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` Date: July 6, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS, INC.,
`Petitioner,
`v.
`MV3 PARTNERS LLC,
`Patent Owner.
`____________
`
`IPR2019-00474
`Patent 8,863,223 B2
`____________
`
`
`Before JEAN R. HOMERE, JUSTIN T. ARBES, and CHRISTOPHER M.
`KAISER, Administrative Patent Judges.
`
`HOMERE, Administrative Patent Judge.
`
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`Dismissing Petitioner’s Motion to Strike
`35 U.S.C. § 318(a)
`
`
`
`
`I.
`INTRODUCTION
`Unified Patents, Inc. (“Petitioner”) filed a Petition requesting inter
`partes review of claims 1–6, 8, 10–21, 23–38, 40, 42–53, and 55–61 (“the
`challenged claims”) of U.S. Patent No. 8,863,223 B2 (Ex. 1001, “the ’223
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`patent”). Paper 2 (“Pet.”). MV3 Partners LLC (“Patent Owner”) filed a
`Preliminary Response. Paper 6. Upon consideration of the parties’
`contentions and supporting evidence, we instituted an inter partes review
`pursuant to 35 U.S.C. § 314, as to the challenged claims of the ’223 patent.
`Paper 9 (“Inst. Dec.”).
`After institution, Patent Owner filed a Response (Paper 27,
`“PO Resp.”); Petitioner filed a Reply to Patent Owner’s Response (Paper 32,
`“Pet. Reply”); and Patent Owner filed a Sur-Reply (Paper 37,
`“PO Sur-Reply”). Petitioner filed a Motion to Strike (Paper 43), and Patent
`Owner filed an Opposition to the Motion to Strike (Paper 44). See infra
`§ III.E. An oral hearing was held on May 26, 2020. A transcript of the
`hearing has been entered into the record. Paper 49 (“Tr.”).
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`For the reasons that follow, we determine that Petitioner has not
`demonstrated by a preponderance of the evidence that challenged claims
`1–6, 8, 10–21, 23–38, 40, 42–53, and 55–61 of the ’223 patent are
`unpatentable.
`
`II.
`BACKGROUND
`A. Real Parties-In-Interest
`Petitioner identifies itself as the sole real party-in-interest in this
`proceeding. Pet. 66. Petitioner asserts that “[n]o other party exercised
`control or could exercise control over [its] participation in this proceeding,
`the filing of this petition, or the conduct of any ensuing trial,” and provides
`voluntary interrogatory responses in support of that certification. Id. (citing
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`Ex. 1010). Patent Owner names itself as the real party-in-interest. Paper 4,
`1.
`
`B. Related Matters
`The parties indicate that the ’223 patent is involved in MV3 Partners
`LLC v. Roku, Inc., Civil Action No. 6:18-cv-00308 (W.D. Tex. Oct. 16,
`2018); MV3 Partners LLC v. Kohl’s Corp., Civil Action No. 6:18-cv-00373
`(W.D. Tex. Dec. 21, 2018); and MV3 Partners LLC v. Best Buy Co., Civil
`Action No. 6:18-cv-00374 (W.D. Tex. Dec. 21, 2018). Pet. 66; Paper 4, 2.
`
`C. The ’223 Patent
`The ’223 patent relates to a mobile set top box (“STB”) for
`forwarding and presenting on a large screen of an external display (e.g., high
`definition television monitor) multimedia content including packets using
`predefined protocols (e.g., MPEG, IP) transmitted from various networks
`(e.g., 3G, satellite) via unicast or multicast broadcasts to a small screen of an
`authenticated user’s mobile computing device. Ex. 1001, Abstract, 1:11–13,
`2:58–61, 3:39–41, 4:5–8, 4:56–66, 5:15–17, 6:11–12.
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`Figure 2 below is illustrative.
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`
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`Figure 2, reproduced above, depicts mobile STB (10) facilitating the
`display in standard television (14) of data broadcast in unicast or multicast to
`mobile computing device (20). Ex. 1001, 4:47–51.
`In particular, as shown in Figure 2 above, the ’223 patent describes
`that mobile device (20) provides received multimedia content to mobile STB
`(10) via a docking port of docking station (22). Id. at 4:47–60. Upon
`receiving the multimedia content, mobile STB (10) authenticates mobile
`device (20), and determines (based on the authentication) that the user
`associated therewith is permitted to transmit the multimedia content to
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`external display (14). Id. at 8:47–51. Subsequently, upon determining the
`native size format of the multimedia content received from mobile
`device (20), mobile STB (10) determines the size format capable of being
`displayed by external display (14), and upconverts the multimedia content
`from a small size format to a larger size format for display on external
`display (14). Id. at 4:15–27, 4:33–39, 5:35–43.
`D. Illustrative Claim
`Of the challenged claims, claims 1, 30, and 32 are independent.
`Claim 1 is illustrative and is reproduced below with disputed limitations
`emphasized:
`1. A mobile set top box comprising:
`a docking port configured to accept a mobile computing
`device that has a native resolution of a first size format and
`receives media content from at least two different types of
`communications networks;
`a mobile device input that receives media content from the
`mobile computing device accepted in the docking port;
`a television signal input that receives at least one type of
`
`television signal;
`a video processor configured to receive and process the
`media content from the mobile device input, the video processor
`including adaptive circuitry to process the media content
`transmitted from unicast and multicast broadcasts, and the video
`processor including circuitry and instructions operable to process
`a predefined protocol stack of video packets forming at least a
`portion of the media content;
`a processor coupled to an electronic storage, the electronic
`storage comprising instructions that, when executed, cause the
`processor to:
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`execute an upconversion process by processing first media
`content from the mobile computing device, wherein the first
`media content
`includes digital video
`image
`information
`comprising a series of digital video frames, and is modified for
`display on a display device that is separate from the mobile set
`top box, the display device having a native display resolution of
`a second size format that is larger than the first size format of the
`mobile computing device, the upconversion process further
`comprising:
`
`receiving the first media content in the first size
`format from the mobile device input,
`querying the mobile computing device to determine
`the first size format,
`querying the display device,
`determining the native display resolution of the
`second size format of the display device based on a
`response resulting from the query of the display device,
`authenticating the validity of a user associated with
`the mobile computing device,
`determining, based on the validity of the user, that
`the received first media content is permitted to be
`provided to the display device, and
`upscaling the received first media content from the
`first size format to the second size format to generate
`upconverted first media content, wherein upscaling
`includes increasing a total number of horizontal and
`vertical pixels in each video frame of the series of
`digital video frames so that pixel dimensions in each
`video frame match the native display resolution of the
`second size format of the display device; and
`render a television signal into second media content for
`display on the display device, comprising:
`receiving the television signal from the television
`input;
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`decoding the television signal into second media
`content; and
`rendering the second media content based on the
`native display resolution of the display device to
`generate rendered second media content; and
`an output configured to deliver the upconverted first media
`content and the rendered second media content from the mobile
`set top box to the display device.
`
`Ex. 1001, 8:9–9:3 (emphases added).
`
`
`E. Asserted Prior Art
`
`Reference
`
`US 7,957,733 B2
`
`Date
`June 7, 2011
`(filed May 22,
`2007)
`US 2008/0198264 A1 Aug. 21, 2008
`
`US 2006/0031889 A1 Feb. 9, 2006
`
`Exhibit
`
`1004
`
`1006
`
`1005
`
`Wang
`
`Balram
`
`Bennett
`
`
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`F. Asserted Grounds of Unpatentability
`
`Petitioner asserts the challenged claims are unpatentable on the
`following grounds:
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`Claims Challenged
`1–6, 8, 10–21, 23–38,
`40, 42–53, 55–61
`1–6, 8, 10–21, 23–38,
`40, 42–53, 55–61
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`103(a)1
`
`103(a)
`
`Wang
`
`Wang, Balram, Bennett
`
`III. DISCUSSION
`Claim Construction
`A.
`Petitioner filed the Petition in this inter partes review on December
`31, 2018. Because the Petition was filed after November 13, 2018,2 we
`construe each claim “using the same claim construction standard that would
`be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See
`Changes to the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340,
`51,358 (Oct. 11, 2018). Under this standard, a claim is construed “in
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
`2013. Given that the application from which the ’223 patent issued was
`filed before this date, the pre-AIA version of § 103 applies.
`2 On October 11, 2018, the USPTO revised its rules to harmonize the
`Board’s claim construction standard with that used in federal district
`court. Changes to the Claim Construction Standard for Interpreting Claims
`in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51,340 (Oct. 11, 2018) (now codified at 37 C.F.R. pt. 42 (2019)). This rule
`change applies to petitions filed on or after November 13, 2018. Id. at
`51,340.
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`accordance with the ordinary and customary meaning of such claim as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent.” Id. at 51,358; see also Phillips v. AWH Corp., 415
`F.3d 1303, 1321 (Fed. Cir. 2005) (en banc) (stating “the ‘ordinary meaning’
`of a claim term is its meaning to the ordinary artisan after reading the entire
`patent”). “There are only two exceptions to this general rule: 1) when a
`patentee sets out a definition and acts as his own lexicographer, or 2) when
`the patentee disavows the full scope of a claim term either in the
`specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am.
`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`Petitioner proposes no express claim constructions of any of the terms
`in the challenged claims of the ’223 patent. Pet. 5. Patent Owner proposes
`that the Board adopt the claim constructions of the district court in MV3
`Partners LLC v. Roku, Inc., No. 6:18-cv00308 (W.D. Tex. Oct. 16, 2018)
`(Ex. 2011). PO Resp. 7. In particular, Patent Owner proposes that the step
`of “determining, based on the validity of the user, that the received first
`media content is permitted to be provided to the display device” in claims 1,
`30, and 32 be construed according to its “[p]lain and ordinary meaning.” Id.
`at 8 (citing Ex. 2011, 6). Petitioner argues that because Patent Owner
`provides no argument or evidence as to why those claim constructions
`should be adopted, the Board should decline Patent Owner’s proposition to
`adopt them. Pet. Reply 1.
`We determine that no explicit construction of any term is necessary to
`resolve the issues before us. See Nidec Motor Corp. v. Zhongshan Broad
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`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need
`only construe terms ‘that are in controversy, and only to the extent necessary
`to resolve the controversy,’ . . . we need not construe [a particular claim
`limitation] . . . where the construction is not ‘material to the . . . dispute.’”
`(citations omitted)).
`
`B. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(internal quotation and citation omitted). In that regard, Petitioner’s
`declarant, Anthony Wechselberger, testifies that a person having ordinary
`skill in the art (“PHOSITA”) at the time of the invention
`would have been a person having . . . (i) at least an undergraduate
`degree in electrical engineering, computer science, computer
`engineering, or a similar technical field; and (ii) two years of
`experience in analysis, design, or development related to digital
`video processing
`systems, distribution networks
`and
`communications protocols, and signal
`formatting, with
`additional education substituting for less experience and vice
`versa.
`Ex. 1003 ¶ 31. Patent Owner does not dispute Petitioner’s suggested
`definition of the ordinarily skilled artisan in its Response. PO Resp. 6.
`On this record, we observe that Petitioner’s proffered undisputed
`assessment of a person of ordinary skill in the art appears to be consistent
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`with the level of ordinary skill in the art at the time of the invention as
`reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau,
`261 F.3d 1350, 1355 (Fed. Cir. 2001). Therefore, for purposes of this
`Decision, we adopt Petitioner’s assessment.
`
`C. Obviousness over Wang
`Petitioner asserts that claims 1–6, 8, 10–21, 23–38, 40, 42–53, and
`55–61 are unpatentable under 35 U.S.C. § 103(a) as obvious over Wang.
`Pet. 11–63. Patent Owner opposes. PO Resp. 18–33.
`Based on the evidence in this record, we find that Petitioner has not
`shown by a preponderance of the evidence that Wang teaches or suggests
`each limitation of independent claims 1, 30, and 32, or the challenged claims
`depending therefrom. For the reasons explained below, Patent Owner’s
`arguments undermine Petitioner’s showing.
`1.
`Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`The question of obviousness is resolved on the basis of underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) where in evidence, so-called secondary
`considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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`We also recognize that prior art references must be “considered together
`with the knowledge of one of ordinary skill in the pertinent art.” In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour, 571
`F.2d 559, 562 (CCPA 1978)). We analyze Petitioner’s obviousness grounds
`with the principles identified above in mind.
`2.
`Overview of Wang
`Wang describes a method and system for displaying on an external
`large screen display multimedia content originally destined for the smaller
`screen of a mobile terminal display. Ex. 1004, 3:21–32. In particular, Wang
`describes a set top box, upon receiving the multimedia content from the
`mobile computing device, converting the multimedia data to suit the format
`size of the larger external display. Id. at 14:43–49, 26:10–17. As shown in
`Figure 9 below, Wang discloses that mobile terminal signal conversion
`module (MTSCM) 912, upon receiving multimedia content transmitted to
`mobile device (908) by service providers (902) through network (904),
`reformats the multimedia content to display it on external display system
`(914). Id. at 14:50–15:3, 15:19–31, 15:52–55, 15:65–16:2, 18:32–37. Wang
`discloses upconverting the signal from mobile device (908) for display to
`larger external device (914). Id. at 17:43–54, 17:63–18:6. Wang describes
`that multimedia data are broadcast to the mobile device via multicast and
`unicast. Id. at 8:45–48, 19:46–49. Figure 9 of Wang, reproduced below, is a
`depiction of a mobile terminal signal conversion system.
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`Figure 9, reproduced above, depicts a system with mobile terminal
`signal conversion. Ex. 1004, 14:43–49.
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`3.
`Obviousness Analysis
`Petitioner provides explanations for the claim limitations required by
`claims 1–6, 8, 10–21, 23–38, 40, 42–53, and 55–61, and reasons for
`modifying the teachings of Wang, citing Mr. Wechselberger’s Declaration
`for support. Pet. 11–47; Ex. 1003 ¶¶ 41, 42, 73. Claim 1 recites a mobile
`set top box comprising a processor coupled to electronic storage with
`instructions that, when executed, cause the processor to “execute an
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`upconversion process” comprising “authenticating the validity of a user
`associated with the mobile computing device” and “determining, based on
`the validity of the user, that the received first media content is permitted to
`be provided to the display device.” Ex. 1001, 8:9–51. We focus on these
`limitations, as they are dispositive.
`a. Petitioner’s Contentions
`Petitioner contends that the ’223 patent indicates that the mobile STB
`is capable of “authenticating a user so that the user can receive media
`service.” Pet. 39 (citing Ex. 1001, 3:11–13, 6:11–12). Likewise, Petitioner
`contends that Wang’s disclosure of authenticating a user during a purchase
`request (e.g., using a mobile device to download media content from the
`Internet) based upon a mobile device Tag ID and a password associated with
`the user to validate the user teaches or suggests the cited claim limitations.
`Id. at 39–40 (citing 10:31–11:27, 27:48–28:10). According to Petitioner,
`although Wang’s disclosed authentication serves to authenticate the user,
`and does not address the access rights of the individual, Wang, nonetheless,
`teaches using the authentication information “to access an online account.”
`Id. (citing Ex. 1004, 11:4–27, 27:49–51). Further, Petitioner contends that
`Wang teaches that its authentication server may reside within a wireless hub
`(WHUB), which may be integrated into the MTSCM STB. Id. at 40 (citing
`Ex. 1004, 9:36–38). Therefore, Petitioner submits that a PHOSITA would
`have been motivated to perform the multimedia purchase authentication by
`using Wang’s MTSCM STB having a WHUB integrated therein to verify the
`user’s authenticity before converting the mobile device’s multimedia content
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`for display on the external display device. Id. at 40–41 (citing Ex. 1003
`¶ 73). Additionally, Petitioner contends that a PHOSITA would have been
`further motivated to combine Wang’s purchase authentication with Wang’s
`MTSCM STB because “it was a common feature of STBs to perform
`authentication prior to allowing media content to be displayed, such [as] to
`implement parental controls to restrict access to content or to facilitate
`pay-per-view or video-on-demand programming.” Id. (citing Ex. 1003
`¶¶ 41, 42, 73; Exs. 1005 (“Bennett”), 1023 (“Romano”), 1024
`(“Herrington”)).
`b. Patent Owner’s Response
`Patent Owner argues that Wang does not teach “authenticating the
`validity of a user associated with the mobile computing device” and
`“determining, based on the validity of the user, that the received first media
`content is permitted to be provided to the display device.” PO Resp. 23. In
`particular, Patent Owner argues that, in addition to authenticating the user
`associated with the mobile device, the claim also requires the further and
`separate step of determining whether the user is permitted to provide (or
`transmit) to the display device a specific media content received at the
`mobile device. Id. at 25 (citing Ex. 2013 ¶ 13). More particularly, Patent
`Owner asserts that the “claim limitations at issue are about whether the
`specific content that is already available on the user’s ‘mobile computing
`device’ is permitted to be provided (transmitted) to the display device.” Id.
`Patent Owner asserts that Wang’s disclosure of authenticating a user
`during a purchase request, including purchasing a download of Internet
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`content made available immediately to a cellular phone, relates solely to
`content purchase authentication, and not to device access authentication. Id.
`at 25. According to Patent Owner, although Wang discloses that the WHUB
`may be integrated in the MTSCM STB to perform purchase authentication,
`the proposed modification to Wang still falls short of addressing the claimed
`solution of authenticating a user associated with a mobile computing device
`and determining that the authenticated user is permitted to provide a
`particular content to an external display device. Id. at 27. Further, Patent
`Owner argues that Petitioner’s contention that “a [PHOSITA] would have
`been motivated to combine Wang’s purchase authentication with Wang’s
`MTSCM STB because ‘it was a common feature of STBs to perform
`authentication prior to allowing media content to be displayed’” is
`conclusory. Id. at 27–28 (emphasis omitted). In particular, Patent Owner
`contends that none of the cited supporting references (Romano, Herrington,
`and Bennett) cures the noted deficiencies of Wang to teach the additional
`and separate step of determining whether an authenticated user associated
`with a mobile device is permitted to transfer or display a particular content
`on the external device. Id. (citing Ex. 1005 ¶¶ 42, 77; Ex. 2013 ¶¶ 17–20;
`Ex. 1023 ¶¶ 101–104; Ex. 1024, 16:23–55; Ex. 2001 ¶¶ 57–60).
`c.
`Our Review
`1.
`Claim 1
`Patent Owner’s arguments are persuasive based on the record before
`us. As an initial matter, we note it is undisputed that, in addition to
`authenticating the validity of the user associated with the mobile device,
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`independent claim 1 also requires that the STB separately determine whether
`the user is permitted to provide to the external display device a specific
`media content received at the mobile device. Ex. 1001, 8:47–51. That is,
`the claim recites a further determining step that is an additional limitation,
`which implies that in some instances, the STB permits certain authenticated
`users to provide a specific media content to the external device, whereas in
`other instances, the STB does not permit other authenticated users to display
`the specific media content on the external display device. See Tr. 20:14–16
`(Petitioner acknowledging that the claim recites “a separate determining step
`that’s determining based on validity, . . . determining whether, based on if
`they are valid or invalid, that the media content is permitted to be provided
`to the display device”). Also, according to the plain language of the claim,
`it is the “mobile set top box” that performs the authenticating and
`determining steps, not any other device, such as the “mobile computing
`device.” Id. at 8:9, 8:26–38, 8:47–51.
`Petitioner provides evidence that Wang discloses an authentication
`server, which may reside within the WHUB, and which may be integrated
`into the MTSCM STB to authenticate a user during a purchase of media
`content before converting a mobile device’s media content for display on the
`external display device. See Pet. 40–41 (citing Ex. 1003 ¶ 73; Ex. 1004,
`9:36–38). Petitioner also provides evidence that authenticating a user before
`providing the user access to media content was a well-known feature of
`STBs to restrict access or to deliver multimedia content to authorized users
`only. See id. (citing Exs. 1003, 1005, 1023, 1024). Additionally, Petitioner
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`provides evidence that STBs were known to perform authentication prior to
`allowing media content to be displayed, as well as to “implement parental
`controls to restrict access to content or to facilitate pay-per-view or
`video-on-demand programming.” Id. at 41 (citing Ex. 1003 ¶¶ 41, 42, 73;
`Exs. 1005, 1023, 1024). Therefore, evidence of record indicates that a
`PHOSITA, being apprised of Wang’s teaching to integrate the authentication
`feature into the STB, would have understood that the resulting STB would
`authenticate mobile users to access multimedia content.
`However, Petitioner has not provided evidence that in the proposed
`modified system of Wang, the STB would also perform the separate,
`additional step of determining that the user is permitted to transmit a
`particular content to the external display device. Indeed, Petitioner in its
`Petition, and Mr. Wechselberger in his Declaration, address both limitations
`together, without sufficiently differentiating between the two distinct steps.
`See Pet. 39–41; Ex. 1003 ¶ 73. According to the claim, the determining step
`must be “based on” the validity of the user, but it is an additional claim
`requirement separate from the authenticating step. Ex. 1001, 8:47–51.
`Petitioner has not sufficiently addressed the determining step on the record
`before us. Instead, Petitioner’s theory is that the determining step
`“automatically” occurs by virtue of the authenticating step, thereby
`rendering the latter step meaningless (i.e., reading the latter step out of the
`claim). See Tr. 22:18–23:21 (arguing that “it flows as an automatic result of
`the successful authentication”), 24:22–25:15, 26:13–27:12 (arguing that “the
`determination flows as an automatic and natural consequence of the
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`authentication step”), 32:5–15, 73:16–74:12; Reply 17 (arguing that “if the
`user has been authenticated as valid and can receive media service, then the
`determination has been made that received media content is permitted to be
`provided to the display”). Notwithstanding that the determining step is
`performed “based on” the validity of the user, Petitioner has not shown, on
`this record, that Wang performs any additional determination beyond
`authenticating the user, let alone verifying that the user is permitted to
`transmit particular received content to another device, namely the external
`display device, as required by the disputed claim language. Further, to the
`extent that Petitioner’s arguments are premised on authenticating a user
`during a purchase request, that purchase only enables the user to download
`media content to the mobile device—it says nothing about permission to
`provide the “received” content to another device (e.g., the “display device”),
`as required by claim 1. See Ex. 1004, 10:31–11:27 (explaining that
`authentication in connection with a purchase “indicates whether the
`individual is who he or she claims to be, but does not address the access
`rights of the individual”). We credit the testimony of Patent Owner’s
`declarant, Dan Schonfeld, Ph.D., on these points because it clarifies that the
`authenticating and determining steps are distinct claims limitations, and is
`consistent with and supported by the cited disclosures of Wang. See Ex.
`2013 ¶¶ 13–15, 20.
`With respect to Petitioner’s arguments regarding modifying the
`functionality of Wang, Petitioner asserts that STBs were known to perform
`authentication prior to allowing media content to be displayed, as well as to
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`implement parental controls to restrict access to content or to facilitate
`pay-per-view or video-on-demand programming. Pet. 40–41. However,
`Petitioner has not sufficiently explained any particular modification of
`Wang’s system (based on the teachings of Wang alone or any of the other
`cited references, Romano, Herrington, and Bennett) on the record before us
`to sufficiently account for the determining step. That is, the notion of using
`parental control to determine whether an authenticated user is permitted to
`transmit a particular content to an external display device is wholly
`unsupported by the record before us. See id.; Ex. 2013 ¶¶ 16–19.
`We have considered all of the arguments and evidence submitted by
`Petitioner and Patent Owner. We determine that at least one of Patent
`Owner’s arguments undermines Petitioner’s showing that Wang teaches or
`suggests the authenticating and determining limitations of claim 1.
`Accordingly, based on the complete record now before us, we determine that
`Petitioner has not demonstrated by a preponderance of the evidence that
`claim 1 would have been obvious over Wang.
`2. Claims 2–6, 8, 10–21, 23–38, 40, 42–53, and 55–61
`We have reviewed Petitioner’s explanations and supporting evidence
`regarding claims 2–6, 8, 10–21, 23–38, 40, 42–53, and 55–61, and we do not
`find them persuasive. Pet. 48–63. In addressing these claims, Petitioner
`builds upon its analysis for claim 1 and further relies upon Wang to explain
`why the additional claims also would have been obvious over Wang. Id.
`Petitioner does not provide any additional argument or evidence overcoming
`the deficiencies we noted above as to claim 1. Id. Similar to claim 1,
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`independent claim 30 recites “authenticating the validity of a user associated
`with the mobile computing device” and “determining, based on the validity
`of the user, that the received first media content is permitted to be provided
`to the display device.” Ex. 1001, 10:66–11:3. Independent claim 32 recites
`a mobile set top box comprising a processor coupled to electronic storage
`with instructions that, when executed, cause the processor to “execute an
`upconversion process” comprising “authenticating the validity of a user
`associated with the mobile computing device” and “determining, based on
`the validity of the user, that the received first media content is permitted to
`be provided to the display device.” Id. at 11:24–12:3. Petitioner and Patent
`Owner rely on the same arguments discussed above for claim 1 (as also
`applied to the same authenticating and determining limitations in
`independent claims 30 and 32). See Pet. 60–62; PO Resp. 32, 33.
`Accordingly, for the reasons given above in our analysis of claim 1, based
`on the complete record now before us, we determine that Petitioner has not
`demonstrated by a preponderance of the evidence that claims 2–6, 8, 10–21,
`23–38, 40, 42–53, and 55–61 would have been obvious over Wang.
`3. Conclusion
`In view of the foregoing, we determine that Petitioner has not
`demonstrated by a preponderance of the evidence that claims 1–6, 8, 10–21,
`23–38, 40, 42–53, and 55–61 are unpatentable as obvious under § 103(a)
`over Wang.
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`D. Obviousness over Wang, Balram, and Bennett
`Petitioner asserts that claims 1–6, 8, 10–21, 23–38, 40, 42–53, and
`55–61 are unpatentable under 35 U.S.C. § 103(a) as obvious over the
`combination of Wang, Balram, and Bennett. Pet. 11–63. Patent Owner
`opposes. PO Resp. 33–35.
`Based on the evidence in this record, we find that Petitioner has not
`shown by a preponderance of the evidence that the proposed combination of
`Wang, Balram, and Bennett teaches or suggests each limitation of
`independent claims 1, 30, and 32, or the challenged claims depending
`therefrom. We determine that at least one of Patent Owner’s arguments
`undermines Petitioner’s showing.
`1. Overview of Balram
`Balram relates to a video format converter for improving the visual
`quality of a low resolution and low frame rate video signal from a portable
`device by converting the quality and size format of the signal content for
`display in a higher resolution device. Ex. 1006 ¶¶ 11, 12, 61. Figure 4 of
`Balram, reproduced below, illustrates the video format converter system.
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`Fig. 4
`Figure 4, reproduced above, depicts video format converter (410)
`facilitating the display in standard television (104) of data broadcast to
`mobile computing device (208). Ex. 1006 ¶ 61.
`As depic