Trials@uspto.gov
`571-272-7822
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` Paper 15
`Date: March 15, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`HULU, LLC,
`Petitioner,
`v.
`DIVX, LLC,
`Patent Owner.
`____________
`
`IPR2021-01418
`Patent 10,257,443 B2
`____________
`
`
`Before BART A. GERSTENBLITH, MONICA S. ULLAGADDI, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
` Paper 15
`Date: March 15, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`HULU, LLC,
`Petitioner,
`v.
`DIVX, LLC,
`Patent Owner.
`____________
`
`IPR2021-01418
`Patent 10,257,443 B2
`____________
`
`
`Before BART A. GERSTENBLITH, MONICA S. ULLAGADDI, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`IPR2021-01418
`Patent 10,257,443 B2
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`I.
`
`INTRODUCTION
`
`Background
`
`Hulu, LLC (“Petitioner”) filed a Petition (Paper 4, “Pet.”) requesting
`institution of inter partes review of claims 1, 2, 4, 7, 8, 10, and 13–16 (“the
`Challenged Claims”) of U.S. Patent No. 10,257,443 B2 (Ex. 1001, “the
`’443 patent”).1 DivX, LLC (“Patent Owner”) filed a Preliminary Response
`(Paper 8, “Prelim. Resp.”).
`At Petitioner’s request, a conference call was held on January 7, 2022,
`a transcript of which is included in the record. See Ex. 1032 (Transcript of
`Proceedings, Jan. 7, 2022). During the conference call, the parties were
`authorized to file additional briefing pertaining to two issues—(1) the
`application of 35 U.S.C. § 325(d) and (2) prosecution history disclaimer.
`See id. at 27:9–31:22. Thereafter, Petitioner filed a Preliminary Reply
`(Paper 10, “Prelim. Reply”) and Patent Owner filed a Preliminary Sur-reply
`(Paper 12, “Prelim. Sur-reply”).
`An inter partes review may be instituted only if “the information
`presented in the petition . . . and any [preliminary] response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a)
`(2018). For the reasons below, Petitioner has not established a reasonable
`
`
`1 This Petition is Petitioner’s first petition challenging claims 1, 2, 4, 7, 8,
`10, and 13–16 of the ’443 patent. As noted below, Petitioner also filed a
`second petition challenging the same claims of the ’443 patent in IPR2021-
`01419. Petitioner filed a Ranking and Explanation of Material Differences
`Between Petitions (Paper 3), where Petitioner discusses the two petitions.
`Because of the determination we reach on the merits, we do not address the
`parties’ arguments as to whether two petitions are necessary.
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`2
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`likelihood that it would prevail in showing the unpatentability of at least one
`of the Challenged Claims. Accordingly, we do not institute an inter partes
`review of the Challenged Claims.
`
`Related Proceedings
`
`The parties indicate that the ’443 patent is asserted in DivX, LLC v.
`Hulu, LLC, 2-21-cv-01615 (C.D. Cal.). Pet. 2; Paper 6 (Patent Owner’s
`Mandatory Notices), 1. Petitioner indicates that the ’443 patent is related to
`U.S. Patent No. 8,472,792 (“the ’792 patent”), which is asserted in DivX,
`LLC v. Hulu, LLC, 2-19-cv-01606 (C.D. Cal.), and DivX, LLC v. Netflix,
`Inc., 2-19-cv-01602 (C.D. Cal.). Pet. 2. Additionally, Petitioner explains
`that Netflix, Inc. and Hulu filed a petition challenging claims of the
`’792 patent in IPR2020-00646. Id. Further, Patent Owner notes that
`Petitioner also challenges claims of the ’443 patent in IPR2021-01419.
`Paper 6, 1.
`
`Real Parties in Interest
`
`Petitioner identifies Hulu, LLC and The Walt Disney Company as real
`parties in interest. Pet. 2. Patent Owner identifies DivX, LLC and DivX CF
`Investors LLC as real parties in interest. Paper 6, 1.
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`4, 10, 16
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`103(a)
`
`The Asserted Grounds of Unpatentability and Declaration
`Evidence
`Petitioner challenges the patentability of claims 1, 2, 4, 7, 8, 10, and
`13–16 of the ’443 patent on the following grounds:
`Claim(s) Challenged
`35 U.S.C. §2
`Reference(s)/Basis
`Toma,3 Candelore-I,4
`1, 2, 4, 7, 8, 10, 14, 16
`103(a)
`Candelore-II5
`Toma, Candelore-I,
`Candelore-II, Mowry6
`Toma, Matsui,7 Candelore-I,
`Candelore-II
`Toma, Matsui, Candelore-I,
`Candelore-II, Mowry
`Pet. 4–5. Petitioner supports its challenge with a Declaration of Dr. James
`A. Storer (Ex. 1002) and a Declaration of Dr. Sylvia Hall-Ellis (Ex. 1027).
`
`1, 2, 4, 7, 8, 10, 13–16
`
`4, 10, 16
`
`103(a)
`
`103(a)
`
`
`2 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 103 that became effective on March 16, 2013. Because the
`’443 patent has an effective filing date before March 16, 2013, we apply the
`pre-AIA version of the statutory basis for unpatentability.
`3 WO 2004/004334 A1, published Jan. 8, 2004 (Ex. 1004, “Toma”).
`Exhibit 1004 includes a translator certification, an English-language
`translation of the reference, and the original Japanese-language version of
`the reference. Citations herein are to the English-language translation.
`4 U.S. Patent Application Publication No. 2003/0133570 A1, published
`July 17, 2003 (Ex. 1005, “Candelore-I”).
`5 U.S. Patent Application Publication No. 2004/0049694 A1, published
`Mar. 11, 2004 (Ex. 1006, “Candelore-II”).
`6 U.S. Patent Application Publication No. 2004/0253942 A1, published
`Dec. 16, 2004 (Ex. 1008, “Mowry”).
`7 WO 03/101114 A1, published Dec. 4, 2003 (Ex. 1007, “Matsui”).
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`Patent Owner supports its arguments with a Declaration of Professor
`Chandrajit Bajaj, Ph.D. (Ex. 2002).
`
`The ’443 Patent
`
`The ’443 patent is directed to a “multimedia distribution system for
`multimedia files with interleaved media chunks of varying types.” Ex. 1001,
`code (54) (capitalization altered). The ’443 patent explains that the
`described multimedia files include “a series of encoded video frames and
`encoded meta data about the multimedia file.” Id. at 7:64–65. The
`multimedia files also “can include digital rights management” that “can be
`used in video on demand applications.” Id. at 27:19–22. “Multimedia files
`that are protected by digital rights management can only be played back
`correctly on a player that has been granted the specific right of playback.”
`Id. at 27:22–24.
`The ’443 patent explains that “[m]ultimedia files in accordance with
`embodiments of the present invention can be structured to be compliant with
`the Resource Interchange File Format (‘RIFF file format’) . . . . RIFF is a
`file format for storing multimedia data and associated information.”
`Ex. 1001, 12:57–63. “A RIFF file typically has an 8-byte RIFF header,
`which identifies the file and provides the residual length of the file after the
`header (i.e. file_length-8). The entire remainder of the RIFF file comprises
`‘chunks’ and ‘lists.’” Id. at 12:63–67.
`The ’443 patent states that “[a] ‘movi’ list chunk of a multimedia file”
`can include “information enabling digital rights management.” Ex. 1001,
`27:32–36. A “‘movi’ list chunk” can include “a ‘DRM’ chunk” prior to
`each video chunk, where “[t]he ‘DRM chunks’ . . . are ‘data’ chunks that
`contain digital rights management information . . . .” Id. at 27:36–41. “A
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`device attempting to play the digital rights management protected video
`track uses the information in the ‘DRM’ chunk to decode the video
`information in the ‘video’ chunk.” Id. at 27:46–49. The ’443 patent
`explains that, in an embodiment, “the video chunks are only partially
`encrypted” and “the ‘DRM’ chunks contain a reference to the portion of a
`‘video’ chunk that is encrypted and a reference to the key that can be used to
`decrypt the encrypted portion.” Id. at 27:53–58.
`Figure 2.9 is reproduced below:
`
`
`Figure 2.9 of the ’443 patent “is a conceptual diagram of the ‘DRM’ chunk.”
`Ex. 1001, 11:27–28. The ’443 patent explains the following regarding DRM
`chunk 270:
`The “DRM” chunk 270 can include a “frame” value 280, a
`“status” value 282, an “offset” value 284, a “number” value 286
`and a “key” value 288. The “frame” value can be used to
`reference the encrypted frame of video. The “status” value can
`be used to indicate whether the frame is encrypted, the “offset”
`value 284 points to the start of the encrypted block within the
`frame and the “number” value 286 indicates the number of
`encrypted bytes in the block. The “key” value 288 references
`the decryption key that can be used to decrypt the block.
`Id. at 27:64–28:6.
`
`6
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`Illustrative Claim
`
`Claims 1 and 7 are the independent claims challenged in this
`proceeding. Claim 1 is illustrative of the claimed subject matter and is
`reproduced below with Petitioner’s bracketing added for reference:
`1.
`[1a] A system for decoding multimedia files comprising:
`[1b] at least one processor;
`[1c] a non-volatile storage containing a decoder
`application;
`wherein the decoder application causes the at least one
`processor to perform the steps of:
`[1d] receiving at least a portion of a multimedia
`file, wherein:
`[1e] the received at least a portion of the
`multimedia file comprises at least one video track
`encoded as a plurality of video chunks, [1f] a set of
`digital rights management (DRM) chunks, and
`[1g] an index chunk;
`[1h] at least one video chunk of the plurality
`of video chunks contains at least one partially
`encrypted frame of video so that only a portion of
`the encoded frame is encrypted;
`[1i] each DRM chunk of the set of DRM
`chunks comprises DRM information to decrypt at
`least one partially encrypted frame of video in at
`least one video chunk of the plurality of video
`chunks;
`[1j] the DRM information comprises an
`offset value that points to the start of an encrypted
`block within an encoded frame and a number value
`that indicates the number of encrypted bytes in the
`encrypted block;
`[1k] the index chunk includes information
`concerning the location of data chunks within the
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`multimedia file including the locations of video
`chunks from the at least one video track; and
`[1l] for each chunk of the plurality of video
`chunks:
`
`determining whether the video chunk
`contains at least one partially encrypted frame of
`video;
`[1m] when a video chunk contains a
`partially encrypted frame of video, identifying a
`corresponding one of the set of DRM chunks that
`contains the DRM information for the partially
`encrypted frame of video, [1n] demultiplexing the
`partially encrypted frame from the video chunk,
`and [1o] decrypting the partially encrypted frame
`of video using the offset and number values from
`the DRM information for the partially encrypted
`frame of video; and
`[1p] decoding at least one encoded frame of
`video for display.
`Ex. 1001, 55:51–56:25.
`
`Level of Ordinary Skill in the Art
`
`Petitioner, supported by Dr. Storer’s testimony, proposes that a person
`of ordinary skill in the art at the time of the invention would have had (1) “a
`Bachelor’s Degree in computer science or a related field with at least three
`years of experience designing, developing, and implementing systems for
`streaming encoded and encrypted video multimedia files” or (2) “a Master’s
`Degree or Ph.D. in computer science or a related field with a specialization
`in designing, developing, and implementing systems for streaming encoded
`and encrypted video multimedia files.” Pet. 11 (citing Ex. 1002 ¶ 81).
`Patent Owner does not express a position on the level of ordinary skill
`in the art in the Preliminary Response. See generally Prelim. Resp.
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`Dr. Bajaj, however, testifies that he disagrees with Dr. Storer’s definition of
`the level of ordinary skill because the definition “exceeds the qualifications
`of a person of ordinary skill in the art.” Ex. 2002 ¶ 25. Nonetheless,
`Dr. Bajaj does not propose a specific level of ordinary skill in the art and
`states that, for purposes of his declaration, he applies Dr. Storer’s definition
`of the level of ordinary skill in the art. Id.
`At this stage of the proceeding, we find Petitioner’s proposal
`consistent with the level of ordinary skill in the art reflected by the
`’443 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
`1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt
`and apply Petitioner’s position as to the level of ordinary skill in the art in
`our consideration of the issues presently before us.
`
`II. CLAIM CONSTRUCTION
`In this inter partes review, claims are 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). See 37 C.F.R. § 42.100(b) (2021). The
`claim construction standard includes construing claims in accordance with
`the ordinary and customary meaning of such claims as understood by one of
`ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing
`claims in accordance with their ordinary and customary meaning, we take
`into account the specification and prosecution history. Phillips, 415 F.3d at
`1315–17.
`If the specification “reveal[s] a special definition given to a claim
`term by the patentee that differs from the meaning it would otherwise
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`possess[,] . . . the inventor’s lexicography governs.” Phillips, 415 F.3d at
`1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
`(Fed. Cir. 2002)). Another exception to the general rule that claims are
`given their ordinary and customary meaning is “when the patentee disavows
`the full scope of a claim term either in the specification or during
`prosecution.” Uship Intellectual Props., LLC v. United States, 714 F.3d
`1311, 1313 (Fed. Cir. 2013) (quoting Thorner v. Sony Computer Entm’t Am.,
`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)).
`Additionally, only terms that are in controversy need to be construed,
`and these need be construed only to the extent necessary to resolve the
`controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of
`an inter partes review).
`Petitioner does not propose any claim terms for construction, noting
`that “because the challenged claims are invalid under any reasonable
`construction consistent with their plain meaning, claim construction is
`unnecessary.” Pet. 12. In the context of construing the “offset value”
`recitation of limitations [1j] and [7k], Patent Owner contends that the “offset
`value” cannot be relative to a file and instead must be relative to a frame.
`See, e.g., Prelim. Resp. 32 (“the claimed ‘offset value’ must disclose a value
`that points to a location relative to the encoded frame, and not ‘relative to a
`file’”). Accordingly, we consider the meaning of “an offset value that points
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`to the start of an encrypted block within an encoded frame” as recited in
`limitations [1j] and [7k].
`
`
`
`“an offset value that points to the start of an encrypted block
`within an encoded frame”
`Claim 1, reproduced above, recites a system for decoding multimedia
`files wherein a portion of a multimedia file comprises DRM information that
`“comprises an offset value that points to the start of an encrypted block
`within an encoded frame.” Ex. 1001, 55:51–56:25 (limitation [1j]).
`Independent claim 7 recites a system for encoding multimedia files that
`encodes DRM information as a set of DRM chunks wherein the DRM
`information “comprises an offset value that points to the start of an
`encrypted block within an encoded frame.” Id. at 56:41–57:10
`(limitation [7k]); see Pet. 58 (identifying limitation [7k]).
`During prosecution of the ’443 patent, the Examiner rejected the then-
`pending claims based, in part, on the patent that issued from the published
`patent application that we refer to as Candelore-II. See, e.g., Ex. 1003, 259
`(Final Rejection, dated May 16, 2019, referring to “US Patent #7,120,250 to
`Candelore”).8 In response to the Examiner’s rejection, the applicants
`amended the claims to include the “offset value” limitation. See, e.g., id. at
`241 (amending then-pending claim 1), 244 (amending then-pending
`claim 9). Additionally, the applicants argued that Candelore-II failed to
`teach the subject matter of the amended claims. Id. at 249–52.
`First, the applicants asserted that “[a]s an initial observation, the
`Candelore patent describes a variety of approaches for identifying segments
`
`
`8 Exhibit 1003 is the prosecution history of the ’443 patent.
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`of video or portions of a file to encrypt.” Ex. 1003, 250. The applicants
`then stated that “[t]he Candelore patent does not, however, appear to
`disclose partial encryption of encoded frames of video by encrypting at least
`one block of data within the partially encrypted frame so that only a portion
`of the encoded frame is encrypted.” Id. In so doing, the applicants
`acknowledged that Candelore-II discloses encrypting “packets based upon
`the content of the packet,” “portions of unencoded frames of video,”
`“encoded frames,” and “structures within encoded frames that are identified
`by partially decoding the frames.” Id. (citing Candelore, 3:35–609).
`Second, the applicants argued the following:
`The failure of the Candelore patent to teach partial encryption
`of encoded frames of video by encrypting at least one block of
`data within the partially encrypted frame so that only a portion
`of the frame [is encrypted and] is highlighted by the Candelore
`patent’s failure to disclose DRM information including “an
`offset value that points to the start of an encrypted block within
`an encoded frame” as recited in claim 1 (emphasis added).
`Instead, the Candelore patent discloses pointers that point to the
`location of encrypted portions of the video data relative to the
`file. See Candelore patent col. 5, lines 32 – 35. As noted
`above, the system of claim 1 “demultiplex[es] the partially
`encrypted frame from the video chunk” prior to decryption
`(claim 1). Therefore, the pointers of Candelore that reference a
`location of an encrypted portion of a file cannot be directly and
`efficiently used to identify an encrypted block within an
`encoded frame after the partially encrypted frame of video has
`been extracted from the file.
`Ex. 1003, 250–51.
`
`
`9 This citation corresponds to paragraph 23 of Candelore-II. Much of the
`quoted material from the applicants’ argument, however, corresponds to
`paragraph 25 of Candelore-II.
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`Following the applicants’ arguments and amendments, the Examiner
`issued a Notice of Allowance. Ex. 1003, 54–65. The Examiner did not
`provide any explanation for the allowance of the claims. See generally id.
`
`The Parties’ Arguments
`
`Patent Owner contends that the plain meaning of the claims, the
`Specification, and the prosecution history support Patent Owner’s argument
`that “the claimed ‘offset’ must disclose an offset value ‘within an encoded
`frame,’ not ‘relative to a file.’” Prelim. Resp. 23. In other words, Patent
`Owner asserts “that the claimed ‘offset’ must specify a value relative to the
`‘encoded frame,’ as opposed to, for example, relative to the file.” Id. at 26
`(citing Ex. 2002 ¶ 41).
`Patent Owner relies on the testimony of Dr. Bajaj, who provides the
`following illustration indicating how Patent Owner interprets the recited
`“offset value”:
`
`
`Prelim. Resp. 24 (citing Ex. 2002 ¶¶ 38–40). The illustration above provides
`a visual representation of what Patent Owner and Dr. Bajaj refer to as an
`“[o]ffset value” (shown with red double-facing arrows) “within an encoded
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`frame” (blue). Patent Owner and Dr. Bajaj compare their illustration to an
`annotated version of Candelore-II’s Figure 3, reproduced below:
`
`
`
`Id. at 25 (citing Ex. 2002 ¶¶ 38–40). The annotated version of Figure 3,
`above, includes a red double-headed arrow indicating an “offset value
`relative to the file” (capitalization altered), red to indicate encrypted portions
`of data 304, 308, and 312, and blue to indicate unencrypted portions of data
`320, 324, 328, and 332. Patent Owner contends that “there is a clear
`distinction between an ‘offset value’ that is ‘within an encoded frame’
`versus an ‘offset value’ determined ‘relative to the file.’” Id. (quoting
`Ex. 2002 ¶ 40).
`Starting with the claim language, Patent Owner argues that the claim
`language expressly requires “an ‘offset value’ that is ‘within an encoded
`frame.’” Prelim. Resp. 26 (citing Ex. 1001, 56:3–6 (limitation [1j]); 56:63–
`65 (limitation [7k])). Relying on Dr. Bajaj’s testimony, Patent Owner
`asserts that one of ordinary skill in the art “would understand that the
`claimed ‘offset’ must specify a value relative to the ‘encoded frame,’ as
`opposed to, for example, relative to the file.” Id. (citing Ex. 2002 ¶ 41).
`Turning to the Specification of the ’443 patent, Patent Owner asserts
`that the Specification “explains that ‘the “offset” value 284 points to the start
`of the encrypted block within the frame.’” Prelim. Resp. 26 (citing
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`Ex. 1001, 28:2–4). Additionally, relying on Dr. Bajaj’s testimony, Patent
`Owner argues that the Specification indicates “flexibility in how the DRM
`chunk is placed within the file, which may be ‘prior to the video chunk,’ or it
`may be at different locations ‘dependent upon the amount of buffering
`provided within [the] device decoding the multimedia file.’” Id. (quoting
`Ex. 2002 ¶ 42 (quoting Ex. 1001, 51:29–38)). Patent Owner asserts that “the
`’443’s flexibility benefit cannot be realized in Candelore-II’s system (or the
`Petition’s combined system) that provides offset values ‘relative to the file’”
`because “the values of the file-relative pointers only correctly point to the
`encrypted portions of data if the relative locations of the file-relative pointers
`and the data blocks to which they point are fixed.” Id. at 27 (quoting
`Ex. 2002 ¶ 43); see id. at 28–29 (discussing another alleged benefit of the
`’443 patent specification—“modification of a data chunk without impacting
`the DRM information for the unmodified portions of the data”—that Patent
`Owner contends would not be available in the combination proposed by
`Petitioner).
`Additionally, Patent Owner asserts that “when the ’443’s specification
`intends to utilize a ‘file offset’ instead of an ‘offset . . . within an encoded
`frame’ as in the claims, it expressly says so.” Prelim. Resp. 29. Patent
`Owner identifies “the ‘hdrl’ chunk,” which Patent Owner contends
`“provides the location of various chunks ‘within the file,’ and therefore the
`’443’s specification explains that it uses ‘file offsets in order to establish
`references.’” Id. (citing Ex. 1001, 50:47–52; Ex. 2002 ¶ 47). Patent Owner
`asserts that this language “relates to a different aspect of the invention that is
`the subject of a separate limitation, where claim 1 recites an index chunk
`that ‘includes information concerning the location of data chunks within the
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`multimedia file’ and, thus, does not relate to the ‘within an encoded frame’
`limitation.” Id. (citing Ex. 1001, claim 1).
`Patent Owner also relies on the prosecution history of the ’443 patent.
`See, e.g., Prelim. Resp. 30. Patent Owner asserts that the applicants’
`argument distinguishing the claim language from Candelore-II’s pointers
`constitutes “an unambiguous prosecution disclaimer.” Prelim. Resp. 30.
`Patent Owner contends that the applicants’ argument makes clear that “the
`claimed ‘offset value’ is a value ‘within the encoded frame’ and thus points
`to a location relative to the frame.” Id. at 9 (emphasis added); see id. at 32
`(“the claimed ‘offset value’ must disclose a value that points to a location
`relative to the encoded frame, and not ‘relative to a file’”).
`In the Preliminary Reply, Petitioner asserts that Patent Owner’s
`“argument that the claimed ‘offset value’ must itself be ‘within the encoded
`frame’ is inconsistent with the claim language itself.” Prelim. Reply 8.
`Petitioner asserts that Patent Owner’s argument excludes nine words from
`the phrase “offset value that points to the start of an encrypted block within
`an encoded frame” because Patent Owner reads that phrase as “offset value
`within an encoded frame.” Id. Specifically, Petitioner asserts that Patent
`Owner’s argument omits the language specifying “where the offset value
`‘points to.’” Id.
`Petitioner contends that “[t]he claim language is silent as to where the
`offset value points from.” Prelim. Reply 8. Petitioner asserts that
`[a]n offset value relative to the beginning of the file points from
`the beginning of the file, an offset value relative to a video
`chunk points from the video chunk, and an offset value relative
`to a frame points from a frame. All three offset values can be
`stored in the same location in the file, see POPR 24 (separately
`identifying a “DRM Chunk Containing ‘Offset Value’” and an
`
`16
`
`
`
`IPR2021-01418
`Patent 10,257,443 B2
`
`
`“Offset Value” “within an encoded frame”), but they would use
`different values, based on where the offset value points from, to
`point to the same encrypted block within an encoded frame.
`Nothing in the claim limitation limits where the offset value can
`point from. Even if the limitation required “an offset value
`within an encoded frame,” which it does not, the plain meaning
`of “within an encoded frame” would describe where the offset
`value is stored, not where it points from. Therefore, the
`distinction DivX allegedly disclaimed—that the offset value
`cannot be relative to the file—is absent from the plain meaning
`of the claim limitation.
`Id. at 8–9.
`Turning to the prosecution history, Petitioner contends that nothing in
`the applicants’ argument during prosecution “suggests that the Applicant
`intended to surrender claim scope.” Prelim. Reply 9–10. Rather, Petitioner
`asserts that these statements address other claim limitations, particularly “the
`‘demultiplexing’ requirement of claim 1.” Id. at 4–5; see id. at 9–10
`(referencing the same). Petitioner argues that the conclusion of the same
`paragraph identified by Patent Owner identifies demultiplexing among the
`list of limitations not disclosed by the references relied on by the Examiner.
`Id. at 5. Petitioner contends that the applicants “never raised a distinction
`between offset values ‘relative to a file’ and offset values ‘relative to a
`frame’ at any point during prosecution.” Id. at 10. According to Petitioner,
`“[t]o put it simply, the Applicant never said that offset values relative to a
`file are excluded from the scope of the claim, and certainly did not make any
`statements that would rise to the level of a clear and unmistakable
`disavowal.” Id.
`Additionally, Petitioner asserts that the applicants’ statements during
`prosecution support Petitioner’s position that it is the encrypted block that is
`within an encoded frame, not an offset value. Prelim. Reply 10. Thus,
`
`17
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`IPR2021-01418
`Patent 10,257,443 B2
`
`Petitioner argues that the applicants’ statements “contradict the alleged
`disclaimer requiring the offset value, and not the encrypted block to be
`‘within an encoded frame.’” Id.
`In its Preliminary Sur-reply, Patent Owner asserts that “the plain
`meaning of the claims and the specification both indicate that the claimed
`‘offset’ must disclose an offset value ‘within an encoded frame,’ not
`‘relative to a file.’” Prelim. Sur-reply 6. Patent Owner contends that
`Petitioner’s Preliminary Reply does not respond to Patent Owner’s
`arguments regarding the Specification and Dr. Bajaj’s related testimony. Id.
`at 6–7 (citing Prelim. Resp. 26–29); see also id. at 6–8 (discussing
`Dr. Bajaj’s testimony). Further, Patent Owner asserts that the prosecution
`history supports its position because the applicants contrasted the claim
`language with Candelore-II’s pointers, which the applicants characterized as
`“relative to the file.” Id. at 9–10; see Ex. 1003, 251 (“Instead, the Candelore
`patent discloses pointers that point to the location of encrypted portions of
`the video data relative to the file.”). Patent Owner also contends that even if
`the applicants’ statements do not rise to the level of a disclaimer, the
`arguments are relevant to understanding the plain meaning of the claim. Id.
`at 10.
`
`Analysis
`
`As discussed further below, the parties do not dispute that
`Candelore-II’s pointers point to the location of encrypted portions of the
`video data relative to the file.10 Additionally, Petitioner does not propose
`
`
`10 Despite arguing against Patent Owner’s narrower claim construction,
`Petitioner does not contest Patent Owner’s argument that Candelore-II’s
`pointers are relative to the file. See generally Pet.; Pet. Reply.
`
`18
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`IPR2021-01418
`Patent 10,257,443 B2
`
`modifying Candelore-II’s pointers in the combination presented. See, e.g.,
`Pet. 22–27 (addressing motivation to combine and reasonable expectation of
`success), 30–40 (addressing, inter alia, limitation [1j]). Thus, determining
`whether the claim scope excludes an offset value that is relative to the file
`resolves the parties’ dispute regarding the claim term.
`We begin with the claim language. Claim 1 recites, inter alia, that “at
`least one video chunk of the plurality of video chunks contains at least one
`partially encrypted frame of video so that only a portion of the encoded
`frame is encrypted” (limitation [1h]), that each DRM chunk “comprises
`DRM information to decrypt at least one partially encrypted frame of video”
`(limitation [1i]), and, as the focus of our inquiry, that “the DRM information
`comprises an offset value that points to the start of an encrypted block within
`an encoded frame” (limitation [1j]). Reading these limitations together, one
`of ordinary skill in the art would have understood at least the following from
`this claim language: (1) the identified encrypted frame of video is partially
`encrypted, (2) the encrypted portion is referred to as an encrypted block,
`(3) the encrypted block is within the encoded frame, and (4) the offset value
`points to the start of the encrypted block within the encoded frame.
`Contrary to Patent Owner’s plain-meaning argument, we do not agree
`that the plain meaning of the claim language is that the offset value must be
`limited to being within the encoded frame. Patent Owner’s reading of the
`plain language would amount to reading “an offset value that points to the
`start of an encrypted block within an encoded frame” as “an offset value
`within an encoded frame that points to the start of an encrypted block within
`an encoded frame.” In other words, Patent Owner’s plain meaning argument
`reads additional language—“within an encoded frame”—into the claim after
`
`19
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`IPR2021-01418
`Patent 10,257,443 B2
`
`the phrase “offset value” such that “within an encoded frame” also modifies
`(i.e., limits) “offset value.” Contrary to Patent Owner’s argument, however,
`the claim language uses the phrase “within an encoded frame” to describe
`the location of the “encrypted block,” not the location of the “offset value.”
`In this regard, we agree with Petitioner that the claim language does not
`limit the location of the offset value such that it must be within an encoded
`frame.
`We also agree with Petitioner that the claim language recites where
`the offset value points to; the claim language does not recite where the offset
`value points from. Specifically, an offset value, in the context of the
`’443 patent, indicates some type of displacement from a starting point. As
`Petitioner explains “[a]n offset value relative to the beginning of the file
`points from the beginning of the file, an offset value relative to a video
`chunk points from the video chunk, and an offset va
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