IPR2022-01111 Petition
`U.S. Patent 7,941,553
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`UNIFIED PATENTS, LLC
`
`Petitioner
`
`v.
`
`NOBLEWOOD IP LLC
`
`Patent Owner
`
`———————
`
`IPR2022-01111
`
`U.S. Patent 7,941,553
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT 7,941,553
`
`
`
`
`
`
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`i
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`IPR2022-01111 Petition
`U.S. Patent 7,941,553
`I. MANDATORY NOTICES UNDER 37 C.F.R. §42.8 ........................................ 1
`
`A. Real Party-in-Interest................................................................................. 1
`
`B. Related Matters .......................................................................................... 1
`
`C. Lead and Back-up Counsel and Service Information ............................... 2
`
`II. CERTIFICATION OF GROUNDS FOR STANDING ....................................... 3
`
`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ........................ 3
`
`A. Prior Art Patents and Printed Publications ................................................ 3
`
`B. Statutory Grounds for Challenges ............................................................. 4
`
`IV. U.S. PATENT 7,941,553 ..................................................................................... 4
`
`A. Summary .................................................................................................... 4
`
`B. Prosecution History ................................................................................10
`
`C. Level of Ordinary Skill in the Art ...........................................................13
`
`V. CLAIM CONSTRUCTION ...............................................................................14
`
`VI. CLAIMS 1, 4, 6, 8, 11, AND 13 ARE UNPATENTABLE ..............................15
`
`A. Ground 1: Claims 1, 4, 6, 8, 11, and 13 are rendered obvious by the
`combined teachings of Lahr and Lewis ...................................................15
`
`1. Overview of Lahr ............................................................................15
`
`2. Overview of Lewis ..........................................................................18
`
`1. Analysis ...........................................................................................18
`
`B. Ground 2: Claims 1, 4, 8, and 11 are rendered obvious by Day in
`view of Nakayama ...................................................................................40
`
`1. Overview of Day .............................................................................40
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`IPR2022-01111 Petition
`U.S. Patent 7,941,553
`2. Overview of Nakayama ...................................................................41
`
`3. Analysis ...........................................................................................42
`
`VII. DISCRETIONARY INSTITUTION ...............................................................59
`
`A. The Board Should Not Exercise Discretion to Deny Under § 325(d)
`Based on Previously Cited Art ................................................................59
`
`B. The Board Should Not Exercise Discretion to Deny Under § 314(a)
`Based on Previous Petitions ....................................................................59
`
`C. The Board Should Not Exercise Discretion to Deny Under § 314(a)
`Based on Parallel Litigations ...................................................................60
`
`D. Discretionary Factors Summary ..............................................................63
`
`VIII. CONCLUSION ................................................................................................63
`
`IX. CERTIFICATE OF WORD COUNT ................................................................64
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`IPR2022-01111 Petition
`U.S. Patent 7,941,553
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`PETITIONER’S EXHIBIT LIST
`
`EX1001 US Patent 7,941,553 to Baumeister et al.
`EX1002
`Prosecution File History of US Application 10/624,353
`EX1003 US Patent 7,013,322 to Nils Lahr
`EX1004 WO 00/29990 to Lewis et al.
`EX1005 US Patent 5,996,015 to Day et al.
`EX1006 US Patent 6,493,748 to Nakayama et al.
`EX1007 Declaration of Dr. Henry H. Houh
`EX1008
`“An overview of videostreaming on the internet and its application to
`surgical education,” Rosser et al., Surgical Endoscopy, 2001
`EX1009 RFC 1738 (1994)
`EX1010 Declaration of Kevin Jakel
`EX1011
`“The Apache HTTP Server Project,” IEEE Internet Computing, July-
`August 1997, pp. 88–90.
`EX1012 Microsoft Computer Dictionary (5th ed.) (excerpts)
`EX1013 US Patent 6,594,699 to Sahai et al.
`EX1014
`“Streaming-Media Knowledge Discovery,” Pieper et al., IEEE
`Computing 2001, pp. 68–74.
`“The workings of clients and servers in WWW,” Nigel Edwards,
`1994.
`
`EX1015
`
`iv
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`IPR2022-01111 Petition
`U.S. Patent 7,941,553
`I. MANDATORY NOTICES UNDER 37 C.F.R. §42.8
`A. Real Party-in-Interest
`
`Pursuant to 37 C.F.R. §42.8(b)(1), Unified Patents, LLC (“Unified” or
`
`“Petitioner”) certifies that Unified is the real party-in-interest, and further certifies
`
`that no other party exercised control or could exercise control over Unified’s
`
`participation in this proceeding, the filing of this petition, or the conduct of any
`
`ensuing trial. In view of Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242–44 (Fed.
`
`Cir. 2018), Unified has submitted voluntary discovery in support of its certification.
`
`See EX1010 (Declaration of Kevin Jakel).
`
`B. Related Matters
`
`As of the filing date of this Petition, and to the best knowledge of Petitioner,
`
`U.S. Patent 7,941,553 (the “’553 Patent,” EX1001) has been involved in the
`
`following proceedings:
`
`Case Caption
`Noblewood IP LLC v. The New York Times Company
`(S.D.N.Y.) (complaint filed Jan. 31, 2022) (dismissed May 12,
`2022)
`Noblewood IP LLC v. Virtucom Inc. (S.D.Tex.) (complaint filed
`Jan. 31, 2022)
`Noblewood IP LLC v. Fox News Network, LLC et al.. (D. Del.)
`(complaint filed Jan. 31, 2022) (dismissed Apr. 20, 2022)
`Noblewood IP LLC v. ViacomCBS Inc. (D. Del.) (complaint
`filed Jan. 31, 2022) (dismissed May 17, 2022)
`Noblewood IP LLC v. NBCUniversal Media, LLC (D. Del.)
`(complaint filed Jan. 31, 2022) (dismissed Mar. 11, 2022)
`Noblewood IP LLC v. Wolters Kluwer NV (E.D. Tex.)
`(complaint filed Feb. 25, 2022) (dismissed May 27, 2022)
`
`Number
`1:22-cv-00842
`
`3:22-cv-00227
`
`1:22-cv-00135
`
`1:22-cv-00135
`
`1:22-cv-00133
`
`4:22-cv-00136
`
`1
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`

`

`IPR2022-01111 Petition
`U.S. Patent 7,941,553
`Noblewood IP LLC v. Pure Barre, LLC (E.D. Tex.) (complaint
`4:22-cv-00135
`filed Feb. 25, 2022)
`Noblewood IP LLC v. Strengthen Lengthen Tone (S.D.N.Y.)
`(complaint filed Feb. 28, 2022)
`Noblewood IP LLC v. Everyday Health, Inc. et al. (D. Del.)
`(complaint filed Feb. 28, 2022)
`Noblewood IP LLC v. Dotdash Meredith, Inc. (D. Del.)
`(complaint filed Feb. 28, 2022)
`Noblewood IP LLC v. Alamo Drafthouse Cinemas, LLC (E.D.
`Tex.) (complaint filed May 27, 2022)
`Noblewood IP LLC v. Wolters Kluwer US Corp. (D. Del.)
`(complaint filed May 27, 2022)
`
`
`1:22-cv-00269
`
`1:22-cv-00267
`
`9:22-cv-00084
`
`1:22-cv-00690
`
`1:22-cv-01683
`
`C. Lead and Back-up Counsel and Service Information
`
`Lead Counsel
`Raghav Bajaj
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`Back-up Counsel
`Michelle Aspen
`Unified Patents, LLC
`4445 Willard Ave., Suite 600
`Chevy Chase, MD 20815
`
`Roshan Mansinghani
`Unified Patents, LLC
`4445 Willard Ave., Suite 600
`Chevy Chase, MD 20815
`
`David L. McCombs
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`559-214-3388
`
`214-945-0200
`
`
`512-867-8520
`Phone:
`214-200-0853
`Fax:
`
`raghav.bajaj.ipr@haynesboone.com
`USPTO Reg. No. 66,630
`
`Phone:
`
`michelle@unifiedpatents.com
`USPTO Reg. No. 75,665
`
`Phone:
`
`roshan@unifiedpatents.com
`USPTO Reg. No. 62,429
`
`Phone:
`
`david.mccombs.ipr@haynesboone.com
`USPTO Reg. No. 32,271
`
`214-651-5533
`
`Please address all correspondence to lead and back-up counsel. Petitioner
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`IPR2022-01111 Petition
`U.S. Patent 7,941,553
`
`consents to electronic service.
`
`II. CERTIFICATION OF GROUNDS FOR STANDING
`
`Petitioner certifies pursuant to Rule 42.104(a) that the ’553 Patent is available
`
`for inter partes review and that Petitioner is not barred or estopped from requesting
`
`this inter partes review.
`
`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`
`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)-(2), Petitioner challenges
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`claims 1, 4, 6, 8, 11, and 13 (“challenged claims”).
`
`A. Prior Art Patents and Printed Publications
`
`The ’553 Patent was filed on July 22, 2003, and claims priority to a European
`
`application filed October 18, 2002. At this time, Petitioner assumes that this priority
`
`date is correct.
`
`The following references are pertinent to the unpatentability grounds
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`explained below:
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`1. U.S. Patent 7,013,322 to Nils Lahr (“Lahr” (EX1003)) (filed January 29,
`
`2001, issued March 14, 2006).
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`2. WO 00/29990 to Lewis et al. (“Lewis” (EX1004)) (published May 25, 2000).
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`3. U.S. Patent 5,966,015 to Day et al. (“Day” (EX1005)) (issued November 30,
`
`1999).
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`4. U.S. Patent 6,493,748 to Nakayama et al. (“Nakayama” (EX1006)) (filed
`
`3
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`IPR2022-01111 Petition
`U.S. Patent 7,941,553
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`July 27, 2000, issued December 10, 2002).
`
`Lahr and Nakayama qualify as prior art under at least 35 U.S.C. § 102(e).
`
`Lewis and Day qualify as prior art at least under 35 U.S.C. § 102(b) and (a). None
`
`of the references were considered by the examiner or cited during the ’553 Patent’s
`
`prosecution.
`
`B. Statutory Grounds for Challenges
`
`This Petition, supported by the declaration of Dr. Henry Houh (EX1007),
`
`requests cancellation of the challenged claims under the ground below:
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`Ground #1: Claims 1, 4, 6, 8, 11, and 13 are obvious under 35 U.S.C. § 103(a)
`
`over the combined teachings of Lahr and Lewis.
`
`Ground #2: Claims 1, 4, 8, and 11 are obvious under 35 U.S.C. § 103(a) over
`
`the combined teachings of Day and Nakayama.
`
`
`IV. U.S. PATENT 7,941,553
`A. Summary
`
`The ’553 Patent relates to a method and computer-readable program for
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`receiving a request for a particular media file from a client computer and providing
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`a metafile containing information about the identification, location, and format of
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`the media file to the client computer for the purposes of streaming a media file over
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`a distributed information system. See ’553 Patent (EX1001), claim 1. According to
`
`the ’553 Patent, providing a metafile in response to a request for a media file is an
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`IPR2022-01111 Petition
`U.S. Patent 7,941,553
`advantage, allegedly because the “need of creating, maintaining and understanding
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`metadata is removed.” Id. at 8:59–61. That is, according to the ’553 Patent, web
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`pages need not link directly to metadata or metafiles, but rather, web pages may link
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`to media files themselves, and requests for such media files may be reinterpreted
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`into requests for metafiles instead. See generally id. at Abstract; Houh (EX1007),
`
`¶¶ 37–38.
`
`As relevant to the challenged claims, the ’553 Patent describes a server
`
`receiving a request for a particular media file from the client computer, then
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`providing a metafile. ’553 Patent (EX1001), 3:32–36.
`
`Figure 1, reproduced below, illustrates the request flow when a client requests
`
`to stream media content. Id. at Fig. 1.
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`IPR2022-01111 Petition
`U.S. Patent 7,941,553
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`’553 Patent (EX1001), Fig. 1
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`
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`As shown in Figure 1, web browser 122 composes an HTTP request for a
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`particular media content file and sends it to the web clients’ network interface 124
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`(arrow 150). Id. at 5:45–47. To initiate this action, in one example, a user may click
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`an HTML document link or enter a URL into a browser input field. Id. at 5:47–50.
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`Although the request URL points to the media file itself and not the streaming
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`metafile, the HTTP protocol handler 132 reinterprets the HTTP request so that it
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`returns streaming metadata instead. Id. at 5:50–66.
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`Specifically, as depicted, the server intercepts a download request for the
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`IPR2022-01111 Petition
`U.S. Patent 7,941,553
`actual media file and reinterprets the download request into a request for receiving
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`a corresponding metafile. Id. at 3:39–41. Thus, instead of returning the requested
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`media file, a metafile is returned that allows the client to immediately stream the
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`media file without having to wait for the download of the media file to be finished.
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`Id. at 3:41–45.
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`For the HTTP protocol handler 132 to stream metadata, the handler requests
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`metadata for the requested media resource either from the metadata generator 136
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`or from the metadata query component 138 (arrow 156). Id. at 6:2–3. In response,
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`either the metadata generator 136 will generate the media file based on known
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`streaming server types and the type of the requested media resource, or metadata
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`query component 138 will query existing metadata from an internal data store that
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`associates media locations with pre-made streaming metadata. Id. at 6:12–23. In
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`one implementation, metadata required for streaming a particular media file is
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`dynamically created depending, for example, on the file extension of the requested
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`rich media file, the URL or any other portion thereof. Id. at 3:46–50. Providing a
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`metafile may require retrieving information about the configuration of at least one
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`of the following: the version or type of a streaming product or the location of media
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`files, the load of the servers, the load of the network, the location of the client, and
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`the agreed quality of service. Id. at 3:55–59.
`
`In both the retrieving and generating scenarios, the resulting streaming
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`IPR2022-01111 Petition
`U.S. Patent 7,941,553
`metadata is returned to the HTTP protocol handler 132 (arrow 158). Id. at 6:18–20.
`
`The HTTP protocol handler 132 builds a HTTP response that contains the streaming
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`metadata and a MIME-type1 suitable for streaming, then returns the HTTP response
`
`to the network interface 134 (arrow 160). Id. at 6:30–33. The network interface 134
`
`transfers the HTTP response to the network interface 124 on the web client 102 that
`
`initiated the request (arrow 162). Id. at 6:34–36. The network interface then returns
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`the HTTP response to the requesting web browser 122 (arrow 164). Id. at 6:37–38.
`
`Web browser 122 analyzes the MIME-type in the HTTP response and selects a
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`suitable multimedia player 126 based on this information. Id. at 6:39–41. In
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`response, the multimedia player 126 analyzes the streaming data and extracts all
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`relevant information, including which streaming server to contact, which streaming
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`protocol to use, and which file to stream. Id. at 6:44–47.
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`The multimedia player 126 then composes a streaming protocol request,
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`which arrives at network interface 146.2 Id. at 6:52–54. The network interface 146
`
`
`1 The acronym “MIME” is defined as “Multipurpose Internet Mail Extensions” and,
`
`as described by the ’553 Patent, “allows the browser to determinate the type of data
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`it is currently receiving from the server.” ’553 Patent (EX1001), 2:6–10.
`
`2 This arrives via network interface 124 (arrow 168), which sends the streaming
`
`protocol request to the network interface 146 (arrow 170). ’553 Patent (EX1001),
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`IPR2022-01111 Petition
`U.S. Patent 7,941,553
`forwards the streaming protocol request to the streaming server 144 (arrow 172),
`
`which then analyses the streaming protocol request, and checks the availability and
`
`accessibility of the media files requested. Id. at 6:55–59. Depending on whether or
`
`not the checks are passed, streaming server 144 will either return a streaming
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`protocol response indicating the media file cannot be streamed or a positive reply.
`
`Id. at 6:59–62. In the positive reply scenario, the streaming server 144 will send
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`data packets to the network interface 146 (arrow 174), which transfers the packets
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`to the network interface 124 of the web client 102 (arrow 176), which then forwards
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`the packets to multimedia player 126 (arrow 178). Id. at 6:63–7:4. Finally, the
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`multimedia layer 126 receives the real-time packets and renders their content as they
`
`arrive. Id. at 7:5–6.
`
`Challenged claim 1 is representative and corresponds to aspects of the
`
`disclosure summarized above:
`
`1. A method for streaming a media file over a distributed information
`system to a client computer running a browser application, the method
`comprising the steps of:
`
` receiving a request for a particular media file from a client computer,
`
`6:50–54.
`
`
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`IPR2022-01111 Petition
`U.S. Patent 7,941,553
` providing a metafile, wherein said metafile contains information about
`the identification, location and format of the media file,
`
` returning said metafile back to said client computer,
`
` characterized in that
`
`the step of receiving a request for a particular media file from a
`client computer comprises the steps of:
`
`intercepting a download request for the actual media file and
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`reinterpreting said download request into a request for receiving
`a corresponding metafile.
`
`However, as demonstrated below, the limitations recited in challenged claim
`
`1 were well-known prior to the October 2002 priority date of the ’553 Patent. For
`
`example, Lahr, which is detailed below, explicitly disclosed “intercepting” media
`
`resource requests, rewriting responses to those requests, and returning metadata to a
`
`requesting client. See Lahr (EX1003), Abstract. Thus, as analyzed below, and as
`
`supported by the declaration of Dr. Houh, the combined teachings of the prior art
`
`references presented in this Petition render obvious the challenged claims.
`
`B. Prosecution History
`
`The ’553 Patent issued from US Patent Application 10/624,353 (“’353
`
`Application”), filed July 22, 2003. See ’553 Patent (EX1001), field (22).
`
`The challenged claims
`
`remained
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`substantively similar
`
`throughout
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`IPR2022-01111 Petition
`U.S. Patent 7,941,553
`prosecution, with only minor amendments made to the independent claims in the
`
`applicant’s responses. Throughout prosecution, claims 1-4, 6-14, and 16-17 were
`
`rejected as anticipated by US Patent Application Publication US2003/0236912 A1
`
`to Klemets et al. (“Klemets”). ’553 Patent PH (EX1002), pp. 69–74, 140–143.
`
`During prosecution, the dispute between the applicant and the examiner
`
`centered on the first limitation of claim 1: “receiving a request for a particular media
`
`file from a client computer” and whether the examiner’s cited reference, Klemets,
`
`disclosed this limitation. See, e.g. ’553 Patent PH (EX1002), p. 145. After a non-
`
`final and final Office Action from the examiner and corresponding responses from
`
`the applicant, the applicant appealed the rejection to the Board of Patent Appeals
`
`and Interferences. Id. at pp. 181–213.
`
`In its Appeal Brief, the applicant argued that claims 1 and 11 “require that a
`
`request for a particular media file is received from a client computer, and a metafile
`
`is returned to the client computer.” Id. at p. 196. As the applicant stated: “The
`
`present invention defined by claims 1 and 11 allows static or active web pages, for
`
`example, to reference the media files directly instead of referencing an active page
`
`that is parameterized to target the media file.” Id. at p. 197. Thus, a request for a
`
`media file is received, but instead of returning the content of the resource requested
`
`or executing the resource and forwarding its reply, a metafile is returned. Id.
`
`The applicant argued that Klemets’ alleged request was merely a request to
`
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`IPR2022-01111 Petition
`U.S. Patent 7,941,553
`describe available content (i.e., not a request for a particular media resource) and did
`
`not involve the steps of intercepting a download request for the actual media file or
`
`reinterpreting the download request into a request for receiving a corresponding
`
`metafile as further required by each of independent claims 1 and 11. Id. at pp. 198–
`
`99.
`
`In the examiner’s answer, the examiner alleged the phrases “receiving a
`
`request for a particular media file from a client computer” or “intercepting a
`
`download request for the actual media file” did not necessarily mean that the request
`
`is to download the particular media file. Id. at p. 222. Rather, the examiner
`
`contended requests with regard or respect to a particular media file were also within
`
`the scope of the claims, not just requests to download the media file. Id.
`
`
`
`In its reply brief, the applicant insisted that the request for a particular media
`
`file of claims 1 and 11 must be a download request for the actual media file. Id. at
`
`p. 233. According to the applicant, the claim phrase required “a request to acquire,
`
`or download, the actual media file” and thus more than just a request “to describe
`
`the available content.” Id. at p. 234. The applicant argued the examiner’s
`
`interpretation relied on the “Background of the Invention,” whereas the specification
`
`refers to “requests to stream a media file.” Id. Based on this argument, the applicant
`
`argued that the examiner’s interpretation was unreasonably broad, while its
`
`interpretation of the limitation (i.e., the request is to acquire, or download, the actual
`
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`IPR2022-01111 Petition
`U.S. Patent 7,941,553
`media file) was consistent both with the description of the invention in the
`
`specification and the plain meaning. Id.
`
`
`
`In its decision on appeal, the Board of Patent Appeals and Interferences agreed
`
`with the applicant. Id. at p. 251. According to the Board, viewing the disputed
`
`request limitation in light of the later limitation of “reinterpreting said download
`
`request into a request for receiving a corresponding metafile,” it was “clear that the
`
`‘download request for the actual media file’” was a request to download the actual
`
`media file rather than a request to download information with regard to or with
`
`respect to the actual media file. Id.
`
`
`
`On remand, a notice of allowance issued. Id. at p. 254. The examiner
`
`reasoned each of claims 1 and 11 required: “that a client computer requests a
`
`‘particular media file,’ such as by URL, thus allowing the media file to be referenced
`
`directly. This request is then reinterpreted, or converted, to a request for
`
`downloading a metafile that corresponds to the requested media file, where the
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`metafile is downloaded instead of the media file.” Id. at p. 260.
`
`As shown below, Lahr and Day teach receiving and reinterpreting requests
`
`for an actual media file, consistent with the applicant and Board’s interpretation of
`
`the claims.
`
`C. Level of Ordinary Skill in the Art
`
`A person of ordinary skill in the art at the priority date (October 18, 2002) for
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`IPR2022-01111 Petition
`U.S. Patent 7,941,553
`the ’553 Patent (“POSITA”) would have had a bachelor’s degree in electrical or
`
`computer engineering, or a closely related scientific field such as computer science,
`
`and two years of work experience with content delivery techniques over distributed
`
`networks (e.g., streaming media over the Internet). A lack of experience can be
`
`remedied with additional education (e.g., a Master’s degree), and likewise, a lack of
`
`education can be remedied with additional work experience (e.g., 4-5 years). Houh
`
`(EX1007), ¶¶ 52–56.
`
`
`
`V. CLAIM CONSTRUCTION
`
`The Challenged Claims of the ’553 Patent are construed “using the same claim
`
`construction standard that would be used to construe the claim in a civil action under
`
`35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (Nov. 13, 2018). The claim terms below
`
`are thus construed “in accordance with the ordinary and customary meaning of such
`
`claim as understood by one of ordinary skill in the art and the prosecution history
`
`pertaining to the patent.” Id. Petitioner submits that no claim term requires
`
`construction beyond their plain and ordinary meaning.
`
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`IPR2022-01111 Petition
`U.S. Patent 7,941,553
`VI. CLAIMS 1, 4, 6, 8, 11, AND 13 ARE UNPATENTABLE
`A. Ground 1: Claims 1, 4, 6, 8, 11, and 13 are rendered obvious by the
`combined teachings of Lahr and Lewis
`
`1. Overview of Lahr
`
`Lahr discloses a “distributed network which is capable of dynamically
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`changing media resource request metafiles, as well as the responses to those media
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`resource requests by media servers in the network, to provide more efficient content
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`delivery in the network.” Lahr (EX1003), Abstract. The method of Lahr includes
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`“intercepting a media resource request metafile client request, or a response to the
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`media resource request by a media server in the network, and intelligently rewriting
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`the response before sending it back to the requesting client.” Id.
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`Lahr’s Figure 11 and the associated description teach most of the limitations
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`of the challenged claims. Lahr describes Figure 11 as illustrating “the conventional
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`utilization of metafiles in a network and the preferred embodiment of the present
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`invention wherein the metafile is rewritten.” Lahr (EX1003), 16:52–54.
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`U.S. Patent 7,941,553
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`In describing Figure 11, Lahr states that the “client 192 requests a generic
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`metafile/media.” Id. at 16:65–67. Client 192 is depicted above in Figure 11. Lahr
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`continues and states the client’s “request is received by a redirector 194” also shown
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`above. Id. at 16:67. The “redirector 194…redirects the request to an interceptor
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`(server) 196.” Id. at 16:67–17:2. This is done “under the control of the director”
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`which Lahr describes as “an intelligent agent that…redirects users to the optimal
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`server.” Id. at 15:15–17.
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`After the redirector redirects the request to the interceptor, the “interceptor
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`U.S. Patent 7,941,553
`requests the metafile or media resource from the centralized web or other media
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`server 198 via the network cloud 182” and subsequently, the “media server
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`198…transmits the metafile or protocol response back to the client 192.” Id. at 17:2–
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`10. Lahr contemplates that the “redirector 194 and interceptor 196 can be the same
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`component.” Id. at 17:17–19. Lahr also specifies that “before the metafile or
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`protocol response is delivered to the client 192, the redirector 194…analyzes the
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`information contained in the metafile and changes it” for example, by changing links
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`pointing to one server to point to a different server. Id. at 17:10–16. Thus, just like
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`the ’553 Patent, Lahr receives a request for a media file, and returns in response a
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`metafile. See also Houh (EX1007), ¶¶ 66–73.
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`Lahr is analogous art. Houh (EX1007), ¶¶ 74–75. The ’553 Patent “generally
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`relates to transfer of digital information” and more specifically, “relates to a
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`method…for streaming a media file over a distributed information system, such as
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`the Internet, to a client computer running a browser application.” ’553 Patent
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`(EX1001), 1:7-12. Thus, the field of endeavor of the ’553 Patent is media delivery
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`over the Internet. Lahr seeks “to [] improve content delivery in the network” and
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`thus is within the field of endeavor of the ’553 Patent. Lahr (EX1003), 1:51–63.
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`Lahr is also reasonably pertinent to at least one problem addressed by the ’553 Patent
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`of providing metafiles in response to requests for media content, as Lahr explicitly
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`discloses a process by which requests for media are responded to with metafiles. See
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`Lahr (EX1003), 16:65–17:15.
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`2. Overview of Lewis
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`Lewis discloses a “technique for optimizing delivery of specialized content
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`files such as multimedia files in a computer network.” Lewis (EX1004), Abstract.
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`As pertinent to the analysis below, Lewis describes a process in which a “media
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`redirection file (MRF)” is provided “to the user’s browser program” and it details
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`the contents of such an MRF file. Id. at 4:26–33; Houh (EX1007), ¶¶ 77–78.
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`Lewis is analogous art. As detailed above, the ’553 Patent’s field of endeavor
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`is media delivery over the Internet. Lewis discloses a technique for delivering
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`“multimedia files in a computer network” (Lewis (EX1004), Abstract) and is thus
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`within the same field of endeavor as the ’553 Patent. Houh (EX1007), ¶ 79. Lewis
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`is also reasonably pertinent to at least one problem addressed by the ’553 Patent of
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`providing metafiles to web browsers, as Lewis discloses that it was known in the art
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`to provide metafiles to requesting web browsers. See Lewis (EX1004), 11:3–16;
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`Houh (EX1007), ¶ 80.
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`Claim 1
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`3. Analysis
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`[1.0] A method for streaming a media file over a distributed information system to
`a client computer running a browser application, the method comprising the steps
`of:
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`The preamble is not a limitation, because the body of the claim does not rely
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`on any portion of the preamble for antecedent basis or structure. For example, while
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`the preamble recites streaming a media file over a distributed information system,
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`limitation [1.1] re-introduces a particular media file and the claim does not later
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`recite a distributed information system. Thus, the recitation of streaming a media
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`file over a distributed information system in the preamble is not limiting.
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`Likewise, while the preamble recites a client computer running a browser
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`application, limitation [1.1] also recites a client computer and the body of the claim
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`does not recite a browser application and thus, the recitation of a client computer
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`running a browser application in the preamble is also not a limitation. See Shoes by
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`Firebug v. Stride Rite Children’s Group, 962 F.3d 1362, 1367–68 (Fed. Cir. 2020)
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`(reintroducing claim term in body of claim indicates preamble is not a limitation).
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`To the extent the preamble is limiting, Lahr discloses it, or at least renders it
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`obvious.3 First, Lahr discloses streaming a media file over a distributed information
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`system. Lahr discloses that its “invention relates to a distributed network which is
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`capable of dynamically changing media resource request metafiles, as well as the
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`3 Where, as here the preamble does not provide antecedent basis for any claim term,
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`it is generally considered to not be a limitation. See Pacing Techs., LLC v. Garmin
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`Int’l, Inc., 778 F.3d 1021, 1023–24 (Fed. Cir. 2015).
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`responses to those media resource requests by media servers in the network, to
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`provide more efficient content delivery in the network.” Lahr (EX1003), 1:51–55.
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`Lahr further discloses that “the Internet” (a distributed information system) “can be
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`used to transmit multimedia data, such as streaming audio and video data, from
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`content providers to end users….” Id. at 1:67–2:3; see also ’553 Patent (EX1001),
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`1:7–12 (“a distributed information system, such as the Internet….”). Thus, Lahr
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`discloses streaming a media file (i.e., audio and video data) over a distributed
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`information system (the Internet). Houh (EX1007), ¶ 82.
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`Second, Lahr discloses streaming to a client computer running a browser
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`application. As detailed in the preceding quote, Lahr discusses streaming audio and
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`video data to end users “such as businesses, small or home offices, and individuals.”
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`Lahr (EX1003), 1:67–2:3. In Figure 5D, Lahr depicts various playback devices,
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`including computers, and notes that playback devices may use “browsers” to render
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`the media:
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`Id., Fig. 5D (annotated), see also id. at 3:57–62 (“client’s…browser type…”); Houh
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`(EX1007), ¶¶ 83–84 (noting that it was well-known that a client computer would run
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`a browser application and citing, inter alia, Lewis (EX1004) 8:30–9:2 (“clients 40
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`run software…such as Web browsers…”).
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`Thus, Lahr discloses, or at least renders obvious, streaming … to a client
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`computer running a browser application. Houh (EX1007), ¶¶ 81–85.
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`Lahr thus discloses, or at least renders obvious, the preamble of claim 1.
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`
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`[1.1] receiving a request for a particular media file from a client computer;
`Lahr discloses, or at least renders obvious, this limitation. Specifically, Lahr
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`discloses a “redirector” receiving a request for a media resource (i.e., a request for
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`a particular media file) from a user’s client computer, such as a PC or workstation
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`(i.e., from a client computer).
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`Lahr is titled “A system