Trials@uspto.gov
`571-272-7822
`
`Paper 29
`Entered: March 4, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETFLIX, INC.,
`Petitioner,
`v.
`BROADCOM CORPORATION,
`Patent Owner.
`
`IPR2020-01423
`Patent 6,341,375 B1
`
`
`
`
`
`
`
`
`
`Before MELISSA A. HAAPALA, Vice Chief Administrative Patent Judge,
`and THOMAS L. GIANNETTI and JAMES A. WORTH, Administrative
`Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571-272-7822
`
`Paper 29
`Entered: March 4, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETFLIX, INC.,
`Petitioner,
`v.
`BROADCOM CORPORATION,
`Patent Owner.
`
`IPR2020-01423
`Patent 6,341,375 B1
`
`
`
`
`
`
`
`
`
`Before MELISSA A. HAAPALA, Vice Chief Administrative Patent Judge,
`and THOMAS L. GIANNETTI and JAMES A. WORTH, Administrative
`Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2020-01423
`Patent 6,341,375 B1
`
`INTRODUCTION
`I.
`Netflix, Inc. (“Petitioner”) filed a Petition pursuant to 35 U.S.C.
`§§ 311–319 to institute an inter partes review of claims 1–6, 9–15, and 17–
`19 of U.S. Patent No. 6,341,375 B2 (Ex. 1001, “the ’375 patent”). Paper 2
`(“Pet.”). Broadband Corp. (“Patent Owner”) filed a Preliminary Response.
`Paper 6 (“Prelim. Resp.”).
`Pursuant to 35 U.S.C. § 314, we instituted this inter partes review as
`to all of the claims challenged and all grounds raised in the Petition. Paper 7
`(“Inst. Dec.”).
`Following institution, Patent Owner filed a Response. Paper 16 (“PO
`Resp.”). Subsequently, Petitioner filed a Reply to Patent Owner’s Response
`(Paper 19, “Pet. Reply”), and Patent Owner filed a Sur-reply (Paper 20, “PO
`Sur-reply”).
`On December 9, 2021, we held an oral hearing. A transcript of the
`hearing is included in the record. Paper 28 (“Hearing Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
`Written Decision, issued pursuant to 35 U.S.C. § 318(a). For the reasons we
`discuss below, we determine that Petitioner has proven by a preponderance
`of the evidence that claims 1–6, 9–15, and 17–19 of the ’375 patent are
`unpatentable.
`
`II. BACKGROUND
`A. The ’375 Patent
`The ’375 patent describes a video on demand system. Ex. 1001, 1:4–
`5. Figure 2 of the ’375 patent is reproduced below:
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`Figure 2 depicts a DVD video on demand system in accordance with a
`preferred embodiment. Id. at 2:18–19, 2:29–31. Video on demand system
`100 comprises server 102, disk library 104, and remote decoders 114a-114n.
`Id. at 2:31–34, 2:43. Disk library 104 includes one or more DVD drives and
`associated disks that present one or more signals to server 102. Id. at 2:34–
`36. Server 102 presents a number of compressed bitstreams (e.g., DVD
`bitstreams) at outputs 110a–110n that are received at inputs 112a–112n
`located in individual remote decoders 114a–114n. Id. at 2:39–43. The ’375
`patent describes that in some embodiments, a single bitstream may be sent to
`a number of remote decoders 114a–114n. See id. at 5:31–32.
`Remote decoders 114a–114n may be located in a set-top box or the
`tuner of a television. Id. at 2:43–46. Each remote decoder 114a–114n
`comprises decoder 120, control 121, user options input interface 122, and
`one or more buffers 124. Id. at 2:53–56. Decoder 120 presents decoded
`audio signals to one or more speakers 128 via output 126. Id. at 2:58–60.
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`Patent 6,341,375 B1
`Decoder 120 also presents, via output 130, decoded video signals to video
`display 132 (e.g., television or computer monitor). Id. at 2:60–63.
`B. Illustrative Claim
`Claims 1, 13, and 15 are independent claims. Claim 1 is illustrative of
`the subject matter at issue:1
`1. [preamble] An apparatus comprising:
`[1a] a drive server configured to present a plurality of
`compressed data streams in response to one or more first control
`signals;
`[1b] a control server configured to present said one or
`more compressed data streams received from said drive server in
`response to one or more request signals; and
`[1c] one or more decoder devices, at least one of said one
`or more decoder devices being disposed in a separate room from
`said control server and said drive server, each of said one or more
`decoder devices being configured to (i) decode at least one of
`said one or more compressed data streams received from said
`control server and (ii) present at least one signal selected from a
`decoded video signal and a decoded audio signal in response to
`decoding said one or more compressed data streams,
`[1d] wherein a first portion of a selected one of said
`compressed data streams is presented to one of said decoder
`devices and a second portion of said selected compressed data
`stream is presented to another of said decoder devices.
`C. References
`Petitioner relies on the following references:
`1. U.S. Patent 5,583,561, issued Dec. 10, 1996 (“Baker”) (Ex. 1004).
`2. U.S. Patent 5,721,878, issued Feb. 24, 1998 (“Ottesen”)
`(Ex. 1005).
`
`
`1 References in square brackets were added to mirror those provided by
`Petitioner.
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`Patent 6,341,375 B1
`3. U.S. Patent 5,828,370, issued Oct. 27, 1998 (“Moeller”)
`(Ex. 1006).
`Petitioner further relies on testimony of James A. Storer, Ph.D. (Ex.
`1003, “Storer Decl.”; Ex. 1030, “Storer Reply Decl.”). Patent Owner relies
`on the testimony of Ghassan AlRegib, Ph.D. (Ex. 2001, “AlRegib Decl.”).
`The parties have submitted deposition transcripts for these declarants. 2
`D. Grounds Asserted
`Petitioner challenges the patentability of the claims of the ’375 patent
`as obvious over the following references:
`
`Claims Challenged
`1, 2, 4–6, 10, 11, 15, 18, 19
`9, 12, 18
`3, 13, 14, 17
`
`
`Statutory Basis 35
`U.S.C. 3
`§ 103
`§ 103
`§ 103
`
`Reference(s)
`Baker
`Baker, Ottesen
`Baker, Moeller
`
`E. Related Proceedings
`Petitioner and Patent Owner identify the following district court
`litigation involving the ’375 patent: Broadcom Corp. v. Netflix, Inc., Case
`No. 3:20-cv-04677-JD (N.D. Cal.). Pet. 70; Paper 4, 1. Patent Owner
`additionally identifies the following related litigations: (1) Broadcom Corp.
`v. Netflix, Inc., Case No. 8:20-cv-00529-JVS-ADS (C.D. Cal.); and (2)
`Broadcom Corporation v. Amazon.com, Inc. et al., Case No. 8:16-cv-01774-
`JVS-JCGx (C.D. Cal.). Paper 4, 1.
`
`
`2 Ex. 1009 (“AlRegib Dep.”), Ex. 2002 (“Storer Dep.”).
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29
`amended 35 U.S.C. §103. Because the application from which the ’375
`patent issued was filed before March 16, 2013, the pre-AIA version
`of 35 U.S.C. §103 applies.
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`Patent 6,341,375 B1
`The parties also identify the following PTAB proceeding involving
`the ’375 patent: Amazon.com, Inc. et al. v. Avago Technologies General IP
`(Singapore) Pte. Ltd., Case No. IPR2017-01112 (filed Mar. 17, 2017;
`institution denied Aug. 23, 2017). Pet. 70; Paper 4, 1.
`F. Real Parties-in-Interest
`Petitioner identifies Netflix Streaming Services, Inc. as an additional
`real party-in-interest. Pet. 70. Patent Owner identifies no additional real
`parties-in-interest. See Paper 4, 1.
`III. PRELIMINARY MATTERS
`A. Level of Ordinary Skill
`Petitioner contends that “[a] person of ordinary skill in the art . . . of
`the ’375 patent would have been a person with a bachelor’s degree in
`electrical engineering, computer science, or a similar field with at least two
`years of experience with video streaming systems or a person with a
`master’s degree in electrical engineering, computer science, or a similar field
`with a specialization in data compression and transmission.” Pet. 14.
`Further, “[a] person with less education but more relevant practical
`experience may also meet this standard.” Id.
`Patent Owner responds that “[a person of ordinary skill] at the time of
`the invention of the '375 Patent would have had a Bachelor's degree in
`Electrical Engineering, Computer Science, or a similar discipline, with one
`to two years of experience in this or a related field.” PO Resp. 7 (citing
`AlRegib Decl. ¶ 23). Patent Owner continues, “[the person of ordinary skill]
`would also have been familiar with data compression, decoding, and
`transmission.” Id. at 7–8. Patent Owner acknowledges that “Petitioner
`relies on a similar description of a [person of ordinary skill] in its Petition.”
`Id. at 8.
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`Patent 6,341,375 B1
`The descriptions from Petitioner and Patent Owner do not differ
`materially. Both require bachelor’s degrees in the same fields and roughly
`one to two years of experience in data compression and transmission. Patent
`Owner would also require experience in decoding.
`The arguments presented by Petitioner and Patent Owner do not
`indicate that the outcome of this case would change depending on the level
`of ordinary skill in the art. We, therefore, adopt Patent Owner’s more
`specific description, which we determine to be consistent with the level of
`skill reflected in the asserted prior art references. See Okajima v. Bourdeau,
`261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that we would
`reach the same conclusions under either proposed level of ordinary skill.
`B. Claim Construction
`In an inter partes review, the claims of a patent shall be construed
`using the same claim construction standard that would be used to construe
`the claims in a civil action under 35 U.S.C. § 282(b), including construing
`the claims in accordance with the ordinary and customary meaning of such
`claims as understood by one of ordinary skill in the art and the prosecution
`history pertaining to the patent. 37 C.F.R. § 42.100(b); see also Phillips v.
`AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). In determining the
`meaning of the disputed claim limitations, we look principally to the
`intrinsic evidence of record, examining the claim language itself, the written
`description, and the prosecution history, if in evidence. DePuy Spine, Inc. v.
`Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
`(citing Phillips, 415 F.3d at 1312–17).
`
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`Patent 6,341,375 B1
`
`1. Drive Server
`a) Background
`The ’375 patent describes a video on demand system comprising a
`drive server, a control server, and decoder devices. PO Resp. 3. The
`controversy most central to this proceeding is construction of the term “drive
`server.” Compare PO Resp. 8–30, with Pet. Reply 6–19. The term “drive
`server” appears in each independent claim. Moreover, Patent Owner alleges,
`as its principal argument to rebut the obviousness challenges, that Petitioner
`has misidentified the Video Library in Baker as a drive server. See PO
`Resp. 31–39 (arguing Baker’s Video Library 10 is not a drive server).
` Petitioner contends a person of ordinary skill would have understood
`drive server as “a ‘device that provides centralized storage services to a
`VOD [video on demand] system.’” Pet. 14 (citing Storer Decl. ¶ 41). “This
`would include, for example, disk servers, media libraries, or other
`multimedia storage devices.” Id. Petitioner asserts this construction is
`supported by the specification of the ’375 patent. Id. at 14–15. Petitioner
`contends that “the ’375 patent indicates that the ‘drive server’ is a
`centralized storage device for a VOD system.” Id. at 14 (citing Storer Decl.
`¶¶ 42–46).
`The ’375 patent does not expressly define the term “drive server.”
`Storer Decl. ¶ 42. Apart from the claims and Abstract, the term appears only
`three times in the ’375 patent. Ex. 1001, 1:57, 1:58, 3:26. Petitioner
`explains that the ’375 patent describes the drive server as a device that
`provides compressed data streams for distribution to viewers. Pet. 14–15
`(citing Ex. 1001, Abstract, 1:56–60, 5:46–48). Petitioner further explains
`that the ’375 patent “identifies several central storage devices that perform
`the function of the ‘drive server.’” Id. at 15. Petitioner asserts this
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`Patent 6,341,375 B1
`identification includes disk library 104 in Figure 2, which “generally
`comprises one or more DVD drives and associated disks that present one or
`more signals to server 102.” Id.; Ex. 1001, 2:32–36; see also Storer Decl.
`¶¶ 42-46, 49–55).
`Citing dictionary definitions for “drive” and “server,” Petitioner
`asserts a person of skill in the art would have understood “drive” to refer to a
`storage device, and “server” to refer to a device that provides a service to a
`client, such as a storage service. Id. (citing Exs. 1019, 4; 1020, 3 (defining
`“drive”); Ex. 1018, 4 (defining “server”)). 4 Petitioner contends that the
`description of “drive server” in the ’375 patent is consistent with this
`understanding. Id. at 15–16 (citing Storer Decl. ¶¶ 47–48). Petitioner also
`asserts that its construction is consistent with arguments Patent Owner has
`made in prior district court litigation. Id. at 16 (citing Ex. Storer Decl.
`¶¶ 57–58; Ex. 1009, 19; Ex. 1016, 19–20).
`In its Preliminary Response, Patent Owner disagrees with Petitioner’s
`construction, and instead urges that we “follow the Court in Broadcom Corp.
`et al. v. Amazon.com, Inc. et al., Case No. 8:16-cv-01774 (C.D. Cal. 2016)
`to construe the term ‘drive server’ in accordance with its plain and ordinary
`meaning.” Prelim Resp. 19 (citing Ex. 1009, 18). According to Patent
`Owner, a “server” is “a computer that provides services to another
`computer.” Id. at 18 (citing Ex. 1018 (Dictionary of Computer Terms)).
`Further, Patent Owner contends “a drive server is a server that services
`another device.” Id. at 17.
`
`
`4 Unless otherwise specified, citations to exhibits use the page numbers
`assigned by the parties and not the original page numbers.
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`Patent 6,341,375 B1
`At the institution stage of this proceeding, we were persuaded that
`Petitioner’s proposed definition of drive server was “mostly correct.” Inst.
`Dec. 8. We reasoned that the ’375 patent describes that its video on demand
`system comprises a “disk library 104 [that] generally comprises one or more
`DVD drives and associated disks that present one or more signals to the
`server 102.” Id. (citing Ex. 1001, 2:32–36) (alteration in original). We
`further observed also that “[t]he ’375 patent also refers to this element as
`‘DVD ROM DRIVES & DISCS’ ‘the DVD drive server,’ and ‘DVD ROM
`server’” Id. (citations omitted).
`We noted that the ’375 patent further discloses that the “drive server
`may be configured to present one or more compressed data streams in
`response to one or more first control signals.” Id. (citing Ex. 1001,
`Abstract). We were persuaded by Dr. Storer’s testimony that, in view of the
`specification of the ’375 patent, a person of skill in the art would have
`understood a drive server to be a device that provides storage services to a
`VOD system. Id. (citing Storer Decl. ¶¶ 41–46).
`However, we disagreed with Petitioner that the storage services must
`be “centralized.” Inst. Dec. 8. Instead, we agreed with Patent Owner that
`while the specification provides examples in which the drive server is
`centralized, the ’375 patent does not indicate that centralized storage
`services are required. Id. at 8–9 (citing Prelim. Resp. 18–19).
`We were not persuaded by Patent Owner’s assertion that a “drive
`server” is a “server that services another device.” Id. at 9. We concluded
`that “[t]o the extent Patent Owner argues that the term ‘server’ means that
`the device must be a ‘computer that provides services to another computer,’
`we disagree.” Id. We reasoned that “[t]he description of the ’375 patent
`does not indicate the ‘drive server’ (e.g., disc library, DVD ROM DRIVES
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`Patent 6,341,375 B1
`& DEVICES) is itself a computer. Rather, the ’375 patent generally
`describes the component as comprising drives and associated disks that
`provide compressed data streams (storage services) in response to control
`signals.” Id. (citing Ex. 1001, Abstract, 2:32–36). We relied also on
`Petitioner’s dictionary definitions of “disk server” as a device that provides
`network disk storage. Id. (citing Ex. 1017, 6; Ex. 1019, 3).
`Further, we were not persuaded by Patent Owner’s argument that
`Petitioner’s proposed construction “renders the word ‘server’ surplusage.”
`Id. (citing Prelim. Resp. 17). Rather, we observed that in conjunction with
`the word “drive,” the description of the ’375 patent indicates that the “drive
`server” provides storage services to the control server. See id.
`For the foregoing reasons, we construed “drive server” as “a device
`that provides storage services to a VOD system.” Id.
`In its post-institution Response (Paper 16), Patent Owner renews its
`challenge to Petitioner’s construction (and the Board’s pre-institution
`construction, to the extent that it incorporates Petitioner’s construction). PO
`Resp. 8. Patent Owner advances four main arguments. Id. at 9–30. Patent
`Owner reprises its argument that Petitioner's construction of “drive server”
`improperly renders the “server” portion of this term meaningless. Id. at 9.
`Patent Owner argues that Petitioner’s construction of “drive server”
`“improperly expands its scope beyond the teachings of the '375 Patent.” Id.
`at 18. Patent Owner again asserts “‘drive server’ should be construed in
`accordance with its plain and ordinary meaning.” Id. at 26. And Patent
`Owner asserts that we should not credit Petitioner’s construction because
`Petitioner’s expert, Dr. Storer, “could not answer basic questions concerning
`the scope of ‘drive server’ under his construction.” Id. at 12.
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`As discussed below, we do not agree with these arguments. Instead,
`after reviewing the entire record, we are persuaded by Petitioner’s arguments
`in the Petition and Reply to Patent Owner’s response, and for the reasons
`summarized supra, to maintain our pre-institution construction of “drive
`server” as “a device that provides storage services to a VOD system.” Inst.
`Dec. 9. Our reasoning follows.
`b) Discussion
`As Petitioner recognizes, the “crux” of Patent Owner’s argument that
`the Board’s construction renders the word “server” meaningless is the
`contention that a server must include a computer that provides “additional
`server functionality.” See Pet. Reply 8. Thus, in its Sur-reply, Patent Owner
`asserts “the issue boils down to whether a drive server requires some
`capability (such as processing capability) other than merely the capability to
`store data.” PO Sur-reply 1–2.
`We are not persuaded that in the context of the ’375 patent, the
`construction of “drive server” requires a computer, as Patent Owner asserts.
`In describing the preferred embodiment of Figure 2, the patent itself refers to
`a “DVD drive server.” Ex. 1001, 3:26. Moreover, the claims call for the
`drive server to be “configured to present a plurality of compressed data
`streams in response to one or more first control signals.” Ex. 1001, 5:46–48.
`The claims do not call for a computer that provides data storage and
`“additional server functionality.” PO Resp. 26
`Patent Owner’s construction requiring a server to be a computer
`providing additional functionality leads Patent Owner to the erroneous
`conclusion that the preferred embodiment shown in Figure 2 is outside the
`claims because there is no computer in disk library 104, while the Figure 3
`“alternate” embodiment of the ’375 patent is the “best example” of an
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`embodiment claimed by Patent Owner. See Ex. 1001, 2:20, 4:17–18;
`Hearing Tr. 46:1–2. This issue was explored with Patent Owner’s counsel
`during the oral argument. The Board asked counsel whether the ’375 patent
`claims read on Figure 2 of the patent, which depicts disk library 104, and
`counsel responded that they do not:
`[THE BOARD]: . . . So your content -- is your contention
`that your claims read on figure 2 or not?
`[COUNSEL]: They read on an aspect of figure 2. If the
`source devices --
`[THE BOARD]: No, wait a minute. They either read on
`it or they don't. I don't -- what aspect of it do they read on?
`[COUNSEL]: Well, so Your Honor, like say for
`example if you see the disk library 104 and it can be a number
`of different source devices. And if you look at figure 3 as
`an example, that provides an alternative embodiment, which is
`almost the same, and it provides a number of different source
`devices, right. So if you see source 1, source 104a, 104b,
`104n, those are various source devices, right? If one of
`those source devices is a drive server under its plain and ordinary
`meaning then that is part of what -- that's what was
`claimed in claim 1 of the 375 patent.
`
`[THE BOARD]: But not what's shown in figure 2?
`
`[COUNSEL]: In figure 2 -- the description of
`figure 2 would (inaudible - audio cuts out) comprises and it
`lists a number of things it comprises. If what you're saying
`is it's just figure 2 as drawn then the answer is, no, it's not.
`Hearing Tr. 39:18–40:15 (emphasis added). This is consistent with the
`testimony of Patent Owner’s expert, Dr. AlRegib. AlRegib Decl. ¶ 53 (“[I]t
`is my opinion that, while some of the embodiments disclosed in the '375
`Patent may not include a drive server, such as those described in Fig. 2, the
`Challenged Claims are directed to embodiments that require a drive
`server.”).
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`In contrast, Patent Owner’s counsel asserts that the “alternate” Figure
`3 embodiment of the patent is the “best example” of an embodiment within
`the claims:
`
`[THE BOARD]: . . . Just tell me which of the figures best
`shows what you think is the claimed embodiment in your
`patent. Which of the figures would you point to?
`[COUNSEL]: I think figure 3 is the best example, Your
`Honor.
`Hearing Tr. 45:23–46:2. Patent Owner recognizes, however, that Figures 2
`and 3 use the exact same language in describing the data source alleged by
`Petitioner to be a data server. Hearing Tr. 54:4–5 (“Figure 3 shows the same
`words, right, the same words that we're talking about in 104 [in Figure 2],
`DVD ROMs and DVD ROM drives and disks.”). Patent Owner
`acknowledges that both embodiments refer to the source of signals to the
`server 102 as “DVD ROM DRIVES & DISCS.” Compare block 104 in Fig.
`2 to block 104a in Fig. 3. Therefore, Patent Owner’s contention that the
`Figure 2 embodiment is not claimed, while the “alternate” Figure 3
`embodiment is claimed, runs counter to the Federal Circuit’s observation
`that “there is a strong presumption against a claim construction that excludes
`a disclosed embodiment.” Nobel Biocare Servs. AG v Instradent USA, Inc.,
`903 F.3d 1365, 1381 (Fed. Cir. 2018). Patent Owner has identified nothing
`in the intrinsic record that convinces us this presumption has been overcome
`with respect to the Figure 2 embodiment.
`Patent Owner’s explanation for the seeming inconsistency between its
`position on Figures 2 and 3 relies on a sentence in the ’375 patent’s
`specification that we discussed supra as supporting Petitioner’s construction.
`The ’375 patent, at column 3, lines 23–26, refers to a “DVD drive server.”
`Hearing Tr. 51:25–52:4. Patent Owner contends this relates to Figure 3, and
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`demonstrates that “the ’375 Patent describes several embodiments of the
`invention where a “drive server’ is expressly a server.” PO Resp. 21.
`However, we disagree that the discussion of a “DVD drive server” in the
`specification refers to Figure 3. Hearing Tr. 51:15–22. The discussion of
`the Figure 3 “alternate embodiment” does not begin until column 4, line 17.
`We find instead that the “DVD drive server” in column 3 refers to disk
`library 104 in the Figure 2 embodiment, and supports Petitioner’s contention
`that a disk library with no computer is a “drive server.”
`Patent Owner also points to column 4, lines 19–21 of the ’375 patent
`specification. There, referring to the “alternate” embodiment of Figure 3,
`the patent states: “A number of source devices 104a–104n are shown
`presented to the server 102. One of the source devices (e.g., 104a) may be a
`DVD ROM server as shown in FIG. 1.” Ex. 1001, 4:18–21 (emphasis
`added). Patent Owner asserts the reference to Figure 1 is a “typo,” and
`should be Figure 3, because “only figure 3 has a source 104a.” Hearing Tr.
`52:11–13. We disagree with this assumption on the part of Patent Owner.
`While we agree that the reference to “FIG. 1” in the quoted text is an
`error, we find that the reference to “DVD ROM Server” in the quoted
`sentence is more likely a description of the disk library in Figure 2. Under
`conventional rules of grammar, the descriptive phrase “as shown in Fig. 1”
`modifies the noun in closest proximity, which is “DVD ROM Server.” See,
`e.g., Brian A. Garner, Garner’s Modern American Usage 540 (“When a
`word . . . points back to an antecedent or some other referent, the true
`referent should generally be the closest appropriate word.”). Thus, we find
`that the correct reading of this sentence is “One of the source devices [as
`shown in FIG. 3] (e.g., 104a) may be a DVD ROM server as shown in FIG.
`
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`[2].” This reading is confirmed by the mention of a “DVD drive server” in
`the description of Figure 2. See discussion supra (citing Ex. 1001, 3:26).
`We do not agree with Patent Owner’s reliance on Dr. Storer’s cross-
`examination to dispute the scope of the claims. PO Resp. 9. His answers to
`Patent Owner’s hypothetical questions on the scope of the claims, while
`cautious, do not alter the intrinsic record that supports our construction. “It
`is well-settled that, in interpreting an asserted claim, the court should look
`first to the intrinsic evidence of record, i.e., the patent itself, including the
`claims, the specification and, if in evidence, the prosecution history. Such
`intrinsic evidence is the most significant source of the legally operative
`meaning of disputed claim language.” Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576, 1582 (Fed. Cir. 1996) (citation omitted). We further discuss
`Patent Owner’s criticisms of Dr. Storer’s testimony, infra.
`For a similar reason, we find no merit in Patent Owner’s argument
`based of the presence of the word “comprises” in the ’375 patent’s
`description of Figure 2, as it is contrary to our findings based on the intrinsic
`record. See discussion of Figure 2, supra; see also Ex. 1001, 2:30–34; PO
`Resp. 20–21; Hearing Tr. 37:12–18, 40:11–15, 50:22–51:7. Patent Owner
`argues the specification of the ’375 patent supports its “plain and ordinary
`meaning” because the ’375 patent discloses that the drive server can be a
`“disk library 104” that comprises “one or more DVD drives and associated
`disks that present one or more signals to the server 102.” PO Resp. 20.
`Thus, according to Patent Owner, disk library 104 is not limited “to only
`drives and associated disks.” Id. We disagree. The Federal Circuit “has
`instructed that any such construction [of ‘comprising’] be consistent with the
`specification.” In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir.
`2010) (emphasis, citations, and internal quotation marks omitted). As
`
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`Patent 6,341,375 B1
`Petitioner points out, “there’s nothing in the ’375 patent that says [a] server
`has to be a computer.” Hearing Tr. 74:9–10. Thus, we reject the argument
`that the use of the term “comprising” describing the disk library signifies
`that the claimed drive server requires a computer, where none is disclosed in
`the specification.
`In sum, we do not agree with the argument that our construction of
`“drive server” “renders . . . meaningless” the “server” portion of the term
`“drive server” for failure to require a computer. See PO Resp. 9.
`We have also considered Patent Owner’s additional arguments and
`find them lacking. PO Resp. 18–30. Thus, we do not agree that Petitioner’s
`(or our) construction “improperly” expands the scope of the claims beyond
`the teachings of the ’375 patent. PO Resp. 18. We have discussed the ’375
`specification and how it supports our construction in the previous sections.
`Under this same heading, Patent Owner repeats many arguments already
`addressed, including the hypothetical questions on claim scope directed to
`Dr. Storer and the Figure 2/Figure 3 dichotomy discussed supra. See PO
`Resp. 18–26.
`Patent Owner’s argument that drive server should be construed in
`accordance with its “plain and ordinary meaning” (PO Resp. 26–30) repeats
`the main argument it presented pre-institution. See Prelim. Resp. 18–19.
`This section largely pits Dr. Storer’s testimony against that of Patent
`Owner’s expert, Dr. AlRegib. See. e.g., PO Resp. 27–29. We do not find
`this discussion helpful, as it is not grounded in the ’375 patent specification
`or claims, which we find to be more instructive on the meaning of the term.
`See discussion supra.
`Finally, we address Patent Owner’s misguided attack on Dr. Storer’s
`testimony. While we agree Dr. Storer was understandably cautious in
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`IPR2020-01423
`Patent 6,341,375 B1
`answering open-ended hypothetical questions directed to matters he had not
`considered (e.g., “[D]o you have an opinion about whether or not your
`definition of ‘drive server’ has any outer bounds to what would constitute
`and what would not constitute storage services, a device that provides
`storage services to a video-on-demand system?”), he nevertheless answered
`the questions directed to the opinions expressed in his expert declaration.
`See, e.g., Storer Dep. 18:15–19:10 (answering questions about Video
`Library 10 in Baker), 27:7–28:–8 (discussing drive server in connection with
`Baker), 62:10–64:9 (same). As Petitioner points out, Dr. Storer testified that
`several specific devices would qualify as a drive server and some would not.
`For example, he testified that a “mass storage device” would certainly
`qualify as a “drive server,” but a single DVD drive would also be sufficient
`given the disclosures of the ’375 patent. See Storer Dep. 144:10–145:8. Dr.
`Storer testified also that buffers and floppy disk drives are most likely
`outside the bounds of a “drive server.” Id. at 157:8–159:22; 161:13–163:17.
`Dr. Storer also explained that whether any such component ultimately
`qualify as a “drive server” would require knowing details of the hypothetical
`VOD system. Id.
`We do not regard Dr. Storer’s reluctance to provide answers to open
`ended hypothetical questions on what would or would not qualify as a drive
`server any indication that Petitioner’s construction “is unworkable.” PO
`Sur-reply 10–18.
`Finally, we do not find support in the specification for Patent Owner’s
`argument equating the “plain and ordinary meaning” of drive server with “a
`bulk drive on a capable server.” PO Resp. 29 (citing Ex. 1001, 4:14–16); PO
`Sur-reply 4–5. This description from the ’375 patent specification does not
`mean a drive server is a type of computer. See Pet. Reply 15. We agree
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`IPR2020-01423
`Patent 6,341,375 B1
`with Petitioner and find that the specification is explaining that drive servers
`can be implemented as “bulk drives.” Pet. Reply 15–16; Storer Reply Decl.
`¶ 10.
`
`c) Conclusion
`For the foregoing reasons, we construe “drive server” as “a device that
`provides storage services to a VOD system.”
`2. Other Terms
`We only construe terms that are necessary to resolve disputed
`disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
`construed that are in controversy, and only to the extent necessary to resolve
`the controversy.”). To the extent we need to construe any other terms, we
`will do so in the context of the analysis of the prior art that follows.
`C. Description of Principal Prior Art References
`Petitioner relies on Baker as its principal prior art reference. See
`supra.
`
`1. Overview of Baker (Ex. 1004)
`Baker describes the interactive delivery of digital video data on
`demand from a video library, which is referenced by a digital video data
`server for real-time distribution to multiple display systems controlled by
`viewers. Ex. 1004, 1:10–14. Figure 1 of Baker is reproduced below:
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`IPR2020-01423
`Patent 6,341,375 B1
`
`
`
`Figure 1 depicts a diagram illustrating the Video Server system architecture
`of Baker. Id. at 6:38–39. The system includes Video Library 10, which
`constitutes the primary mass storage capability for digital video data in t
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