Trials@uspto.gov
`571-272-7822
`
`Paper 8
`Date Entered: October 19, 2015
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FRIENDFINDER NETWORKS INC., STREAMRAY INC., WMM, LLC,
`WMM HOLDINGS, LLC, MULTI MEDIA, LLC, AND
`DUODECAD IT SERVICES LUXEMBOURG S.À.R.L,
`Petitioner,
`
`v.
`
`WAG ACQUISITION, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01037
`Patent 8,122,141 B2
`____________
`
`
`
`
`
`
`Before GLENN J. PERRY, TREVOR M. JEFFERSON, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`571-272-7822
`
`Paper 8
`Date Entered: October 19, 2015
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FRIENDFINDER NETWORKS INC., STREAMRAY INC., WMM, LLC,
`WMM HOLDINGS, LLC, MULTI MEDIA, LLC, AND
`DUODECAD IT SERVICES LUXEMBOURG S.À.R.L,
`Petitioner,
`
`v.
`
`WAG ACQUISITION, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01037
`Patent 8,122,141 B2
`____________
`
`
`
`
`
`
`Before GLENN J. PERRY, TREVOR M. JEFFERSON, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2015-01037
`Patent 8,122,141 B2
`
`
`
`BACKGROUND
` Friendfinder Networks Inc., Streamray Inc., WMM, LLC,WMM
`HOLDINGS, LLC, Multi Media, LLC, and Duodecad IT Services
`Luxembourg S.À.R.L (collectively, “Petitioner”) filed a petition, Paper 2
`(“Pet.”), to institute an inter partes review of claims 1–28 (the “challenged
`claims”) of U.S. Patent No. 8,122,141 (“the ’141 Patent”). 35 U.S.C. § 311.
`WAG Acquisition, LLC (“Patent Owner”) timely filed a Preliminary
`Response, Paper 6 (“Prelim. Resp.”) contending that the petition should be
`denied as to all challenged claims. We have jurisdiction under 37 C.F.R.
`§ 42.4(a) and 35 U.S.C. § 314, which provides that an inter partes review
`may not be instituted unless the information presented in the Petition “shows
`that there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.”
`For the reasons described below, we decline to institute inter partes
`review of all the challenged claims.
`
`REAL PARTIES IN INTEREST
`Petitioner identifies the following real parties-in-interest:
`FriendFinder Networks Inc., StreamRay Inc., WMM, LLC, WMM
`Holdings, LLC, Multi Media, LLC, Various, Inc., Interactive Network, Inc.,
`DataTech Global, LLC, DataTech Systems, LLC, Docler USA, LLC,
`Duodecad IT Services Luxembourg S.à r.l., Docler Holding S.à r.l., Gattyàn
`Family Irrevocable Trust (including Mr. György Gattyàn in his capacity as
`Grantor and Investment Advisor), Duodecad IT Services Hungary KFT, and
`Gattyàn Group S.à r.l. Pet. 2.
`
`
`
`2
`
`
`
`
`
`IPR2015-01037
`Patent 8,122,141 B2
`
`
`
`PENDING LITIGATION
`Petitioner states that WAG Acquisition, LLC has asserted U.S. Patent
`No. 8,122,141 (“the ’141 Patent”) (the subject of the present Petition), as
`well as U.S. Patent No. 8,327,011 (“the ’011 Patent”), U.S. Patent No.
`8,364,839 (“the ’839 Patent”) and U.S. Patent No. 8,185,611 (“the ’611
`Patent”) in the District of New Jersey as follows: WAG Acquisition, LLC v.
`Sobonito Investments, Ltd., No. 2:14-cv-1661 (D.N.J.) (’141 Patent; ’011
`Patent; ’611 Patent; and ’839 Patent); WAG Acquisition, LLC v. Multi
`Media, LLC, No. 2:14-cv-2340 (D.N.J.) (’141 Patent; and ’011 Patent);
`WAG Acquisition, LLC v. Data Conversions, Inc., No. 2:14-cv-2345 (D.N.J.)
`(’141 Patent; and ’011 Patent); WAG Acquisition, LLC v. Flying Crocodile,
`Inc., 2:14-cv-2674 (D.N.J.) (’141 Patent; ’011 Patent; ’611Patent; and ’839
`Patent); WAG Acquisition, LLC v. Gattyàn Group S.à r.l, No. 2:14-cv-2832
`(D.N.J.) (’141 Patent; ’011 Patent; ’611 Patent; and ’839 Patent); WAG
`Acquisition, LLC v. MFCXY, Inc., No. 2:14-cv-03196 (D. N.J.) (’141 Patent;
`’011 Patent; ‘611 Patent; and ‘839 Patent); WAG Acquisition, LLC v.
`FriendFinder Networks Inc., No. 2:14-cv-3456 (D.N.J.) (‘141 Patent; ’011
`Patent; ’611 Patent; and ’839 Patent); and WAG Acquisition, LLC v.
`Vubeology, Inc., No. 2:14-cv-4531 (D.N.J.) (’141 Patent; and ’011 Patent).
`
`
`RELATED PROCEEDINGS
`Petitioner notes that it has also petitioned for inter partes review of
`the ’011 Patent (IPR2015-01033), the ’611 Patent (IPR2015-01035) and the
`’839 Patent (IPR2015-01036)
`
`
`
`3
`
`
`
`
`
`IPR2015-01037
`Patent 8,122,141 B2
`
`
`
`THE ’121 PATENT (EXHIBIT 1001)
`The ’121 Patent discloses a system for sending streaming media, such
`as audio or video files, via the Internet with reduced playback interruptions.
`Ex. 1001, col. 4, ll. 39–44. Data interruptions can be recovered while the
`media player continues to play out the audio or video material. Id. at col. 4,
`ll. 48–50. A server connected to the Internet for transmitting time-
`sequenced data elements. Id. at col. 4, ll. 54–58. Associated with the server
`are a buffer manager and a FIFO buffer that stores at least one of the data
`elements for transmission. Id. at col 4, ll. 56–60. The buffer manager
`receives the media data, supplies the media data in order to the FIFO buffer,
`supplies the FIFO buffer with a predetermined number of data elements, and
`maintains a pointer into the buffer for each user computer indicating the last
`media data element that has been sent to that user, thus indicating the next
`element or elements to be sent. Id. at col. 4, ll. 61–66. Once the FIFO
`buffer is full, the oldest data elements in the buffer are deleted as new data
`elements are received. Id. at col. 4, l. 66–col. 5, l. 1. A pre-determined
`number of data elements are kept in the FIFO buffer. Id. at col. 5, ll. 1–4.
`At least one user computer is connected to the server via the Internet
`or other data communications medium. The user computer is associated
`with media player software incorporating a user buffer that receives and
`stores a predetermined number of media data elements. Id. at col. 8, ll.25–
`28. The media elements that are received sequentially by the media player,
`are played out sequentially as audio and/or video, and the media data
`elements from the buffer as they are played out. Id. at col. 8, ll. 28–31. As
`data is played out, the next sequential data elements are received from the
`
`
`
`4
`
`
`
`IPR2015-01037
`Patent 8,122,141 B2
`
`
`server in such a fashion as to approximately maintain the predetermined
`number of data elements in the user’s buffer. Id. at col. 8, ll. 31–34.
`
`ILLUSTRATIVE CLAIMS
`Claim 1 is illustrative:
`1. A method for distributing streaming media via a data
`communications medium such as the Internet to at least
`one user system of at least one user, the streaming media
`comprising a plurality of sequential media data elements
`for a digitally encoded audio or video program,
`comprising
`providing a server programmed to receive requests
`from the user system for media data elements
`corresponding to specified serial identifiers and to
`send media data elements to the user system
`responsive to said requests, at a rate more rapid
`than the rate at which said streaming media is
`played back by a user; and
`providing a machine-readable medium accessible to
`said user, on which there has been recorded
`software for implementing a media player for
`receiving and playing the streaming media on said
`user system, said software being programmed to
`cause the media player to maintain a record of the
`identifier of the last data element that has been
`received; and to transmit requests to the server to
`send one or more data elements, specifying the
`identifiers of the data elements, as said media
`player requires in order to maintain a sufficient
`number of media data elements in the media player
`for uninterrupted playback.
`
`
`5
`
`
`
`
`
`
`
`IPR2015-01037
`Patent 8,122,141 B2
`
`
`Claim 19 is also illustrative:
`19. A non-transitory machine-readable medium on which
`there has been recorded a computer program for use in
`operating a computer to prepare streaming media content
`for transmission by a server wherein said server responds
`to user requests for media data elements identified by a
`serial identifier, said program recorded on said non-
`transitory machine readable medium comprising a
`routine to store and serially identify sequential data
`elements comprising said streaming media content, in a
`format capable of being served to users by said server.
`
`
`REFERENCES CITED IN PETITION
`
`Designation
`
`Exhibit
`
`Hollfelder
`
`Ex. 1002
`
`Su
`
`Ex. 1003
`
`ISO11171-1
`
`Ex. 1004
`
`ISO11171-2
`
`Ex. 1005
`
`ISO11171-3
`
`Ex. 1006
`
`Reference
`Silvia Hollfelder, Florian Schmidt,
`Matthias Hemmje, Karl Aberer,
`Arnd Steinmetz “Transparent
`Integration of Continuous Media
`Support into a Multimedia DBMS
`Jun Su, “Continuous Media
`Support for Multimedia Databases
`Coding Of Moving Pictures And
`Associated Audio --
`For Digital Storage Media At Up
`To About 1.5 Mbit/S – Part 1
`Information Technology – Coding
`of Moving Pictures and Associated
`Audio For Digital Storage Media
`At Up To About 1.5 Mbit/S – Part
`2
`Coding Of Moving Pictures And
`Associated Audio
`For Digital Storage Media At Up
`To About 1.5 Mbit/S – Part 3
`Audio
`Contents
`
`
`
`6
`
`
`
`IPR2015-01037
`Patent 8,122,141 B2
`
`
`Reference
`U.S. Patent No. 6,389,473 issued
`May 14, 2002
`U.S. Patent No. 6,336,143 B1
`issued Jan. 1, 2002
`
`Designation
`Carmel
`
`Diedrich
`
`
`
`Exhibit
`Ex. 1007
`
`Ex. 1012
`
`BASIS OF PETITION
`Petitioner asserts the following challenges to patentability (Pet. 3–4):
`Claim[s]
`Statutory Basis
`Ground
`1, 2, 5–7, 9–11, 14–16,
`Obvious over
`35 U.S.C. § 103(a)
`18–20, 24, 27, 28
`Hollfelder in view of Su
`3, 4, 12, 13, 22, 23, 25,
`Hollfleder in view of
`26
`Su and ISO11172
`Hollfelder in view of Su
`8, 17, 21
`35 U.S.C. § 103(a)
`and Carmel
`19
`35 U.S.C. § 102(a)/(e) Anticipated by Diedrich
`
`
`35 U.S.C. § 103(a)
`
`
`
`CLAIM CONSTRUCTION
`For the reasons discussed below, we do not reach Petitioner’s
`challenges based on Su. We construe only those terms that appear in claim
`19. Petitioner does not propose any constructions for the terms in claim 19.
`Patent Owner proposes the following constructions:
`Said server responds to user requests for media data elements
`Patent Owner proposes that “user requests for media data elements”
`means a request to send media data elements and that “said server responds
`to requests for media data elements identified by a serial identifier” be
`construed as referring to a response from the requestor. Prelim. Resp. 29
`(citing Ex. 1001 col 8, ll. 46–47). Patent Owner’s proposed constructions
`
`
`
`7
`
`
`
`IPR2015-01037
`Patent 8,122,141 B2
`
`
`are disjointed and do not all concern the specific language of claim 19. We
`are not persuaded that this term requires any further construction and we
`accord this term its ordinary meaning in the context of the claim.
`A routine to store and serially identify sequential data elements
`comprising said media content
`Patent Owner contends that the claim language would exclude a
`system that uses only pre-existing identifiers. Prelim. Resp. 30. Patent
`Owner’s construction appears to be mere argument. We are not persuaded
`that this term requires any further construction and we accord this term its
`ordinary meaning in the context of the claim.
`
`ANALYSIS OF PETITIONER’S PRIOR ART CHALLENGES
`Challenges Based on Su
`Petitioner contends that Su discloses a client-pull system that assigns
`all of the Continuous Object Presentation Units (COPUs) disclosed in
`Hollfelder indexes numbered from 0 to n-1, where n denotes the total
`number of COPUs. Id. at 17. Petitioner argues that Su’s indexes are the
`functional equivalent of serial numbers and that in in the context of an
`MPEG video presentation, Su discloses that the client sends a request to a
`server that specifies a frame number. Id. at 17–18. Petitioner argues that
`requests by the client, in view of the combined teaching of Su and
`Hollfelder’s teaching of keeping a record of COPUs (which may be frames
`in an MPEG system) disclose the limitation of sending or receiving a request
`“for media data elements corresponding to specified serial identifiers.” Id.
`As an initial matter, Patent Owner contends that Su is not applicable
`as a prior art reference. We addressed this issue extensively in related
`IPR2015-01033. There we determined that Petitioner had not carried its
`
`
`
`8
`
`
`
`IPR2015-01037
`Patent 8,122,141 B2
`
`
`burden of production to establish that Su was accessible to one of ordinary
`skill exercising reasonable diligence. Friendfinder v. WAG Acquisiton, Case
`IPR2015-01033, slip op. at 6–13 (PTAB Oct. 19, 2015)(Paper 8, Decision
`Denying Institution) (“Friendfinder I”). The analysis we applied in
`Friendfinder I concerning the public accessibility of Su also applies in this
`proceeding. Thus, we decline to institute on Petitioner’s challenges based on
`Su.
`
`Remaining Challenge To Claim 19
`The only remaining challenge is Petitioner’s challenge to claim 19 as
`anticipated by Diedrich. The text of the Petition, including the claim chart,
`concerning this challenge appears to be an almost verbatim copy of
`paragraphs 76 and 77 in the declaration of Nat Polish (Exhibit 1008 “Polish
`Decl.). Thus, the Polish Declaration contributes little, if anything, to
`Petitioner’s arguments. Petitioner argues that Diedrich teaches transmitting
`data over a wide area network (WAN), such as the Internet to a client
`computer. Pet. 57. According to Petitioner, Diedrich, discloses the client
`sending pacing requests, id. (citing Ex. 1012 col. 3, ll. 4–13) and that such
`user requests contain a parameter (or serial identifier) to ensure the next
`number frame is sent, id. (citing Ex. 1012 col. 10, ll. 55–63). Petitioner also
`argues that Diedrich discloses storing the multimedia data in a fixed buffer
`and a storage device in terms of frame number (or sequential data elements)
`in a form for users. Id.
`Patent Owner argues that, in contrast to user requests for media data
`elements, Diedrich is directed to a “push” embodiment and discloses
`adjusting the speed of the sending station’s delivery of media based on
`“pacing requests” made at negotiated time intervals by the client. Prelim
`
`
`
`9
`
`
`
`IPR2015-01037
`Patent 8,122,141 B2
`
`
`Resp. 47–48. According to Patent Owner, the subject matter cited by
`Petitioner concerning user requests addresses the response of the receiving
`station to a “start multimedia session request” signal sent to the receiving
`station by the sending station server. Id. at 48 (citing Ex. 1012 col. 8, ll. 35–
`38). Patent Owner notes that the receiving station’s response consists of a
`set of parameters for the sending station to use in configuring the upcoming
`session, rather than a request for media data elements. Id. at 48.
`Patent Owner also contends that Diedrich does not disclose a routine
`to store and serially identify sequential data elements comprising streaming
`data content, as claimed. Id. According to Patent Owner, this limitation
`requires that the server serially identify the sequential data elements it stores,
`but merely referring to serial identifiers already present in the streaming
`media does not “store and serially identify sequential data elements
`comprising said streaming media content” as recited in claim 19. Id.
`Claim 19 recites a computer with stored program instructions to be
`used in preparing streaming media content for transmission by a server. The
`program includes a routine to store and serially identify sequential data
`elements that comprise the streaming media content in a format that can be
`served to users. Claim 19 also recites that the server responds to user
`requests for media data elements identified by a serial identifier.
`Diedrich discloses that the sending station, e.g., a server, initiates
`transmission with a start multimedia session request, including a number of
`parameters, to which a receiving station, e.g., a client, responds by
`initializing the following parameters utilized by the multimedia
`communications interface (Ex. 1012, col. 8, ll. 40–46,; col. 10, ll. 39–47): a
`parameter to indicate the set time interval selected for transmission of
`
`
`
`10
`
`
`
`IPR2015-01037
`Patent 8,122,141 B2
`
`
`multimedia requests, a parameter to indicate the frame size of the
`multimedia information, a parameter to indicate availability of current
`storage, a parameter to indicate the minimum data time remaining in the
`receiving station, a parameter to indicate the transmission frame, and a
`parameter to synchronize the interchange of multimedia data (to ensure that
`the sending station correctly transmits the next proper transmission frame
`and which may be the last frame number received by the receiving station,
`permitting the sending station to use the synchronization parameter to
`compute the availability of current storage at the receiving station). Ex.
`1012, col. 8, ll. 36–50; col. 10, ll. 41–63.
`As Patent Owner notes, although the parameters include frame
`numbers, the receiving station is not transmitting requests for particular data
`elements, but responding to a request to start a multimedia session from the
`sending station. The parameters the server transmits to the receiving station
`are not requests for data elements from the receiving station. The
`parameters identify the information the receiving station has received, the
`next information in the expected sequence, and the ability of the receiving
`station to accept additional information. Ex. 1012, col. 10, l. 64–col. 11, l. 6.
`The receiving station generates and transmits a multimedia session reply that
`includes a pacing parameter, as well as other parameters pertaining to the
`transmission of multimedia data. Id. at col. 11, ll. 7–18. A fixed multimedia
`buffer is then created, and the receiving station sends a multimedia pacing
`request to the sending station. Id. at col. 11, ll. 21–35. Although the
`parameters and pacing requests cited by Petitioner are used for purposes of
`synchronizing data transfer, we are not persuaded by Petitioner’s argument
`that Diedrich discloses the claimed feature “wherein said server responds to
`
`
`
`11
`
`
`
`IPR2015-01037
`Patent 8,122,141 B2
`
`
`user requests for media data elements identified by a serial identifier.” Pet.
`58.
`
`We are also not persuaded by Petitioner’s argument that Diedrich
`discloses the claimed “routine to store and serially identify sequential data
`elements comprising said streaming media content, in a format capable of
`being served to users by said server.” The subject matter Petitioner cites at
`column 4, lines 49–62 of Deidrich describes storing, updating and
`maintaining files, generally, but does not disclose the claimed routine to
`store and serially identify sequential data elements. Pet. 59. The subject
`matter Petitioner cites at columns 8 and 10 of Diedrich concern the receipt of
`parameters and transmission of pacing requests between the receiving station
`and the sending station, as discussed above, and also do not demonstrate the
`claimed routine. Pet. 59–60.
`For the reasons discussed above, we are not persuaded that Petitioner
`has demonstrated a reasonable likelihood it will prevail in its challenge to
`claim 19 and we decline to institute a trial on Petitioner’s challenge to claim
`19 as anticipated by Diedrich.
`
`SUMMARY
`We decline to institute an inter partes review of claim 1–28 as
`obvious under 35 U.S.C. § 103(a) because Petitioner has not met is burden
`of production to establish that Su is applicable prior art.
`We are not persuaded that Petitioner has demonstrated a reasonable
`likelihood that it will prevail in its challenge to claim 19 as anticipated by
`Diedrich and we decline to institute a trial on this ground.
`
`
`
`
`12
`
`
`
`IPR2015-01037
`Patent 8,122,141 B2
`
`
`
`ORDER
`
`In consideration of the foregoing, we do not institute inter partes
`review of claims 1–28 of the ’141 Patent.
`
`
`
`PETITIONER:
`
`Frank Gasparo
`Jeffri Kaminski
`VENABLE LLP
`FMGasparo@Venable.com
`JAKaminski@Venable.com
`
`Kevin O’Brien
`Richard Wells
`Matt Dushek
`BAKER & MCKENZIE LLP
`Kevin.O'Brien@bakermckenzie.com
`richard.wells@bakermckenzie.com
`matt.dushek@bakermckenzie.com
`Duodecad_WAG@bakermckenzie.com
`
`PATENT OWNER:
`
`Ronald Abramson
`LEWIS BAACH PLLC
`ronald.abramson@lewisbaach.com
`
`Ernest D. Buff
`ERNEST D. BUFF & ASSOCIATES, LLC
`ebuff@edbuff.com
`
`
`
`13
`
`
`
`
`
`
`
`
`
`IPR2015-01037
`Patent 8,122,141 B2
`
`
`
`sl
`
`
`
`
`
`14
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
