throbber
Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`
`
` Paper 50
`
` Date: July 6, 2020
`
`
`
`
`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
`
`

`

`IPR2019-00474
`Patent 8,863,223 B2
`
`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
`
` 2
`
`
`
`

`

`IPR2019-00474
`Patent 8,863,223 B2
`
`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.
`
` 3
`
`
`
`

`

`IPR2019-00474
`Patent 8,863,223 B2
`
`
`Figure 2 below is illustrative.
`
`
`
`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
`
` 4
`
`
`
`

`

`IPR2019-00474
`Patent 8,863,223 B2
`
`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:
`
` 5
`
`
`
`

`

`IPR2019-00474
`Patent 8,863,223 B2
`
`
`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;
`
` 6
`
`
`
`

`

`IPR2019-00474
`Patent 8,863,223 B2
`
`
`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
`
`
`
`F. Asserted Grounds of Unpatentability
`
`Petitioner asserts the challenged claims are unpatentable on the
`following grounds:
`
` 7
`
`
`
`

`

`IPR2019-00474
`Patent 8,863,223 B2
`
`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.
`
`8
`
`

`

`IPR2019-00474
`Patent 8,863,223 B2
`
`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
`
` 9
`
`
`
`

`

`IPR2019-00474
`Patent 8,863,223 B2
`
`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
`
`10
`
`

`

`IPR2019-00474
`Patent 8,863,223 B2
`
`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).
`
`11
`
`

`

`IPR2019-00474
`Patent 8,863,223 B2
`
`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.
`
`
`
`
`12
`
`

`

`IPR2019-00474
`Patent 8,863,223 B2
`
`
`
`
`Figure 9, reproduced above, depicts a system with mobile terminal
`signal conversion. Ex. 1004, 14:43–49.
`
`
`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
`
`
`13
`
`

`

`IPR2019-00474
`Patent 8,863,223 B2
`
`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
`
`14
`
`

`

`IPR2019-00474
`Patent 8,863,223 B2
`
`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
`
`15
`
`

`

`IPR2019-00474
`Patent 8,863,223 B2
`
`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,
`
`16
`
`

`

`IPR2019-00474
`Patent 8,863,223 B2
`
`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
`
`17
`
`

`

`IPR2019-00474
`Patent 8,863,223 B2
`
`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
`
`18
`
`

`

`IPR2019-00474
`Patent 8,863,223 B2
`
`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
`
`19
`
`

`

`IPR2019-00474
`Patent 8,863,223 B2
`
`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,
`
`20
`
`

`

`IPR2019-00474
`Patent 8,863,223 B2
`
`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.
`
`
`21
`
`

`

`IPR2019-00474
`Patent 8,863,223 B2
`
`
`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.
`
`
`
`22
`
`

`

`IPR2019-00474
`Patent 8,863,223 B2
`
`
`
`
`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

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

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.

throbber

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.

Become a Member

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

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket