Filed September 20, 2019
`
`
`On behalf of Amazon.com, Inc.
`By:
`Joseph R. Re
`
`Colin B. Heideman
`
`Christie R.W. Matthaei
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`925 Fourth Avenue, Suite 2500
`Seattle, WA 98104
`Telephone: (206) 405-2000
`Facsimile: (206) 405-2001
`Email: BoxSEAZNL1495LP3@knobbe.com
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`AMAZON.COM, INC.,
`Petitioner,
`
`v.
`
`CUSTOMPLAY, LLC,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-01498
`Patent 9,380,282
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER’S REPLY
`
`
`
`
`On behalf of Amazon.com, Inc.
`By:
`Joseph R. Re
`
`Colin B. Heideman
`
`Christie R.W. Matthaei
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`925 Fourth Avenue, Suite 2500
`Seattle, WA 98104
`Telephone: (206) 405-2000
`Facsimile: (206) 405-2001
`Email: BoxSEAZNL1495LP3@knobbe.com
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`AMAZON.COM, INC.,
`Petitioner,
`
`v.
`
`CUSTOMPLAY, LLC,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-01498
`Patent 9,380,282
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER’S REPLY
`
`
`
`TABLE OF CONTENTS
`
`ARGUMENT ----------------------------------------------------------------------------- 1
`
`I.
`
`GROUND 1A: OBVIOUSNESS OVER MCINTIRE AND DEY --------- 2
`
`A.
`
`Claims 4, 9, 12, 14, and 19 ---------------------------------------------- 2
`
`1.
`
`Contemporaneously Retrieving a Second VFI ---------------- 2
`
`a. McIntire Discloses This Limitation --------------------- 2
`
`b.
`
`c.
`
`Obviousness Over McIntire ------------------------------ 4
`
`Obviousness Over McIntire and Dey ------------------- 5
`
`2.
`
`The Contemporaneously Displaying Limitation -------------- 5
`
`a. McIntire Discloses This Limitation --------------------- 5
`
`b.
`
`c.
`
`d.
`
`Obviousness Over McIntire ------------------------------ 6
`
`Dey Discloses This Limitation --------------------------- 7
`
`Obviousness Over McIntire & Dey --------------------- 9
`
`i.
`
`ii.
`
`iii.
`
`McIntire Does Not Teach Away ---------------- 10
`
`Dey Does Not Teach Away ---------------------- 11
`
`The Combination Does Not Change
`McIntire’s Mode of Operation ------------------ 11
`
`B.
`
`Claim 16: Additional Information ------------------------------------- 12
`
`II. GROUND 1B: MCINTIRE, DEY, & ABECASSIS ------------------------ 13
`
`A.
`
`Claim 7 -------------------------------------------------------------------- 13
`
`1.
`
`2.
`
`Obviousness Over McIntire ------------------------------------- 13
`
`Obviousness Over Abecassis ----------------------------------- 14
`
`-i-
`
`
`
`B.
`
`Claims 8 and 18 ---------------------------------------------------------- 15
`
`III. GROUND 2A: BERGEN & REIMER ---------------------------------------- 15
`
`A.
`
`Bergen Discloses Identifying the Request Location ----------------- 15
`
`1. Motivation to Combine Bergen & Reimer -------------------- 17
`
`2.
`
`The Combination Does Not Change Bergen’s
`Principle of Operation ------------------------------------------- 17
`
`B.
`
`C.
`
`Bergen Discloses the Retrieving Limitations ------------------------- 18
`
`Bergen Discloses the Displaying Limitations ------------------------ 18
`
`IV. GROUND 2B: BERGEN, REIMER, & ABECASSIS --------------------- 19
`
`A.
`
`B.
`
`Claim 7 -------------------------------------------------------------------- 19
`
`Claim 8 -------------------------------------------------------------------- 20
`
`V. GROUND 3A: ARMSTRONG ------------------------------------------------ 20
`
`A.
`
`Claim 4 -------------------------------------------------------------------- 20
`
`1.
`
`2.
`
`3.
`
`4.
`
`Armstrong Discloses Identifying a Request Location ------- 20
`
`Armstrong Discloses Retrieving a First VFI ------------------ 21
`
`Armstrong Discloses Contemporaneously Retrieving
`a Second VFI ------------------------------------------------------ 22
`
`Armstrong Discloses the Displaying Limitations ------------ 23
`
`a.
`
`b.
`
`c.
`
`Armstrong’s Background Images and Menus
`Are “Information” ---------------------------------------- 23
`
`The Displayed “Information” Need Not Be the
`Same Type ------------------------------------------------- 24
`
`Petitioner’s Mapping of Armstrong in the ’950
`IPR Is Irrelevant ------------------------------------------ 24
`
`-ii-
`
`
`
`B.
`
`C.
`
`Claim 9 -------------------------------------------------------------------- 25
`
`Claim 16 ------------------------------------------------------------------- 25
`
`VI. GROUND 3B: ARMSTRONG & ABECASSIS ---------------------------- 26
`
`CONCLUSION -------------------------------------------------------------------------- 27
`
`
`
`
`
`-iii-
`
`
`
`TABLE OF AUTHORITIES
`
`Cases:
`
`Page(s):
`
`Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC,
`825 F.3d 1373 (Fed. Cir. 2016) ------------------------------------------- 12, 17
`
`Bayer Pharma AG v. Watson Labs., Inc.,
`874 F.3d 1316 (Fed. Cir. 2017) ------------------------------------------------ 10
`
`CRFD Research, Inc. v. Matal,
`876 F.3d 1330 (Fed. Cir. 2017) ------------------------------------------------ 10
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) ------------------------------------------------ 10
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ------------------------------------------------------------- 13
`
`In re NuVasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) ------------------------------------------------- 4
`
`Samsung Elecs. Co., Ltd. v. ProMOS Techs, Inc.,
`IPR2017-01413, Paper 33 (P.T.A.B. October 22, 2018) -------------------- 4
`
`Smith & Nephew, Inc. v. Rea,
`721 F.3d 1371 (Fed. Cir. 2013) ------------------------------------------------ 15
`
`Miscellaneous:
`
`Trial Practice Guide Update (August 2018) --------------------------------------- 4
`
`
`
`
`
`-iv-
`
`
`
`IPR2018-01498
`Amazon.com v. CustomPlay
`
`ARGUMENT
`
`It is undisputed that receiving a user request for information during the
`
`playing of a video, identifying the request location, retrieving a video frame
`
`identifier (“VFI”) responsive to the request location, and displaying information
`
`responsive to that VFI was known in the art. (See Ex. 1101, 7:3-8:15, 21:4-22:21,
`
`34:1-35:16, 45:20-46:22, 91:5-12, 110:21-111:15.) Patent Owner (“PO”) argues
`
`that the challenged claims are patentable because they purport to solve a user-delay
`
`problem by reciting the contemporaneous retrieval of two VFIs and the
`
`contemporaneous display of information associated with each of those VFIs.
`
`(POR, 5-6). But even PO’s expert (“Reader”) admits that the user-delay problem
`
`was known in the art (Ex. 1101, 154:13-16) and that the solution claimed in ’282
`
`patent was both known (id. 157:10-158:5, 160:4-14) and within a POSITA’s skill
`
`(id., 45:14-19, 49:2-55:12, 116:16-20, 122:13-17, 126:11-14, 129:13-18).
`
`Rather than advancing the art, the ’282 patent removes from the public
`
`systems and methods of displaying information that were already known and that
`
`PO did not invent. The arguments in the PO Response (“POR”) ignore key
`
`disclosures in the prior art, ignore the knowledge of a POSITA, and are
`
`contradicted by Reader’s cross-examination testimony.
`
`The challenged claims should be canceled.
`
`-1-
`
`
`
`IPR2018-01498
`Amazon.com v. CustomPlay
`
`I. GROUND 1A: OBVIOUSNESS OVER MCINTIRE AND DEY
`
`PO begins by mischaracterizing McIntire and arguing it teaches away from
`
`“contemporaneously displaying.” (POR, 13-20.) As discussed below, PO is
`
`wrong.
`
`A. Claims 4, 9, 12, 14, and 19
`
`PO does not dispute, and Reader admitted (Ex. 1101, 163:1-21), that
`
`McIntire discloses the “receiving” and “identifying” steps. PO admits McIntire
`
`discloses retrieving a first VFI. (POR, 15.)
`
`1.
`
`Contemporaneously Retrieving a Second VFI
`a. McIntire Discloses This Limitation.
`
`PO does not dispute that McIntire discloses contemporaneously retrieving
`
`multiple VFIs. (POR, 20-21; Ex. 2021 ¶¶78-79.) Rather, PO incorrectly argues
`
`the VFIs are responsive to a single request location because they are in a single
`
`segment. (Id.) That argument ignores the relevant disclosure in McIntire and
`
`contradicts both experts’ testimony.
`
`First, McIntire does not disclose only retrieving supplemental content for a
`
`single segment. As Reader admitted, “McIntire discloses retrieving supplemental
`
`content responsive to multiple segment identifiers at the same time.” (Ex. 1101,
`
`164:3-6; id., 163:22-164:2 (McIntire retrieves content for “multiple segments at a
`
`time”), 161:11-14 (McIntire retrieves content “by first identifying the segment
`
`-2-
`
`
`
`IPR2018-01498
`Amazon.com v. CustomPlay
`
`identifier”).) Thus, McIntire discloses retrieving multiple segment identifiers—not
`
`just multiple frames within a single segment—and then retrieving the supplemental
`
`content associated therewith. (Ex. 1004 ¶[0311] (server “matches one or more
`
`segment[] identifiers identifying segments that correspond to viewer signals to the
`
`appropriate supplemental content”), ¶[0312] (articles appear in an associated
`
`“portion”—not single segment—of media); Ex. 1002 ¶¶55-56; Ex. 1102 ¶¶6, 12.)
`
`Second, PO ignores that McIntire discloses an embodiment in which a
`
`“segment” is a single frame, and this is the embodiment Petitioner relies on. (Pet.,
`
`17-25.) Reader admitted that, in such an embodiment, McIntire’s “segment
`
`identifier” is a “video frame identifier.” (Ex. 1101, 160:21-161:21.) Thus,
`
`Reader’s admission that McIntire discloses retrieving information responsive to
`
`“multiple segment identifiers” (id. 164:3-6) is an admission that McIntire discloses
`
`retrieving two different VFIs in different “segments.” And, a POSITA would have
`
`understood that the second VFI would be “prior to the request location.” (Ex. 1002
`
`¶¶54-56, 74; Ex. 1102 ¶¶8, 13-15.) Neither PO nor Reader disputes that.
`
`Third, PO ignores—but Reader admitted—that McIntire discloses retrieving
`
`multiple segment (video frame) identifiers “around” the time of the user’s request,
`
`and retrieving information associated with those identifiers. (Pet., 17-22; Ex.
`
`1101, 164:7-12.) Where McIntire’s segments are individual frames, McIntire’s
`
`system retrieves, from a plurality of VFIs (all VFIs for the video), a first VFI (first
`
`-3-
`
`
`
`IPR2018-01498
`Amazon.com v. CustomPlay
`
`segment identifier for current frame) that is responsive to the request location, and
`
`contemporaneously retrieves a second, different VFI that is responsive to a prior
`
`location (a second VFI that identifies a single prior frame “around” the time of the
`
`request). (Ex. 1102 ¶¶14-15.)
`
`PO never disputes, and Reader’s testimony confirms, that McIntire discloses
`
`this limitation when McIntire’s segments are individual frames. PO waived any
`
`such argument. In re NuVasive, Inc., 842 F.3d 1376, 1380-81 (Fed. Cir. 2016)
`
`(argument not raised in POR is waived); Samsung Elecs. Co., Ltd. v. ProMOS
`
`Techs, Inc., IPR2017-01413, Paper 33 at 20 (P.T.A.B. October 22, 2018) (refusing
`
`to consider new argument in PO’s sur-reply); Trial Practice Guide Update (August
`
`2018) at 15 (sur-reply may not raise new issues, belatedly present evidence, or
`
`“embark in a new direction”); Scheduling Order (Paper 14) at B.1.a (“any
`
`arguments not raised in the response may be deemed waived”).
`
`b. Obviousness Over McIntire
`
`PO offers a single conclusory sentence that McIntire does not teach or
`
`suggest this limitation. (POR, 21.) But PO never rebuts Petitioner’s arguments
`
`(Pet., 19-20) or Bovik’s testimony (Ex. 1002 ¶¶56-59).
`
`Reader’s testimony supports Petitioner’s argument. Reader confirmed that
`
`the user-delay problem was known in the art. (Ex. 1101, 154:13-19.) And both
`
`experts agree that: (1) because of the known user-delay problem, a POSITA would
`
`-4-
`
`
`
`IPR2018-01498
`Amazon.com v. CustomPlay
`
`have been motivated to provide supplemental content associated with frames prior
`
`to the request location (id., 154:20-155:14, 157:11-158:5; Ex. 1002 ¶74); (2) a
`
`POSITA knew they could contemporaneously retrieve information associated with
`
`the current frame and a prior frame (Ex. 1101, 160:4-14; Ex. 1002 ¶¶57-59); and
`
`(3) retrieving two VFIs responsive to two different locations was within a
`
`POSITA’s skill (Ex. 1101, 45:14-19; Ex. 1002 ¶59). Thus, this limitation would
`
`have been obvious over McIntire alone.
`
`c.
`
`Obviousness Over McIntire and Dey
`
`PO argues Dey “teaches away” from the contemporaneously retrieving step
`
`for the same reasons Dey allegedly “teaches away” from the contemporaneously
`
`displaying limitation. (POR, 19-20.) That attorney argument is unsupported by
`
`Reader (Ex. 2021 ¶¶77-81) and is wrong, as discussed immediately below.
`
`2.
`
`The Contemporaneously Displaying Limitation
`a. McIntire Discloses This Limitation.
`
`PO argues that, when McIntire’s two frame identifiers are in the same
`
`segment, the retrieved information is the same. (POR, 21-22.) But that is not the
`
`McIntire embodiment Petitioner relies on.
`
`Both experts agree that McIntire discloses retrieving supplemental content
`
`associated with multiple segment identifiers, and that McIntire’s “segment” can be
`
`an individual frame. (See Section I.A.1.a; Pet., 17, 28.) Accordingly, contrary to
`
`-5-
`
`
`
`IPR2018-01498
`Amazon.com v. CustomPlay
`
`PO’s assertion, McIntire discloses retrieving two VFIs representing two different
`
`segments. (Id.) McIntire further discloses displaying the “retrieved information.”
`
`(Ex. 1004, Fig. 9; id., Fig. 8 (“display supplemental content”); Ex. 1102 ¶¶21-22;
`
`Ex. 1101, 111:8-15.) Thus, McIntire discloses this limitation.
`
`McIntire also discloses displaying different information associated with each
`
`segment (frame) identifier because the articles depicted, and therefore the
`
`associated information, would change depending on the segment (frame). (Ex.
`
`1102 ¶¶19-20.) This change causes the user-delay problem McIntire describes.
`
`(Id.; Ex. 1004 ¶[0272].) Indeed, the purpose of identifying additional frame
`
`identifiers “around” the current location and retrieving supplemental content for
`
`multiple VFIs is to display different information associated with previously
`
`depicted items that are not depicted in later locations. (Pet., 19-20; Ex. 1102 ¶20.)1
`
`b. Obviousness Over McIntire
`
`This limitation also would have been obvious over McIntire alone. Both
`
`experts agree that POSITAs knew about the user-delay problem and were
`
`motivated to solve it by providing different supplemental content associated with
`
`video frames before the request location. (Ex. 1101, 154:20-155:14, 157:11-158:5,
`
`1 McIntire discloses contemporaneously retrieving and contemporaneously
`
`displaying because each of those functions is performed in a single step. (Ex. 1004
`
`¶[0312]; Figs. 8-9; Ex. 1102 ¶¶15, 21.)
`
`-6-
`
`
`
`IPR2018-01498
`Amazon.com v. CustomPlay
`
`49:7-11; Ex. 1002 ¶57-59, 74; Ex. 1102 ¶23.) It is undisputed that doing so was
`
`within a POSITA’s skill. (Ex. 1101, 49:7-11, 51:6-10, 52:16-55:12.)
`
`c.
`
`Dey Discloses This Limitation.
`
`PO relies on the Board’s preliminary finding that Dey “seem[s] to teach”
`
`displaying information associated with a prior portion of the video only. (POR,
`
`22-23.) That preliminary finding was incorrect.
`
`First, while Dey discloses embodiments that do not retrieve content for “the
`
`instant” interest is expressed (Ex. 1023, 7:37-41), Dey discloses that the “more
`
`realistic model” assumes that there is “some but lesser interest” in material
`
`between t1 and the request time (id., 7:59-66). Indeed, Dey repeatedly discloses
`
`that interest may be non-zero at the request time. (See id., 4:60-65 (“interest may
`
`decrease from t1 until the time of the signal … and may be zero for all other
`
`times”), 5:2-4 (“W(t) may equal 0 for all times earlier than 30 seconds before the
`
`signal of interest is given, and later than the signal of interest.”); Fig. 5 (showing
`
`interest at time of request).) Thus, Dey discloses retrieving and displaying
`
`information for the request time and for times prior to the request time. (Ex. 1102
`
`¶24.)
`
`Second, Dey discloses providing supplemental content associated with the
`
`request location because Dey discloses that significant interest exists at t1, which
`
`may be just 0.0001 milliseconds before the request (Ex. 1023, 8:30-35, 9:56-62),
`
`-7-
`
`
`
`IPR2018-01498
`Amazon.com v. CustomPlay
`
`and therefore that “some” interest exists in material within 0.0001 milliseconds of
`
`the request. In the video context, a frame commonly occupies 33 milliseconds.
`
`(Ex. 1102 ¶25.) Thus, retrieving information for 0.0001 milliseconds (or less)
`
`prior to the request is retrieving information associated with the request location.
`
`(Id.; Ex. 1101, 101:6-16.)
`
`Third, even if Dey disclosed only retrieving information associated with
`
`times prior to the request location (e.g., t1 and t2), it would still disclose this
`
`limitation. As Reader admitted, the frame at t1 is a VFI “responsive to the request
`
`location” because a VFI can be “responsive to” a request location even if it is
`
`“offset” from the request location. (Ex. 1101, 100:14-101:16, 104:11-17; see Ex.
`
`1001, 14:14-18.) Thus, Dey discloses retrieving a first VFI (the frame at t1)
`
`responsive to the request location and a second prior VFI (the frame at t2), and
`
`displaying different information associated with those VFIs. (Ex. 1023, 7:45-8:9.)
`
`Finally, Dey provides that the time of interest may vary based on
`
`considerations which will be apparent to a POSITA. (Ex. 1023, 9:50-62.) Thus, a
`
`POSITA providing supplemental content as described in McIntire would have
`
`understood that the supplemental content should include content mapped to the
`
`current frame and prior frames. (Ex. 1102 ¶26.)
`
`
`
`-8-
`
`
`
`IPR2018-01498
`Amazon.com v. CustomPlay
`
`d. Obviousness Over McIntire & Dey
`
`The POR and Institution Decision suggest this limitation could not have
`
`been obvious unless McIntire or Dey discloses contemporaneously displaying
`
`information from the request location and a prior location. That is incorrect.
`
`It is undisputed that McIntire discloses: (a) retrieving a first VFI responsive
`
`to the request location; (b) displaying information associated with that VFI; (c)
`
`retrieving a second VFI “around” the time of the user’s request; (d) retrieving
`
`supplemental content associated with the first and second VFIs; (e) the user-delay
`
`problem; and (f) a desire to solve that problem. (Pet. 28; Ex. 1002 ¶¶48-56, 74.) It
`
`is also undisputed that Dey discloses: (g) the same user-delay problem; and (h)
`
`solving that problem by retrieving content displayed up to 30 seconds before the
`
`request. (Pet., 21-22; Ex. 1002 ¶60.)
`
`Thus, while McIntire discloses providing supplemental content associated
`
`with the request location and “around” that location, Dey teaches that the most
`
`relevant material is before—not just “around”—the request location. This would
`
`have motivated a POSITA to use McIntire’s system to display information from
`
`“prior to” the request location. (Ex. 1002 ¶¶61-70, 75.) And, because McIntire’s
`
`segment is a single frame, McIntire’s system would use a second VFI (prior frame
`
`number) to retrieve supplemental content from the prior location (as taught by
`
`Dey), and to display information associated with both locations so the user receives
`
`-9-
`
`
`
`IPR2018-01498
`Amazon.com v. CustomPlay
`
`the information of greatest interest. (Id.) The limitation would have been obvious
`
`even if neither McIntire nor Dey individually disclose the contemporaneously
`
`displaying limitation. (Ex. 1102 ¶¶27, 29, 30.)
`
`i. McIntire Does Not Teach Away.
`
`PO suggests McIntire “teaches away” because “McIntire discloses that the
`
`display of retrieved supplemental content is responsive to a single segment
`
`identifier.” (POR, 14-16.) As discussed above, even PO’s expert agrees that is
`
`wrong. (See Section I.A.1.a.) Additionally, McIntire “does not ‘criticize,
`
`discredit, or otherwise discourage’ investigation into the invention claimed.” (Ex.
`
`1102 ¶9); DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314,
`
`1327 (Fed. Cir. 2009) (citation omitted).
`
`PO also argues that McIntire’s “statements regarding preferences are
`
`relevant” to a POSITA’s motivation. (POR, 16-18.) But McIntire states no
`
`preference. There were two methods of solving the user-delay problem. (Ex. 1002
`
`¶¶59-69.) McIntire’s disclosure of one option would not preclude or dissuade a
`
`POSITA from considering the other alternative. (Ex. 1102 ¶9); Bayer Pharma AG
`
`v. Watson Labs., Inc., 874 F.3d 1316, 1327 (Fed. Cir. 2017) (preference does not
`
`teach away from a “lesser preferred but still workable option”); CRFD Research,
`
`Inc. v. Matal, 876 F.3d 1330, 1347-48 (Fed. Cir. 2017) (reference can motivate
`
`POSITA to consider other ways to satisfy goals, even where it discloses an
`
`-10-
`
`
`
`IPR2018-01498
`Amazon.com v. CustomPlay
`
`embodiment satisfying the goal). Moreover, Reader admitted this option would
`
`have been known to, and within the skill of, a POSITA. (Ex. 1101, 49:2-11,
`
`51:6-55:11.)
`
`PO argues, without support from Reader, that Petitioner uses hindsight to
`
`combine a step for annotating a media stream with a method for providing
`
`annotated content. (POR, 18.) But both methods are “for providing annotated
`
`media streams to viewers.” (Ex. 1004 ¶¶[0308], [0265].) And both processes are
`
`virtually identical, as both rely on mapping segment identifiers to supplemental
`
`information. (Id. ¶¶[0272], [0311]; Ex. 1102 ¶22.)
`
`ii.
`
`Dey Does Not Teach Away.
`
`PO argues Dey teaches away because Dey allegedly discloses that the user is
`
`interested in information only before the request. (POR, 19-20.) This is incorrect.
`
`(See Section I.A.2.c.) But regardless, Petitioner does not propose modifying Dey.
`
`It would have been obvious to modify McIntire, which already displays
`
`information associated with the first VFI, to include information associated with a
`
`prior VFI, which Dey teaches is of interest. (Ex. 1002 ¶75; Ex. 1102 ¶30.)
`
`iii. The Combination Does Not Change
`McIntire’s Mode of Operation.
`
`PO argues the combination would change McIntire’s principle of operation.
`
`(POR, 24.) But Petitioner proposes merely using McIntire’s system, which Reader
`
`admits retrieves and displays information from multiple VFIs, to display
`
`-11-
`
`
`
`IPR2018-01498
`Amazon.com v. CustomPlay
`
`information for at least one location prior to the request, given Dey’s teachings.
`
`(Ex. 1002 ¶¶60-70, 74-75; Ex. 1102 ¶30.) No change is necessary, and the
`
`systems’ physical combinability is irrelevant. (Id.); Allied Erecting & Dismantling
`
`Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016).
`
`B. Claim 16: Additional Information
`
`PO’s argument that McIntire and Dey do not disclose or render obvious
`
`displaying information associated with a second VFI (POR, 25-27) is wrong for the
`
`reasons discussed for claim 4.
`
`PO also argues that “the user is not provided a choice between information
`
`associated with the first VFI or second VFI.” (POR, 27.) PO is incorrect.
`
`McIntire discloses presenting supplemental content about multiple articles
`
`appearing in a “portion of a media stream.” (Ex. 1004 ¶[0313], Fig. 10.) As
`
`discussed above, one article may be associated with the current frame while
`
`another may be associated with a frame “around” (e.g., prior to) the current frame.
`
`(Ex. 1002 ¶74; Ex. 1102 ¶¶34-35.)
`
`McIntire further discloses that the user can request—and the system would
`
`enable the display of—additional information about any item shown. (Ex. 1004,
`
`Fig. 10, ¶[0313]; Ex. 1102 ¶35; Pet., 30-33.) Moreover, Reader admitted that
`
`receiving a request for additional information, retrieving that information, and
`
`displaying it was known. (Ex. 1101, 55:13-59:8.)
`
`-12-
`
`
`
`IPR2018-01498
`Amazon.com v. CustomPlay
`
`II. GROUND 1B: MCINTIRE, DEY, & ABECASSIS
`A. Claim 7
`
`PO does not dispute that McIntire discloses the pausing limitation. (Pet.,
`
`31-32.) Reader agreed this was well-known. (Ex. 1101, 59:14-60:8.) The only
`
`dispute is whether resuming playing at the beginning of a video clip was obvious.
`
`1. Obviousness Over McIntire
`
`PO does not dispute that resuming play at the beginning of a clip was
`
`generally known and disclosed by Hammoud as one of four options. (POR,
`
`28-29.) It is also undisputed that a POSITA knew the benefits of resuming play at
`
`the beginning of a clip. (Ex. 1101, 141:19-22, 147:6-10; Ex. 1002 ¶92; Ex. 1102
`
`¶¶41-42.) Thus, it was obvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
`
`(2007).
`
`PO argues that the ’282 patent discloses “an extensive list of additional
`
`options.” (POR, 28.) But the patent lists the same options as Hammoud, albeit
`
`using different terminology. (Ex. 1001, 11:65-12:19; Ex. 1102 ¶¶41-42.) The
`
`patent discloses only one additional option. (Ex. 1102 ¶41.) Thus, even PO does
`
`not identify more than five options. But whether four or five options exist, it is a
`
`finite number, and the claimed option was known and within a POSITA’s skill.
`
`(Id.)
`
`-13-
`
`
`
`IPR2018-01498
`Amazon.com v. CustomPlay
`
`2. Obviousness Over Abecassis
`
`PO argues Abecassis discloses resuming at the beginning of a “segment,”
`
`and that a “segment” is not a “clip.” (POR, 29-30.) That is incorrect. The ’282
`
`patent defines “clip” as a “segment that is smaller than a chapter.” (Ex. 1001,
`
`3:59-65.) Abecassis likewise discloses that a “segment” is a “part of a video” (Ex.
`
`1024, 6:66-67) that is smaller than a chapter (id., 10:38-45). Moreover, both
`
`Abecassis’ “segment” and the ’282 patent’s “clip” are defined by characters,
`
`locations, etc. (Id., 8:14-20, 39:64-40:11; Ex. 1001, 3:59-65.) Thus, Abeccassis’
`
`“segment” is a “clip” as defined in the ’282 patent. (Ex. 1102 ¶¶37-38, 44-45.)
`
`Moreover, the beginning of a segment coincides with the beginning of a clip. (Id.
`
`¶38.)
`
`Even if Abecassis did not expressly disclose resuming at the beginning of a
`
`clip, doing so would have been obvious in view of Abecassis’ teachings.
`
`Abecassis provides the motivation for a POSITA to resume at the beginning of a
`
`clip. (Ex. 1024, 5:6-12 (“viewer may re-engage the video without the loss of
`
`continuity); Ex. 1102 ¶42.) And, Reader admitted that a POSITA “would have
`
`known about the benefits of resuming at the beginning of a clip.” (Ex. 1101,
`
`147:6-10; id. 137:20-138:22.)
`
`Resuming at the beginning of the current clip was a simple design choice for
`
`which the ’282 patent describes no problems. (Ex. 1102 ¶¶41-42.) PO cannot now
`
`-14-
`
`
`
`IPR2018-01498
`Amazon.com v. CustomPlay
`
`argue it would have been nonobvious, problematic, or outside a POSITA’s skill.
`
`Smith & Nephew, Inc. v. Rea, 721 F.3d 1371, 1381 (Fed. Cir. 2013).
`
`PO does not dispute any of Petitioner’s motivations to combine. Thus, claim
`
`7 would have been obvious in view of McIntire, Dey, and Abecassis.
`
`B. Claims 8 and 18
`
`PO’s attorney argument for claim 8 (POR, 30-31) should be rejected.
`
`Petitioner explained that a POSITA would have known that McIntire’s video need
`
`not be paused where initial information is an image shown in a separate display
`
`window, but would need to be paused where the “additional information” is a
`
`video that would distract the viewer. (Pet., 36-37.) Neither PO nor its expert
`
`dispute that. (Ex. 2021 ¶106.) And Reader confirmed Petitioner’s positions. (Ex.
`
`1101, 66:18-69:15, 59:14-64:1.)
`
`III. GROUND 2A: BERGEN & REIMER
`
`It is undisputed that Bergen’s system receives a user request during a video
`
`and displays responsive information. (Ex. 2021 ¶126; POR, 41.)
`
`A. Bergen Discloses Identifying the Request Location.
`
`PO argues Bergen’s system does not necessarily identify a request location
`
`because “an equally plausible understanding” is that it could use some
`
`unidentified, unexplained “image recognition methodology.” (POR, 33-34.) PO
`
`cites to Reader’s declaration, but Reader states that an “equally plausible
`
`-15-
`
`
`
`IPR2018-01498
`Amazon.com v. CustomPlay
`
`understanding” is that Bergen does not use the methods/subsystems that Bergen
`
`itself discloses. (Ex. 2021 ¶128-29; Ex. 1102 ¶¶55-56.) Reader suggests Bergen
`
`might use alternatives instead of the methods Bergen actually discloses. (Id.)
`
`Reader never disputes that the system Bergen actually discloses identifies the
`
`request location. (See id. ¶136 (addressing a hypothetical “instance” using object
`
`recognition rather than the embodiment Petitioner relies on, which involves a user
`
`selection and the identification of the request location).)2
`
`PO ignores Bergen’s disclosure of using the request location (e.g., frame
`
`where request is made) to retrieve information about an object at that location.
`
`(Pet., 42-43; Ex. 1028, 15:37-16:10, 10:13-16.) For example, Bergen discloses
`
`receiving and processing a request from a viewer for all frames containing a
`
`specific actor or object. (Ex. 1028, 14:10-57.) In response, the system generates a
`
`“multi-dimensional feature vector descriptor representation” of the frame on which
`
`the request was made and compares that to a database to retrieve matching data.
`
`(Id., 14:66-15:27; Fig. 8.) To generate the “feature vector,” the system retrieves
`
`the frame on which the request was made and inputs the frame into a processing
`
`step. (Id., 6:12-15, Figs. 9-10; Ex. 1102 ¶61.) Thus, Bergen discloses identifying
`
`a request location responsive to the request for information.
`
`2 Even if image recognition were a plausible alternative, a system using
`
`image recognition would still identify the request location. (Ex. 1102 ¶56.)
`
`-16-
`
`
`
`IPR2018-01498
`Amazon.com v. CustomPlay
`
`1. Motivation to Combine Bergen & Reimer
`
`PO does not dispute that Reimer discloses this limitation. PO argues only
`
`that no motivation to combine exists. (POR, 35-36.) But Petitioner provided
`
`several reasons to combine Bergen and Reimer so that Bergen’s functionality could
`
`be provided during a video. (Pet., 41-42.) Moreover, Petitioner explained that a
`
`POSITA would have understood that Bergen’s current frame must be identified for
`
`Bergen’s system to work. (Id., 42-43.) To the extent not already disclosed by or
`
`inherent in Bergen, Petitioner explained that a POSITA would have understood
`
`that the necessary step of identifying the request location could have been
`
`performed as disclosed in Reimer. (Pet. 43-44.)
`
`2.
`
`The Combination Does Not Change Bergen’s
`Principle of Operation.
`
`PO argues the combination would require a change in Bergen’s “principle of
`
`operation” because Reimer “allows users to select scenes from already playing
`
`movies.” (POR, 36-38.) But Bergen also allows user requests during a video.
`
`(Ex. 1028, 20:49-54; POR, 41.) While PO characterizes Bergen’s system as
`
`“reactionary,” PO never explains why Bergen’s search could not be performed—
`
`and results displayed—in response to a query during a video as Reimer discloses.
`
`Petitioner’s argument does not depend on the physical combinability of the
`
`systems. (Ex. 1102 ¶¶51, 54, 58); Allied Erecting & Dismantling Co., 825 F.3d at
`
`1381.
`
`-17-
`
`
`
`IPR2018-01498
`Amazon.com v. CustomPlay
`
`B.
`
`Bergen Discloses the Retrieving Limitations.
`
`PO argues Bergen does not disclose the “retrieving” limitations because
`
`Bergen’s searching and output are more “comprehensive” than the claims require.
`
`(POR, 38-39.) The Board previously rejected this argument because it is not
`
`commensurate with the claims’ scope. (Paper 13 at 19; see also Ex. 1102 ¶66.)
`
`Although PO now cites expert testimony, that testimony does not support PO’s
`
`argument. (Ex. 2021 ¶140.)
`
`C. Bergen Discloses the Displaying Limitations.
`
`Neither PO nor Reader disputes that Bergen discloses providing annotations
`
`or scene descriptions, or that these constitute “information.” (Pet., 48.) Thus,
`
`Bergen discloses this limitation.
`
`PO argues Bergen’s “storyboard” images and “indicator of quality match”
`
`are not “information” because “information” has a more limited meaning in the
`
`’282 patent. (POR, 39-40.) That argument was contradicted by Reader, who
`
`admitted that “images representing other scenes in the video” are “information.”
`
`(Ex. 1101, 128:19-129:1, 119:20-122:7.)
`
` Reader further admitted
`
`that
`
`“information” is not limited to any particular type, format, or content. (Id.,
`
`117:15-118:17; see id. (“any information related to the frame number satisfies this
`
`limitation”), 126:15-129:11; Ex. 1102 ¶¶67-72.)
`
`-18-
`
`
`
`IPR2018-01498
`Amazon.com v. CustomPlay
`
`PO’s argument also contradicts the ’282 patent, which confirms that images
`
`are “information.” (Ex. 1001, 9:8-12, claim 11; id., 9:12-15 (“information” need
`
`not “provide any specific information”); Ex. 1102 ¶70.) Thus, PO’s attempt to
`
`exclude certain “informati
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
