Trials@uspto.gov
`571-272-7822
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`Paper 41
`Date: September 27, 2024
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`NETFLIX, INC.,
`Petitioner
`v.
`VIDEOLABS, INC.,
`Patent Owner.
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`
`
`
`IPR2023-00628
`Patent 7,233,790 B2
`
`
`Record of Oral Hearing
`Held: June 27, 2024
`__________
`
`
`
`Before JEFFREY S. SMITH, STACEY G. WHITE, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
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`571-272-7822
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`
`Paper 41
`Date: September 27, 2024
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`NETFLIX, INC.,
`Petitioner
`v.
`VIDEOLABS, INC.,
`Patent Owner.
`
`
`
`
`IPR2023-00628
`Patent 7,233,790 B2
`
`
`Record of Oral Hearing
`Held: June 27, 2024
`__________
`
`
`
`Before JEFFREY S. SMITH, STACEY G. WHITE, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
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`IPR 2023-00628
`Patent 7,233,790 B2
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`
`
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`ALIZA CARRANO, ESQ.
`of: Willkie Farr & Gallagher, LLP
`1875 K Street, NW
`Washington, D.C. 20006
`202-303-1106
`acarrano@willkie.com
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`MICHAEL MATULEWICZ-CROWLEY, ESQ.
`Reichman, Jorgensen, Lehman & Feldberg, LLP
`1909 K Street, NW
`Suite 800
`Washington, D.C. 20006
`352-217-6921
`mmatulewicz-crowley@reichmanjorgensen.com
`
`
`
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`The above-entitled matter came on for hearing Thursday,
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`June 27, 2024, commencing at 11:00 a.m., at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia.
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`IPR2023-00628
`Patent 7,233,790 B2
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`P-R-O-C-E-E-D-I-N-G-S
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`11:00 a.m.
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`
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`JUDGE SMITH: Please be seated. Good morning, everybody.
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`Welcome to the Patent Trial and Appeal Board. My name is Jeffrey Smith.
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`With me today are Judges Stacey White and Stephen Belisle. Judge White
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`is with us from Texas. Can you hear us okay, Judge White?
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`JUDGE WHITE: Yes.
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`JUDGE SMITH: Okay. So we're here today to hear two cases, IPR
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`2023-00628 for U.S. Patent number 7,233,790 and IPR 2023-00630
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`concerning U.S. Patent number 7,440,559. Netflix is the Petitioner and
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`VideoLabs is the Patent Owner.
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`The parties will have 45 minutes per side per case. We'll have a five-
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`minute break between cases. We have a line open to the public. If the
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`parties wish to discuss anything confidential, please notify us before
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`discussing anything confidential. When you speak, please step to the
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`podium and speak into the microphone.
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`So we can start by getting appearances from the parties. Petitioner,
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`please step to the podium and state your name as we have with you.
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`MS. CARRANO: Good morning, Your Honors. This is Aliza George
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`Carrano on behalf of Petitioner Netflix. Sitting with me at counsel table is
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`my colleague, Dane Sowers. And on the line is in-house counsel for Netflix,
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`Asa Wynn-Grant.
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`JUDGE SMITH: Thank you. Patent Owner, please step to the
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`podium and state your appearance.
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`MR. MATULEWICZ-CROWLEY: Your Honors, this is Michael
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`IPR2023-00628
`Patent 7,233,790 B2
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`Matulewicz-Crowley on behalf of Patent Owner. With me at counsel table
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`is my colleague, Naveed Hasan. Here as well is my partner, Christine
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`Lehman. And on the line, we have my colleague, Jaime Cardenas-Navia.
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`JUDGE SMITH: Okay. Thank you. And before we get started, I just
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`want to ask the parties, you can reserve time for rebuttal. Petitioner, do you
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`wish to reserve time for rebuttal?
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`MS. CARRANO: I'd like to reserve 15 minutes, please.
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`JUDGE SMITH: Okay.
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`MR. MATULEWICZ-CROWLEY: Patent Owner, we'll reserve 10
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`minutes.
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`JUDGE SMITH: Okay. So, Petitioner, you're going to have 30
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`minutes to present your case-in-chief. Let me see if I can get this thing
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`working. Okay. You may begin when ready.
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`MS. CARRANO: May it please the Court. Your Honors, the '790
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`patent claims the basic concept of packaging and provisioning content for
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`multiple different user devices. But this concept of packaging and
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`provisioning content from content providers was already known, and the
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`patent admits that this technology was already known.
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`And so what the '790 patent inventors aimed to do was to create a
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`centralized system where content providers could submit their applications.
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`That would make it easier for subscribers of different wireless devices to be
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`able to get content from one centralized place.
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`The other aim of the '790 patent was to then have the provisioning and
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`packaging happen at the centralized location instead of having the content
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`providers do it, because, as there was this influx of new devices, keeping up
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`Patent 7,233,790 B2
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`with the different provisioning requirements was becoming burdensome. So
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`the Court has instituted both of Petitioner's grounds. This is found at
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`petition age 22. So, moving on to Slide 3.
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`There are several disputed issues, and I will try to go through all of
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`them today. To the extent I don't, Petitioner rests on its papers. One thing to
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`keep in mind with respect to the '790 patent is that both parties agree that the
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`priority date for this proceeding is June 19th, 2003.
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`So, moving on to Slide 8. So, this concept of a centralized location
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`for providing content was well-known. And what the '790 patent discloses
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`is that it's going to have this download manager that's basically a server
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`system that acts as an intermediary between content suppliers and
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`subscribers.
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`So, content suppliers would provide their applications to the download
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`manager, and then subscribers could then request those applications from the
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`download manager. And how it worked was the download manager has
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`several components to it, one being a product catalog, and that contains all
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`of the published items.
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`And then the other part of what's disclosed in the '790 patent is that, in
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`addition to -- sorry, I lost my slides. In addition to saving multiple items of
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`content, the download manager would also allow content providers to
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`provide multiple or different implementations of each item of content. And
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`the patent tells us that an implementation is just a binary file representing the
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`product.
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`And so we have the representative Claim 2, and we've highlighted on
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`here the disputes at issue with respect to this claim.
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`Patent 7,233,790 B2
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`And so the '790 patent Claim 2 claims a very basic concept here. It's a
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`very basic claim. So you've got a server system that receives and stores a
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`plurality of items of digital content. And it also receives and stores a
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`plurality of different implementations of at least one item of digital content,
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`where each implementation of any given item of digital content corresponds
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`to a different set of device capabilities.
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`The patent then goes on to claim the server system maintains a
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`product catalog that includes descriptions of the digital content and includes
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`an association with each item of content, a reference to each implementation
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`of each item of content. The server then receives a request from the wireless
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`device.
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`And then in response to that request, the server is going to select a
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`portion of the product catalog to be presented to the subscriber based on
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`device capabilities of the wireless device. And then it's going to present that
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`selection of the product catalog to the subscriber and provide only a single
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`description of each item of digital content, regardless of the number of
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`implementations.
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`So the first dispute is whether Mehta, which is one of our prior art
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`references, teaches a plurality of different implementations of at least one of
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`the items of digital content. And Mehta discloses a very similar system
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`where you've got a server system called the Mobile Application System, also
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`referred to as the MOS, or MAS.
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`And the MOS serves as an intermediary between subscriber devices,
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`which is noted in red in Figure 1, and content providers in green, which is
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`the suppliers of content. So how Mehta works, very similar to the '790
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`IPR2023-00628
`Patent 7,233,790 B2
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`patent, content providers provide their applications to the Mobile
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`Application System. And the subscriber devices can then obtain those.
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`After some analysis, the Mobile Application System will analyze
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`different profiles, including subscriber profiles, application profiles, device
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`profiles, to determine which specific application can execute properly on the
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`subscriber device. And so how this MOS does that, it determines the typing
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`capabilities of the subscriber device for which the request is made to
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`determine which appropriate application should be then sent to the
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`subscriber device.
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`So moving on to Slide 11. So how Mehta works is that when a
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`content provider wants to provide its applications for subscribers to obtain, it
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`has to fill out an application profile. An application profile collects various
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`information about that application.
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`And so you've got here on Slide 11, Figure 9b, which is an exemplary
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`application profile form that a content provider could fill out. And you'll see
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`the different types of information that's required. What's required is the title.
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`So in this case, the title here is KBrowser. And then you provide the URL,
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`which is the location of, you know, where the title is located. And the URL
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`actually has a file name as the implementation. That's going to indicate what
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`type of file it is.
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`And then it also includes information for what version, a description.
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`And so all this information is saved in an application profile that content
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`providers have to submit when submitting an application.
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`And here's Figure 9d on Slide 12, which just shows more clear what
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`information is included in this application profile. So Figure 9d is an
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`application submission notification, which occurs after a content provider
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`submits an application. They get a notification. So that's what's depicted in
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`9d. And so you'll see you've got an item of digital content, which is
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`KBrowser. And then you've got the specific implementation, which is this
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`JAR file.
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`So Mehta also teaches that because it collects this type of metadata on
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`each application, Mehta allows for the MOS to store and support
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`functionally equivalent programs having the same name that are capable of
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`running on multiple kinds of devices. And so how that works, what might
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`be helpful is to talk about this example that's been in the briefing.
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`And so say if Microsoft was a content provider, and Microsoft has its
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`various Office products. Those various office products would be items of
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`digital content. And so Microsoft could have various items of digital
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`content, such as Microsoft Word, PowerPoint, Excel. Those are all three
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`different items of content.
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`What Mehta would also allow, because it supports functionally
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`equivalent programs, is that it would allow Microsoft to submit different
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`versions of each of these items of content, such as a Microsoft Word for
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`Windows version, or a Microsoft Word for the Mac computers.
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`Because those are functionally equivalent programs, they are both
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`relating to Microsoft Word. They are both having the same name. And each
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`of those implementations are capable of running on different devices.
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`So the Microsoft Word for Windows implementation would run on
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`Windows devices, whereas the version for Mac would run on the Mac
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`computer. So this functionally equivalent program is having the same name
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`IPR2023-00628
`Patent 7,233,790 B2
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`that are capable of running on multiple devices, teaches this part of the
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`claim, which is a plurality of different implementations of at least one item
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`of digital content.
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`And so we have from Patent Owner's expert, he agreed that Microsoft
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`Word is another piece of content. A Microsoft Word for Windows and
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`Microsoft Word for Apple Macs are different implementations. And this
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`was from his declaration.
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`Going on to Slide 15, he was asked in his deposition, and he agreed
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`that Microsoft Word for Windows and Mac would be functionally
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`equivalent programs in the context of Mehta.
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`So he was asked, would one of ordinary skill in the art, at the time of
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`the patent, understand Microsoft Word for Windows and Microsoft Word for
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`Mac are functionally equivalent. He said, yes, I'm not disputing that. They
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`would be different implementations of the same product.
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`JUDGE BELISLE: Counsel, this is Judge Belisle. Can you remind
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`us, where are we getting this functionally equivalent language from?
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`MS. CARRANO: Certainly, Your Honor. This functionally
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`equivalent language comes from Mehta, which is Exhibit 1003 at paragraph
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`98.
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`JUDGE SMITH: Just as a reminder, when you are speaking about a
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`specific slide on the screen, just make sure you identify the slide number
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`that's on the screen so when we go back and read the transcript, we can
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`follow in the transcript, and also for our colleague in Texas, so I'm not sure
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`if she can see the screen or not, but she can follow along as well.
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`MS. CARRANO: Yes, certainly. Thank you, Your Honor.
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`IPR2023-00628
`Patent 7,233,790 B2
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`JUDGE BELISLE: So, counsel, can we go back to Slide 11? I can't
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`see the number on that slide. So on this slide, we're calling the KBrowser
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`the item of digital content. And then above it, the URL being the
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`implementation. In Mehta, what is the different implementation of the
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`KBrowser?
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`MS. CARRANO: So in Mehta, it doesn't expressly say that there's
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`going to be a different file name for a different implementation of
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`KBrowser. But when you read the entire context of Mehta, it shows that it
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`can support these functionally equivalent programs having the same name.
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`So with that disclosure, taking into account this exemplary application
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`profile, what would a person of ordinary skill in the art understand would be
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`that KBrowser could have the implementation at this URL, and maybe that
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`would work on Android devices, or it could have another application profile
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`with KBrowser as the title and the URL would be for maybe the iOS
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`devices.
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`It would have the file name for the KBrowser that would be supported
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`on iOS devices. So we get that from looking at the entire context of Mehta.
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`JUDGE BELISLE: But Mehta itself does not provide disclosure of
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`this different implementation of KBrowser.
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`MS. CARRANO: It does not. For the KBrowser example, it does
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`not, but it has, again, the language of functionally equivalent programs
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`where that explains that you could have another application profile with the
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`same name KBrowser and a different file name for that other
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`implementation.
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`JUDGE SMITH: What other -- just out of curiosity, what other
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`Patent 7,233,790 B2
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`implementation other than the JAR file would there be for this KBrowser?
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`MS. CARRANO: So for this KBrowser, I believe KBrowser was a
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`web browser at the time of Mehta, and so I would suspect that KBrowser
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`would be working for certain types of devices. So if you look here, it says
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`sample on Slide 12, we've got what the actual file name is. So these JAR
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`files would have different Java files in there.
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`So it's hard to say exactly which devices this one would work with. I
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`believe in some of the other figures there are specific Java profiles that are
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`identified. But how this would work would be if -- I think this is why the
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`parties use more simpler example like Microsoft Word.
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`And so if we were to take this in the context of that example, what
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`you would have would be a title Microsoft Word, and the URL would have
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`the location of the Microsoft Word for Windows file, and then the other
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`implementation would be another profile with Microsoft --
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`JUDGE SMITH: Yeah, I guess with, you know, there are a couple of
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`things that concern me about the Microsoft Word for Windows or Word for
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`Mac. I guess reading through the files, it seems like it first came up from
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`Patent Owner's expert. Is he the first person to introduce this?
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`MS. CARRANO: That's correct. He introduced the example of --
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`JUDGE SMITH: Because it's not from Mehta. I mean, the
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`technology in Mehta, this predates smartphones, it predates the iPhone. I
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`mean, I don't think anybody was going to be doing word processing on the
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`cell phone envisioned by Mehta. Is that right?
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`MS. CARRANO: Possibly, but I think even if we look at some of the
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`examples in Mehta, like Doom, for example, I know that's one of the
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`applications that's there, which I think maybe people are more familiar of.
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`You could have Doom running on, you know, a certain device, like an
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`Ericsson device, and that's going to require certain profiles. Or it could run
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`on, you know, a Motorola device.
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`JUDGE SMITH: Okay. So, yeah, so let's just accept -- given that the
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`briefing's already done, let's accept that Word for Windows or Word for Mac
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`could be one of these programs supported by Mehta's disclosure.
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`Well, the thing that concerns me the most is if you look at Slide 13,
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`you're pointing to this disclosure of Mehta where it says functionally
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`equivalent programs have the same name and are capable of running on
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`different devices. You're pointing at that and saying, well, those are
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`different implementations.
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`Patent Owner is pointing to this exact same disclosure and saying,
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`well, that means they're different programs. So what is it? I know you have
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`this declaration from Patent Owner's expert, but he seems to walk that back
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`in his deposition. He seems to be saying, yeah, they are different
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`implementations, and then he turns around and says, oh, no, they're not
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`different implementations, they are different programs.
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`So I mean, in terms of his testimony, given his waffling nature on it, is
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`there something other than his testimony that shows that the scope of
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`different implementations encompasses functionally equivalent programs
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`having the same name?
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`MS. CARRANO: I believe so. I believe if we -- I think what may be
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`helpful to understand is where Patent Owner is now shifting their arguments
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`on this issue. So I think initially, they said that this disclosure means you
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`have functionally equivalent programs --
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`JUDGE SMITH: Before you get to Patent Owner shifting their
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`argument, just start with the claim language. You have this claim language,
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`different implementations, that's in the claim. Now, what's the scope of
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`different implementations? So does the scope of different implementations
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`encompass functionally equivalent applications that have the same name?
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`MS. CARRANO: Right. I believe so, and I'm right now on Slide 19
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`that has the claim language in question. And so if you look at Claim 2,
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`which is a disputed limitation, what we've got here is the disputed limitation.
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`What it requires is receiving and storing in a server system a plurality of
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`items of digital content.
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`And we know from Mehta's disclosure, and this one's gotten disputed,
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`that Mehta does that. Mehta does accept from the content providers items
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`receiving and storing a plurality of items of digital content. And then in the
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`green part, this receiving and storing a plurality of different implementations
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`of at least one of the items is digital content.
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`So if you look at the disclosure of the '790 patent, the '790 patent says
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`that implementations are merely binary files. If we go back --
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`JUDGE BELISLE: Let's stop there counsel. It's Judge Belisle. What
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`does that mean? I mean, what does that mean to you, the idea that these are
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`just binary files? I mean, how is that distinguishing -- how are we getting
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`from binary files to functionally equivalent programs?
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`MS. CARRANO: So a functionally equivalent program is made up of
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`a binary file. So you've got --
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`JUDGE BELISLE: Isn't every file a binary file?
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`MS. CARRANO: That is true, they are. But what we have here from
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`Mehta, we've got this application profile that has the title of content, and
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`then you've got the URL that identifies the file name for that, for what works
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`for those certain types of devices. So you've got the -- what's required from
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`the '790 patent is you have a plurality of different implementations. If you
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`look at the specification, implementations are merely the binary files.
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`JUDGE SMITH: What's the difference between a different
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`implementation and a different program altogether?
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`MS. CARRANO: So how we look at this from the '790 disclosure,
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`the '790 disclosure says that digital content. So we're looking at, you know,
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`what's an item of digital content? At the '790 patent, which is Exhibit 1001,
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`at column 3, lines 48 through 53, it says, digital content is used
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`interchangeably to mean software or other data embodying things such as
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`games, applications, images, screensavers, the like. So that's the actual
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`content.
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`So items of digital content is the content. Implementation is just the
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`implementation of that content. So that's the file representing that content.
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`So when you look at this functionally equivalent programs, you've got -- so
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`with Microsoft Word, for example, you've got the digital content is
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`Microsoft Word, and then the implementations would be the version for
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`Windows and the version for Mac.
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`So those are the different binary files that would represent the item of
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`digital content, which would be Microsoft Word.
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`JUDGE SMITH: And then in addition to paragraph 98, Mehta, in
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`paragraph 64, talks about upgrades or more recent versions of software.
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`Would a more recent version of a program be a different implementation, or
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`would that be the same program?
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`MS. CARRANO: That's an interesting question because Mehta does
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`support different versions. As we saw on Figure 9b, there is a place for
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`adding different versions. I think what Mehta would do, because what it
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`does when it's looking at its repository to determine what to select for a user,
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`it's going to look to see what applications are compatible with that user's
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`device.
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`So what Mehta would do is if you have, just to continue with the
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`Microsoft Word example, if you've got a version for like Windows 98, the
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`Microsoft Word version for that, and then like Word 2000, if both are
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`compatible, both versions would be shown to the user. But those are
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`generally the same items of content. They're just different versions of it.
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`JUDGE SMITH: They're not different implementations?
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`MS. CARRANO: I wouldn't say that those were different
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`implementations, because the different implementations, when you look at
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`what's required in the claim -- so this doesn't have to do with the actual word
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`implementation or claim term. The claim requires where each
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`implementation of any given item of digital content corresponds to a
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`different set of device capabilities.
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`So when you look at the full context of the claim, you've got
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`implementations with their binary files, but the claim requires that an
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`implementation correspond to a different set of device capabilities.
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`So if you have different versions of a piece of content, that may not
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`correspond to a different set of device capabilities. But if you have an
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`implementation for one set of devices and an implementation for another set
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`of devices, then that would meet the claim language.
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`JUDGE SMITH: Okay. If you have anything more to say, we're
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`interested in hearing it. But I do want to discuss other aspects of the claim
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`before you run out of time.
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`MS. CARRANO: Sure. So one thing we do want to point out is what
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`Patent Owner tries to do, and this is where I think some of this confusion
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`comes from, is in the specification, the '790 patent says that the product
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`catalog can include for each product entry a reference to at least one of the
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`implementations. And so there's this concept of a product entry that the
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`Patent Owner conflates with the idea of an item of digital content.
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`So we've already established that an item of digital content is the
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`actual software, it's the actual content, whereas a product entry is something
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`that's used in a database and it's actual metadata for what goes into the
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`database.
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`And what Patent Owner is trying to do is, if you look at Figure 5 on
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`Slide 18, if you look at Figure 5, that's one preferred embodiment. I think
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`Figure 6 also has a very similar embodiment of the '790 patent. There's a
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`specific embodiment where the catalog has a product entry. And then with
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`each product entry, you're going to have an implementation, a reference to
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`each implementation. But this embodiment is not claimed in the patent.
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`So if we go to Slide 19, back to the claim language, there's no
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`requirement of a product entry in the claim language in any of the claims,
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`not even the dependent claims.
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`So this type of two-level data structure that they're trying to say is what the
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`claim is limited to is just not claimed. So we have to look at the plain and
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`ordinary meaning.
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`And both parties have agreed that no express construction for any
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`term is required at this stage. So we're looking at the plain and ordinary
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`meaning. And there's nothing to limit the claim scope to what's depicted in
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`Figures 5 and 6 of the '790 patent.
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`And if you look at the claim language in dispute for this issue, what's
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`talked about here is what's being stored, not how it's being stored. So we're
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`looking at what's being stored as you're receiving and storing in the server
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`system a plurality of items of digital content, which is what MAS does.
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`And then you're receiving and storing a plurality of different
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`implementations of at least one of the items of digital content, where each
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`implementation of any given item of digital content corresponds to a
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`different set of end device capabilities.
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`And Mehta's disclosure of the functionally equivalent programs
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`satisfies this limitation as well, because there is no requirement that there is
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`a product entry. And within that product entry, you have the item of digital
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`content and then references to each implementation for that item of digital
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`content. That's just not claimed.
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`JUDGE SMITH: Can you speak to the -- Claim 2 recites the selected
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`portion provides only a single description of each item of digital content,
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`regardless of the number of implementations. Can you speak to where
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`Mehta discloses that?
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`MS. CARRANO: Yes, so where Mehta discloses this is Mehta
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`teaches that when -- so let me just back up. To orient yourself with the
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`claim, so the claim says that when a user submits a request for applications,
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`the claim requires that the server is going to select the portion that's
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`compatible with the user's device and present that. And so Mehta does the
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`same thing.
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`So it'll search its data repository for published applications for the
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`request, and it'll determine a list. And then at paragraph 67 of Mehta, and
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`I'm on Slide 26, Mehta is going to filter this initial list based on subscriber
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`and device capabilities. So moving on to --
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`JUDGE SMITH: Let me just ask you, does this mean -- yes, Slide 27
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`shows it. Does this mean that there's only going to be -- so when it filters
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`the list, so if you have an iPhone, it's only going to give you Microsoft Word
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`for iPhone?
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`MS. CARRANO: Correct.
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`JUDGE SMITH: Would that be the only implementation available for
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`the iPhone, or would there be multiple implementations of Word available?
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`I mean, you could conceivably have Microsoft Word for iPhone for
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`Windows, Word for iPhone for Mac, but would that be possible?
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`MS. CARRANO: Right. That would not be possible in this
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`disclosure from Mehta, where Mehta at paragraph 117, Mehta only lists
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`those applications that are supported by the subscriber's device.
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`So if the user is a Mac user and requests Microsoft products, what is
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`going to return is a list of only those applications and a single description of
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`those applications, which ones are compatible with that user's device.
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`So continuing with the Microsoft Office example, it would show the
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`Microsoft PowerPoint for Mac, Word, Excel, that's what would be returned.
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`You wouldn't get a list of the Microsoft Word for Windows devices in that
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`list because that would not be compatible with the user's device. So a single
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`description would be what would be returned to the user.
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`JUDGE SMITH: Okay. And then I have a question about claim 4.
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`The implementation of the requested item of digital content based on device
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`capabilities of the wireless device used by the subscriber. Yeah, there it is
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`on Slide 34.
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`So apparently, Patent Owner's arguments, as I understand them,
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`Mehta is either going to give you a filtered list of programs that are
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`compatible with your device, or you can just search directly for whatever
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`program you want. If you want to search for Doom, it'll just return Doom,
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`and it'll just return the version that's compatible with your device.
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`So I guess Patent Owner's point, to the extent I understand it, Mehta is
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`only doing one or the other. I mean, once you get the list, and then you
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`select Doom, it's already filtered Doom to be compatible with your devices.
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`MS. CARRANO: Yeah, so Patent Owner, like many of its arguments,
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`takes that in context and ignores some of the express disclosures of Mehta.
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`And so Mehta allows for two types of requests to come from the subscriber.
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`A list for applications, that's the discovery of applications. And this is in
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`paragraph 70 of Mehta. And downloading requested applications.
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`So Figure 2 shows what would return if a user searched for games.
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`And this would be a list of games. And what would be presented, as we
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`talked in the prior implementation, would be just those implementations that
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`are compatible with the user's device. But then the user can then choose, all
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`right, I'm going to select Doom. And that's expressly what's shown in Figure
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`2. The user selects Doom.
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`And so going on to Slide 35, what MAS does is at the application
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`discovery phase, it
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