Patent No. 9,380,282 B2
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`(the “’282 Patent”).
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`I.
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`INTRODUCTION
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`In this IPR, each of claims 4, 7, 9, 12, 14, 16, and 19 face three of the six
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`asserted grounds in the Petition. (Pet. 12, 33, 38, 54, 58, 69 (Grounds 1a, 1b, 2a, 2b,
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`3a, 3b).) Claims 8 and 18 face two of the six asserted grounds in the Petition. (Pet.
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`33, 54 (Grounds 1b, 2b).)
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`Patent Owner filed Patent Owner’s Preliminary Response on December 10,
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`2018. (Paper 6 (the “POPR”).) In the POPR, Patent Owner noted several
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`deficiencies in the Petition and in the prior art. Although the Board acknowledged
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`these deficiencies as fatal to some of the asserted grounds, it issued an Order
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`1
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`IPR2018-01498
`Patent 9,380,282
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`instituting inter partes review (“IPR”) on March 14, 2019. (Paper 13 (the “Institution
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`Decision”.))1
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`As described below, the Petition fails to directly address the differences
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`between the prior art and the claim limitations at issue. Further, the Petition fails to
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`establish that every limitation of the challenged claims can be found in the prior art
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`for each ground. Accordingly, Petitioner has not met its burden to establish
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`unpatentability of the challenged claims.
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`A. The Institution Decision
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`1. Grounds 1a and 1b
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`In the Institution Decision, the Board acknowledged Patent Owner’s argument
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`that that “each of the challenged claims require that both the information associated
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`with the first video frame identifier and the different information associated with the
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`second identifier must be displayed contemporaneously.” (Institution Decision at 35
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`(emphasis added).) Thus, the Board concluded that “on the present record,
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`McIntire’s disclosure of mapping an item of supplemental content to one or more
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`segment identifiers does not appear to meet the claim limitation because even if
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`1 For example, the Board acknowledged the Petition’s deficiencies as to obviousness
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`based on McIntire and Dey (Ground 1a), and McIntire, Dey and Abecassis (Ground
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`1b). See infra §I.A.1.
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`2
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`IPR2018-01498
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`mapped to two different identifiers, both identifiers would lead to the same item of
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`supplemental content.” (Id.) The Board also determined that the “disclosures in Dey
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`seem to teach retrieving and displaying the content of interest associated with the
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`prior portion of the video instead of the content associated with the time the
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`interested was indicated, which Dey indicates is not indicative of user interest.” (Id.
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`(citing Ex.1023 (Dey), 7:49-58.) Patent Owner’s renewed arguments regarding the
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`failures of McIntire and Dey are set forth below. See infra §V.B.1.d.
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`2. Grounds 2a-2b
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`For purposes of the Institution Decision, the Board found “Petitioner ha[d]
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`shown sufficiently that Bergen and Reimer teach,” among other things, the
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`“identifying a request location” limitation. (Institution Decision 16.) While
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`Petitioner’s arguments for this limitation comprise two inherent-disclosure theories
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`and one obviousness theory, the Board addressed only Petitioner’s inherent-
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`disclosure arguments. In this Response, Patent Owner advances equally plausible
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`understandings of Bergen that contrast with Petitioner’s inherency arguments and
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`show that Petitioner’s arguments present nothing more than mere possibility, not
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`exact inherency. (See infra §V.B.1.b.) Patent Owner also shows below that
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`Petitioner’s obviousness theory is incomplete, lacking the very “articulated
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`reasoning with some rational underpinning to support the legal conclusion of
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`obviousness” that the Board noted is typically required in an obviousness analysis
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`3
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`IPR2018-01498
`Patent 9,380,282
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`(Institution Decision at 12 (citing KSR Int’l Co. v. Teleflex, Inc., 500 U.S. 398, 418
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`(2007).)) (See infra §V.B.1.b.)
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`3. Grounds 3a and 3b
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`In the Institution Decision, the Board found Petitioner’s arguments equating
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`Armstrong’s menu and background frame to the claimed contemporaneously
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`displayed different information persuasive. (Institution Decision 30.) In this
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`Response, Patent Owner addresses more fully its positions and establishes that
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`Petitioner’s comparison and interpretation of what constitutes “information” is
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`unreasonably broad and ignores the context in which the claimed displayed
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`information is recited. Additionally, Patent Owner addresses the inconsistent
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`positions that Petitioner has taken with respect to Armstrong’s menu between this
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`and another IPR. (See infra §V.F.d.)
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`II. OVERVIEW OF THE ’282 PATENT
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`CustomPlay is the owner of the ‘282 Patent, entitled “Providing Item
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`Information During Video Playing.” Max Abecassis, the founder, CEO, and owner
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`of CustomPlay, is the sole inventor of the ‘282 Patent. The ‘282 Patent provides
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`that: “[d]uring a playing of a video, a user may desire to obtain item identification
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`information and/or shopping information for an item being depicted within the
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`video. In such situations, it is advantageous to be able to provide, a user during a
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`4
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`IPR2018-01498
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`playing of a video, item information for certain items being depicted.” (‘282 Patent,
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`13:26-32.)
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`A. The Challenged Claims
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`Petitioner challenges claims 4, 7-9, 12, 14, 16, 18, and 19 of the ’282 Patent.
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`Claims 4, 7-9, 14, 16, and 19 are independent claims. A principal feature of the
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`claims is the:
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`displaying information associated with the first video frame
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`identifier, and contemporaneously displaying
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`information
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`associated with the second video frame identifier that is different
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`from the information associated with the first video frame
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`identifier.
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`(‘282 Patent, 34:9-26.)
`
`B.
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`Prosecution History
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`The ’282 Patent issued from U.S. Patent Application No. 13/506,093 filed on
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`March 26, 2012. According to the transaction history (Public PAIR), the case was
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`docketed to Primary Examiner William Tran on March 7, 2013. The claims went
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`through a thorough examination in which Examiner Tran issued four different Office
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`Actions. In an amendment filed on April 27, 2016, the claims were amended to
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`require that the first and second video frame identifiers are “different” and are each
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`retrieved “contemporaneously,” and that the information associated with the first
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`video frame identifier and the information associated with the second video frame
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`5
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`IPR2018-01498
`Patent 9,380,282
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`identifier are “different” and are each displayed “contemporaneously.” (Ex. 1010,
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`381-87.) The claims were thus amended to the form in the issued patent. After one
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`additional round of searching, Primary Examiner Tran issued a Notice of Allowance
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`dated May 16, 2016 in which he stated that:
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`Claims 1, 2, 4, 7-9, 14, 16, and 19, when considered as a
`
`whole, are allowable over the prior art of record.
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`Specifically, the prior art of record, taken individually or
`
`in combination, does not clearly teach or suggest the combination
`
`of the following features:
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`“retrieving, from a plurality of video frame identifiers, a
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`first video frame identifier that is responsive to the request
`
`location, and contemporaneously retrieving a second video
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`frame identifier that is different from the first video frame
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`identifier and that is responsive to a location that is prior to the
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`request location;
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`displaying information associated with the first video
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`frame identifier, and contemporaneously displaying information
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`associated with the second video frame identifier that is different
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`from the information associated with the first video frame
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`identifier.”, [sic] as recited in independent claim 1, and similarly
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`6
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`IPR2018-01498
`Patent 9,380,282
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`recited in independent claims 2, 4, 7-9, 14, 16 and 19.2
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`(Ex. 1010 at 400 (emphasis added).)
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`Examiner Tran thus recognized specific inventive claim limitations that
`
`justified the allowance of the ’282 Patent.
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`C. Concurrent Litigation Between the Parties
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`The parties are involved in litigation in CustomPlay, LLC v. Amazon.com,
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`Inc., Case No. 9:17-cv-80884 (S.D. Fla.). That case is stayed pending the outcome
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`of this IPR.
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`III. CLAIM CONSTRUCTION
`
`A. Petitioner’s Total Failure to Construe the Claims
`
`Petitioner fails to propose any claim construction for any term.
`
`B.
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`Patent Owner’s Proposed Claim Constructions
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`The ’282 Patent includes numerous explicit definitions in the specification,
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`including for key claim terms present throughout many of the challenged claims such
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`as “associated,” “clip,” “playing,” “segment,” “shot,” “user,” and “video,” among
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`many others. (See Ex. 1001, 3:49-6:17.) The inventor has thus acted as his own
`
`
`2 The limitations Examiner Tran specifically called out in the Notice of Allowance
`as distinguishing over the prior art are recited in the claims that Petitioner now
`challenges in this IPR.
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`7
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`IPR2018-01498
`Patent 9,380,282
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`lexicographer, and these explicit definitions set forth in the patent itself should be
`
`used.
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`IV. THE ASSERTED PRIOR ART REFERENCES
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`A. McIntire et al., U.S. Publication 2007/0250901 (“McIntire”)
`
`McIntire is generally directed to a method for facilitating creation of an
`
`annotated media stream. (Ex. 1004, abstract.)
`
`B. Dey et al., U.S. Patent No. 6,965,890 (“Dey”)
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`Dey is generally directed to a method and device for selecting documents,
`
`such as Web pages or sites, for presentation to a user, in response to a user expression
`
`of interest. (Ex. 1023, abstract.)
`
`C. Abecassis U.S. Patent No. 6,038,367 (“Abecassis”)
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`Abecassis is generally directed to systems and methods of automatically
`
`customizing a viewer-selected video responsive to the application of the viewer’s
`
`video content preferences to a segment map of the video. (Ex. 1024, 1:34-37.)
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`Abecassis is a divisional of its parent, U.S. Application No. 08/303,158. (Id. at 5-6.)
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`Accordingly, the specification recited in Abecassis is nearly identical to that of its
`
`parent, U.S. Application No. 08/303,158, which was granted as U.S. Patent No.
`
`6,553,178 which, in turn, was cited in an IDS during prosecution of the application
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`from which the ’282 Patent was granted. (Ex. 1010, 73.) Primary Examiner Tran
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`8
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`IPR2018-01498
`Patent 9,380,282
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`conducted a search of and considered U.S. Patent No. 6,553,178. (Id. at 112, 116-
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`117.)
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`D. Bergen et al., U.S. Patent No. 6,956,573 (“Bergen”)
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`Bergen generally discloses method and concomitant apparatus for
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`comprehensively representing video information in a manner facilitating indexing
`
`of the video information. (Ex. 1028, abstract.)
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`E. Reimer et al., U.S. Patent No. 5,696,905 (“Reimer”)
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`Reimer is generally directed to a system and method for providing on demand
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`access to information related to a movie while the movie is being presented to a user,
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`where the movie was generated from the movie related information. (Ex. 1005,
`
`abstract.)
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`F. Armstrong et al., U.S. Publication No. 2007/0003223 (“Armstrong”)
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`Armstrong generally discloses an invention that allows viewers of video
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`content to access more information about specific items in a video segment are
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`disclosed. (Ex. 1021, abstract.)
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`V.
`
`PETITIONER HAS FAILED TO CARRY ITS BURDEN OF
`ESTABLISHING A REASONABLE LSIKELIHOOD ON ANY
`PROPOSED GROUND OF UNPATENTABILITY
`
`A. The Petition is Fundamentally Flawed
`
`Despite alleging “the prior art recognized the vey problem that the ’282 patent
`
`sought to overcome…and provided the same solution described and claimed in the
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`9
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`IPR2018-01498
`Patent 9,380,282
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`’282 patent” (Pet. 4), the Petition asserts no anticipatory reference under §102,
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`instead only obviousness grounds under §103. (Pet. 11.) But even those grounds fall
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`short for various reasons, including that the cited prior art fails to address every
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`feature of a given claim and the expert testimony is essentially relied on as a
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`substitute for disclosure in a prior art reference itself.
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`Petitioner’s arguments rely on hindsight reasoning to stitch together disparate
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`features from multiple prior art references. Petitioner even repackages the prior art
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`references in various combinations to arrive at the claims. The problem with this
`
`approach, aside from the use of improper hindsight reasoning, is that Petitioner
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`ignores distinctions that, in the crowded technological space of the ’282 Patent, can
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`differentiate one patentable invention from the prior art. Indeed, even Petitioner,
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`whose interest in this technological space exponentially increased only after learning
`
`about Patent Owner’s invention, was awarded several of its own patents purportedly
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`covering features of its X-Ray service and X-Ray enabled devices.3 It is surprising,
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`therefore, that Petitioner relies on a loose obviousness narrative to argue every single
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`limitation of every challenged claim of the ‘282 Patent is obvious under §103.
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`Indeed, Petitioner’s unbounded theories on what a person of ordinary skill in the art
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`(“POSITA”) would have found obvious puts its own later-filed patents at risk based
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`3 See Amazon Technologies, Inc.’s U.S. Patent Nos. 9,800,951; 8,955,021;
`9,113,1288; 9,449,216; and 9,838,740.
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`10
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`IPR2018-01498
`Patent 9,380,282
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`on the same or similar combinations of the asserted prior art references. In reality,
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`what a POSITA would have actually found obvious at the time of the ‘282 Patent is
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`not nearly as broad as Petitioner makes it seem here through its manufactured,
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`litigation-inspired arguments.
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`In support of almost every asserted ground, Petitioner addresses each feature
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`in a telling pattern: it addresses a claim limitation by asserting that a recited feature
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`is explicitly or implicitly disclosed in a first prior art reference, then it purports to
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`back up this position by asserting that the claimed feature is inherent.
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`The Petition ignores the logical, synergistic relationship of the individual
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`limitations. It is not enough to fragment limitations into individual elements, point
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`to some art where the element might be present, and then offer nothing but the
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`conclusory opinion of a paid expert to allege that a POSITA would have combined
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`those elements, together with the elements not found in the prior art, in the
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`particularly inventive and synergistic manner that offers the advantages of the issued
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`claims’ subject matter.
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`Indicate of Petitioner’s abuse of POSITA arguments is that the term
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`“POSITA” appears 27 times in pages 14-29 of the Petition. Claim 4 recites only
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`four steps and consists of 140 words, so Petitioner’s obviousness allegations requires
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`about one POSITA for every five words in the claim, and about seven POSITAs for
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`each claim step.
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`IPR2018-01498
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`It is well-established that hindsight is to be avoided. “[T]he prejudice of
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`hindsight bias often overlooks that the genius of invention is often a combination of
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`known elements which in hindsight seems preordained.” Power Integrations, Inc. v.
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`Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1368 (Fed. Cir. 2013) (quoting
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`McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1351 (Fed. Cir. 2001) (internal
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`quotations omitted).)
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`Moreover, the TPG Update provides that:
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`[I]n an obviousness analysis, conclusory assertions from a third
`party about general knowledge in the art cannot, without supporting
`evidence of record, supply a limitation that is not evidently and
`indisputably within the common knowledge of those skilled in the art.
`K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir.
`2014). Furthermore, because an inter partes review may only be
`requested “on the basis of prior art consisting of patents or printed
`publications,” 35 U.S.C. § 311(b), expert testimony cannot take the
`place of disclosure from patents or printed publications. In other words,
`expert testimony may explain “patents and printed publications,” but is
`not a substitute for disclosure in a prior art reference itself.
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`(TPG Update, 5.)
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`In several instances, Petitioner failed to heed the warnings of the TPG Update
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`and has supplied uncorroborated, declaration testimony evidence from its expert that
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`attempts to “take the place of disclosure from patents or printed publication.” Id.
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`Without more (and there is no more here), Petitioner’s arguments fail to disclose
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`claim limitations and instead only provide impermissible, after-the-fact, gap-filling
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`conclusions.
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`IPR2018-01498
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`B. Ground 1a—Petitioner Has Not Carried Its Burden on Obviousness
`of Claims 4, 9, 12, 14, 16, and 19 in View of McIntire and Dey
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`1. Claim 4
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`As indicated in the POPR, the application from which the ‘282 Patent issued
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`was subjected to multiple office actions in which the Examiner relied on McIntire
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`time and time again. In an initial Office Action dated August 20, 2013, the Examiner
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`cited McIntire. In a Final Office Action dated June 6, 2014, the Examiner again
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`cited McIntire. In each of a First Office Action dated December 17, 2014, a Non-
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`Final Office Action dated June 16, 2015, and a Final Office Action dated January
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`15, 2016, the Examiner cited McIntire. Finally, in a Notice of Allowance dated May
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`16, 2016, the Examiner referenced McIntire. The examination record suggests that
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`the Examiner was knowledgeable of all that McIntire discloses. (POPR at 17-18.)
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`The fact is that the Notice of Allowance dated May 16, 2016 followed an
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`Amendment dated April 27, 2016 in which applicant stated that: “Following the
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`telephonic interview of 04/11/2016, applicant submitted an amendment that was
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`responsive to the Examiner’s claim drafting suggestions and was deemed to
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`overcome the rejections in the Final Office Action dated 01/15/2016. … Applicant
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`appreciates any further assistance which the Examiner may provide this pro-se
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`applicant.” (Ex. 1010 at 380.) (POR Pages 18.)
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`It is no surprise, then, that the Examiner’s statement of reasons for allowance
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`provides that:
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`Claims 1, 2, 4, 7-9, 14, 16, and 19, when considered as a
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`whole, are allowable over the prior art of record.
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`Specifically, the prior art of record [McIntire], taken
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`individually or in combination, does not clearly teach or suggest
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`the combination of the following features:
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`retrieving, from a plurality of video frame identifiers, a
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`first video frame identifier that is responsive to the request
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`location, and contemporaneously retrieving a second video
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`frame identifier that is different from the first video frame
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`identifier and that is responsive to a location that is prior to the
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`request location;
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`displaying information associated with the first video
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`frame identifier, and contemporaneously displaying information
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`associated with the second video frame identifier that is different
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`from the information associated with the first video frame
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`identifier.
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`(Ex. 1010 at 400.)
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`
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`Petitioner’s unfounded insinuation that the Examiner failed to diligently
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`examine the application is unwarranted, especially when Petitioner has conveniently
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`ignored that McIntire teaches away from the claimed invention. “A reference may
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`be said to teach away when a person of ordinary skill, upon reading the reference,
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`would be discouraged from following the path set out in the reference, or would be
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`led in a direction divergent from the path that was taken by the applicant.” DePuy
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`IPR2018-01498
`Patent 9,380,282
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`Spine, Inc. v. Medtronic