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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`NETFLIX, INC. and HULU, INC.,
`Petitioner
`
`v.
`
`DIVX, LLC,
`Patent Owner.
`____________________
`
`Case IPR2020-00648
`Patent 9,998,515
`____________________
`
`
`DECLARATION OF KENNETH A. ZEGER, PH.D.
`IN SUPPORT OF PATENT OWNER’S RESPONSE
`
`
`
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`DivX Exhibit 2016
`Netflix & Hulu v. DivX, IPR2020-00648
`Page 2016 - 1
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`
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`TABLE OF CONTENTS
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`I. Materials Considered……………………………………………………….4
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`II.
`
`Introduction………………………………………………………………...7
`
`A.
`
`Engagement………………………………………………..………...7
`
`B. Qualifications………………..………………………………………8
`
`III. Legal Standards…………………………………………………………...12
`
`A.
`
`Claim construction …………………………………………………13
`
`B. Obviousness………………………………………………………..14
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`C.
`
`Person of ordinary skill in the art…………………………………..15
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`IV.
`
`Illustrative claim…………………………………………………………..16
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`V. Ground I (claim 1 and dependents)……………………………………….19
`
`A.
`
`B.
`
`Fundamental difference between the ’515 patent and Pyle………...19
`
`Limitations 1[d] and 1[e]…………………………………………...23
`
`1.
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`One manifest file…………………………………………….24
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`2. Multiple manifest files………………………………………27
`
`C.
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`Limitation 1[c]……………………………………………………...32
`
`1.
`
`2.
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`Pyle alone……………………………………………………33
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`Pyle and Marusi………………………………......................35
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`VI. Ground 1 (claim 16 and dependents)……………………………………...38
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`VII. Ground II………………………………………………………………….38
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`A.
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`Limitation 1[d]……………………………………………………..43
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`B.
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`C.
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`D.
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`Limitation 1[e]……………………………………………………...52
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`Limitation 1[f]……………………………………………………...69
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`Limitations 1[c] and [e]…………………………………….............71
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`VIII. Conclusion………………………………………………………………...79
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`IX. Appendix………………………………………………………………….80
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`I. Materials Considered
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`Document Description
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`Ex. 2001 U.S. Provisional Application 61/366,059 [Pyle Provisional]
`
`Ex. 2002
`
`Ex. 2003
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`Ex. 2004
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`Ex. 2005
`
`Ex. 2006
`
`Ex. 2007
`
`Wowza Media Systems, “Using dynamically generated SMIL file
`possible?”, http://www.wowza.com/forums/showthread.php?12458-
`Using-dynamically-generated -SMIL-file-possible [Wowza]
`
`Wowza Media Systems, “What is transcoding and how does it impact
`streaming
`quality?”,
`https://www.wowza.com/uploads/images/
`Wowza-Tech-Brief-Transcoding-and-Its-Impact.pdf [Transcoding]
`
`Verizon Media, HDS, HLS, HSS -- Adaptive HTTP Streaming
`Demystified (July 11, 2013), https://www.verizondigitalmedia.com/
`blog/hds-hls-hss-adaptive-http-streaming/ [Verizon]
`
`Christopher Mueller, Bitmovin, Microsoft Smooth Streaming (May
`21, 2015), https://bitmovin.com/microsoft-smooth-streaming-mss/
`[MSS]
`
`IIS Smooth Streaming
`Alex Zambelli, Microsoft Corp.,
`(Mar.
`2009),
`Technical
`Overview
`https://www.bogotobogo.com/VideoStreaming/Files/iis8/
`IIS_Smooth_Streaming_Technical_Overview.pdf [IIS Overview]
`
`K. Hong, Ph.D., Smooth Streaming on
`https://www.bogotobogo.com/VideoStreaming/
`AdaptiveLiveStreaming_SmoothStreaming_iis8.php [IIS Smooth
`Streaming]
`
`- 2020
`
`IIS 8
`
`Ex. 2008
`
`PAIR Transaction History for U.S. Application 10/009,593
`[Transaction History]
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`Ex. 2010 Deposition of Clifford Reader, Jan. 5, 2021 [Reader Tr.]
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`Page 2016 - 4
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`
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`Ex. 2011
`
`Ex. 2012
`
`Definition of “list” from Oxford English & Spanish Dictionary,
`Thesaurus,
`and
`Spanish
`to
`English
`Translator,
`https://www.lexico.com/en/definition/list [Oxford]
`
`Definition of “list” from The American Heritage Dictionary of the
`English
`Language,
`https://www.ahdictionary.com/word/
`search.html?q=list [Am. Heritage]
`
`Dictionary.com,
`from
`“list”
`of
`Ex. 2013 Definition
`www.dictionary.com/browse/list [Dictionary.com]
`
`https://
`
`IMEI Database, https://imeidb.gsma.com/imei/index#
`Ex. 2014 GSMA
`[GSMA-1]
`
`Ex. 2015
`
`GSMA TAC Allocation and IMEI Programming Rules for Device
`Brand Owners and Manufacturers: Training Guide v1.0, Feb. 2018
`[GSMA-2]
`
`Ex. 1001 US 9,998,515 [the ʼ515 patent]
`
`Ex. 1002
`
`File history for the ʼ515 patent
`
`Ex. 1003 Declaration of Dr. Clifford Reader [Reader Decl.]
`
`Ex. 1004 US 8,782,268 [Pyle]
`
`Ex. 1005
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`EP 2 180 664 [Marusi]
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`Ex. 1006 US 2012/0047542 [Lewis]
`
`Ex. 1007
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`Excerpt from Exhibit D-1 re U.S. Patent No. 9,998,515 (Braness),
`DivX, LLC’s Infringement Contentions
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`Ex. 1008
`
`Excerpt from Exhibit D-1 re U.S. Patent No. 9,998,515 (Braness),
`DivX, LLC’s Infringement Contentions
`
`Paper 3
`
`Petition for Inter Partes Review of U.S. Patent No. 9,998,515 [Pet.]
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`DivX Exhibit 2016
`Netflix & Hulu v. DivX, IPR2020-00648
`Page 2016 - 5
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`Paper 7
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`Paper 9
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`Patent Owner’s Preliminary Response to Petition for Inter Partes
`Review [POPR]
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`Decision Granting Institution of Inter Partes Review [DI]
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`DivX Exhibit 2016
`Netflix & Hulu v. DivX, IPR2020-00648
`Page 2016 - 6
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`I, Kenneth A. Zeger, Ph.D., a resident of San Diego, California, declare as
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`follows:
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`II.
`
`Introduction
`
`A. Engagement
`
`1.
`
` I have been retained by Patent Owner through Zunda LLC to provide
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`my opinions with respect to its Response to the Petition for Inter Partes Review in
`
`IPR2020-00648 (“the Petition” or “Pet.”) as to U.S. Patent No. 9,998,515 (Ex. 1001,
`
`“the ʼ515 patent”). I have no interest in the outcome of this proceeding and my
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`compensation is in no way contingent on my providing any particular opinions.
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`2.
`
`As a part of this engagement, I have also been asked to provide my
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`technical review, analysis, insights, and opinions regarding the Petition and the
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`supporting declaration of Dr. Clifford Reader (Ex. 1003, “Reader Declaration” or
`
`“Reader Decl.”) with respect to the challenged claims.
`
`3.
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`The statements made herein are based on my own knowledge and
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`opinions.
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`
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`B. Qualifications
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`4.
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`I have studied, taught, and practiced electrical and computer
`
`engineering for thirty-nine years. I attended the Massachusetts Institute of
`
`Technology (“MIT”) and earned a Bachelors (SB) and Masters (SM) of Science
`
`Degrees in Electrical Engineering and Computer Science in 1984. I earned a Master
`
`of Arts (MA) Degree in Mathematics in 1989 from the University of California,
`
`Santa Barbara. I also earned my Ph.D. in Electrical and Computer Engineering from
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`the University of California, Santa Barbara in 1990.
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`5.
`
`I am currently a Full Professor of Electrical and Computer Engineering
`
`at the University of California, San Diego (UCSD). I have held this position since
`
`1998, having been promoted from Associated Professor after two years at UCSD. I
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`have been an active member of the UCSD Center for Wireless Communications for
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`22 years. I teach courses full-time at UCSD in the fields of Electrical and Computer
`
`Engineering, and specifically in subfields including communications, information
`
`theory, and data compression at the undergraduate and graduate levels. The data
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`compression courses include topics used in video and speech coding applications.
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`Prior to my employment at UCSD, I taught and conducted research as a faculty
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`member at the University of Illinois, Urbana-Champaign for four years, and at the
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`University of Hawaii for two years.
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`DivX Exhibit 2016
`Netflix & Hulu v. DivX, IPR2020-00648
`Page 2016 - 8
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`
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`6. My twenty-plus years of industry experience includes consulting work
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`for the United States Department of Defense as well as for private companies such
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`as Xerox, Nokia, MITRE, ADP, and Hewlett-Packard. The topics upon which I
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`provide consulting expertise include data communications for wireless networks,
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`digital communications, information theory, computer software, and mathematical
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`analyses. Subtopics include analysis of streaming video, speech, and cryptographic
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`signals.
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`7.
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`I have authored 77 peer-reviewed journal articles, the majority of which
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`are on the topic of compression or information theory and whose applications
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`include the streaming of video and speech data. I have also authored over 110 papers
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`at various conferences and symposia over the past thirty years, such as the: IEEE
`
`International Conference on Communications; IEEE Radio and Wireless
`
`Symposium; Wireless Communications and Networking Conference; IEEE Global
`
`Telecommunications Conference; International Symposium on Network Coding;
`
`IEEE International Symposium on Information Theory; UCSD Conference on
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`Wireless Communications; International Symposium on Information Theory and Its
`
`Applications; Conference on Advances in Communications and Control Systems;
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`IEEE Communication Theory Workshop; Conference on Information Sciences and
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`Systems; Allerton Conference on Communications, Control, and Computing;
`
`Information Theory and Its Applications Workshop; Asilomar Conference on
`
`Signals, Systems, and Computers. Roughly half of those papers relate to data
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`compression. I also am coinventor on a US patent disclosing a memory saving
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`technique for image compression.
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`
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`8.
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`I was elected a Fellow of the IEEE in 2000, an honor bestowed upon
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`only a small percentage of IEEE members. I was awarded the National Science
`
`Foundation Presidential Young Investigator Award in 1991, which included
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`$500,000 in research funding. I received this award one year after receiving my
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`Ph.D.
`
`9.
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`I have served as an Associate Editor for the IEEE Transactions on
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`Information Theory and have been an elected member of the IEEE Information
`
`Theory Board of Governors for three, three-year terms. I organized and have been
`
`on the technical advisory committees of numerous workshops and symposia in the
`
`areas of communications and information theory. I regularly review submitted
`
`journal manuscripts, government funding requests, conference proposals, student
`
`theses, and textbook proposals. I also have given many lectures at conferences,
`
`universities, and companies on topics in communications and information theory.
`
`10.
`
`I have extensive experience in electronics hardware and computer
`
`software, from academic studies, work experience, and supervising students. I
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`personally program computers on an almost daily basis and have fluency in many
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`different computer languages.
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`11. My curriculum vitae, attached as an Appendix to this declaration, lists
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`my publication record in archival journals, international conferences, and
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`workshops.
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`
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`Page 2016 - 11
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`
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`III. Legal Standards
`
`12.
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`I am not an attorney. I offer no opinions on the law. But counsel has
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`informed me of the following legal standards relevant to my analysis here. I have
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`applied these standards in arriving at my conclusions.
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`DivX Exhibit 2016
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`Page 2016 - 12
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`
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`A. Claim construction
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`13.
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`I have been informed that the first step of a patentability analysis is to
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`construe the claims. I understand that, when construing claims in an IPR, the PTAB
`
`will apply the same standard applied in civil actions in federal courts. I have been
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`informed that claim construction begins with the language of the claims and that the
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`words of a claim are generally given their ordinary and customary meaning, which
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`is the meaning that the term would have to a person of ordinary skill in the art
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`(“POSITA”) at the time of the invention, i.e., as of the effective filing date of the
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`patent application. I also understand that the specification is the single best guide to
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`the meaning of a disputed term and acts as a dictionary when it expressly defines
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`terms used in the claims or when it defines terms by implication. I have been
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`informed that the prosecution history is another source of intrinsic evidence that can
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`inform the meaning of the claim language by demonstrating how the inventor
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`understood the invention and whether the inventor limited the invention in the course
`
`of prosecution, making the claim scope narrower than it would otherwise be. Finally,
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`I am aware that extrinsic evidence, such as expert testimony and dictionaries, may
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`be useful in educating the PTAB regarding the field of the invention or helping
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`determine what a POSITA would have understood claim terms to mean.
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`DivX Exhibit 2016
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`
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`B. Obviousness
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`14.
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`I understand that a claim of a patent may not be patentable even though
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`the invention is not identically disclosed or described in the prior art so long as the
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`differences between the subject matter sought to be patented and the prior art are
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`such that the subject matter as a whole would have been obvious to a person having
`
`ordinary skill in the art in the relevant subject matter at the time the invention was
`
`made.
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`15.
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`I understand that, to demonstrate obviousness, it is not sufficient for a
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`petition merely to show that all of the elements of the claims at issue are found in
`
`separate prior art references or even scattered across different embodiments and
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`teachings of a single reference. The petition must thus go further, to explain how a
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`person of ordinary skill would have combined specific prior art references or
`
`teachings, which combinations of elements in specific references would yield a
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`predictable result, and how any specific combination would operate or read on the
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`claims. Similarly, it is not sufficient to allege that the prior art could be combined,
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`but rather, the petition must show why are how a person of ordinary skill would have
`
`combined them.
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`16.
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`I understand that, to demonstrate obviousness, a petition must
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`accurately identify and analyze the differences between the claimed invention and
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`the prior art.
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`17.
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`I understand that obviousness cannot be shown by conclusory
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`statements, and that the petition must provide articulated reasoning with some
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`rational underpinning to support its conclusion of obviousness.
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`C.
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`18.
`
`Person of ordinary skill in the art
`
`I am familiar with the concept of the POSITA and have reviewed Dr.
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`Reader’s and Petitioner’s views on the definition and qualifications of the POSITA
`
`for purposes of this proceeding. For purposes of this proceeding, I will adopt Dr.
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`Reader’s definition of the level of ordinary skill, namely that “a person of ordinary
`
`skill in the field of art of the ʼ515 patent would have been a person with a bachelor’s
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`degree in mechanical engineering, electrical engineering, computer science, or a
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`similar field with at least two years of experience in adaptive streaming and content
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`management, or a person with a master’s degree in mechanical engineering,
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`electrical engineering, computer science, or a similar field with a specialization in
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`adaptive streaming or content management” and that a “person with less education
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`but more relevant practical experience may also meet this standard.” Ex. 1003
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`(Reader Decl.) ¶71.
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`19.
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`I am qualified to render technical opinions from the perspective of a
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`POSITA and all opinions in this declaration are rendered from that perspective.
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`Throughout my declaration, even if I discuss my analysis in the present tense, I am
`
`always making my determinations based on what a POSITA would have known at
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`the time of the invention. For purposes of this declaration, I considered the relevant
`
`date as around 2011. I have no opinion on the actual date of invention, and my
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`opinions do not change whether the date of invention is considered to be the
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`provisional filing date, the earliest effective utility filing date, or even an earlier
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`invention date, such as one in 2010.
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`IV.
`
`Illustrative claim
`
`20. For purposes of this Declaration, I have applied the same labeling
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`convention that Dr. Reader applied in his declaration. These labels are shown below
`
`in brackets next to the corresponding language of claims 1 and 16:
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`1[a]. A method for authorizing playback of content, comprising:
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`1[b]. receiving a request for content from a playback device at a playback
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`server, where the request includes a product identifier that identifies a device
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`configuration;
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`1[c]. identifying, using the playback server, based on the product identifier, a
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`plurality of device capabilities including a device type and a device software
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`version indicating a version number for an adaptive streaming software
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`component implemented on the playback device;
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`1[d]. retrieving, using the playback server, a list of assets associated with the
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`identified piece of content, wherein each asset is a different stream associated
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`with the piece of content;
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`1[e]. filtering, using the playback server, the list of assets based on the
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`plurality of device capabilities;
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`1[f]. generating, using the playback server, a top level index file describing
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`each asset in the filtered list of assets,
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`1[g]. wherein the top level index file identifies locations and bitrates of a
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`plurality of alternative streams capable of being used to perform adaptive
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`streaming of the content; and
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`1[h]. sending the top level index file from the playback server to the playback
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`device.
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`16[a]. A playback device, comprising:
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`16[b]. memory containing information used to identify capabilities of the
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`playback device; and a processor configured by a client application;
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`16[c]. wherein the client application configures the processor to: request,
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`using the playback device, a top level index file from a playback server, where
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`the request identifies a piece of content and includes a software version
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`indicating a version number for an adaptive streaming software component
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`implemented on the device;
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`16[d]. receive, using the playback device, a top level index file from the
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`playback server, where the top level index file identifies locations and bitrates
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`of a plurality of different alternative streams capable of being used to perform
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`adaptive streaming of the identified piece of content and accessible to the
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`playback device;
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`16[e]. select, using the playback device, an initial stream from the plurality of
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`different alternative streams;
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`16[f]. retrieve, using the playback device, at least a portion of the initial stream
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`from the locations identified in the top level index file; and playback, using
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`the playback device, the portion of the initial stream.
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`DivX Exhibit 2016
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`
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`V. Ground I (claim 1 and dependents)
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`A.
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`Fundamental difference between the ’515 patent and Pyle
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`21. The ’515 patent claims a method of generating a top level index file
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`with the following steps:
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`• receiving a request for content …[that] includes a product
`identifier;
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`• identifying … based on the product identifier, a plurality of device
`capabilities…
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`• retrieving … a list of assets associated with the identified piece
`of content …;
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`• filtering, using the playback server, the list of assets based on the
`plurality of device capabilities;
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`• generating, using the playback server, a top level index file
`describing each asset in the filtered list of assets …; and
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`• sending the top level index file from the playback server to the
`playback device.
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`Ex. 1001 (’515 patent) cl. 1. A POSITA would understand that, at a high level, this
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`claim is essentially a method to generate a customized top level index file in response
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`to a request from a device.
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`22. A POSITA would understand that Pyle, on the other hand, responds to
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`requests for content by sending a pre-existing manifest that is currently stored on the
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`system. Ex. 1004 (Pyle) 10:40-56. Specifically, I note that Pyle’s system
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`“maintain[s] multiple manifests [] for a single item of content” and in response to a
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`request, “examine[s] data included in request 420 and determine a suitable or
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`optimal manifest, and select and transmit that manifest to the requesting device.”
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`Id., 7:47-49, 10:53-56. Simply put, in response to a request for content from a
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`particular device, the ’515 patent teaches creating a customized top level index file
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`for the requesting device, while Pyle teaches a system that maintains multiple
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`manifest files, and then selects the one that best fits.
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`23. Upon reviewing Pyle, I see that the reference only contains one
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`paragraph discussing new manifests and a POSITA would understand that this
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`paragraph does not teach creating new manifests in order to respond to requests for
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`content. See Ex. 1004 (Pyle) 10:56-11:9. Instead, this paragraph clearly teaches
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`“composition of new manifest[s], which can be stored amongst other manifests.”
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`Id., 10:58-60. I understand that Dr. Reader agreed with this fact, explaining that
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`“this paragraph talks about having some existing manifest and now going to add
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`more.” Ex. 2010 (Reader Tr.) 40:5-6; see also id. 38:18-39:5 (“Q. This paragraph
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`[(10:57-11:9)] describes an embodiment in Pyle where new manifests are created
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`and stored amongst other preexisting manifests; is that correct? A. That’s what this
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`embodiment is describing.”).
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`24. While I note that Dr. Reader contended in his deposition that “a
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`POSITA would understand that if you have a system operating in realtime … then
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`the system must be capable of responding to that new client configuration,” Id.,
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`40:6-13, I do not see anything in the Petition even asserting, much less proving that
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`such a modification to Pyle would be obvious. Indeed, I do not see any section of
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`the Petition or Dr. Reader’s declaration detailing such a proposed modification to
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`the system in Pyle, or providing any rationale for why a POSITA would make such
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`a modification. See generally Pet.; Ex. 1003 (Reader Decl.).
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`DivX Exhibit 2016
`Netflix & Hulu v. DivX, IPR2020-00648
`Page 2016 - 21
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`
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`25. Moreover, a POSITA would not be motivated to modify Pyle’s system
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`to create customized manifest files for a requesting device on-demand. Pyle’s
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`invention claims to distinguish itself from prior art systems by “maintaining multiple
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`manifests [] for a single item of content,” Ex. 1004 (Pyle) 7:47-49, as opposed to
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`“conventional streaming systems [that] maintain only a single manifest … [and] [a]s
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`a result … are generally more limited by the file system format, as well as a host of
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`other shortcomings.” Id., 8:9-16. Therefore, according to Pyle, the solution to the
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`problem in the prior art is to simply maintain multiple manifests and select the best
`
`one for the requesting device. Pyle further allows content providers to add additional
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`manifest files as needed. See id., 10:57-11:10 (teaching the addition of new manifest
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`files to the system). Therefore, I see no reason why a POSITA would modify Pyle
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`to create new manifest files on-demand in response to requests for content.
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`26. Accordingly, a POSITA would see a fundamental distinction between
`
`the ’515 patent and Pyle. While the ’515 patent claims a method for creating
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`customized top level index files in response to a device request, Pyle clear opts for
`
`a different route, teaching instead to select a best-fit manifest file from an assortment
`
`of pre-existing manifests. Understanding this difference helps to illustrate the
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`specific differences between the claimed invention and the asserted combination as
`
`discussed below.
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`DivX Exhibit 2016
`Netflix & Hulu v. DivX, IPR2020-00648
`Page 2016 - 22
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`
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`B.
`
`27.
`
`Limitations 1[d] and 1[e]
`
`I understand that claim 1 and its dependents require:
`
`• 1[d] retrieving … a list of assets associated with the identified piece
`
`of content …
`
`• 1[e] filtering … the list of assets based on the plurality of device
`
`capabilities,
`
`Ex. 1001 (’515 patent) cl. 1. Because 1[e]’s “the list of assets” has antecedent basis
`
`in 1[d]’s “a list of assets,” a POSITA would understand that the claims require that
`
`“the list of assets” that is “filter[ed]” in 1[e], is the same list of assets that was
`
`“retriev[ed]” in 1[d]. Id.
`
`28.
`
`I understand Petitioner to be relying entirely on Pyle for the “list of
`
`assets.” See Pet., 30-34. Petitioner, however, fails to prove that Pyle teaches a “list
`
`of assets” that is both “retriev[ed]” and “filter[ed].” Specifically, I note the Petition’s
`
`contention that the claimed “list of assets” is met by either Pyle’s one manifest file,
`
`or by multiple manifest files. See Pet., 31-32 (“A POSITA would have understood
`
`that each manifest file is a list of assets … a POSITA would have found it obvious
`
`that all of the manifests associated with an identified piece of content also forms a
`
`list of assets”); Ex. 2010 (Reader Tr.) 121:12-15 (“Q. Is it your contention that the
`
`list of assets in limitation 1(d) is met by Pyle's one or more manifest files? A. Yes”).
`
`
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`DivX Exhibit 2016
`Netflix & Hulu v. DivX, IPR2020-00648
`Page 2016 - 23
`
`
`
`
`
`29. As I explain below, a POSITA would not understand either Pyle’s one
`
`manifest file, or multiple manifest files, is a “list of assets” that is both “retriev[ed]”
`
`and “filter[ed],” as required by the claims. First, Pyle does not teach “filtering” one
`
`manifest file. Second, the Petition fails to prove that Pyle’s multiple manifest files
`
`would be considered a single “list of assets,” as required by the claims. Further,
`
`even if Pyle’s multiple manifest files could be considered a single “list of assets,”
`
`Pyle does not teach “retrieving” multiple manifest files.
`
`1. One manifest file
`
`30. A POSITA would not understand Pyle to teach “filtering” one manifest
`
`file. In fact, as discussed below, the Petition does not seem to even put forth a clear
`
`argument alleging that Pyle “filter[s]” one manifest file.
`
`31. The Petition first argues that Pyle teaches “filtering” because Pyle
`
`“selects between (or generates a new manifest) from the available manifests for the
`
`requested piece of content depending upon parameters in the request.” Pet., 33. As
`
`explained above, Pyle does not teach generating a new manifest file in response to a
`
`request for content. See Section V.A. Moreover, if the selection was the alleged
`
`“filtering,” then this would still only teach filtering multiple manifests (Pyle’s
`
`available manifest), not one manifest, as what Pyle is selecting from is “the available
`
`manifests”. Ex. 1004 (Pyle) 10:40-56.
`
`
`
`DivX Exhibit 2016
`Netflix & Hulu v. DivX, IPR2020-00648
`Page 2016 - 24
`
`
`
`
`
`32. Next, the Petition alleges that “Pyle explains that the use of multiple
`
`manifest files can be used to optimize the manifest delivered to a device based upon
`
`‘endpoint profiles or configurations,’ which refers to the capabilities of the device.”
`
`Pet., 33 (citing Ex. 1004 (Pyle) 8:28-29). I do not see anything in Petitioner’s cited
`
`section of Pyle, 8:28-29, however, discussing the use of multiple manifests to
`
`optimize one manifest file. See Ex. 1004 (Pyle) 8:28-29. A POSITA would
`
`understand that Pyle teaches that the purpose of multiple manifests is not to be used
`
`for optimizing a new manifest, but rather that by maintaining multiple manifests
`
`“individual manifests 204 can be optimized for particular … configurations.” Id.
`
`8:23-27; see also Ex. 2010 (Reader Tr.) 38:8-12. In other words, because Pyle
`
`maintains, for example, two manifest files, one can be an HD manifest for HD
`
`devices, and the other can be a standard definition manifest for standard definition
`
`devices. See id., 9:6-9 (Pyle “maintaining multiple manifests … (e.g., manifest A
`
`high-definition presentation and manifest B for standard-definition presentation).
`
`Moreover, even if Pyle did teach this optimization as alleged, I see no explanation,
`
`or even a clear assertion, that this teaches “filtering” one manifest file.
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`/ / /
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`/ / /
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`/ / /
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`/ / /
`
`
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`DivX Exhibit 2016
`Netflix & Hulu v. DivX, IPR2020-00648
`Page 2016 - 25
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`
`
`
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`33. Next, I understand that the Petition argues that “[t]his limitation is
`
`further taught or suggested by Pyle’s server, which, in response to a request for
`
`content, may provide a new manifest file that is optimized for ‘a particular device or
`
`particular devices or capabilities thereof.’” Pet., 33-34 (citing Ex. 1004 (Pyle)
`
`10:57-11:10). Again, as discussed above, a POSITA would understand that Pyle
`
`does not teach generating new manifest files in response to a request for content.
`
`See Section V.A.
`
`34. Finally, I see that the Petition contends that “Marusi’s matching unit
`
`retrieves information that a requested song is available in two different formats, and
`
`based on that information, selects one of the formats for the client requesting the
`
`song” and that a “POSITA would have understood that the database operation taught
`
`by Marusi involves filtering the records of the database (a list of assets) associated
`
`with request content (the song).” Pet., 34. I do not see any explanation in this section
`
`of how a POSITA would modify Pyle in view Marusi to teach “filtering” one
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`manifest file. Id. Instead, if anything this teaching in Marusi would seem more
`
`similar to Pyle’s teaching of selecting one manifest file from multiple manifest files,
`
`as, according to Petitioner’s characterization of Marusi, Marusi selects one file (a
`
`song) from amongst multiple available files (multiple available versions of the song).
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`Pet., 34.
`
`
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`DivX Exhibit 2016
`Netflix & Hulu v. DivX, IPR2020-00648
`Page 2016 - 26
`
`
`
`
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`35.
`
`It is understandable that the Petition was unable to demonstrate
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`“filtering” one manifest file in Pyle, as no such teaching in Pyle exists. A POSITA
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`reading Pyle would understand that once a manifest file for a piece of content is
`
`created, it is stored amongst other manifest files. See Ex. 1004 (Pyle) 10:57-60
`
`(creating “new manifest[s], which can be stored amongst other manifests”). When
`
`a request for a piece of content comes in, Pyle will examine the request and
`
`determine a “suitable or optimal manifest” for the requesting device and “transmit
`
`that manifest to the requesting device.” Id., 10:53-56. Regardless of whether Pyle’s
`
`manifest file is selected for transmission or not, a POSITA would not see any
`
`teaching, explicit or implicit, of filtering the representations in a manifest. See
`
`generally id.
`
`36. Therefore, the Petition has not demonstrated that Pyle teaches filtering
`
`one manifest file (one of Petitioner’s two theories for the alleged “list of assets”).
`
`Thus, Pyle’s one manifest file cannot be the “list of assets” that is “retriev[ed]” and
`
`“filter[ed]” as required by limitations 1[d]-[e].
`
`2. Multiple manifest files
`
`37. Turning now to Petitioner’s other alleged “list of assets,” Pyle’s
`
`multiple manifest files, we see that this too fails to meet 1[d]-[e]’s “list of assets,”
`
`because (1) a POSITA would not consider multiple manifest files to be a single “list
`
`of assets,” and (2) Pyle does not teach “retrieving” multiple manifest files
`
`
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`DivX Exhibit 2016
`Netflix & Hulu v. DivX, IPR2020-00648
`Page 2016 - 27
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`
`
`
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`a.
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`List
`
`38. The claims require “retrieving a list of assets.” Ex. 1001 (’515 patent)
`
`cl. 1. A POSITA would find this language in the claims to be clear that this limitation
`
`requires a single “list of assets.” Id.
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`39.
`
`I understand that Petitioner contends that “[a] POSITA would have also
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