IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`
`APPLE INC. AND TWITTER, INC.
`Petitioner
`
`v.
`
`SUMMIT 6, LLC
`Patent Owner
`_____________________
`
`Case No.: IPR2015-00686
`Patent 7,765,482
`_____________________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,765,482
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`Submitted by:
`/Jason D. Eisenberg/
`Jason D. Eisenberg, Reg. No. 43,447
`February 4, 2015
`Attorney for Petitioner
`
`
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`

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`Petition for Inter Partes Review of U.S. Patent No. 7,765,482
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`TABLE OF CONTENTS
`
`
`I.
`II.
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`VI.
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`INTRODUCTION ........................................................................................... 1
`OVERVIEW .................................................................................................... 2
`A.
`The alleged invention of the ’482 patent ............................................... 2
`B.
`Related Reexamination ......................................................................... 3
`C.
`State of the prior art ............................................................................... 3
`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 4
`IV. CLAIM CONSTRUCTION ............................................................................ 5
`V.
`SUMMARY OF THE PRIOR ART OF THE ’482 PATENT
`FORMING THE BASIS OF THIS PETITION .............................................. 6
`A. Mattes .................................................................................................... 6
`IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.104(b)) ................... 7
`A. Ground 1: Claims 1, 4, 6, 8, 10, 12, 25, 37, and 51 are invalid as
`obvious over Mattes. ...........................................................................10
`1.
`Summary of Ground 1 against independent claim 1. ...............11
`a)
`[1.P]: a computer implemented method of pre-processing
`
`digital content in a client device for subsequent electronic
`publishing .......................................................................11
`[1.1.1]: receiving pre-processing parameters from a
`remote device said pre-processing parameters including a
`specification of an amount of digital content .................12
`[1.1.2]: said digital content including one or more of
`image content, video content, and audio content ...........14
`[1.2.1]: receiving an identification of a group of one or
`more items of digital content for transmission ...............14
`[1.2.2]: a collective digital content of said group of one
`or more items of digital content being limited by said
`received pre-processing parameters ...............................15
`[1.3.1]: pre-processing said identified group of one or
`more items of digital content using said received pre-
`processing parameters .....................................................16
`[1.3.2]: said received pre-processing parameters
`controlling said client device in a placement of said
`identified group of one or more items of digital content
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`b)
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`c)
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`d)
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`e)
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`f)
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`g)
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`h)
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`i)
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`j)
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`k)
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`l)
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`into a specified form for publication to one or more
`devices that are remote from a server device and said
`client device ....................................................................16
`[1.4]: transmitting said pre-processed group of one or
`more items of digital content to said server device for
`subsequent publishing to said one or more devices that
`are remote from said server device and said client device
` ........................................................................................18
`[4.1] wherein said receiving an identification comprises
`receiving an identification of a plurality of items of
`digital content. ................................................................19
`[6.1] wherein said pre-processing comprises reducing a
`file size or compressing said digital content. .................19
`[8.1] transmitting identifying information for said pre-
`processed group of one or more items of digital content.
` ........................................................................................20
`[10.1]: wherein said pre-processing comprises resizing
`said digital content ..........................................................21
`Summary of Ground 1 against independent claim 12. .............22
`a)
`[12.P]: a computer implemented method of pre-
`
`processing media objects in a local device for subsequent
`transmission to a remote device......................................22
`[12.1]: receiving pre-processing parameters from a
`remote device, said pre-processing parameters including
`a specification of an amount of media data ....................23
`[12.2]: receiving an identification of a group of one or
`more media objects for transmission, a collective media
`data of said group of one or more media objects being
`limited by said received pre-processing parameters .......25
`[12.3]: pre-processing said identified group of one or
`more media objects using said received pre-processing
`parameters, wherein said pre-processing comprises
`encoding or otherwise converting said media object .....25
`[12.4]: transmitting said pre-processed group of one or
`more media objects to the remote device .......................26
`Summary of Ground 1 against independent claim 25. .............27
`a)
`[25.P]: A computer implemented method of pre-
`
`processing media objects in a local device for subsequent
`transmission to a remote device......................................27
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`2.
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`3.
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`b)
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`c)
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`d)
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`e)
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`b)
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`c)
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`d)
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`e)
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`f)
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`b)
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`[25.1]: receiving an identification of a media object for
`transmission to said remote device .................................28
`[25.2.1]: pre-processing said identified media object at
`said local device in accordance with one or more pre-
`processing parameters that are received from a device
`separate from said client device to produce a pre-
`processed media object ...................................................29
`[25.2.2]: wherein said pre-processing comprises encoding
`or otherwise converting said media object .....................30
`[25.3]: retrieving information that enables identification
`of a user, said retrieved information being available to
`said local device prior to said received identification ....30
`[25.4]: transmitting a message from said local device to
`said remote device, said transmitted message including
`said pre-processed media object and said retrieved
`information .....................................................................31
`Summary of Ground 1 against independent claim 37. .............32
`a)
`[37.P]: a computer implemented method of distributing
`
`digital content that has been pre-processed by a client
`device ..............................................................................32
`[37.1.1]: receiving, from said client device, pre-processed
`digital content that includes one or more of image
`content, video content, and audio content, and
`information retrieved by said client device that enables
`identification of a user, said retrieved information being
`available to said client device prior to an identification of
`said digital content at said client device .........................33
`[37.1.2]: wherein said digital content is pre-processed by
`said client device in accordance with pre-processing
`parameters that were provided to said client device by a
`device separate from said client device, .........................35
`[37.1.3]: said pre-processing parameters controlling said
`client device in a placement of said digital content into a
`specified form in preparation for distribution to one or
`more devices that are remote from a server device and
`said client device; and .....................................................37
`[37.2]: distributing, by said server device via an
`electronic network, information based on said pre-
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`4.
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`c)
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`d)
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`e)
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`b)
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`c)
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`d)
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`e)
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`Petition for Inter Partes Review of U.S. Patent No. 7,765,482
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`5.
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`processed digital content to one or more devices that are
`remote from said server device and said client device. ..38
`Summary of Ground 1 against independent claim 51. .............39
`a)
`[51.P]: a computer implemented method for distributing
`
`digital content that has been pre-processed by a client
`device ..............................................................................39
`[51.1.1]: receiving, from said client device, digital
`content that has been pre-processed at said client device
`in accordance with one or more pre-processing
`parameters that have been provided to said client device
`from a device separate from said client device ..............40
`[51.1.2]: said digital content including one or more of
`image content, video content, and audio content ...........41
`[51.1.3]: said one or more pre-processing parameters
`controlling said client device in a placement of said
`digital content into a specified form in preparation for
`distribution to one or more devices that are remote from a
`server device and said client device ...............................41
`[51.2]: publishing, by said server device via an electronic
`network, information based on said pre-processed digital
`content to one or more devices that are remote from said
`server device and said client device. ..............................43
`VII. MANDATORY NOTICES (37 C.F.R. § 42.8(a)(1)) ....................................44
`A.
`Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1)) ................................44
`B.
`Related Matters (37 C.F.R. § 42.8(b)(2)) ............................................44
`C.
`Designation of Lead and Back-Up Counsel (37 C.F.R. §
`42.8(b)(3)) ...........................................................................................45
`Service Information (37 C.F.R. § 42.8(b)(4)) .....................................45
`D.
`VIII. STANDING (37 C.F.R. § 42.104(a)) ............................................................45
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`Petition for Inter Partes Review of U.S. Patent No. 7,765,482
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`TABLE OF AUTHORITIES
`
`Cases
`B.F. Goodrich Co. v. Aircraft Braking Sys. Corp.,
`72 F.3d 1577 (Fed. Cir. 1996) ................................................................................ 9
`
`Boston Scientific v. Cordis,
`554 F.3d 982, 991 (Fed. Cir. 2009 .......................................................................18
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................... 8
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................... 9
`
`Leapfrog Enters, Inc.. v. Fisher-Price, Inc.,
`485 F.3d 1157 (Fed. Cir. 2007) .............................................................................. 8
`
`Samsung Electronics Co., Ltd. v. Virginia Innovation Sciences ,Inc.,
`IPR2013-00569, Paper 9 (P.T.A.B. March 6, 2014) .............................................. 5
`
`SIBIA Neurosciences, Inc. v. Cadus Pharmaceutical Corp.,
`225 F.3d 1349 (Fed. Cir. 2000) .............................................................................. 9
`
`Wyers v. Master Lock Co.,
`616 F.3d 1231 (Fed. Cir. 2010) .............................................................................. 8
`
`Statutes
`
`35 U.S.C. § 102 ........................................................................................................44
`
`35 U.S.C. § 103 ......................................................................................................1, 9
`
`35 U.S.C. § 103(a) ...................................................................................................10
`
`35 U.S.C. §102(b) ...................................................................................................... 7
`
`Rules
`
`37 C.F.R. § 42.10(b) ................................................................................................45
`
`37 C.F.R. § 42.104(a) ...............................................................................................45
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`Petition for Inter Partes Review of U.S. Patent No. 7,765,482
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`37 C.F.R. § 42.104(b) ................................................................................................ 7
`
`37 C.F.R. § 42.106(a) ...............................................................................................45
`
`37 C.F.R. § 42.63(e) .................................................................................................45
`
`37 C.F.R. § 42.8 .......................................................................................................44
`
`37 C.F.R. § 42.8(a)(1) ..............................................................................................44
`
`37 C.F.R. § 42.8(b)(1) ..............................................................................................44
`
`37 C.F.R. § 42.8(b)(2) ..............................................................................................44
`
`37 C.F.R. § 42.8(b)(3) ..............................................................................................45
`
`37 C.F.R. § 42.8(b)(4) ..............................................................................................45
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`Petition for Inter Partes Review of U.S. Patent No. 7,765,482
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`EXHIBIT LIST1
`
` Exh. No.
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`Description
`U.S. Patent No. 7,765,482 to Wood et al., issued July 27, 2010
`(“the ’482 patent”)
`Declaration of Dr. Andrew Lippman in Support of Petition for Inter
`Partes Review of U.S. Patent No. 7,765,482, February 4, 2015 with
`Curriculum Vitae (“Lippman Decl.”)
`U.S. Patent No. 6,930,709 to Creamer et al., issued August 16,
`2005 (“Creamer”)
`U.S. Provisional Patent Application No. 60/067,310 to Creamer,
`filed December 4, 1997 (“Creamer ’97”)
`U.S. Provisional Patent Application No. 60/085,585 to Creamer,
`filed May 15, 1998 (“Creamer ’98”)
`U.S. Patent No. 6,038,295 to Mattes, issued March 14, 2000
`(“Mattes”)
`Claim Construction Order, Summit 6 LLC v. Research in Motion
`Corp., CA No. 3:11-cv-367-O (N.D. Tex., May 21, 2012) (“Claim
`Constr. Order”)
`Partial File History of Ex Parte Reexamination of U.S. Patent
`7,764,482, Control No. 90/012,987 (“Reexam FH”)
`U.S. Patent No. 8,612,515 to Wood et al., issued December 17,
`2013 (“the ’515 patent”)
`
`
`1 This Exhibit list covers two inter partes review petitions being filed against
`
`the ’515 patent and four inter partes review petitions being filed against the ’482
`
`patent. Not all exhibits are used in each petition or declaration, but to facilitate the
`
`Board’s review of the six petitions, Petitions have used the same exhibit numbers
`
`across all six petitions.
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`Petition for Inter Partes Review of U.S. Patent No. 7,765,482
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` Exh. No.
`1010
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`Description
`
`Intentionally Left Blank
`U.S. Patent No. 6,092,114 to Shaffer et al., issued July 18, 2000
`(“Shaffer”)
`U.S. Patent No. 6,223,190 to Aihara et al., issued April 24, 2001
`(“Aihara”)
`U.S. Patent No. 5,875,296 to Shi et al., issued February 23, 1999
`(“Shi”)
`EP 0838774A2 Application (DE), published April 29, 1998 (“Ban-
`dini”)
`Godin, You’ve Got Pictures: AOL’s Guide to Digital Imaging
`(1998) (“Godin”)
`Lu et al., eWorld – The Official Guide for Macintosh Users, Hay-
`den Books, 1994 (“eWorld”)
`Jain et al., “The Design and Performance of MedJava,” Proceedings
`of the 4th USENIX Conference, on Object-Oriented Technologies
`and Systems (COOTS), April 1998 (“MedJava”)
`U.S. Patent No. 6,018,774 to Mayle et al., issued January 25, 2000
`(“Mayle”)
`U.S. Patent No. 6,567,122 to Anderson et al., issued May 20, 2003
`(“Anderson ’122”)
`U.S. Patent No. 6,118,480 to Anderson et al., issued September 12,
`2000 (“Anderson ’480”)
`Rose et al., NeXTSTEP Applications Manual (1990)
`(“NeXTSTEP”)
`U.S. Patent No. 6,370,193 to Lee et al., issued April 9, 2002
`(“Lee”)
`U.S. Patent No. 6,075,528 to Curtis, issued June 13, 2000 (“Cur-
`tis”)
`U.S. Patent No. 6,895,557 to Wood et al., issued May 17, 2005
`(“the ’557 patent”)
`Opening Claim Construction Brief of Plaintiff Summit 6, LLC,
`Summit 6 LLC v. HTC Corp., No. 7:14-cv-00014 (N.D. Tex. Dec.
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,765,482
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` Exh. No.
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`1026
`
`1027
`
`1028
`
`Description
`29, 2014) (“Op. CC Brief”)
`Defendants’ Opening Claim Construction Brief, Summit 6 LLC v.
`HTC Corp., No. 7:14-cv-00014 (N.D. Tex. Dec. 30, 2014) (“Def.
`Op. CC Brief”)
`Amended Joint Claim Construction and Prehearing Statement,
`Summit 6 LLC v. HTC Corp., No. 7:14-cv-00014 (N.D. Tex. Jan.
`27, 2014) (“Joint Claim Constr.”)
`Ahuja, Jasmine J., Client-Server Applications in Java, Pace Univ.
`Dec. 1997 (“Ahuja”)
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,765,482
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`I.
`
`INTRODUCTION
`Apple Inc. and Twitter, Inc. jointly petition for inter partes review of claims
`
`1, 4, 6, 8, 10, 12, 25, 37, and 51 of U.S. Patent No. 7,765,482 to Wood et al. (“the
`
`ʼ482 patent”). The ʼ482 patent is provided as Exhibit 1001. This is the third of four
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`petitions being filed against the ’482 patent. This third petition presents a single
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`ground: Claims 1, 4, 6, 8, 10, 12, 25, 37, and 51 are obvious under 35 U.S.C. § 103
`
`in view of U.S. Patent No. 6,038,295 to Mattes, issued March 14, 2000 (“Mattes”).
`
`The different grounds set forth in the four ’482 petitions are independent,
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`distinct, and not redundant. The first petition requests cancellation of claims 1, 4,
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`6, 8, 10, 12, 25, and 51 of the ’482 patent as being obvious over Creamer. The se-
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`cond petition requests cancellation of claims 13, 14, 16-23, 35, 37, 38, 40-42, 44-
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`46, and 49 as being obvious over Creamer. The third petition requests cancellation
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`of claims 1, 4, 6, 8, 10, 12, 25, 37 and 51 as being obvious over Mattes. And the
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`fourth petition requests cancellation of claims 13, 14, 19, 21-23, 38, 40-42, 44, 45
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`and 49 as being obvious over Mattes and also asserts a second ground against
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`claims 16-18, 20, 35, and 46 as being obvious over Mattes in view of Creamer. Pe-
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`titioner minimized the petitions and references used to achieve a “just, speedy and
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`inexpensive resolution” consistent with 37 C.F.R. § 42.1(b). Accordingly, Petition-
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`er requests full adoption of all proposed grounds in all four petitions.
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`Petition for Inter Partes Review of U.S. Patent No. 7,765,482
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`II. OVERVIEW
`A. The alleged invention of the ’482 patent
`The ’482 patent claims priority to U.S. Pat. No. 6,895,557 (“the ’557 pa-
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`tent”), which has a filing date of July 21, 1999. The ’482 patent is directed to an
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`“improved web-based media submission tool” that is “configurable to perform a
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`variable amount of intelligent pre-processing on media objects prior to upload.”
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`(’482 patent, Ex. 1001, Abstract.) As disclosed in the ’482 patent, the web-based
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`media submission tool comprises two primary components: (1) the media object
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`identifier and (2) the media sender. (Id. at 3:10-14.)
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`The primary task of the media object identifier is to place and associate a
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`media object such as a digital image from a user’s computing device onto a web
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`page external to that device. (Id. at 3:15-18.) First, one or more media objects (e.g.,
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`digital images) are selected for submission and optionally tagged with identifying
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`information by the user. (Id.) The media object identifier then “pre-processes the
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`images using “client-side intelligence.” (Id. at 5:53-56.) The ’482 patent identifies
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`many examples of pre-processing, including resizing the image (by physical di-
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`mensions, pixel count, file size), compressing an image, changing the file format of
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`an image (i.e., conversion to JPEG), changing the quality setting of the image,
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`cropping the image, adding text or annotations to an image, encoding the image, or
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`adjusting image values such as contrast or saturation. (Id. at 5:60-67.) The ’482 pa-
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`Petition for Inter Partes Review of U.S. Patent No. 7,765,482
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`tent also claims that the pre-processing parameters can be sent to the client device
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`from a remote device such as a server (e.g., claim 1 of ’482 patent).
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`Once the digital content (i.e., the digital images) has been pre-processed ac-
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`cording to the parameters received from the remote device, the local device can
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`transmit the images, along with identifying information, to the server that publishes
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`them to the Internet. (’482 patent, 3:60-64.)
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`B. Related Reexamination
`As mentioned previously, the ’482 patent is subject to a pending ex parte
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`reexamination by the USPTO, in which all considered claims currently stand re-
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`jected. Patent Owner has filed an Appeal Brief, to which the Examiner filed an an-
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`swer on January 20, 2015. In the reexamination, the Office has found that claims
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`38, 40, 44-46 and 49 are unpatentable as being anticipated by both Creamer (U.S.
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`Patent 6,930,709) and Mattes (U.S. Patent 6,038,295).
`
`State of the prior art
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`C.
`Long before the filing of the priority application that led to the ’482 patent,
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`people used graphical user interfaces and web-browser applications for file transfer
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`and sharing between devices, or for publishing on the Internet. (Lippman Dec., Ex.
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`1002 ¶ 40.) Not only had the study of “distributed computing” became its own
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`branch of computer science in the late 1970s and early 1980s, but transmitting pa-
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`rameters from one device to a second device in order to the enable the second de-
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`vice to process files (e.g., media files) was a widely known and commonly used
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`technique. (Id. at ¶ 40.) Indeed, the ’482 patent admits that such systems were
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`known in the art. For example, the ’482 patent describes a system known as “Ac-
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`tiveUpload” that “allows an arbitrary file to be dragged and dropped onto a web
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`page control for upload to the web server.” (’482 patent, 1:51-52.) Other features
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`claimed in the ’482 patent—such as “transmitting identifying information associat-
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`ed with a media file” and “retrieving/transmitting user-identifying infor-
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`mation/authorization and access” (including caption and location information), as
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`well as the combination of such features—were also well known in the art long be-
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`fore the date of the alleged invention. Indeed, the prior art is replete with examples
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`of them.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art (“POSA”) is presumed to be aware of all
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`pertinent art, thinks along conventional wisdom in the art, and is a person of ordi-
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`nary creativity. With respect to the ’482 patent, a POSA would typically have at
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`least (a) a Bachelor of Science degree in computer science (or similar field, e.g.,
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`electrical engineering), or (b) at least three to five years’ industry experience in the
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`general field of software engineering and web design. (Id. at ¶ 55.)
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`Petition for Inter Partes Review of U.S. Patent No. 7,765,482
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`IV. CLAIM CONSTRUCTION2
`The ’482 patent claim terms must be given their broadest reasonable inter-
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`pretation, as understood by one of ordinary skill in the art and consistent with the
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`disclosure. Although a district court’s construction of similar terms in the ’482 pa-
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`tent may be informative (Ex. 1007), because the Board applies the broadest rea-
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`sonable construction standard, the Board’s construction may not be the same as
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`that adopted by that district court, which applies a different standard. See Samsung
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`Electronics Co., Ltd. v. Virginia Innovation Sciences, Inc., IPR2013-00569, Paper
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`9 , p. 2 (P.T.A.B. October 30, 2013). The following terms and phrases from the
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`claims of the ’482 patent might require construction based on arguments in the re-
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`lated litigations and reexaminations, and are construed below in accordance with
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`these principles for the purpose of this inter partes review proceeding. The plain
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`and ordinary meaning should be applied to any claim terms that are not addressed
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`below.
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` “Pre-processing” should be construed as “modifying before further pro-
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`cessing.” 3 (Lippman Dec. ¶¶ 60-71.)
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`2 Petitioner is currently litigating claim construction in concurrent district
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`court litigation and reserves the right to assert and, in fact, has asserted different
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`claim constructions in that litigation.
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`Petition for Inter Partes Review of U.S. Patent No. 7,765,482
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`V.
`
`SUMMARY OF THE PRIOR ART OF THE ’482 PATENT FORMING
`THE BASIS OF THIS PETITION
`A. Mattes
`U.S. Patent No. 6,038,295 to Mattes is titled “Apparatus and Method For
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`Recording, Communicating and Administering Digital Images.” Mattes was filed
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`June 17, 1997, and issued March 14, 2000. Therefore, Mattes is considered prior
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`3 In the pending ex parte reexamination, Patent Owner contends that the
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`term “pre-processing” must be limited solely to compressing the image for publica-
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`tion and cannot be directed to unrelated objectives such as storage or archiving.
`This argument was rejected by the Examiner.
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`Patent Owner has also argued that “receiving an identification” must be lim-
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`ited to receiving a manual selection by a “user” of a “subset” of stored images via a
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`“screen.” This argument does not comport with the broadest reasonable interpreta-
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`tion standard. Other claims of the ’482 patent expressly specify a manual input by
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`a user. (See, e.g., claim 5 disclosing that “receiving an identification comprises re-
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`ceiving a click command at said client device.” (’482 patent, 9:54-56 (emphasis
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`added).) Furthermore, neither the claims of the ’482 patent nor the specification
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`specifies that the identification must be a “subset” of stored images and does not
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`contain any language that would exclude the identification of any or all stored im-
`ages.
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`Petition for Inter Partes Review of U.S. Patent No. 7,765,482
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`art under 35 U.S.C. §102(b).
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`Like the ’482 patent, Mattes relates to a device that (1) receives a parameter
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`from another device, (2) uses that parameter to process digital content prior to
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`transmission (“pre-process”), and (3) transmits
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`that pre-processed digital content. FIG. 1 of
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`Mattes is shown to the right.
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`More specifically, in Mattes, Telephone
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`Unit TE is a device that (1) receives a quanti-
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`zation parameter from the Control Unit ST in-
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`side Server S, (2) pre-processes a digital image captured by a camera in the tele-
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`phone unit by using the received quantization parameter to compress the digital
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`image, and (3) transmits the compressed digital image to Server S for publication
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`on the World Wide Web.
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`VI.
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`IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.104(b))
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`Petitioner requests cancellation of claims 1, 4, 6, 8, 10, 12, 25, 37, and 51 of
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`the ’482 patent based on a single ground (Ground 1) as being obvious over Mattes
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`With respect to Ground 1, although Mattes teaches each and every feature of the
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`challenged claims, some features may be seen as requiring corroboration from the
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`expert. The petition, therefore, presents the grounds under obviousness instead of
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`anticipation. A detailed statement of the reasons for the relief requested is set forth
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`Petition for Inter Partes Review of U.S. Patent No. 7,765,482
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`in Section VI below.
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`Obviousness is a question of law that is resolved on the basis of underlying
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`factual determinations, including: (1) the scope and content of the prior art, (2) any
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`differences between the claimed subject matter and the prior art, (3) the level of
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`skill in the art, and (4) when in evidence, so-called secondary considerations. Gra-
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`ham v. John Deere Co., 383 U.S. 1, 17-18 (1966).4
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`As the Supreme Court has explained, “[t]he combination of familiar ele-
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`ments according to known methods is likely to be obvious when it does no more
`
`
`4 Petitioners reserve the right to provide a full rebuttal to any secondary con-
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`sideration evidence that Patent Owner provides during these proceedings. Petition-
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`ers cannot address such evidence now because Patent Owner has not yet provided
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`any, and the evidence of alleged secondary considerations that Patent Owner used
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`in the prior litigation is mostly sealed. Petitioners note, however, that “[f]or objec-
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`tive evidence of secondary considerations to be accorded substantial weight, its
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`proponent must establish a nexus between the evidence and the merits of the
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`claimed invention.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir.
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`2010). Moreover, a strong showing of obviousness, as in this case, overcomes
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`secondary considerations. See, e.g., Leapfrog Enters, Inc.. v. Fisher-Price, Inc.,
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`485 F.3d 1157, 1162 (Fed. Cir. 2007).
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`Petition for Inter Partes Review of U.S. Patent No. 7,765,482
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`than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
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`(2007). The Supreme Court further explained in KSR that, “[w]hen a work is avail-
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`able in one field of endeavor, design incentives and other market forces can prompt
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`variations of it, either in the same field or a different one. If a person of ordinary
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`skill can implement a predictable variation, § 103 likely bars its patentability.” Id.
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`at 417. Indeed, the Supreme Court held that it is sufficient that a combination of
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`elements was “obvious to try,” holding that, “[w]hen there is a design need or mar-
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`ket pressure to solve a problem and there are a finite number of identified, predict-
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`able solutions, a person of ordinary skill has good reason to pursue the known op-
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`tions within his or her technical grasp. If this leads to the anticipated success, it is
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`likely the product not of innovation but of ordinary skill and common sense.”
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`In appropriate circumstances, a single prior art reference can render a claim
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`obvious. See, e.g., SIBIA Neurosciences, Inc. v. Cadus Pharmaceutical Corp., 225
`
`F.3d 1349, 1356 (Fed. Cir. 2000); B.F. Goodrich Co. v. Aircraft Braking Sys.
`
`Corp., 72 F.3d 1577, 1582 (Fed. Cir. 1996). As when multiple reference are used,
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`there must be a suggestion or some other motivation to modify the teachings of
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`that reference to the claimed invention in order for the reference to render the in-
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`vention obviousness. See B.F. Goodrich, 72 F.3d at 1582.
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`Petitioner identifies below how the prior art renders the challenged claims of
`
`the ’482 patent obvious. Given the similarity of many of the challenged claims,
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`Petition for Inter Partes Review of U.S. Patent No. 7,765,482
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`some of the explanations below refer to earlier discussions of the same or similar
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`claims to avoid repetition. In such cases, the prior referenced discussions are in-
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`corporated fully by reference in the later explanations.
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`A. Ground 1: Claims 1, 4, 6, 8, 10, 12, 25, 37, and 51 are invalid as
`obvious over Mattes.
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`Mattes teaches each and every element of independent claims 1, 4, 6, 8, 10,
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`12,, 25, 37, and 51 and thus renders these claims obvious under 35 U.S.C. § 103(a).
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`Both Mattes and the ’482 patent discuss devices that (1) receive pre-processing pa-
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`rameters from a remote device, (2) pre-process digital content in accordance with
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`the received pre-processing parameters, and (3) transmit the pre-processed digital
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`content to a remote device for ultimate distribution to the World Wide Web. As
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`outlined in detail below, Mattes teaches all the features recited in the challenged
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`claims of the ’482 patent. The reason for this is plain—both Mattes and the ’482
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`patent are directed to devices that perform similar functions.
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`Petition for Inter Partes Review of U.S. Patent No. 7,765,482
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`1.
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`Summary of Ground 1 against independent claim 1.
`a)
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`[1.P]: a computer implemented