Trials@uspto.gov Paper 11
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`571-272-7822
`Date Entered: February 27, 2017
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`I.M.L. SLU,
`Petitioner,
`
`v.
`
`
`
`
`
` WAG ACQUISITION, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01656
`Patent 8,122,141 B2
`____________
`
`
`
`
`Before TREVOR M. JEFFERSON, BRIAN J. McNAMARA, and
`PATRICK BOUCHER, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`571-272-7822
`Date Entered: February 27, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`I.M.L. SLU,
`Petitioner,
`
`v.
`
`
`
`
`
` WAG ACQUISITION, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01656
`Patent 8,122,141 B2
`____________
`
`
`
`
`Before TREVOR M. JEFFERSON, BRIAN J. McNAMARA, and
`PATRICK BOUCHER, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
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`IPR2016-01656
`Patent 8,122,141 B2
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`BACKGROUND
`
`I.M.L. SLU (“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 B2 (“the ’841 patent”). 35 U.S.C. § 311. WAG
`Acquisition, LLC (“Patent Owner”) timely filed a Preliminary Response,
`Paper 8 (“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.” Having considered the
`arguments and the associated evidence presented in the Petition and the
`Preliminary Response, for the reasons described below, we institute inter
`partes review of claims 19–23.
`
`
`REAL PARTIES IN INTEREST
`The Petition identifies I.M.U. SLU as the sole real party-in-interest.
`Pet. 1.
`
`PENDING LITIGATION
`The Petition states that the ’141 Patent is asserted in the following
`litigation: (1) WAG Acquisition, LLC v. Sobonito Investments, Ltd. et al.,
`Case No. 2:14-cv-1661-ES-JAD (D.N.J.); (2) WAG Acquisition, LLC v.
`Multi Media, LLC et al., Case No. 2:14-cv-2340-ES-JAD (D.N.J.); (3) WAG
`Acquisition, LLC v. Data Conversions, Inc. et al., Case No. 2:14-cv-2345-
`ES-JAD (D.N.J.); (4) WAG Acquisition, LLC v. Flying Crocodile, Inc. et al.,
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`Case No. 2:14-cv-2674-ES-MAH (D.N.J.); (5) WAG Acquisition, LLC v.
`Gattyàn Group S.à r.l. et al., Case No. 2:14- cv- 2832-ES-JAD (D.N.J.); (6)
`WAG Acquisition, LLC v. FriendFinder Networks Inc. et al., Case No. 2:14-
`cv-3456-ES-JAD (D.N.J.); (7) WAG Acquisition, LLC v. Vubeology, Inc. et
`al., Case No. 2:14-cv-4531-ES-JAD (D.N.J.); (8) WAG Acquisition, LLC v.
`Gamelink International Limited et al. Case No. 2:15-cv-3416 (D.N.J.); and
`(9) WAG Acquisition LLC v. WebPower, Inc. et al., Case No. 2:15- cv-03581
`(D.N.J). Petitioner also states that one other related litigation, WAG
`Acquisition, LLC v. MFCXY, Inc. et al., Case No. 2:14-cv-3196-ES-MAH
`(D.N.J.), has been dismissed
`
`THE ’141 PATENT (EXHIBIT 1001)
`The ’141 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 is 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
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`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 are deleted 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 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 drawn to a method 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
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`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.
`
`Claim 10, drawn to a server for distributing media via a data
`communication medium, is also illustrative:
`10. A server 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, said user
`system being assumed to have a media player for receiving
`and playing the streaming media on said user system,
`which is operable to obtain media data elements from said
`server by transmitting requests to said server to send one
`or more specified media data elements, said server
`comprising
` at least one data storage device, memory for storing
`machine-readable executable routines and for
`providing a working memory area for routines
`executing on the server, a central processing unit for
`executing the machine-readable executable routines,
`an operating system, at least one connection to the
`communications medium, and a communications
`system providing a set of communications protocols
`for communicating through said at least one
`connection;
`a machine-readable, executable routine containing
`instructions to cause the server to assign serial
`identifiers to the sequential media data elements
`comprising the program;
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`a machine-readable, executable routine containing
`instructions to cause the server to receive requests
`from the user system for one or more media data
`elements specifying the identifiers of the requested
`data elements; and a machine-readable, executable
`routine containing instructions to cause the server 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.
`
`Claim 19, drawn to a non-transitory machine readable medium, 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.
`
`ART CITED IN PETITIONER’S CHALLENGES
`
`Petitioner cites the following references in its challenges to
`patentability:
`
`Reference
`U.S. Patent No.
`5,822,524 issued Oct.
`13, 1998
`U.S. Patent No.
`6,389,473 issued May
`14, 2002
`
`Designation
`
`Exhibit No.
`
`Chen
`
`Ex. 1002
`
`Carmel
`
`Ex. 1003
`
`
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`6
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`Willebeek-LeMair, et
`al., “Bamba – Audio
`and Video Streaming
`Over the Internet,”
`IBM Journal of
`Research and
`Development¸ Vol. 42,
`No. 2, March 1998
`International Standard
`ISO/IEC 11172-1,
`“Information
`Technology – Coding
`of moving pictures and
`associated audio for
`digital storage media at
`up to about 1,5 Mbit/s
`– Part 1: Systems,”
`August 1993
`International Standard
`ISO/IEC 11172-2,
`“Information
`Technology – Coding
`of moving pictures and
`associated audio for
`digital storage media at
`up to about 1,5 Mbit/s
`– Part 2: Video,”
`August 1993
`International Standard
`ISO/IEC 11172-3,
`“Information
`Technology – Coding
`of moving pictures and
`associated audio for
`digital storage media at
`up to about 1,5 Mbit/s
`– Part 3: Audio,”
`August 1993
`
`
`
`Willebeek
`
`Ex. 1004
`
`ISO-11172-1
`
`Ex. 1005
`
`ISO-11172-2
`
`Ex. 1006
`
`ISO-11172-3
`
`Ex. 1007
`
`7
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`File History of U.S.
`Patent No. 5,822,524 to
`Chen et al.
`
`
`Chen File History
`
`Ex. 1010
`
`35 U.S.C. § 102
`
`Anticipated by Chen
`
`CHALLENGES ASSERTED IN PETITION
`Claims
`Statutory Basis
`Challenge
`1–2, 4–7, 9–11, 13–16,
`18–20, 23–24, and 26–
`28
`1–2, 4–7, 9–11, 13–16,
`18, 24, and 26–28
`1–2, 4–11, 13–18, 21,
`24, and 26–28
`1–18, 21–22, and 24–
`28
`
`35 U.S.C. § 103
`
`35 U.S.C. § 103
`
`35 U.S.C. § 103
`
`3, 12, 22, and 25
`
`35 U.S.C. § 103
`
`
`
`Obvious over Chen in
`view of Chen File
`History
`Obvious over Chen in
`view of Carmel
`Obvious over Chen in
`view of Chen File
`History and Willebeek
`Obvious over Chen in
`view of Chen File
`History, ISO-11172,
`and Willebeek
`
`CLAIM CONSTRUCTION
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016). In applying a broadest reasonable
`construction, claim terms generally are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must
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`be set forth in the specification with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes that the limitation in claims 1, 10, and 24 “a rate
`more rapid than the rate at which said streaming media is played back by a
`user” be construed to mean “a transmission rate faster than the rate at which
`the media is played by the user system.” Pet. 21. Patent Owner does not
`offer an alternative construction. The construction proposed by Petitioner is
`consistent with the limitation in the context of this proceeding and, based on
`the current record, we apply Petitioner’s proposed construction.
`Patent Owner proposes that in the limitation in claim 19 “in a format
`capable of being served to users by said server” the italicized portion
`(capable of being served to users) means “a data format that is capable of
`being served in accordance with the features of such a ‘pull’ server.’”
`Prelim. Resp. 11–12. According to Patent Owner this means “a format
`whose characteristics make it possible to serve the multimedia program
`comprised of those elements via the recited ‘pull’ mechanism in order to
`achieve uninterrupted playback.” Id. Patent Owner’s construction is based
`on its assertion that
`the words “said server” in the claim language refer to the
`recited server that is going to transmit the streaming media by a
`pull mechanism (responding to client requests by serial
`identifiers).” Id. at 11. According to Patent Owner “[i]f a given
`format is not suitable for being served from such a ‘pull’ server
`in order to effect uninterrupted playback, then, clearly, the
`format is not ‘capable of being served to users by said server.’”
`Id. at 12.
`The claims are not limited specifically to pull servers. Patent Owner
`has not identified any reference in the Specification of the ’141 Patent that
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`states explicitly the server is a pull server, nor has Patent Owner identified
`any discussion in the ’141 Patent that discloses a format applicable only to a
`pull server. In view of these circumstances, we decline to adopt Patent
`Owner’s proposed construction. Instead, we accord this term its ordinary
`meaning and do not apply a specific construction.
`
`ISSUES UNDER 35 U.S.C. § 325(d)
`Patent Owner contends that we should decline to institute under 35
`U.S.C. § 325(d) because a side-by-side comparison of the anticipation
`arguments in the Petition against those advanced in the petition in
`WebPower, Inc. v. WAG Acquisition, LLC, Case IPR2016-01238
`(“WebPower-1238”), demonstrates that the arguments are substantially
`similar to each other. Prelim. Resp. 1. Petitioner argues that we should not
`exercise such discretion because the petitioners are different, Petitioner will
`be harmed by a statutory bar should WebPower-1238 be terminated, e.g.,
`pursuant to a settlement, and because the grounds advanced by Petitioner are
`somewhat different. Pet. 7–8. Petitioner’s arguments are persuasive.
`Although Patent Owner argues that Petitioner could have filed its Petition
`earlier, we do not penalize Petitioner for filing within the time allotted under
`35 U.S.C. § 315(b).1 In addition, only some of the grounds in the Petition
`and in WebPower-1238 overlap. We address the overlap between the
`petitions below in our substantive analysis of Petitioner’s challenges.
`Although our analysis in WebPower-1238 provides guidance on some issues
`
`
`1 We acknowledge Patent Owner’s motion for additional discovery that may
`lead to evidence of privity with another real party-in-interest that could
`impose a statutory bar remains outstanding.
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`in this proceeding, we decline to exercise our discretion to deny institution
`under 35 U.S.C. § 325(d).
`
`
`ANALYSIS OF PETITIONER’S PRIOR ART CHALLENGES
`A claim is unpatentable under 35 U.S.C. § 102 if a prior art reference
`discloses every limitation of the claimed invention, either explicitly or
`inherently. Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047 (Fed.
`Cir.1995); see MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362,
`1365 (Fed.Cir.1999) (“To anticipate, a claim a prior art reference must
`disclose every limitation of the claimed invention . . .;” any limitation not
`explicitly taught must be inherently taught and would be so understood by a
`person experienced in the field); In re Baxter Travenol Labs., 952 F.2d 388,
`390 (Fed.Cir.1991) (the dispositive question is “whether one skilled in the
`art would reasonably understand or infer” that a reference teaches or
`discloses all of the elements of the claimed invention).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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`Anticipation of Claims 1–2, 4–7, 9–11, 13–16, 18–20, 23–24, and 26–
`28 by Chen
`Claim 1
`We considered this same challenge to the same claims of the ’141
`Patent in WebPower-1238, slip op. 9–17 (PTAB Jan. 4, 2017) (Paper 7, Dec.
`to Inst.). Chen discloses the transmission of digital data packets from a
`storage server computer to a playback client computer having a packet
`buffer that stores data packets, each data packet having a unique packet
`sequence number, until a multimedia application requests them. Ex. 1002,
`col. 5, ll. 49–59. According to Chen, the packet buffer should have enough
`data to minimize the possibility of not having the requested data, and enough
`available memory space to receive new packets. Id. at col. 6, ll. 3–7. Using
`a just-in-time retrieval method, Chen uses the equivalent of “Water Marks”
`to inform the server control and regulate the server’s transmission rate based
`on the amount of data in the client packet buffer as follows: (1) when the
`amount of data falls between high and low Water Marks, transmission takes
`place in a NORMAL mode, such as based on the number of frames the
`buffer stores; (2) when the amount of data in the packet buffer exceeds a
`high Water Mark, transmission enters a PAUSE mode; and (3) when the
`amount of data in the packet buffer falls below a low Water Mark, the
`delivery of packets is expedited in a RUSH mode. Id. at col. 6, l. 7–col. 7, l.
`2.
`
`Chen discloses that in a non-error-free embodiment, no attempt is
`made to recover lost packets, while in an error-free embodiment, lost packets
`are traced and replaced. Id. at col. 7, ll. 20–24. In the error-free
`embodiment, the client detects lost packets using a register that maintains
`the packet sequence number of the last received packet, so that if the next
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`arriving packet differs from the last received packet number by more than
`+1, then a packet loss has occurred. Id. at col. 7, ll. 24–32. To deal with
`packet loss, the client maintains a list of lost packets that includes the packet
`sequence number and time-out value. Id. at col. 7, ll. 33–37. The client
`sends a retransmission request for the lost packet and removes that packet
`from the missing-packet list if the packet arrives correctly before the
`expiration of the time-out value; if not, the client sends another
`retransmission request or gives up obtaining the missing packet. Id. at col.
`7, ll. 37–44.
`Petitioner notes that Chen discloses assigning packet number (serial
`identifiers) to the data packet, which is the “packet sequence of the last
`received packet” making up the streaming media. Pet. 14 (citing Ex. 1002,
`col. 6, l. 55–col 7, l. 2; col. 7, ll. 24–32). Petitioner contends that the client
`machine requests in Chen also specify identifiers for requested data
`elements, i.e., Chen sends a command packet to the server making a specific
`request for requested data packets, where each packet contains a unique
`sequence number identifier. Pet. 26 (citing Ex. 1002, col. 5, ll. 59–64; col.
`6, l. 56–col. 7, l. 2)
`In WebPower-1238, we determined that there is no disclosure in Chen
`“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 feedback.” WebPower-1238, Dec. to Inst. at 10–11.
`We noted that Chen’s disclosure of sending specific requests for data using
`command packets relates to circumstances in which the packet buffer does
`not have the requested data available (i.e., the lost packet), while the three
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`transmission modes relate to how the amount of data conforms to the high
`and low water marks. Id. (citing Chen, col. 5, ll. 59–67).
`Chen seeks to avoid specific requests for packets. Chen discloses
`transmission in the NORMAL mode most of the time, stating that
`“[t]ransmission occurs very efficiently in this NORMAL mode because no
`need exists for the client agent (30) to send periodic feedback to the server
`control (1).” Ex. 1002, col. 6, ll. 32–39. In Chen, if the client’s packet
`buffer determines there is insufficient data, i.e., the amount of data has fallen
`below the low water mark, the client agent sends a NORMAL to RUSH
`command. Ex. 1002, col 6, l. 40–45. In Chen, transmission scheduling is
`controlled by the transmission scheduler in the server control. Ex. 1002, col.
`6, l. 48–col. 7, l. 38; col. 9, ll. 6–7, 21–29. The client sets the values of the
`transmit mode and the frame time via command packets. Id. at col. 10, ll.
`39–42. Notwithstanding that the data elements in Chen are identified by
`sequence and frame numbers, or even that Chen and the system in the ’141
`Patent cause the data packets to be transmitted in the same sequence, the
`mode commands in Chen do not specify the sequential media data elements
`to be transmitted by a serial number. The mode commands in Chen instead
`signal the server to adjust the speed of data elements it transmits.
`Petitioner also argues that Chen discloses the client agent uses packet
`sequence numbers to send retransmission requests to the server for a
`specified lost packet. Pet. 27. In Chen the transmission scheduler, which is
`shown in Figure 5 as an element of the server, assigns the packet
`identification numbers. Ex. 1002, col. 6, l. 56–col. 7, l. 4. As discussed
`above, should the client determine that a packet has been lost, the client
`sends a retransmission request for the lost packet and removes that packet
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`from the missing-packet list if the packet arrives correctly before the
`expiration of a time-out value; if not, the client sends another retransmission
`request or gives up obtaining the missing packet. Id. at col. 7, ll. 37–44.
`However, in attempting to recover a lost packet, the client does not send a
`transmission request “in order to maintain a sufficient number of media data
`elements in the media player for uninterrupted playback back,” as recited in
`claim 1.
`Claims 10 and 24
`In a manner similar to claim 1, independent claim 10 recites “a
`machine-readable, execuutable routine containing instructions to cause the
`server to receive requests from the user system for one or more media data
`elements specifying the identifiers of the requested data elements.” Ex.
`1001, col. 14, ll. 20–23. Independent claim 24 recites “a routine that
`requests transmission of the next sequential media data elements following
`said last sequential media data element, as said media player requires in
`order to maintain a sufficient number of media data elements in the media
`player for uninterrupted feedback.” Id. at col. 15, l. 18–col. 16, l. 3. Both
`claims 10 and 24 recite limitations that require the request to include
`identifiers of the media data elements. For the reasons discussed above with
`respect to claim 1, we are not persuaded by Petitioner’s arguments that Chen
`discloses these limitations. Claims 1–2, 4–7, 9–11, 13–16, and 18 depend
`from claim 1 and are not anticipated by Chen for the same reasons as claim
`1. Claims 26–28 depend from claim 24 and are not anticipated by Chen for
`the same reasons.
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`Claims 19 and 20
`We addressed claim 19 in WebPower-1238. WebPower-1238, Dec. to
`Inst. at 14–15. Independent claim 19 is drawn to a non-transitory medium
`on which has been recorded a computer program “to prepare media content
`for transmission by a server.” Claim 19 further recites “wherein said server
`responds to user requests for media data elements identified by a serial
`identifier.” Petitioner cites Chen’s disclosure of a server with a transmission
`scheduler that is responsible for reading data out of the storage subsystem
`12, packetization, packet transmission, and a stream buffer that stores data
`awaiting transmission. Pet. 44 (citing Ex. 1002, col. 9, ll. 21–30). Two
`readings of claim 19 are possible: (i) the requests for media data elements
`are requests that include serial identifiers, or (ii) the requests are for media
`data elements, which media data elements have serial identifiers. As
`discussed above, Chen does not disclose requests that include serial
`identifiers, but does disclose that the media data elements themselves have
`serial identifiers assigned by the transmission scheduler in the server. Ex.
`1002, col.6, ll. 56–col. 7, l. 4 (disclosing each packet header should include a
`packet sequence number, frame number, InFrame sequence number, offset
`and size, set by the transmission scheduler). Thus, Chen arguably discloses
`the limitations of claim 19.
`Patent Owner notes that claim 19 is limited to a program “comprising
`a routine to store and serially identify sequential data elements comprising
`streaming media content in a format capable of being served to users by said
`server.” Prelim. Resp. 24. Referring to this limitation as the “format
`limitation,” Patent Owner argues that Chen’s packets are too small to be
`capable of being served as intended in Chen’s lost packet “pull” mechanism.
`
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`16
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`Id. at 25. In its claim construction arguments, Patent Owner argued that this
`limitation “means that the claimed format of the serially identified elements
`must be of sufficient length such that the total time required to request and
`send the element, which includes the related signaling overhead using the
`serial identifiers, is less that the time required to play out the formatted
`element at the normal playback rate.” Id. at 12.
`According to Patent Owner, Chen addresses video content in MPEG
`formats, e.g., 30 frames per second, in which video frames have been
`packetized as subunits of a frame. Id. at 25. Patent Owner contends that a
`person of ordinary skill would not have viewed “pull” packet sizes less than
`a frame as an operable implementation for transmission of an entire stream
`via a client-side “pull” mechanism. Id. Patent Owner states that “[i]f a
`given format is not suitable for being served by such a ‘pull’ server in order
`to effect uninterrupted playback, then clearly the format is not ‘capable of
`being served to users by said server.’” Id. at 12. Patent Owner states that
`Chen’s packetization works well for filling in gaps that develop in a “push”
`system where packets are requested on a one off basis, but does not translate
`into a mechanism for requesting an arbitrarily long stream of temporally
`contiguous packets. Id. at 27.
`As we addressed in our claim construction analysis, we decline to read
`the limitations Patent Owner asserts into the language “in a format capable
`of being served to users by said server.” Patent Owner’s arguments are not
`persuasive because they center on limitations that are not recited in claim 19.
`On the present record, in view of the possible interpretations of claim 19, we
`are persuaded that Petitioner has demonstrated a reasonable likelihood it will
`succeed in its challenge to claim 19 as anticipated by Chen.
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`Claim 20 recites that the streaming media is obtained from a disk file.
`Petitioner cites Chen’s disclosure that the primary responsibility of the
`server is to read and make just in time delivery of multimedia data as
`disclosing this limitation. Claim 23 recites that the streaming media is
`encoded at a variable bit rate. Petitioner cites Chen’s disclosure at column 3,
`lines 61–63, column 8, lines 43–55, as disclosing this feature. On the present
`record, we are persuaded that Petitioner has demonstrated a reasonable
`likelihood it will succeed in its challenge to claims 20 and 23 as anticipated
`by Chen.
`Claims 1–2, 4–7, 9–11, 13–16, 18, 24, and 26–28 as Obvious Over
`Chen In View of Chen File History
`Petitioner cites Chen File History as disclosing the limitation of
`sending media data elements “at a rate more rapid than the rate at which said
`streaming media is played back by a user.” Pet. 47. However, as discussed
`above, we determined that Petitioner has not demonstrated that Chen
`discloses the limitations in claims 1, 10 and 24 concerning the transmission
`of requests to the server to send data elements by specifying the identifiers
`of the data elements in order to maintain a sufficient number of media data
`elements in the media player for uninterrupted feedback. Petitioner has not
`shown that Chen File History provides the disclosure lacking in Chen.
`Therefore, Petitioner has not demonstrated a reasonable likelihood it will
`prevail in its challenge to claims 1–2, 4–7, 9–11, 13–16, 18, 24, and 26–28
`as obvious over Chen in view of Chen File History.
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` Claims 1–18, 21–22, and 24–28 as Obvious Over Obvious over Chen
`In View of Chen File History and Willebeek
`Claims 1–18, and 24–28
`Petitioner cites Willebeek as disclosing the limitations “at a rate more
`rapid than the rate at which said streaming media is played back by a user”
`and “uninterrupted playback.” Pet. 53. However, as discussed above, we
`determined that Petitioner has not demonstrated that Chen discloses the
`limitations in claims 1, 10 and 24 concerning the transmission of requests to
`the server to send data elements by specifying the identifiers of the data
`elements in order to maintain a sufficient number of media data elements in
`the media player for uninterrupted feedback. Petitioner has not shown that
`Chen File History or Willebeek provides the disclosure lacking in Chen.
`Therefore, based on the content of the Petition, we find that Petitioner has
`not demonstrated a reasonable likelihood it will prevail in its challenge to
`claims 1–18 and 24–28 as obvious over Chen in view of Chen File History
`and Willebeek.
`Claims 21–22
`In WebPower-1238, we determined that Petitioner had demonstrated a
`reasonable likelihood it would prevail in its challenge to claims 21 and 22 as
`obvious over the combination of Chen and Willebeek. WebPower-1238 Dec.
`to Inst. 15–17. Claims 21 and 22 depend from claim 19. Claim 21 recites
`that the streaming media content is obtained from a live source. Petitioner
`acknowledges that Chen discloses opening files from a storage system, but
`does not describe explicitly obtaining streaming media from a live source.
`Pet. 55. Petitioner cites Willbeek as disclosing a system for streaming over
`the Internet using buffers at a server and a client in a manner similar to Chen
`and a way to provide the system with a live feed by using a capture station
`19
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`that receives video, converts it to digital information and packetizes it. Id.
`The packets are transferred to a buffer with a circular buffer queue
`containing the most recent several seconds of a live transmission.
`According to Petitioner, in the combined system of Chen and Willebeek, if
`one of Chen’s users requests live video, a new copy of the circular buffer
`queue, such as the one produced by Willebeek’s capture station, would
`become Chen’s server buffer. Id. at 56. Petitioner argues that, because the
`circular buffer contains a few seconds of video, Chen would then be able to
`RUSH the first packets to the user, and after that, pac
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