IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
`
`
`Filed on behalf of Hulu, LLC
`
`By: David Cavanaugh, Reg. No. 36,476 (Lead Counsel)
`Mary V. Sooter, Reg. No. 71,022 (First Backup Counsel)
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Avenue, NW
`
`Washington, DC 20006
`Email:
`david.cavanaugh@wilmerhale.com
`
`
`mindy.sooter@wilmerhale.com
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`Hulu, LLC,
`Petitioner
`
`v.
`
`DivX, LLC,
`Patent Owner
`
`U.S. Patent No. 10,257,443
`
`Case IPR2021-01419
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 10,257,443
`
`
`
`
`
`
`

`

`
`
`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
`
`TABLE OF CONTENTS
`
`Page(s)
`I. 
`INTRODUCTION ........................................................................................... 1 
`II.  MANDATORY NOTICES ............................................................................. 2 
`A. 
`Real Party-in-Interest ............................................................................ 2 
`B. 
`Related Matters ...................................................................................... 2 
`C. 
`Counsel .................................................................................................. 2 
`III.  CERTIFICATION OF GROUNDS FOR STANDING .................................. 3 
`IV.  OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 3 
`A. 
`Prior Art References .............................................................................. 3 
`B. 
`Grounds for Challenge .......................................................................... 4 
`V.  DISCRETIONARY DENIAL IS INAPPROPRIATE .................................... 5 
`VI.  TECHNOLOGY BACKGROUND ................................................................. 7 
`A.  Known File Formats .............................................................................. 7 
`B. 
`Known Partial Encryption Schemes .................................................... 10 
`C. 
`Known Compression Standards .......................................................... 11 
`VII.  OVERVIEW OF THE CHALLENGED ’443 PATENT .............................. 12 
`A. 
`Brief Description ................................................................................. 12 
`B. 
`Prosecution History ............................................................................. 14 
`VIII.  LEVEL OF ORDINARY SKILL IN THE ART ........................................... 16 
`IX.  CLAIM CONSTRUCTION .......................................................................... 16 
`X.  OVERVIEW OF THE PRIMARY PRIOR ART REFERENCES ................ 16 
`A.  Notoya ................................................................................................. 17 
`B.  Matsui .................................................................................................. 21 
`C. 
`Candelore-I .......................................................................................... 24 
`D. 
`Candelore-II ......................................................................................... 27 
`E.  Mowry ................................................................................................. 29 
`XI.  DETAILED GROUNDS FOR CHALLENGE ............................................. 30 
`
`1
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`

`

`
`
`A. 
`
`Claims 1, 2, 4, 7, 8, 10, 13-16 Would Have Been Obvious Over
`Notoya and Matsui in Combination with the Candelore
`references ............................................................................................. 30 
`1. 
`A POSITA would have been motivated to combine
`Notoya and Matsui with the Candelore References with a
`Reasonable Expectation of Success .......................................... 30 
`Claim 1 ...................................................................................... 36 
`2. 
`Claim 2 ...................................................................................... 60 
`3. 
`Claim 4 ...................................................................................... 62 
`4. 
`Claim 7 ...................................................................................... 63 
`5. 
`Claim 8 ...................................................................................... 78 
`6. 
`Claim 10 .................................................................................... 78 
`7. 
`Claim 13 .................................................................................... 79 
`8. 
`Claim 14 .................................................................................... 81 
`9. 
`10.  Claim 15 .................................................................................... 82 
`11.  Claim 16 .................................................................................... 82 
`Claims 4, 10, and 16 Would Have Been Obvious Over Notoya
`and Matsui in Combination With Candelore I, Candelore-II,
`and Mowry .......................................................................................... 83 
`1. 
`A POSITA would have been motivated to combine
`Mowry with Notoya, Matsui, and Candelore References
`with a Reasonable Expectation of Success ............................... 83 
`Claim 4 ...................................................................................... 85 
`2. 
`Claim 10 .................................................................................... 86 
`3. 
`Claim 16 .................................................................................... 87 
`4. 
`VII.  CONCLUSION .............................................................................................. 88 
`
`
`
`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
`
`B. 
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`2
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`

`

`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
`
`Petitioner Hulu, LLC (“Hulu”) respectfully requests Inter Partes Review of
`
`
`
`claims 1-2, 4, 7-8, 10, 13-16 (the “challenged claims”) of U.S. Patent No. 10,257,443
`
`(“’443 patent”) (Ex. 1101) under 35 U.S.C. §§ 311-19 and 37 C.F.R. § 42.1 et seq.
`
`I.
`
`INTRODUCTION
`The challenged claims are generally directed to streaming videos, and in
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`particular to permitting remote viewers to start watching a video on their local device
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`before the entire video file has been downloaded, while at the same time protecting
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`the video file against piracy. This was an old problem, and the patent’s claimed
`
`“solution” was entirely obvious and well-understood by skilled artisans by the time
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`of the ’443 patent.
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`Before the ’443 patent, it was conventional to store a video file on a remote
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`server, segment the file into pieces for streaming to a local playback device, and
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`commence playback on the streaming device before the entire file had been
`
`downloaded. It was equally conventional to use file formats such as MP4 and
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`compression techniques such as MPEG, 1 to implement such streaming media
`
`systems. It was likewise conventional to protect such video files against piracy using
`
`
`1 “MPEG” refers to the Motion Picture Experts Group audiovisual coding
`
`standards.
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`1
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`

`

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`Digital Rights Management (“DRM”) techniques, such as partial encryption of
`
`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
`
`individual video frames.
`
`Because the ’443 patent claims nothing more than obvious combinations of
`
`these well-known techniques, Petitioner respectfully requests that the Board institute
`
`IPR and cancel the challenged claims. Because the ’443 patent is currently asserted
`
`in district court, in view of 35 U.S.C. § 314(a), Petitioner requests an expedited
`
`Notice of Filing Date Accorded.
`
`II. MANDATORY NOTICES
`A. Real Party-in-Interest
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Hulu, LLC and
`
`The Walt Disney Company are real parties-in-interest.
`
`B. Related Matters
`DivX, LLC (“Patent Owner”) has asserted the ’443 patent against Hulu in
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`DivX, LLC v. Hulu, LLC, 2-21-cv-01615 (C.D. Cal.). The ’443 patent is related to
`
`U.S. Patent No. 8,472,792 (the “’792 patent”), which has been asserted against Hulu
`
`in DivX, LLC v. Hulu, LLC, 2-19-cv-01606 (C.D. Cal.) and Netflix in DivX, LLC v.
`
`Netflix, Inc., 2-19-cv-01602 (C.D. Cal.). Netflix and Hulu brought an Inter Partes
`
`Review petition against the ’792 patent in IPR2020-00646.
`
`C. Counsel
`Lead Counsel:
`
`David Cavanaugh (Registration No. 36,476)
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`2
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`

`

`
`
`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
`
`Backup Counsel: Mary V. Sooter (Registration No. 71,022)
`
`
`
`
`
`E-mail:
`
`
`
`
`
`
`
`
`
`
`
`Service Information
`
`david.cavanaugh@wilmerhale.com
`
`mindy.sooter@wilmerhale.com
`
`Post and hand delivery: WilmerHale LLP
`
`1875 Pennsylvania Avenue, NW
`
`Washington, DC 20006
`
`Telephone: 202-663-6000
`
`Fax: 202-663-6363
`
`III. CERTIFICATION OF GROUNDS FOR STANDING
`Petitioner certifies under Rule 42.104(a) that the ’443 patent is available for
`
`IPR and that Petitioner is not barred or estopped from requesting an IPR on the
`
`grounds identified in this Petition.
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`IV. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Under Rules 42.22(a)(1) and 42.104(b)(1)-(2), Petitioner
`
`requests
`
`cancellation of claims 1-2, 4, 7-8, 10, 13-16 of the ’443 patent.
`
`A.
`Prior Art References
`The ’443 patent arises from Patent App. No. 15/144,776 (“the ’776
`
`application”). The ’776 application is a continuation of App. No. 14/281,791, filed
`
`on May 19, 2014, which is a continuation of App. No. 11/016,184, filed on Dec. 17,
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`2004, which is a continuation-in-part of App. No. 10/731,809, filed on Dec. 8, 2003.
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`3
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`

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`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
`
`The following references are pertinent to the grounds of unpatentability
`
`
`
`present below:
`
`1. WO 03/092285 to Notoya, et al. (“Notoya”) (Ex. 1104), was published on
`
`November 6, 2003, and is prior art under 35 U.S.C. § 102(a).
`
`2. U.S. Patent App. Pub. No. 2003/0133570 to Candelore et al. (“Candelore-I”)
`
`(Ex. 1105), filed October 18, 2002 and published on July 17, 2003, is prior art
`
`under at least 35 U.S.C. §§ 102(a) and (e).
`
`3. U.S. Patent App. Pub. No. 2004/0049694 to Candelore et al. (“Candelore-II”)
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`(Ex. 1106), filed on December 13, 2002, is prior art under 35 U.S.C. § 102(e).
`
`4. WO 03/101114 to Matsui et al. (“Matsui”) (Ex. 1107), published on
`
`December 4, 2003 is prior art under 35 U.S.C. § 102(a).
`
`5. U.S. Patent App. Pub. No. 2004/0253942 to Mowry et al. (“Mowry”) (Ex.
`
`1108), filed June 10, 2003 and published on December 16, 2004, is prior art
`
`under at least 35 U.S.C. § 102(e).
`
`B. Grounds for Challenge
`Petitioner requests cancellation of the challenged claims under 35 U.S.C.
`
`§ 103. The grounds for challenge are:
`
`Ground
`I
`
`References
`Notoya and Matsui in view of
`Candelore-I & -II
`
`Basis
`§ 103
`
`Claims Challenged
`1-2, 4, 7-8, 10, and 13-16
`
`4
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`

`

`
`
`II
`
`Notoya and Matsui in view of
`Candelore-I & -II and Mowry
`
`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
`
`§ 103
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`4, 10, and 16
`
`
`This Petition, supported by the declaration of Dr. James Storer (Ex. 1102),
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`demonstrates a reasonable likelihood that Petitioner will prevail on at least one
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`challenged claim. 35 U.S.C. § 314(a). Petitioner respectfully requests institution.
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`SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018).
`
`V. DISCRETIONARY DENIAL IS INAPPROPRIATE
`Discretionary denial under 35 U.S.C. § 314(a) is inappropriate. Apple Inc. v.
`
`Fintiv, Inc., IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) (precedential)
`
`(hereinafter “Fintiv”).
`
`Petitioner respectfully requests the Board not to exercise its discretion to deny
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`institution under Fintiv. Petitioner stipulates that, if this IPR is instituted, it will not
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`advance the grounds that are raised or reasonably could have been raised in this IPR
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`in the co-pending district court proceeding, eliminating any overlap between the IPR
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`and the co-pending district court proceeding. Sotera Wireless, Inc. v. Masimo Corp.,
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`IPR2020-01019, Paper 12 (P.T.A.B. Dec. 1, 2020) (precedential as to § II.A).
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`Although trial in the district court proceeding is currently scheduled for
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`December 5, 2022, there is significant uncertainty over the trial date. Ex. 1129, 5.
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`Hon. Philip S. Gutierrez, who presides over the co-pending litigation, stayed DivX’s
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`prior action against Petitioner following Petitioner’s IPR petitions challenging some,
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`5
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`

`

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`but not all, of the patents DivX asserted in that case. Ex. 1128, 1 (DivX, LLC v.
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`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
`
`Hulu, LLC, 2-19-cv-01606, Dkt. 122 (C.D. Cal. May 11, 2020)). Petitioner has a
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`pending motion to stay and consolidate the district court proceeding with the co-
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`pending litigation that will be heard on September 24, 2021. Ex. 1130.
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`Second, Petitioners promptly filed this petition shortly after DivX’s complaint
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`and well before the one-year statutory bar. Fintiv, Paper 11 at 11; 35 U.S.C.
`
`§ 315(b).
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`Third, the district court case is in its earliest stages. Fintiv, Paper 11 at 9-10.
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`DivX withdrew its original complaint in response to Petitioner’s motion to dismiss,
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`and Petitioner’s Answer was filed very recently on July 23, 2021. There have been
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`no substantive decisions in the case. The parties have not yet served any written
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`discovery requests. Neither the parties nor the Court has yet invested significant
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`time or resources in this matter.
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`Fourth, no other Petitioner has filed IPR petitions challenging the ’443 patent,
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`and the prior art grounds asserted in this Petition were not considered during
`
`prosecution. Therefore, this IPR petition will not revisit grounds or arguments
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`already considered by the PTAB.
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`Finally, and most importantly, the strong merits of this petition warrant
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`institution. Fintiv, Paper 11 at 14-15.
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`6
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`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
`
`
`VI. TECHNOLOGY BACKGROUND
`Video data is stored as a series of images called frames. When grouped
`
`together and viewed in a rapid sequence, these frames can be perceived as a moving
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`scene. A variety of devices that could receive and play back video data were known
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`in the prior art, including computers, phones, and televisions from a variety of
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`manufacturers. Digital video technology standards concerning the transport,
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`storage, distribution, and encryption of video files had been developed to enable
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`interoperability among such devices. Ex. 1102, ¶32-33.
`
`By the early 2000s, for example, a variety of multimedia file formats had been
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`standardized to govern where data and metadata are written within a video file—
`
`including AVI and MP4. Encryption standards and techniques—such as partial
`
`frame encryption—had been developed to protect video data from unauthorized use.
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`And video compression—also known as encoding—had been standardized and
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`widely used to improve video file transmission. Combining such standards and
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`techniques was known to improve access to digital video files while protecting them
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`agaisnt piracy. Ex. 1102, ¶34.
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`A. Known File Formats
`Many file formats suitable for the encoding and decoding multimedia files
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`were well known by the early 2000s. For example, the file format referenced in the
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`7
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`

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`’443 patent—Audio Video Interleave, or “AVI”—was introduced in 1990s by
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`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
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`Microsoft. Ex. 1101, 13:12-13; Ex. 1110, 1. The AVI file format was known to
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`include certain fragments of information, or “chunks,” which were useful in the
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`encoding and decoding processes. Ex. 1102, ¶35.
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`Another file format well-known by the early 2000s was MPEG-4 Part 14,
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`commonly referred to as “MP4.” Ex. 1111, 5. MP4 files include data compressed
`
`using the MPEG-4 standard. Ex. 1115, 3; 1102, ¶36.
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`MP4 files organize digital multimedia data into boxes, including (1) at least
`
`one media data box, or “mdat,” that stores multimedia data such as audio or video
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`data; and (2) a movie header box, or “moov,” that stores information on the contents
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`of the mdat. Ex. 1102, ¶37. These “mdat” and “moov” boxes are shown in Figure
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`37 of the standard, reproduced below:
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`8
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`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
`
`
`
`Ex. 1111, FIG. 37; see also id., Table 55.
`
`By 2003, fragmented MP4 files had been developed. Ex. 1111, 258. In
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`fragmented MP4 files, each mdat box (1) contains only a fragment (or chunk) of a
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`multimedia file and (2) is paired with a corresponding movie fragment box (“moof”)
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`containing informaiton sufficient to permit playback of the mdat box’s contents.
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`1102, ¶38. These pairs of mdat and moof boxes are sequentially combined together,
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`or interleaved, into a single file with a moof box in front of its corresponding mdat
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`box, as shown for example in Figure 4 from US2004/0231004 to Seo et al. (“Seo”)
`
`below.
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`9
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`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
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`
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`Ex. 1113, FIG. 4, [0033]; 1102, ¶39.
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`B. Known Partial Encryption Schemes
`As digital multimedia became more accessible, the need for protection
`
`increased. For example, the unauthorized access and use, or “piracy,” of copyrighted
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`video content was “dramatically multiplied in an environment of digital distribution
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`of content.” Ex. 1106, [0006]. To address these concerns, “numerous encryption
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`schemes” had been developed by 2003 to prevent the unauthorized access or use of
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`media files. Ex. 1106, [0006]; Ex. 1102, ¶40-42.
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`One such known technique was partial frame encryption. With partial frame
`
`encryption, the encryption is “selectively applied to the data stream, rather than
`
`encrypting the entire data stream.” Ex. 1106, [0023]. This was desirable to
`
`POSITAs because “compressed video bit streams are typically huge and the
`
`encryption/decryption algorithms are relatively slow, the encryption/decryption
`
`process results in a tremendous processing time.” Ex. 1114, IV-340. A study on the
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`Design and Implementation of the DRM Solution for MPEG-4 Based Internet
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`Broadcasting to Kim et al. (“Kim”) provides an example of such partial frame
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`10
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`

`

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`encryption. Ex. 1115, 6. Figure 7, reproduced below, shows the results of the
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`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
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`encryption of I-VOP video data:
`
`
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`Ex. 1115, FIG. 7. The first frame shows the original data, and the second frame
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`shows the result from encrypting I-VOP data. Ex. 1115, 6. Kim teaches that
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`“inserting the DRM information into the MPEG-4 file … enables systematic file
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`management and makes expansion into real-time streaming service easy.” Ex. 1115,
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`7. Thus, as Kim confirms, POSITAs by 2003 both knew how to implement parital
`
`frame encryption with MPEG-4 files, such as MP4, and expected this technique to
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`enable MPEG-4 data streaming. Ex. 1102, ¶43-48.
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`C. Known Compression Standards
`Video compression was typically handled by “codecs,” which would encode
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`and decode video. Many compression standards were known by the early 2000s.
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`11
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`

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`One such standard, developed by MPEG, was MPEG-4. Ex. 1117, 1:50-55; Ex.
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`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
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`1118, Ex. 1111; Ex. 1119, 2; Ex. 1102, ¶48.
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`MPEG-4’s compression strategy takes advantage of the fact that there are
`
`likely to be many similarities across sequential video frames. Ex. 1117, 1:55-65;
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`Ex. 1120, 7:7-7:10; Ex. 1102, ¶49.
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`Recognizing this, MPEG codecs organize the frames of a video file into three
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`types. “I-frames,” or intra-coded pictures, are independent frames that are coded
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`without referencing other frames. This is done through a process called “intra-frame
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`coding.” The two additional frame types can use data from surrounding frames,
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`called “inter-frame coding,” to reduce the size of the file. “P-frames,” or predicted
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`frames, are encoded using data from preceding I-frames or other earlier P-frames,
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`and contain only data that differs from the preceding I-frame or P-frame. B-frames
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`can be dependent on, and use data from, the frames both preceding and following
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`them. Ex. 1102, ¶¶49-53.
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`VII. OVERVIEW OF THE CHALLENGED ’443 PATENT
`A. Brief Description
`The ’443 patent is titled “Multimedia Distribution System for Multimedia
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`Files with Interleaved Media Chunks of Varying Types,” and its field of endeavor is
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`encrypting, encoding, decoding, and decrypting video multimedia files. Ex. 1101,
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`12
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`

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`Title, 1:21-25. The patent discloses “[a] multimedia file including a series of
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`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
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`encoded video frames and encoded meta data about the multimedia file” (Ex. 1101,
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`7:64-65), and explains that “[m]ultimedia files in accordance with embodiments of
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`the present invention can include digital rights management.” Id., 27:19-20. The
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`patent’s claims are generally directed to a multimedia file with partially encrypted
`
`encoded frames. Ex. 1101, 55:51-58:19; Ex. 1102, ¶61-70.
`
`With respect to “video chunks [that] are only partially encrypted,” the patent
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`states “the ‘DRM’ chunks contain a reference to the portion of a ‘video’ chunk that
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`is encrypted and a reference to the key that can be used to decrypt the encrypted
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`portion.” Ex. 1101, 27:53-58. Figure 2.9 depicts a “conceptual representation of the
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`information in a ‘DRM’ chunk,” including an “‘offset’ value 284 [that] points to the
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`start of the encrypted block within the frame and the ‘number’ value 286 [that]
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`indicates the number of encrypted bytes in the block.” Ex. 1101, 27:63-64, 28:1-6;
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`Ex. 1102, ¶¶59-60.
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`13
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`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
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`
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`Ex. 1101, FIG. 2.9; see also id., 27:64-28:6.
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`The ’443 patent has two independent claims. Claim 1 of the ’443 patent
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`relates to decoding multimedia files. Ex. 1102, ¶61. Claim 7 relates to encoding
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`multimedia files. Id., ¶64.
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`B.
`Prosecution History
`On May 16, 2018, the Patent Office rejected Applicants’ then-pending ’443
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`patent claims as obvious over Candelore-II. Ex. 1103, 256-67.
`
`Responding to this rejection, Applicants first acknowledged that Candelore-II
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`“describes a variety of approaches for identifying segments of video or portions of
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`14
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`a file to encrypt,” including encrypting “portions of unencoded frames of video (i.e.,
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`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
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`‘data representing an active region of a video frame, data in a star pattern within the
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`video frame....”). Ex. 1103, 250. 2 Applicants conceded, in other words, that
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`Candelore-II teaches a form of partial frame encryption. Ex. 1102, ¶74.
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`Applicants argued, however, that Candelore-II failed “to disclose partial
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`encryption of encoded frames of video” as recited in their amended claims. Ex.
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`1103, 250. According to Applicants, Candelore-II’s disclosure of encrypting “data
`
`in a star pattern within the video frame” merely disclosed the encryption of “portions
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`of unencoded frames of video” (id.), and failed to disclose “DRM information
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`including ‘an offset value that points to the start of an encrypted block within an
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`encoded frame’ as recited in claim 1.” Id., 251 (emphasis in original).
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`Based on this amendment and argument, the claims were then allowed. Ex.
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`1103, 54.
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`Notably, none of Candelore-I, Notoya, Mowry, nor Matsui were ever
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`discussed during prosecution or listed on any Information Disclosure Statement. Id.
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`passim.
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`2 Emphasis appearing in quotations has been added unless otherwise indicated.
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`15
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`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
`
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`VIII. LEVEL OF ORDINARY SKILL IN THE ART
`A POSITA at the time of the claimed invention would have had 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
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`encrypted video multimedia files, or 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. Ex. 1102, ¶76.
`
`IX. CLAIM CONSTRUCTION
`The challenged claims are interpreted under Phillips v. AWH Corp., 415 F.3d
`
`1303 (Fed. Cir. 2005). 37 C.F.R. § 42.100(b). Claim terms should only be construed
`
`if necessary to resolve a controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean
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`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`
`Here, because the challenged claims are invalid under any reasonable
`
`construction consistent with their plain meaning, claim construction is unnecessary.
`
`X. OVERVIEW OF THE PRIMARY PRIOR ART REFERENCES
`The prior art teaches every feature of the challenged claims in the ’433 patent.
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`Namely, interleaving media chunks had been standardized across the industry and
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`partially encrypting portions of video frames using DRM methods was well known
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`years before the ’443 patent’s alleged priority date. 1102, ¶35-47.
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`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
`
`A. Notoya
`Notoya is analogous art within the ’443 patent’s field of endeavor and
`
`reasonably pertinent to the patent’s particular problem. Donner Tech. LLC v. Pro
`
`Stage Gear, LLC, 979 F.3d 1353, 1359 (Fed. Cir. 2020); Ex. 1102, ¶77.
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`Notoya describes apparatuses for multiplexing and demultiplexing media
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`data, particularly MP4 files. Ex. 1104, [01], [76]. Notoya teaches that “MP4 has
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`been attracting attention as a file format for multiplexing and storing multimedia
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`data (content such as video, audio, text, and still images).” Ex. 1104, [02].
`
`According to Notoya, its fragmented MP4 file is particularly “suitable for streaming
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`because it is configured so that a plurality of linked pairs of data boxes and header
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`boxes are created as shown in FIG. 1 to FIG. 3 ” Ex. 1104, [40]; see also id. FIGs.
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`1, 3. As shown below in FIG. 1, Notoya teaches that MP4 files contain data boxes
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`(each labeled “mdat” in green below) interleaved with header boxes (each labeled
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`“moof” in blue below). Ex. 1104, FIG. 1; [09]. Notoya explains that data boxes are
`
`chunks of multiplexed video, audio, text, or other content data, while header boxes
`
`contain information on the content of corresponding data boxes. Ex. 1104, [04].
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`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
`
`Ex. 1104, FIG. 1 (annotated).
`
`This conventional MP4 file structure had a number of known benefits. For
`
`example, Notoya explains that the header data associated with each data box allows
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`playback to begin before the download is finished. Ex. 1104, [40] (“[A]
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`demultiplexing device that reproduces content by acquiring and demultiplexing MP4
`
`file data 900 can sequentially play (download and play) MP4 file data 900 distributed
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`as a stream before all of the downloading has been completed.”); Ex. 1102, ¶79.
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`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
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`Notoya further teaches that the MP4 file structure can incorporate index
`
`
`
`information, as header information containers such as “moov” or “moof” chunks can
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`include various indexes. Ex. 1104, [12], [205]. For example, a “moof” chunk can
`
`include a plural track fragment (“traf”) box, which is composed in part of a “track
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`fragment header box (“tfhd” below) 133.” Ex. 1104, [207]. Notoya’s FIG. 31
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`discloses a display diagram showing the syntax of the tfhd component of the traf
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`box. Ex. 1104, FIG. 31. Notoya teaches that the moov component can contain a
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`variety of index information. Ex. 1102, ¶86.
`
`Notoya further teaches a conventional MP4 multiplexing device 700,
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`represented in FIG. 4 below, to encode and interleave both video and audio data
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`chunks into mdat chunks and header information for each of the corresponding moof
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`chunks. Ex. 1104, [27].
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`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
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`Ex. 1104, FIG. 4. This results in a file structure containing interleaved mdat
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`chunks and moof chunks, as shown above in FIG. 1. Ex. 1104, [26]; Ex. 1102,
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`
`
`¶81-83.
`
`In addition to this multiplexing device, Notoya teaches a demultiplexing
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`apparatus to decode the MP4 file for playback. Ex. 1104, [41]. Notoya teaches that
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`its demultiplexing apparatus can be implemented on “a mobile phone [that]
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`downloads MP4 file data 900 distributed as a stream via a base station 990, and
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`20
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`sequentially plays back the downloaded MP4 file data 900.” Ex. 1104, [75], see also
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`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
`
`id., FIG. 11, Ex. 1102, ¶84.
`
`B. Matsui
`Matsui is analogous art within the ’443 patent’s field of endeavor and
`
`reasonably pertinent to the patent’s particular problem. Donner Tech., 979 F.3d at
`
`1359; Ex. 1102, ¶93.
`
`As shown in Figure 9(a), Matsui relates to a device for adding an RA
`
`information table to an MP4 file.
`
`
`
`Ex. 1107, FIG. 9(a); see also Ex.1102, ¶94.
`
`The data structure of the RA information table is given by Figure 5(b),
`
`reproduced below.
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`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
`
`
`
`Ex. 1107, FIG. 5(b); Ex. 1102, ¶95. Figure 5(a) shows the data contained in the
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`RA information table, which includes the starting position of the time, the starting
`
`position of the moof, and the starting position of the data.
`
`Ex. 1107, FIG. 5(a).
`
`22
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`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
`
`Figure 6 shows the file structure of an MP4 file with a RA information table
`
`
`
`added.
`
`
`
`Ex. 1107, FIG. 6; Ex. 1102, ¶¶97-98.
`
`Matsui teaches a moving picture distribution network where a phone or
`
`computer downloads an MP4 file distributed by a communication network. Ex.
`
`1107, 51:10-24, FIG. 20; Ex. 1102, ¶99.
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`
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`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
`
`C. Candelore-I
`Candelore-I is analogous art within the ’443 patent’s field of endeavor and
`
`reasonably pertinent to the patent’s particular problem. Donner Tech., 979 F.3d at
`
`1359; Ex. 1102, ¶100.
`
`Candelore-I teaches a partial frame encryption technique “in which slices in a
`
`central area of the frame 270 are encrypted with a star pattern 274 extending outward
`
`radially from the upper center of the frame. In this embodiment, macroblocks having
`
`intracoded data are encrypted [purple below] if they fall within the shaded area of
`
`the star pattern 274.” Ex. 1105, [0040]; Ex. 1102, ¶106-07.
`
`
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`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
`
`
`
`Ex. 1105, FIG. 6 (annotated).
`
`A POSITA would understand Candalore I’s reference to “intracoded data”
`
`within the star pattern to refer to MPEG “I-frames”—i.e., frames that are encoded
`
`without reference to other frames through MPEG’s “intra-frame coding” process.
`
`Ex. 1121, 62; Ex. 1102, ¶49. By disclosing partial frame encryption of I-frames that
`
`have already been “intracoded,” Candalore I thus teaches partial frame encryption
`
`25
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`

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`of encoded data. Ex. 1102, ¶112. Indeed, as shown in Candelore-I’s table below,
`
`IPR2021-01419
`Petition for Inter Partes Review
` of U.S. Patent No. 10,257,443
`
`one embodiment of Candelore-I’s star pattern encryption is limited to the partial
`
`encryption of “intra-coded macroblocks.”
`
`
`
`Ex. 1105, [0040]; see also id. [0041]-[0042]; Ex. 1102, ¶¶109-111.
`
`Moreover, Candelore-I expressly teaches the piracy-protection benefit of
`
`partial frame encryption of encoded data; namely that “[b]y encrypting the intra-
`
`coded blocks, inter-coded data [i.e., P-frames and B-frames] will be deprived of a
`
`reference and thus produce the desired scrambling effect.” Ex. 1105, [0048].
`
`Candelore-I emphasizes that “[t]his technique can be used alone or with other
`
`selective encryption techniques to produce low overhead encryption.” Id.; Ex. 1102,
`
`¶148.
`
`A POSITA would thus understand from Candelo