`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`COMCAST CABLE COMMUNICATIONS, LLC,
`CHARTER COMMUNICATIONS, INC.,
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`Petitioners,*
`
`v.
`
`TOUCHSTREAM TECHNOLOGIES, INC,
`Patent Owner.
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`IPR2024-00322
`Patent 8,356,251
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`*Charter Communications, Inc. filed a petition and a motion for joinder in IPR2024-
`01231 and has been joined as a petitioner in this proceeding.
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`
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`TABLE OF CONTENTS
`
`3.
`
`2.
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. ARGUMENT ................................................................................................... 3
`A. Danciu-Mahajan and Aldrey-Mahajan Teach the Limitations of
`Claims 1 and 11 ..................................................................................... 3
`1.
`The Petition Relies on the Hardware Architecture of Danciu
`and Aldrey, not Mahajan ............................................................. 3
`The Petition Does Not Locate Mahajan’s Server-Command
`Teachings in the Servers of Danciu and Aldrey ......................... 6
`Danciu-Mahajan and Aldrey-Mahajan teach “selecting
`from among a plurality of specific commands … for a
`respective media player” ........................................................... 14
`B. A POSITA Would Be Motivated to Combine Danciu and Aldrey
`With Mahajan ...................................................................................... 16
`C. Danciu-Mahajan Teaches the Limitations of Claim 22 ...................... 18
`1.
`Danciu teaches retrieving information from the server ............ 18
`2.
`Danciu teaches information that “identifies a first media
`player” ....................................................................................... 20
`D. Aldrey-Mahajan Teaches the Limitations of Claim 22 ....................... 23
`E.
`PO’s Proposed Level of Ordinary Skill in the Art Is Ambiguous ...... 24
`F.
`PO Does Not Make Any Arguments Regarding the Dependent
`Claims .................................................................................................. 26
`III. CONCLUSION .............................................................................................. 26
`
`
`i
`
`
`
`EXHIBITS
`
`Previously Submitted:
`Ex. 1101:
`U.S. Patent No. 8,356,251 (“the ʼ251 Patent”)
`Ex. 1102:
`Expert Declaration of David B. Lett
`Ex. 1103:
`Curriculum Vitae of David B. Lett
`Ex. 1104:
`Certified Prosecution History of the ’251 Patent
`Ex. 1105-1110: Reserved
`Ex. 1111:
`
`U.S. Pub. No. 2004/0078812 (“Calvert”)
`Ex. 1112:
`
`U.S. Pat. No. 9,490,998 (“Danciu”)
`Ex. 1113:
`
`U.S. Prov. App. No. 61/411,386 (“Danciu Provisional”)
`Ex. 1114:
`
`U.S. Pub. No. 2009/0248802 (“Mahajan”)
`Ex. 1115:
`
`U.S. Pub. No. 2009/0172757 (“Aldrey”)
`Ex. 1116-1119: Reserved
`Ex. 1120:
`Joint Claim Construction Statement, Touchstream
`Technologies, Inc. v. Google LLC, 6:21-cv-00569-ADA
`(WDTX) (Feb. 8, 2022)
`Exhibit 1 to Joint Disputed Claim Terms Charts, Touchstream
`Technologies, Inc. v. Vizbee, Inc., 1:17-cv-06247-PGG-KNF
`(SDNY) (Aug. 6, 2018)
`Jury Instructions, Touchstream Technologies, Inc. v. Google
`LLC, 6:21-cv-00569-ADA (WDTX) (July 21, 2023)
`Reserved
`U.S. Pub. No. 2002/0104096 (“Cramer”)
`U.S. Pat. No. 7,356,575 (“Shapiro”)
`U.S. Pat. No. 7,269,842 (“Estipona”)
`
`Ex. 1123-29:
`Ex. 1130:
`
`Ex. 1131:
`
`Ex. 1132:
`
`
`Ex. 1121:
`
`Ex. 1122:
`
`ii
`
`
`
`
`Ex. 1133:
`
`Ex. 1134:
`
`Ex. 1135:
`
`Ex. 1136:
`
`Ex. 1137:
`Ex. 1138-40:
`Ex. 1141:
`
`Ex. 1142:
`
`Ex. 1143:
`
`Ex. 1144:
`
`Ex. 1145:
`
`Ex. 1146:
`
`Ex. 1147:
`
`U.S. Pub. No. 2004/0267899 (“Rahman”)
`U.S. Pub. No. 2004/0098533 (“Henshaw”)
`U.S. Pub. No. 2004/0172656 (“Kim”)
`Reserved
`U.S. Pat. No. 7,343,419 (“Robinson”)
`Reserved
`CODING OF MOVING PICTURES AND AUDIO, MPEG-4 Overview
`(Int’l Org. Standardisation 2002)
`ROBERT GODWIN-JONES, DIGITAL VIDEO UPDATE: YOUTUBE,
`FLASH, HIGH-DEFINITION, 11 LANGUAGE LEARNING &
`TECH. 16, 17 (2007)
`John C. Paolillo et al., A Network View of Social Media
`Platform History: Social Structure, Dynamics and Content on
`YouTube, PROC. 52ND HAWAII INT’L CONF. ON SYS. SCIS., 1,
`(2019)
`
`YouTube Opens Internet Video to Masses; Serving 3 Million
`Videos Daily and Growing, YouTube Unveils a Fast, Fun, and
`Easy Service for Consumers to Broadcast Original Video,
`MARKET WIRE, Dec. 15, 2005
`
`Hulu Debuts via Private Beta and on Distribution Partners
`AOL, Comcast, MSN, MySpace and Yahoo!; Company
`Announces Major Licensing Deals with Metro-Goldwyn-Mayer
`Studios Inc. and Sony Pictures Television; Providence Equity
`Partners Makes Strategic Investment in News
`Corporation/NBC Universal Online Video Joint Venture, BUS.
`WIRE, Oct. 29, 2007
`Blockbuster Offers Cheaper Online Rental, ASSOCIATED PRESS,
`Jun. 13, 2007
`
`Adobe Delivers Flash Player 9 With H.264 Video Support; HD
`Quality Web Video and Audio Now Available With Adobe Flash
`Player Update, BUS. WIRE, Dec. 4, 2007
`
`iii
`
`
`
`Ex. 1148:
`
`Ex. 1149:
`
`Ex. 1150:
`
`Ex. 1151:
`
`Ex. 1152:
`
`Ex. 1153:
`
`Ex. 1154:
`
`Ex. 1155:
`
`Ex. 1156:
`
`Ex. 1157:
`
`Ex. 1158:
`
`Ex. 1159:
`
`Microsoft Unveils Silverlight to Power the Next Generation of
`Media Experiences on the Web; Leading Media Companies and
`Solution Providers Announce Support for New Solution for
`Video and Interactivity on Mac- and Windows-Based Web
`Browsers, PR NEWSWIRE US, Apr. 16, 2007
`
`Former Apple Multimedia Pioneers Unveil WebTV; New
`Company Brings Internet to Television Viewers, PR
`NEWSWIRE, Jun. 12, 1996
`Netflix, TiVo Team Up After 4-Year Courtship, ASSOCIATED
`PRESS, Oct. 30, 2008
`
`TiVo and Amazon.com Announce New Service Enabling
`Amazon Unbox Video Download to TiVo; TiVo Subscribers
`Will Soon Be Able to Watch Amazon Unbox Movies and TV
`Shows on Their TVs, BUS. WIRE, Feb. 7, 2007
`Wall Crumbling Between Televisions and Computers, AGENCE
`FRANCE PRESSE – ENGLISH, Jan. 8, 2009
`ENHANCED TV BINARY INTERCHANGE FORMAT 1.0, ETV
`(OpenCable Specifications, Nov. 25, 2009)
`
`Award-Winning Sonos™ Digital Music System Begins Shipping
`to Customers, PR NEWSWIRE US, Jan. 27, 2005
`Sonos Introduces the Sonos™ ZonePlayer ZP80, PR
`NEWSWIRE, Jan. 4, 2006
`
`Sonos Introduces the Sonos Controller for iPhone; Free
`Application Lets Music Lovers Control Leading Multi- Room
`Music System from Their iPhone, PR NEWSWIRE, Oct. 28, 2008
`AT&T Opens R&D Lab in Cambridge, England, BUS. WIRE,
`Feb. 10, 1999
`Microsoft Releases Windows NT 4.0 Terminal Server Edition,
`M2 PRESSWIRE, Jun 16, 1998
`
`TeamViewer: TeamViewer 3.0 Beta Published; Next
`Generation of the Popular Remote Support Software, M2
`PRESSWIRE, Aug. 27, 2007
`
`iv
`
`
`
`Ex. 1160:
`
`Ex. 1161:
`
`Ex. 1162:
`
`Ex. 1163:
`
`Ex. 1164:
`Ex. 1165:
`Ex. 1166:
`Ex. 1167:
`
`Ex. 1168:
`
`Ex. 1169:
`Ex. 1170:
`Ex. 1171:
`Ex. 1172:
`
`Ex. 1173:
`Ex. 1174:
`
`
`
`
`
`
`
`
`
`
`
`3am Labs Announces $10 Million Series A Financing;
`McNamee Lawrence & Co. Acts as Exclusive Financial Advisor
`to 3am Labs, BUS. WIRE, Nov. 16, 2004
`
`Expertcity's GoToMyPC Product Wins A People's Choice
`Award At Upside Events' Showcase 2001, INTERNET WIRE, Feb.
`1, 2001
`
`TV2Me(R) Goes Global By Partnering With Leading Asian
`Online Entertainment Company; Manila-Based ESL Adds Sales
`and Marketing Muscle to Bring Pioneering Place Shifting
`Technology to Wider Market, PR NEWSWIRE US, May 16, 2006
`
`CES Innovations 2005 Award and Red Herring Finalist for 100
`Most Innovative Companies are Latest Commendations for
`Sling Media, BUS. WIRE, Nov. 11, 2004
`Final Written Decision, IPR2022-00795 (Sep. 27, 2023)
`Patent Owner Response, IPR2022-00795 (Jan. 13, 2023)
`Reserved
`
`Progressive Networks Launches the First Commercial Audio-
`On-Demand System Over the Internet, BUS. WIRE, Apr. 10,
`1995
`
`Progressive Networks’ RealVideo Launched With Wide
`Industry Support, PR NEWSWIRE EUROPE, February 10, 1997
`Reserved
`U.S. Pat. Application No. 61/477,998
`U.S. Pat. No. 8,904,289 to Strober (“the ’289 Patent”)
`Certified Copy of Prosecution History of U.S. Pat No.
`8,904,289
`U.S. Pat. No. 9,767,195 (“the ’195 Patent”)
`Certified Copy of Prosecution History of U.S. Pat. No.
`9,767,195
`
`v
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`
`
`
`
`
`
`
`
`
`
`Ex. 1175:
`Ex. 1176:
`
`Ex. 1177:
`Ex. 1178:
`
`Ex. 1179:
`Ex. 1180:
`Ex. 1181:
`Ex. 1182:
`Ex. 1183:
`
`Ex. 1184:
`
`Ex. 1185:
`
`Ex. 1186:
`
`U.S. Pat. No. 11,048,751 to Strober (“the ’751 Patent”)
`Certified Copy of Prosecution History of U.S. Pat. No.
`11,048,751
`U.S. Pat. No. 8,356,251 to Strober (“the ’251 Patent”)
`Certified Copy of Prosecution History of U.S. Pat. No.
`8,356,251
`Reserved
`Lett analysis of Danciu Claim 1 in view of Danciu Provisional
`Annotated Copy of Danciu Provisional in view of Danciu
`Stipulation Regarding Invalidity Defenses
`Transcript of Jury Trial, Volume 3 of 5, held July 19, 2023, Dkt
`No. 262; Touchstream v. Google, 6-21-cv-569 (W.D. Tex.)
`Google’s Rule 50(b) Renewed Motion for Judgment as a Matter
`of Law, dated September 20, 2023, Dkt No. 275; Touchstream
`v. Google, 6-21-cv-569 (W.D. Tex.)
`Touchstream’s Opposition to Google’s Rule 50(b) Renewed
`Motion for Judgment as a Matter of Law (Public Version), Dkt
`No. 287; Touchstream v. Google, 6-21-cv-569 (W.D. Tex.)
`Google’s Reply in Support of Rule 50(b) Renewed Motion for
`Judgment as a Matter of Law (Public Version), Dkt No. 292;
`Touchstream v. Google, 6-21-cv-569 (W.D. Tex.)
`
`Submitted Herewith:
`Ex. 1187:
`Excerpt from SAMS, Modern Dictionary of Electronics, Sixth
`Edition, by Rudolf F. Graf
`Excerpt from McGraw-Hill Dictionary of Electronics and
`Computer Technology
`Excerpt from the Computer Glossary, the Complete Illustrated
`Dictionary, Seventh Edition, by Alan Freedman
`
`Ex. 1189:
`
`Ex. 1188:
`
`vi
`
`
`
`Ex. 1190:
`
`Ex. 1191:
`
`Ex. 1192:
`Ex. 1193:
`
`Ex. 1194:
`
`Ex. 1195:
`
`Ex. 1196:
`
`Ex. 1197:
`
`Ex. 1198:
`
`
`
`
`
`Excerpt from the Dictionary of Data Communications, Second
`Edition, by Charles J. Sippl
`Excerpt from Business Dictionary of Computers, by Jerry M.
`Rosenberg
`Excerpt from IBM Dictionary of Computing
`Excerpt from the Penguin Dictionary of Microprocessors, by
`Anthony Chandor
`Excerpt from Data Communications Dictionary, by Charles J.
`Sippl
`Excerpt from the Computer Glossary, the Complete Illustrated
`Dictionary, Ninth Edition, by Alan Freedman
`Excerpt from the McGraw-Hill Dictionary of Scientific and
`Technical Terms, Fifth Edition
`Deposition Testimony of Stephen B. Wicker, Ph.D. (Jan. 20,
`2025)
`Expert Declaration of David B. Lett in Support of Petitioner’s
`Reply to Patent Owner’s Response to Petition
`
`
`
`vii
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Arctic Cat, Inc. v. Polaris Indus. Inc.,
`No. IPR2015–01783, 2017 WL 506027 (P.T.A.B. Jan. 30, 2017) ....................2, 7
`Bradium Techs. LLC v. Iancu,
`923 F.3d 1032 (Fed. Cir. 2019) ............................................................................ 14
`Facebook, Inc. v. Windy City Innovations, LLC,
`973 F.3d 1321 (Fed. Cir. 2020) .............................................................................. 7
`Nespresso USA, Inc. v. K-Fee Sys. GmbH,
`No. IPR2023-00485, 2024 WL 4137278 (P.T.A.B. Sept. 10, 2024) ................... 26
`Palo Alto Networks, Inc. v. Centripetal Networks, LLC,
`122 F.4th 1378 (Fed. Cir. 2024) ...................................................................... 1, 13
`Polaris Indus. Inc. v. Arctic Cat, Inc.,
`724 Fed. App’x 948 (Fed. Cir. May 30, 2018) ....................................................... 2
`Taiwan Semiconductor Mfg. Co., v. Godo Kaisha IP Bridge 1,
`No. IPR2016-01246, 2018 WL 279638 (P.T.A.B. Jan. 3, 2018) ......................... 25
`Unwired Planet, LLC v. Google Inc.,
`841 F.3d 995 (Fed. Cir. 2016) ....................................................................... 16, 17
`
`
`
`
`
`viii
`
`
`
`I.
`
`INTRODUCTION
`Comcast Cable Communications, LLC (“Petitioner”) respectfully submits this
`
`reply brief in support of its Petition for inter partes review of claims 1-26 of U.S.
`
`Patent No. 8,356,251 (“the ’251 Patent”) (Ex. 1001).
`
`Patent Owner’s (“PO”) arguments for patentability should be rejected because
`
`PO improperly: focuses on the purported deficiencies of Mahajan in isolation,
`
`misapprehends how the Petition applies the teachings of Mahajan to the hardware
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`elements of Danciu and Aldrey, and fails to rebut how the Petition’s actual
`
`combinations of Danciu-Mahajan and Aldrey-Mahajan render claims 1-26 obvious.
`
`First, PO argues that the hardware architecture of Mahajan is incompatible
`
`with the claims. However, Mahajan’s architecture is not relied on in the asserted
`
`grounds; Danciu’s (or Aldrey’s) system is implemented in view of Mahajan’s
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`teachings regarding command conversion. Palo Alto Networks, Inc. v. Centripetal
`
`Networks, LLC, 122 F.4th 1378, 1386 (Fed. Cir. 2024) (where obviousness is
`
`asserted based on a combination, the references “must be read together, not in
`
`isolation” and arguments that attack the references individually lack merit.).
`
`Furthermore, the architecture of Mahajan that PO discusses is only a preferred
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`embodiment and Mahajan explicitly provides other examples including those that
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`“may be practiced in distributed computing environments, where tasks are
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`performed by remote processing devices that are linked through a communications
`
`1
`
`
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`network.” Ex. 1114, [0018].
`
`Second, PO repeatedly attacks the combinations as purportedly performing
`
`certain claim limitations in the wrong hardware element of Danciu and Aldrey. In
`
`so doing, PO applies the functionality of Mahajan’s server to the servers of Danciu
`
`and Aldrey. But this is a strawman, as the Petition explicitly sets forth that the server
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`command teachings of Mahajan are applied to the remote control devices of Danciu
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`and Aldrey, not their servers (Pet., 32, 67-68). See, e.g., Arctic Cat, Inc. v. Polaris
`
`Indus. Inc., No. IPR2015–01783, 2017 WL 506027, at *9 (P.T.A.B. Jan. 30, 2017)
`
`(finding PO’s argument “unpersuasive because it is not responsive to the ground of
`
`unpatentability asserted by Petitioner.”) remanded 724 Fed. App’x 948 (Fed. Cir.
`
`May 30, 2018) (to address noninstituted grounds). When combined as set forth in
`
`the Petition, the combinations disclose all of the limitations of the independent
`
`claims of the ’251 Patent.1
`
`Third, PO takes an overly-narrow view of the disclosure of Mahajan as well
`
`as the field of endeavor and the particular problem addressed by the ’251 Patent, in
`
`an attempt to rebut the motivation to combine Mahajan with Danciu and Aldrey.
`
`But Mahajan is applicable both to the ’251 Patent’s field of endeavor and problem
`
`addressed (properly understood) and a POSITA would have had ample reasons to
`
`
`1 PO does not separately argue for the patentability of any of the dependent claims.
`
`2
`
`
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`combine it with Danciu and Aldrey.
`
`Finally, PO proposes a level of skill in the art that is lower and more
`
`ambiguous than that proposed by Petitioner seemingly in a bid to fit the background
`
`of its expert rather than conform to the subject matter of the ’251 Patent.
`
`For the reasons set forth in the Petition and as further explained herein, claims
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`1-26 should be cancelled.
`
`II. ARGUMENT
`A. Danciu-Mahajan and Aldrey-Mahajan Teach the Limitations of
`Claims 1 and 11
`PO’s primary argument is that Mahajan does not disclose certain limitations
`
`of independent claims 1 and 11 because of allegedly “substantial differences
`
`between Mahajan’s architecture and the architecture required by claims 1–21 of the
`
`’251 patent.” POR, 24-25. PO is incorrect because the Danciu-Mahajan and Aldrey-
`
`Mahajan combinations do not rely on Mahajan’s architecture. When evaluated as
`
`actually set forth in the Petition, the combinations teach all of the limitations.
`
`1.
`
`The Petition Relies on the Hardware Architecture of Danciu
`and Aldrey, not Mahajan
`PO misrepresents Petitioner’s argument. The Petition does not rely on the
`
`architecture of Mahajan to disclose the claimed architecture, nor does the Petition
`
`alter Danciu or Aldrey’s architecture based on Mahajan. Rather, the Petition
`
`explains that in the Danciu-Mahajan combination, Danciu’s system is implemented
`
`3
`
`
`
`using certain teachings of Mahajan. In particular, the Petition explicitly states “a
`
`POSITA would have been motivated to implement Danciu’s system, comprising a
`
`remote control sending commands to a controlled device via a server, using known
`
`techniques for sending commands for media playback between a server and a client,
`
`such as is taught by Mahajan.” Pet., 31-32 (emphasis added). The hardware of the
`
`Danciu system is a three-element system (remote control 14, servers 24A-24N, and
`
`controlled device 18) virtually identical to that of the ’251 Patent.
`
`Danciu’s system, Ex. 1112, Fig. 1 (annotated); Pet., 26
`In attempting to contrast the ’251 Patent with Mahajan, PO included a figure of the
`
`
`
`’251 system (annotated below) that actually demonstrates how the ’251 Patent
`
`architecture closely corresponds to that of Danciu (shown above). Each includes a
`
`personal computing device (such as Danciu’s remote control 14), a server system
`
`(such as Danciu’s servers 24A-24N), and a display device (such as Danciu’s
`
`controlled device 18).
`
`4
`
`
`
`The ’251 system, POR, 26 (annotated)
` While the Petition does describe the operation of Mahajan’s preferred server-
`
`
`
`client embodiment (when Mahajan is introduced to the combination in the discussion
`
`of element [1E], Pet., 28-31), this description is provided to explain the teachings of
`
`Mahajan regarding conversion between genericized/universal commands and
`
`platform specific media playback commands. The Petition does not rely on the
`
`server-client hardware of Mahajan to show the hardware elements of the claims.
`
`Similarly, with regard to the Aldrey-Mahajan combination, the Petition
`
`describes that Aldrey’s system is implemented using certain teachings of Mahajan.
`
`When Mahajan is introduced to the Aldrey combination in the discussion of element
`
`[1F], the Petition again briefly describes the operation of Mahajan’s preferred server-
`
`client embodiment (Pet., 65-67) in order to explain the teachings of Mahajan. The
`
`Petition then states “a POSITA would have been motivated to implement Aldrey’s
`
`system, comprising an end terminal sending commands to a connected television,
`
`5
`
`
`
`using known techniques for sending commands for media playback between
`
`remote devices, such as is taught by Mahajan.” Pet., 67 (emphasis added). The
`
`hardware of the Aldrey system is also a three-element system like that of claims 1
`
`and 11:
`
`
`
`Aldrey’s system, Ex. 1115, Fig. 1 (annotated); Pet., 64
`In neither the Danciu-Mahajan combination nor the Aldrey-Mahajan
`
`combination does the Petition rely on the hardware architecture of Mahajan. PO’s
`
`arguments that compare Mahajan’s architecture to the ’251 Patent’s claims are
`
`irrelevant and should be disregarded.
`
`2.
`
`The Petition Does Not Locate Mahajan’s Server-Command
`Teachings in the Servers of Danciu and Aldrey
`Throughout the POR’s discussions of Mahajan, PO incorrectly analyzes the
`
`Petition’s combinations as if the teachings of Mahajan’s server (regarding
`
`conversion of platform specific commands into generic/universal commands) are
`
`6
`
`
`
`incorporated into the servers of Danciu and Aldrey. This misapprehension of the
`
`proposed combinations underlies, and renders fatally flawed, the POR’s repeated
`
`arguments that the step of “converting, by the server system, the universal playback
`
`control command into corresponding programming code” (e.g., POR, 29-31) and the
`
`step of “receiving, in the server system, one or more signals … further including a
`
`universal playback control command” (e.g., POR, 33-34) are not shown in the
`
`Petition because the steps purportedly occur in the wrong component.
`
`As in Arctic Cat, where the Board faulted patent owner for arguing “as if
`
`Petitioner proposes to modify [the primary reference] to position [a claimed
`
`component] exactly as positioned in [the secondary reference],” here PO incorrectly
`
`positions the teachings of Mahajan’s server commands in the servers of Danciu and
`
`Aldrey. Arctic Cat, 2017 WL 506027, at *8-9; Facebook, Inc. v. Windy City
`
`Innovations, LLC, 973 F.3d 1321, 1343 (Fed. Cir. 2020). In fact, the Petition
`
`expressly states
`
`that Mahajan’s
`
`teachings
`
`regarding
`
`the generation of
`
`genericized/universal playback commands are implemented in Danciu’s remote
`
`control, not Danciu’s server. Pet., 32 (“A POSITA would have understood that
`
`7
`
`
`
`Mahajan’s server-command teachings could be implemented on Danciu’s remote
`
`control”).2
`
`As discussed in the Petition, Mahajan’s server translates commands used by
`
`a local media player into generic universal commands that are then transmitted to
`
`Mahajan’s client. Pet., 29-31. Thus, when these teachings are implemented in
`
`Danciu’s remote control, it is the remote control that sends universal playback
`
`commands to Danciu’s server, thus disclosing the step of “receiving, in the server
`
`system, one or more signals … further including a universal playback control
`
`command.” Pet., 25-27, 38-39. While PO’s expert argues that Mahajan lacks a
`
`“genericized interface” where a user may generate a generic command directly (Ex.
`
`2025, ¶ 50), the claims do not recite that the universal playback control command is
`
`
`2 Petitioner has identified a typographical error in a later sentence on page 32 where
`
`“server” was accidentally replaced with “controlled device” thus resulting in the
`
`inaccurate statement that Danciu’s remote control would transmit generic commands
`
`to the controlled device. It is apparent that this was a typographical error because as
`
`explained on the prior page (Pet., 31), elsewhere in the Petition (e.g., Pet., 6-8, 25-
`
`27), and in Danciu (e.g., Ex. 1112, 4:46-55, 16:47-67, 17:13-43, Figs. 6-7), Danciu’s
`
`remote control transmits commands only to Danciu’s servers, which perform
`
`processing and then transmit commands to Danciu’s controlled device.
`
`8
`
`
`
`generated in any particular way at the personal computing device (i.e., remote
`
`control), merely that the server receives the universal playback control command
`
`from the personal computing device. Ex. 1101, 11:35-41, 12:42-49.
`
`The Petition also describes how, when the generic commands are received by
`
`Danciu’s server, the media abstraction modules taught by Mahajan would operate at
`
`Danciu’s server to translate the generic interface commands to commands specific
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`to the interface of a media player (Pet., 41-42), thus showing that the step of
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`“converting, by the server system, the universal playback control command into
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`corresponding programming code” occurs at Danciu’s server. The Petition further
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`explains that commands “formatted for a particular device, as taught by Mahajan”
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`(i.e., commands converted from a generic format to a media player specific format),
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`would be stored on Danciu’s server for subsequent transmission to the display
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`device. Pet., 42-43.
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`Similarly, with regard to Aldrey-Mahajan, the Petition states that Mahajan’s
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`teachings regarding the generation of genericized/universal playback commands are
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`implemented in Aldrey’s end terminal, not Aldrey’s server. Pet., 67-68 (“A
`
`POSITA would have understood that Mahajan’s server-command teachings could
`
`be implemented on Aldrey’s end terminal remote control”). Thus, when Mahajan’s
`
`teachings are implemented in Aldrey’s end terminal, the end terminal sends
`
`universal playback commands to Aldrey’s server, thus disclosing the step of
`
`9
`
`
`
`“receiving, in the server system, one or more signals … further including a universal
`
`playback control command.” When the generic commands are received by Aldrey’s
`
`server, the Petition describes how the media abstraction modules taught by Mahajan
`
`would operate at Aldrey’s server to translate the generic interface commands to
`
`commands specific to the interface of a media player (Pet., 71-72), thus showing that
`
`the step of “converting, by the server system, the universal playback control
`
`command into corresponding programming code” occurs at Aldrey’s server. The
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`Petition further describes that the commands formatted for Aldrey’s set-top box (i.e.,
`
`the particular media player) would be stored on Aldrey’s MSP server for
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`transmission to the device. Pet., 72.
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`In addition to fundamentally misunderstanding the proposed combinations,
`
`PO ignores that Mahajan’s teachings are not strictly limited to a server-client
`
`implementation. To the contrary, Mahajan describes that its system may be deployed
`
`in different ways. Ex. 1114, [0017]-[0018]; Ex. 1198, ¶¶ 6-7. Mahajan’s server and
`
`client functionality may be distributed across different components in a computing
`
`environment without regard to the type or relative capability of those devices:
`
`Various examples may be practiced in distributed computing
`environments, where tasks are performed by remote processing
`devices that are linked through a communications network. In a
`distributed computing environment, program modules may be located
`in both local and remote memory storage devices. Further, the terms
`
`10
`
`
`
`server and client as used herein do not connotate any relative
`capabilities of the two devices. The client may have more, less, or equal
`processing capabilities than the server. Rather, in this description, the
`names server and client describes [sic] the relative relationship of the
`two components. For example, a computing environment of a first or
`server device is remoted to a second or client device. For ease of
`explanation the examples provided in this document relate to a
`single server and a single client; however, this is but one potential
`configuration. It is to be appreciated that [] other implementations may
`include one or more servers supporting multiple clients. In some
`implementations a first computer may act as a server for a second
`computer, which acts as a server for a third computer.
`Ex. 1114, [0018] (emphasis added); Pet., 41, 72; Ex. 1198, ¶¶ 7-8.
`
`
`
`Mahajan repeats several times that its functionality can be distributed across
`
`multiple remote devices. Ex. 1114, [0058] (“The processes may also be practiced in
`
`a distributed computing environment where functions are performed by remote
`
`processing devices that are linked through a communications network.”); [0078]
`
`(“Typically, the functionality of the program modules may be combined or
`
`distributed as desired in various embodiments.”). The Petition cites all three of these
`
`paragraphs (18, 58, and 78) when explaining that Danciu’s or Aldrey’s servers can
`
`host media abstraction modules like that of Mahajan’s client (i.e., modules that
`
`perform the conversion from the universal playback command to programming code
`
`for a specific media player). Pet., 41, 72. None of these paragraphs are addressed in
`
`11
`
`
`
`the POR or Dr. Wicker’s declaration. In the POR, the only citations to paragraphs
`
`18, 58, and 78 of Mahajan are in quotations of the Petition. POR, 37, 40. Dr.
`
`Wicker’s declaration does not cite or address these paragraphs at all. PO’s failure
`
`to address these paragraphs is striking given that the Board specifically discussed
`
`them in the Institution Decision. ID, 34-35.
`
`Furthermore, Dr. Wicker conceded in deposition that distributed computing
`
`and controlling a computer system across a network were known to a POSITA at the
`
`time of the invention of the ’251 Patent. Ex. 1197, 11:18-21, 20:22-22:21. Dr.
`
`Wicker also admitted that a POSITA would be able to implement the abstraction
`
`layer of Mahajan on a server in the network and that this would be consistent with
`
`Figure 1 of Mahajan. Ex. 1197, 17:4-20:21.
`
`Mahajan further describes that its system is not limited to being implemented
`
`in traditional PC computers but rather may be realized in cell phones or mobile
`
`devices, and that such a device can act as a server or as a client:
`
`Various examples may be implemented in computer system
`configurations other than a PC. For example, various embodiments
`may be realized in hand-held devices, multiprocessor systems,
`microprocessor-based or programmable consumer electronics, network
`PCs, minicomputers, mainframe computers, cell phones and the like.
`Further, as technology continues to evolve, various implementations
`may be realized on yet to be identified classes of devices. For example,
`as the cost of a unit of processing power continues to drop and wireless
`
`12
`
`
`
`technologies expand, computing devices resembling today's cell
`phones may perform the functionalities of today's PC, video camera,
`cell phone, and more in a single mobile device. This single device
`may in one scenario act as a server and in another scenario act as
`a client.
`Ex. 1114, [0017] (emphasis added); Pet., 32, 68. When explaining that Mahajan’s
`
`teachings would be implemented on Danciu’s remote control, the Petition
`
`specifically cited paragraph 17. Pet., 32 (“A POSITA would have understood that
`
`Mahajan’s server-command teachings could be implemented on Danciu’s remote
`
`control, particularly because both disclosures reference those respective devices
`
`being a mobile phone. Ex. 1112, 5:1-28; Ex. 1114, [0017]; Ex. 1102, ¶ 162.”); Ex.
`
`1198, ¶ 9. The Petition similarly cites paragraph 17 when it explains that Mahajan’s
`
`server-command teachings could be implemented on Aldrey’s end terminal. Pet.,
`
`67-68. As with paragraph 18 of Mahajan, the POR and Dr. Wicker’s declaration
`
`simply do not address paragraph 17 of Mahajan.
`
`For all these reasons, the POR’s arguments that Danciu-Mahajan and Aldrey-
`
`Mahajan cannot meet the “converting, by the server system, the universal playback
`
`control command into corresponding programming code” and the “receiving, in the
`
`server system, one or more signals … further including a universal playback control
`
`command” limitations are based on a mischaracterization of the Petition’s
`
`combinations. Palo Alto Networks, 122 F.4th at 1386; Bradium Techs. LLC v. Iancu,
`
`13
`
`
`
`923 F.3d 1032, 1050 (Fed. Cir. 2019). When analyzed as actually set forth in the
`
`Petition, Danciu-Mahajan and Aldrey-Mahajan teach the “converting” and
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`“receiving” limitations of claims 1 and 11.
`
`The POR also argues that the Petition’s statement that “it would have been
`
`obvious to a POSITA that one or more RTS Media Abstraction Modules could
`
`operate at a server, such as in Servers 24A-24N” fails to show a motivation to
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`combine because it uses the word “could” instead of “would.” POR, 40. This
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`argument is misplaced because the Petition already explained why a POSITA would
`
`be motivated to combine Mahajan and Danciu when Mahajan was earlier introduced
`
`(Pet., 31-33). The discussion that PO cites (Pet., 41) merely confirms that a POSITA
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`would successfully make the combination (i.e., that Media Abstraction Modules
`
`could operate at a server as explained by paragraphs 18, 58, and 78 of Mahajan
`
`discussed above) having already been motivated to do so as previously explained by
`
`the Petition.
`
`3.
`
`Danciu-Mahajan and Aldrey-Mahajan teach “selecting from
`among a plurality of specific commands … for a respective
`media player”
`PO argues that the Petition fails to show that the asserted combinations teach
`
`“selecting from among a plurality of specific commands, each of which represents a
`
`corresponding playback control command for a respective media player.” POR, 31-
`
`33. PO again makes the mistake of applying Mahajan’s teachings regarding
`
`14
`
`
`
`generating generic/universal commands to the servers of Danciu and Aldrey, which
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`is incorrect as explained above. Furthermore, to the extent that PO is arguing that
`
`converting Mahajan’s universal commands to commands specific to the media
`
`player does not select from a plurality of commands for a plurality of different media
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`players, that is also incorrect.
`
`While the RTS mapping table 304 of Mahajan Figure 3 shows a mapping of
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`a universal command (e.g., “StartPlayback”) to a single platform specific command
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`(e.g., “IMFMediaSession::Start”), Mahajan also describes how “other mapping
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`tables can include multiple translations.” Ex. 1114, [0041]; Pet., 40-42, 66-67. In
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`particular, Mahajan provides an example of the client having two media players,
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`QuickTime and Ogg, which would be supported in the mapp
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