UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NETFLIX, INC. AND ROKU INC.,
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`Petitioners,
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`v.
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`CONVERGENT MEDIA SOLUTIONS, LLC,
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`Patent Owner.
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`PTAB Case No. IPR2016-01761
`Patent No. 8,850,507
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,850,507 B2
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`TABLE OF CONTENTS
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`Page
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`EXHIBIT LIST ....................................................................................................... iii
`I.
`INTRODUCTION .......................................................................................... 1
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B) ............................ 1
`A.
`REAL PARTY IN INTEREST ............................................................ 1
`B.
`RELATED MATTERS ........................................................................ 2
`C. NOTICE OF COUNSEL AND SERVICE INFORMATION ............. 2
`III. REQUIREMENTS FOR INTER PARTES REVIEW ................................... 3
`A. GROUND FOR STANDING ............................................................... 3
`B.
`IDENTIFICATION OF CHALLENGE ............................................... 4
`1.
`Claims Challenged ..................................................................... 4
`2.
`The Prior Art .............................................................................. 4
`3.
`Supporting Evidence Relied Upon For The Challenge ............. 4
`4.
`Statutory Ground(s) Of Challenge And Legal Principles .......... 4
`5.
`Claim Construction .................................................................... 5
`6.
`How Claims Are Unpatentable Under Statutory Grounds ........ 5
`IV. OVERVIEW OF THE ’507 PATENT ........................................................... 5
`A.
`Priority date OF THE ’507 PATENT .................................................. 5
`B.
`SUMMARY OF THE ’507 PATENT .................................................. 6
`C.
`LEVEL OF ORDINARY SKILL IN THE ART ................................. 7
`D.
`PROPOSED CLAIM CONSTRUCTION ............................................ 8
`BACKGROUND OF THE PRIOR ART ....................................................... 8
`V.
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ’507 PATENT IS UNPATENTABLE ................... 14
`A.
`IDENTIFICATION OF THE REFERENCES AS PRIOR ART ....... 15
`B.
`SUMMARY OF INVALIDITY POSITIONS ................................... 19
`VII. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY OF CLAIMS 1-18 OF THE ’507 PATENT ........... 19
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`TABLE OF CONTENTS
`(continued)
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`Page
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`A. GROUND 1: CLAIMS 1 AND 3-18 ARE OBVIOUS OVER
`ELABBADY AND ZINTEL ............................................................. 19
`1.
`The Prior Art ............................................................................ 19
`2.
`The Elabbady-Zintel Combination .......................................... 23
`3.
`ELABBADY AND ZINTEL RENDER CLAIMS 1 AND
`3-18 OBVIOUS ........................................................................ 27
`B. GROUND 2: CLAIM 2 IS OBVIOUS OVER ELABBADY,
`ZINTEL, AND JANIK ....................................................................... 56
`1.
`The Elabbady-Zintel-Janik combination ................................. 56
`2.
`The Elabbady-Zintel-Janik Combination Renders
`Obvious Claim 2 ...................................................................... 59
`VIII. CONCLUSION ............................................................................................. 61
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`Petition for Inter Partes Review of U.S. Patent 8,850,507 B2
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`EXHIBIT LIST1
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`U.S. Patent No. 8,850,507 to Reisman (the “’507 patent”)
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`U.S. Patent No. 8,893,212 to Reisman (the “’212 patent”)
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`U.S. Patent No. 6,910,068 (“Zintel”)
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`U.S. Patent No. 7,483,958 (“Elabbady”)
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`U.S. Provisional Application No. 60/278804 (“Elabbady
`Provisional”)
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`U.S. Application Publication No. 2001/0042107 (“Palm”)
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`U.S. Patent No. 7,130,616 (“Janik”)
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`U.S. Patent No. 6,847,778 (“Vallone”)
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`Declaration of Dr. Wolfe
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`Windows ME White Paper
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`Miller et al., Home Networking with Universal Plug and Play,
`IEEE 0163-6804 (Dec. 2001)
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`Steinfeld, Devices that Play Together, Work Together (Sept.
`2001)
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`Bell et al., A Call For The Home Media Network (May 2001)
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`UPnP Newsletter 3Q00
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`UPnP Newsletter 4Q00
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`EX1001
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`EX1002
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`EX1003
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`EX1004
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`EX1005
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`EX1006
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`EX1007
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`EX1008
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`EX1009
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`EX1010
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`EX1011
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`EX1012
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`EX1013
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`EX1014
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`EX1015
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` 1
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` For the benefit of the Board, Petitioners have used the same exhibit numbering
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`system for this Petition and another Inter Partes Review Petition for U.S. Patent
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`No. 8,893,212 that Roku is concurrently filing.
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`Petition for Inter Partes Review of U.S. Patent 8,850,507
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`UPnP Newsletter 1Q01
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`UPnP Newsletter 2Q01
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`UPnP Newsletter 4Q01
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`UPnP Newsletter 1Q02
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`UPnP Device Architecture V.1 Specification (June 2000)
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`Microsoft Press Release re UPnP Formation (April 1999)
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`LinkSys WAP11 Product Page (June 2001)
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`LinkSys WAP11 User Guide (2001)
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`U.S. Patent No. 6,084,876 (“Kwok”)
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`U.S. Patent No. 7,031,335 (“Donahue”)
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`U.S. Patent No. 6,134,035 (“Krimmel”)
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`U.S. Provisional Application No. 60/174,706 (“Palm
`Provisional”)
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`EX1016
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`EX1017
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`EX1018
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`EX1019
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`EX1020
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`EX1021
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`EX1022
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`EX1023
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`EX1024
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`EX1025
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`EX1026
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`EX1027
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`Petition for Inter Partes Review of U.S. Pat. No. 8,850,507 B2
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`I.
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`INTRODUCTION
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`Pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100, Netflix, Inc. and Roku
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`Inc. (“Petitioners”) petition for inter partes review (“IPR”) of claims 1-18
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`(“Challenged Claims”) of U.S. Patent No. 8,850,507 (the “’507 patent,” EX1001),
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`5
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`currently assigned to Convergent Media Solutions, LLC (“Patent Owner” or “PO”).
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`This Petition shows a reasonable likelihood that Petitioners will prevail with
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`respect to at least one of claims 1-18 challenged under 35 U.S.C. § 314 (a).
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`Specifically, these claims are unpatentable under 35 U.S.C. § 103 (a) based on
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`specific grounds listed below.
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`Grounds
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`References
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`Challenged Claims
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`Ground 1:
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`Elabbady and Zintel
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`Claims 1, 3-18
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`Ground 2:
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`Elabbady, Zintel, and Janik
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`Claim 2
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`Petitioners respectfully request that the Board institute an IPR trial and
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`cancel claims 1-18.
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`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B)
`A. REAL PARTY IN INTEREST
`Pursuant to 35 U.S.C. §312(a)(2) and 37 C.F.R. §42.8(b)(1), all real parties
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`in interest for this IPR are Petitioners Netflix Inc. and Roku, Inc.
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`Petition for Inter Partes Review of U.S. Pat. No. 8,850,507 B2
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`B. RELATED MATTERS
`Patent Owner has asserted the ’507 patent against Petitioners Netflix and
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`Roku in Convergent Media Solutions, LLC v. Netflix, Inc., No. 3:15-cv-02160-M
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`(N.D. Tex) and Convergent Media Solutions, LLC v. Roku, Inc., No. 3:15-cv-
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`5
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`02163-M (N.D. Tex), respectively. These cases has been consolidated with cases
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`Patent Owner filed against AT&T, Inc. and Hulu, LLC in lead case, Convergent
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`Media Solutions, LLC v. AT&T, Inc., 3:15-cv-2156-M (N.D. Tex.).
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`PO has also asserted U.S. Patent No. 8,893,212 against Roku. Roku is
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`simultaneously filing an IPR petition against this patent.
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`PO has also asserted U.S. Patent Nos. 8,527,640; 8,640,183; 8,689,273; and
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`8,914,840 against Netflix. Netflix plans to file IPR petitions against these patents.
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`C. NOTICE OF COUNSEL AND SERVICE INFORMATION
`Pursuant to 37 C.F.R. §§ 42.8(b)(3), 42.8(b)(4) and 42.10(a), Petitioners
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`appoint Chun M. Ng (Reg. No. 36,878) as its lead counsel, and Vinay P. Sathe
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`(Reg. No. 55,595), Patrick J. McKeever (Reg. No. 66,019), Miguel J. Bombach
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`(Reg. No. 68,636), and Kevin E. Kantharia (Reg. No. 71,071) as its back-up
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`counsel. Petitioners also request authorization to file a motion for Matthew C.
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`Bernstein to appear pro hac vice. Mr. Bernstein is an experienced patent litigation
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`attorney, is lead counsel for Petitioners in the district court litigation, and has an
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`established familiarity with the subject matter at issue in this proceeding.
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`Petition for Inter Partes Review of U.S. Pat. No. 8,850,507 B2
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`Petitioners intend to file such a motion once authorization is granted. The above
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`attorneys are all at the mailing address of Perkins Coie LLP, 11988 El Camino
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`Real, Suite 350, San Diego, CA 92130, contact numbers of 858-720-5700 (phone)
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`and 858-720-5799 (fax), and the following email for service and all
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`communications:
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`PerkinsServiceConvergentMediaIPR@perkinscoie.com
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`Petitioners hereby consents to electronic service under 37 C.F.R. § 42.6(e).
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`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney executed by Netflix,
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`Inc. and Roku Inc. appointing the above designated counsel is filed concurrently
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`herewith.
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`III. REQUIREMENTS FOR INTER PARTES REVIEW
`This Petition is complete, complies with all requirements including those
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`under 35 U.S.C. §312(a) and 37 C.F.R. §§ 42. 8, 42.15, 42.104 and 42.105, and
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`thus should be accorded a filing date as the date of filing of this Petition under 37
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`C.F.R. § 42.106.
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`A. GROUND FOR STANDING
`Pursuant to § 42.104(a), Petitioners certify that the ’507 patent is available
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`for IPR and that Petitioners are not barred or estopped from requesting an IPR
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`challenging claims of the ’507 patent on the grounds identified herein. Specifically,
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`Petitioners have the standing and meet all requirements to file this Petition under
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`Petition for Inter Partes Review of U.S. Pat. No. 8,850,507 B2
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`35 U.S.C. §§ 315(a)(1), 315(b), 315(e)(1), and 325(e)(1), and 37 C.F.R.
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`§§42.73(d)(1), 42.101, and 42.102.
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`B.
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`IDENTIFICATION OF CHALLENGE
`1.
`Pursuant to 37 C.F.R. §§ 42.104(b) and 42.22, the precise relief requested is
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`Claims Challenged
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`that the Board institute an IPR trial on and cancel Claims 1-18 of the ’507 patent
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`because they are invalid on the presented grounds and evidence.
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`The Prior Art
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`2.
`This Petition relies upon U.S. Patent No. 6,910,068 (“Zintel”) (EX1003);
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`U.S. Patent 7,483,958 (“Elabbady”) (EX1004); U.S. Provisional Appl. No.
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`60/278,804 (“Elabbady Provisional”) (EX1005); and U.S. Patent No. 7,130,616
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`(“Janik”) (EX1007). See also Exhibit List.
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`Supporting Evidence Relied Upon For The Challenge
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`3.
`The supporting Declaration of Dr. Wolfe (EX1009) and other supporting
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`evidence in the Exhibit List are filed herewith.
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`Statutory Ground(s) Of Challenge And Legal Principles
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`4.
`Pursuant to 37 C.F.R. § 42.104 (b)(2), the review of the challenged claims is
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`governed by pre-AIA 35 U.S.C. §§ 102 and 103 and AIA 35 U.S.C. §§ 311 to 319
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`and 325.
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`Petition for Inter Partes Review of U.S. Pat. No. 8,850,507 B2
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`Claim Construction
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`5.
`The ’507 patent has not expired and the Patent Office must apply the
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`broadest reasonable interpretation (BRI) standard in this IPR to give each
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`challenged claim “its broadest reasonable construction in light of the specification
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`of the patent in which it appears” to a person of ordinary skill in the art
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`(“POSITA”). See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S.
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`Ct. 2131, 2142-46 (2016).
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`6. How Claims Are Unpatentable Under Statutory Grounds
`Pursuant to 37 C.F.R. § 42.104 (b)(4), Section VII provides an explanation
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`of how Claims 1-18 are unpatentable under 35 U.S.C. § 103, including the
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`identification of where each claim element is found in the cited prior art.
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`IV. OVERVIEW OF THE ’507 PATENT
`A.
`PRIORITY DATE OF THE ’507 PATENT
`The ’507 patent claims priority via a chain of continuation applications to
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`application No. 10/434,032, filed on May 8, 2003, now Pat. No. 7,987,491.
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`The ’507 patent claims the benefit of priority to three U.S. provisional applications
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`with U.S. Provisional Appl. 60/379,635, filed May 10, 2002, being the earliest
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`filing. Although, Petitioner does not concede that the Challenged Claims are
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`supported by any provisional application such that they can be accorded an early
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`priority date, the cited prior art pre-dates May 10, 2002, the earliest claimed
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`priority date.
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`Petition for Inter Partes Review of U.S. Pat. No. 8,850,507 B2
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`SUMMARY OF THE ’507 PATENT
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`B.
`The claims of the ’507 patent generally relate to using one device to control
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`another. As shown herein, the claimed subject matter is merely an obvious
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`application of prior art technologies such as Universal Plug and Play (“UPnP”).
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`The ’507 patent specification itself states that “it may be desirable” to use UPnP to
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`practice the claimed invention. EX1001 at 54:4-12.
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`The “Background of the Invention” section of the ’507 patent acknowledges
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`that “‘convergence’ of television (TV) and computer technology has been a major
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`focus of innovation and commercial development since the early 1990s (EX1001,
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`1:20-31), but notes a “divide” between “how TV-centric and computer-centric
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`media are used.” Id. at 1:32-37. Overall, the ’507 patent asserts that the prior art
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`lacked “a broadly flexible, powerful, selective, and simple user interface paradigm
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`for browsing hypermedia across multiple device sets … and provision of an
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`effective method for independent systems to coordinate browsing activities to
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`enable such a user interface to be employed across multiple independent systems.”
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`Id. at 2:55-63.
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`The ’507 patent’s purported solution to this perceived need comprises
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`“systems and methods for navigating hypermedia using multiple coordinated
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`input/output device sets.” Id. at 3:4-14; 7:4-15 (the term “hypermedia” refers to
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`“any kind of media that may have the effect of a non-linear structure of associated
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`elements,” and includes “graphics, video, and sound.”). Certain parameters
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`relating to a user’s session with one device set are recorded, e.g., “VCR-like . . .
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`controls” (id. at 8:22-25), and transferred from the controlling device to the
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`controlled device. See id. at 33:6-63. Control can be based on known methods,
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`such as SOAP (Simple Object Access Protocol) and XML (id. at 10:3-32; 103:52-
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`62; 153:2-12; 158:3-17), and the “communications process could desirably be
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`based on and compatible with . . . UPnP.” Id. at 37:38-41. The ’507 patent
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`acknowledges that UPnP supports remote command and control across networked
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`devices. Id. at 59:43-45.
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`The ’507 patent notes that existing standards such UPnP can be used to
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`coordinate the input/output device sets using “a device set management process
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`that performs basic setup and update functions… to pre-identify and dynamically
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`discover device sets.” Id. at 37:29-31; 37:38-41. UPnP “enable[s] basic
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`communications among the devices, to provide discovery, presence, registration,
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`and naming services to recognize and identify devices as they become available to
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`participate in a network, and to characterize their capabilities.” Id. at 37:41-57;
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`54:8-15; 58:55-57.
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`C. LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art with regard to the ’507 patent would
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`have a Bachelor of Science or equivalent degree in electrical engineering,
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`computer engineering, or computer science with at least 2 years of experience in a
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`technical field related to multimedia technology and computer systems. EX1009 at
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`¶¶ 32-33.
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`PROPOSED CLAIM CONSTRUCTION
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`D.
`The Board should apply the BRI standard in this IPR to give each challenged
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`claim “its broadest reasonable construction in light of the specification of the
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`patent in which it appears” to POSITA. 37 C.F.R. § 42.100(b); see Cuozzo, 136 S.
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`Ct. at 2144. Such BRI constructions do not necessarily reflect appropriate claim
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`constructions to be used in litigation and other proceedings where a different claim
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`construction standard applies. For the purposes of this petition, and to comply with
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`37 C.F.R. §§ 42.100(b) and 42.104(b)(3), Petitioners propose that the BRI of all
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`claim terms in the ’507 patent is their plain and ordinary meaning.
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`V. BACKGROUND OF THE PRIOR ART
`As mentioned above, the ’507 patent is directed to an obvious application of
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`the prior art UPnP protocol. Accordingly, provided below is a brief introduction to
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`UPnP with a focus on aspects relevant to the Challenged Claims. See also
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`generally EX1010-EX1013 (prior art articles and papers providing overviews of
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`UPnP), EX1009 at ¶¶ 36-53.
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`The UPnP Forum was formed by Microsoft, Intel, and others in April 1999
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`to “promot[e] Universal Plug and Play networking protocols and device
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`interoperability standards based on open Web-based protocols.” EX1021 at 1
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`(Microsoft Press Release). The basic architecture of UPnP was well established by
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`June 2000, when the UPnP Device Architecture v1.0 specification (EX1020) was
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`published. Numerous articles were published about UPnP and its potential
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`applications. See, e.g., EX1011; EX1012; EX1013. By early 2001, more than 300
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`companies had joined the UPnP Forum. EX1016 at 1.
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`“The basic building blocks of a UPnP network are devices, services, and
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`control points.” EX1010 at 10. Devices on a network perform one or more
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`services. “For instance, a VCR device may consist of a tape transport service, a
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`tuner service, and a clock service.” Id. at 10-11. Control points are controllers that
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`allow users to interact with devices and their services. Id. at 11-12.
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`As shown below, a control point may exist on the controlled device itself or
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`on other devices that remotely control the controlled device over the network.
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`EX1010 at 10 (excerpted left); EX1012 at 66 (excerpted right); see also, e.g.,
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`EX1010 at 24 (wireless laptop as control point for DVD player); EX1011 at 8-9
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`(control points on “PCs, Internet appliances, and mobile devices”).
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`UPnP facilitates device interaction through device discovery, description,
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`and control. EX1010 at 18-19. Discovery is the process by which devices on the
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`network find one another. Id. UPnP uses a protocol called Simple Service
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`Discovery Protocol (SSDP) for device discovery. Id. SSDP allows devices to
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`advertise the services they provide and also allows control points to search for and
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`identify devices of interest. Id. at 14-15.
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`Description is the process by which devices learn about one another’s
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`capabilities. Id. at 19. Once a control point has discovered a device of interest, it
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`can obtain a device description with basic information about the device and the
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`services it performs. Id. The control point can then obtain a service description
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`with details about a service of interest and how to interact with it. Id. The figure
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`below illustrates the description process.
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`EX1020 at 0014.
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`Control is the process by which the control point controls a device. EX1010
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`at 19. Because the information obtained during description describes the services
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`performed by the remote device and how to interact with them, the control point
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`can use that information to send commands to the controlled device. Id. The
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`figure below illustrates the control process.
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`EX1020 at 0032.
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`UPnP uses a number of communication protocols stacked on top of a
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`foundational Internet Protocol (IP) layer.
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`EX1010 at 12-13 (excerpted and annotated above); see also id.at 13-16
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`(discussing protocols). As shown above, SSDP (including HTTPMU & HTTPU)
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`is used for discovery, HTTP is used for description, and SOAP and HTTP are used
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`for control. See also EX1020 at 0002 (complete protocol stack); 0007 (discovery);
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`0030 (description); 0032-33 (control). From early on, the UPnP Forum included
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`working committees focused on different applications of UPnP, including the
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`Audio/Video Working Committee which included Microsoft, Broadcom, Philips,
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`Sony, and others. EX1015 at 7. By late 2000, the Audio/Video working
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`committee was working on “services that enable control of peer-to-peer AV
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`streaming.” Id. By early 2001, the committee had developed a Device Interaction
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`Model which enabled a User Control Point to discover and select AV content on
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`the network, identify and select an appropriate rendering device, and control the
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`playback of that content to provide “a consistent entertainment experience where
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`all AV content in the home is available, browsable, and controllable from any
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`control point, and can be enjoyed on any compatible rendering device.” EX1016 at
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`0007-0008. In 2001, the committee worked on “audio streaming scenarios where
`
`audio content is located, browsed, and streamed from a storage device to a player
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`device” (EX1017 at 0006), such as MP3 streaming via HTTP (EX1018 at 0004).
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`By the end of 2001, UPnP members had successfully tested scenarios in which a
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`20
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`UPnP control point from one manufacturer could locate content on a device from
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`
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`Petition for Inter Partes Review of U.S. Pat. No. 8,850,507 B2
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`another manufacturer, and control the rendering of that content on a device from a
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`third manufacturer:
`
`
`
`EX1019 at 0001-0002.
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`5
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`Therefore, the supposedly inventive concept described and claimed in
`
`the ’507 patent was well-known to those of skill in the art prior to the earliest
`
`claimed priority date of the ’507 patent, and further described specifically in the
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`prior art references relied upon by this Petition.
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’507 PATENT IS UNPATENTABLE
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`10
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`The Challenged Claims are unpatentable under 35 U.S.C. § 103(a) for
`
`merely reciting known, predictable and/or obvious combinations of the cited prior
`
`art references.
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`Petition for Inter Partes Review of U.S. Pat. No. 8,850,507 B2
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`IDENTIFICATION OF THE REFERENCES AS PRIOR ART
`
`A.
`This Petition relies on the following prior art references, none of which were
`
`of record during the original prosecution of the ’507 patent.
`
`Zintel (EX1003): Zintel is a Microsoft patent that was filed March 16, 2001
`
`5
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`and published July 21, 2005. Zintel is a continuation-in-part that claims priority to
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`U.S. Appl. 09/496318 filed February 1, 2000 and to three provisional applications.
`
`Zintel is prior art at least under 35 U.S.C. §102(e).
`
`Elabbady (EX1004): Elabbady is another Microsoft patent. Elabbady was
`
`filed March 26, 2002 and claims priority to Provisional Appl. 60/278804 (EX1005),
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`10
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`filed March 26, 2001. Elabbady incorporates-by-reference into its disclosure the
`
`Elabbady Provisional in its entirety. EX1004 at 1:7-11; see MPEP § 2163.07(b)
`
`(“The information incorporated is as much a part of the application as filed as if the
`
`text was repeated in the application, and should be treated as part of the text of the
`
`application as filed.”); see also, e.g., Liebel-Flarsheim Co. v. Medrad, Inc., 481
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`15
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`F.3d 1371, 1381-82 (Fed. Cir. 2007) (claims anticipated by prior art patent that
`
`incorporated-by-reference another prior art patent); Harari v. Lee, 656 F.3d 1331,
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`1335 (Fed. Cir. 2011) (holding broad and unequivocal language was effective to
`
`incorporate-by-reference an entire application’s disclosure).
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`Petition for Inter Partes Review of U.S. Pat. No. 8,850,507 B2
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`Elabbady is Entitled to the Priority Date of Its Provisional
`
`Elabbady was filed March 26, 2002 and is 102(e) prior art based on that
`
`filing date. Elabbady is also effective as of the filing date of the Provisional
`
`application, i.e., March 26, 2001. See Dynamic Drinkware v. Nat’l Graphics, 800
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`5
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`F.3d 1375, 1381-82 (Fed. Cir. 2015) (“A reference patent is … entitled to claim the
`
`benefit of the filing date of its provisional application if the disclosure of the
`
`provisional application provides support for the claims in the reference patent in
`
`compliance with § 112, ¶ 1.”); see also IPR2014-01276, Paper 40 at 22 n.9 (Feb.
`
`17, 2016). Both dates pre-date the earliest provisional date of the ’507 patent.
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`10
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`The Elabbady Provisional provides written description support for at least
`
`claim 1 of the issued Elabbady patent as shown below.2 To the extent there is a
`
`
`
` 2
`
` Petitioner does not have the burden to establish an early priority date for
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`Elabbady unless PO shows that Elabbady is not effective prior art based on its
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`March 26, 2002 filing date. See Dynamic Drinkware, 800 F.3d at 1379 (initial
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`burden satisfied by showing reference was prior art under 102(e)(2) even without
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`early priority date); see also IPR2014-01093, Paper 69 at 9-10 (Jan. 7, 2016).
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`Notwithstanding, given the word count constraints for reply briefs, Petitioner has
`
`identified written description support for claim 1 here. Petitioner reserves the right
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`Petition for Inter Partes Review of U.S. Pat. No. 8,850,507 B2
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`separate requirement that the subject matter of the provisional application is carried
`
`over into the reference patent,3 that requirement is clearly met here where the
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`provisional application is incorporated-by-reference in its entirety. Thus, Elabbady
`
`is 102(e) prior art as of the filing date of its provisional application, i.e., March 26,
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`5
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`2001.
`
`Elabbady Provisional
`See EX1005 at 1-2; 15-17, 27, 42-46.
`
`Elabbady Claim 1
`A system to share media content stored
`on a home network among devices of
`the home network, the system
`comprising:
`
`a processor; and
`memory accessible to the processor, the
`memory comprising:
`
`a content database storing media content
`files available for sharing among the
`devices of the home network, the home
`network utilizing universal plug-and-
`play (UPnP) protocols;
`
`A PC with media store and library
`service would include a processor and
`memory. EX1005 at 1-2, 27.
`
`The media library service describes
`collection of content stored on the PC
`and available for sharing. See EX1005
`at 1-2, 27, 42-46; see also EX1005 at 3
`(showing file / content database), 45
`(showing music library).
`
`The network uses UPnP protocols. See
`EX1005 at 1-2, 15-17, 27.
`
`
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`to provide additional evidence and discussion if PO attempts to swear behind the
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`March 26, 2002 filing date of the Elabbady patent.
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`3 See IPR2014-01093, Paper 69 at 11 (citing Giacomini, 612 F.3d 1380, 1383 (Fed.
`
`Cir. 2010)).
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`Petition for Inter Partes Review of U.S. Pat. No. 8,850,507 B2
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`The Elabbady provisional discloses a
`media library service that publishes
`metadata to the catalog service. See
`EX1005 at 1-2, 25-36. 40, 45-46.
`
`The Elabbady Provisional discloses a
`player device using URLs to download
`content from a “content server.”
`EX1005 at 2. See also, e.g., EX1005 at
`15-17.
`
`
`The Elabbady Provisional discloses a
`DRM client which services requests for
`portable media licenses from the license
`generator. See, e.g., EX1005 at 3-4, 40,
`54-55, 61, 64-65.
`
`The Elabbady Provisional discloses a
`license generator on the content server
`PC which processes requests for media
`playing licenses and grants portable
`media licenses to authorized devices.
`See, e.g., EX1005 at 3-4, 40, 54-55, 61,
`64-65.
`
`a media library service to provide
`metadata associated with the media
`content files available for sharing to a
`media catalog service;
`
`a content server to:
`receive a request from a home network
`device to access a particular media
`content file;
`retrieve the particular media content file
`from the content database; and
`send the particular media content file to
`the home network device;
`a digital rights management client to:
`determine whether an original media
`playing license associated with the
`particular media content file is
`available; and
`generate a temporary media playing
`license from the original media playing
`license, the temporary media playing
`license specifying restrictions relating to
`playback of the particular media content
`file via the home network device;
`a license generator to:
`receive a request from the home
`network device for a media playing
`license relating to the particular media
`content file;
`determine whether the home network
`device is properly registered;
`send a request to the digital rights
`management client for the temporary
`media playing license relating to the
`particular media content file when the
`home network device is properly
`registered; and
`send the temporary media playing
`license to the home network device.
`
`
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`Petition for Inter Partes Review of U.S. Pat. No. 8,850,507 B2
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`
`
`Janik (EX1007): Janik was filed on August 7, 2001 and published on June 6,
`
`2002. Janik is a continuation in part of Appl. No. 09/841268, filed on April 24,
`
`2001 and claims priority to Provisional Appl. Nos. 60/199638, 60/268434, and
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`5
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`60/223872 filed on April 25, 2000, February 12, 2001, and August 8, 2000,
`
`respectively. Janik is therefore prior art at least under 35 U.S.C. §102(e).
`
`SUMMARY OF INVALIDITY POSITIONS
`
`B.
`The combination of Elabbady and Zintel renders obvious claims 1 and 3-18
`
`of the ’507 patent. EX1009 at ¶¶ 34, 80. Like the ’507 patent, Elabbady teaches
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`10
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`the use of one device to control another. Zintel describes UPnP.
`
`The combination of Elabbady, Zintel, and Janik renders obvious claim 2 of
`
`the ’507 patent. EX1009 at ¶¶ 34, 80. This claim adds “enhancement content,” a
`
`feature that the ’507 patent itself admits was well-known and widely used.
`
`VII. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY OF CLAIMS 1-18 OF THE ’507 PATENT
`A. GROUND 1: CLAIMS 1 AND 3-18 ARE OBVIOUS OVER
`ELABBADY AND ZINTEL
`1.
`
`The Prior Art
`a.
`Elabbady is a Microsoft patent that describes a system that allows a variety
`
`Elabbady (EX1004; EX1005)
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`15
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`20
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`of client devices to access a catalog of multimedia content, select content items for
`
`playback, and then stream the content from other devices on the network or the
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`Petition for Inter Partes Review of U.S. Pat. No. 8,850,507 B2
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`Internet. EX1004 at 1:60-2:25; 5:32-45; 12:11-33; EX1005 at 1-4; 7; 15-16.
`
`Elabbady incorporates by reference the Elabbady Provisional in its entirety.
`
`EX1004 at 1:7-11. The Elabbady Provisional includes a number of detailed
`
`Microsoft specifications and technical documents:
`
`Elabbady Provisional Section
`
`Pages (EX1005)
`
`Invention Summary
`
`1-4
`
`DigitalAudioReceiver (“DAR”) Device Template
`
`5-12
`
`DAR Architecture
`
`Digital Media Description Language
`
`Media Library Service Template
`
`Music Manager Specification
`
`Media Library Service System Architecture
`
`13-17
`
`18-24
`
`25-36
`
`37-57
`
`58-66
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`5
`
`
`Elabbady uses UPnP and thus includes devices, services, and control points.
`
`EX1004 at 2:19-25; 5:54-65; EX1005 at 1-4. A device provides a media
`
`cataloging service which gathers information about content items on the network
`
`and creates a catalog that is displayable in a user interface. EX1004 at 6:7-23;
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`10
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`EX1005 at 1-2; 25-36. The catalog includes metadata about the content items,
`
`including a URL identifying where the content is stored. EX1004 at 6:30-36,
`
`10:18-23; EX1005 at 20; 23; 27.
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`Petition for Inter Partes Review of U.S. Pat. No. 8,850,507 B2
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`Client devices include control points that provide a user interface for
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`browsing the catalog and selecting content items for playback. EX1004 at 6:7-23;
`
`12:18-25; Fig. 2A and 3; EX1005 at 1-4; 15-16. Client devices can include PCs,
`
`PDAs, and digital audio receivers (DARs). EX1004 at 3:23-46; 5:66-6:6; 9:1-21;
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`5
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`EX1005 at 7; 15-17. Thus, the control points can reside, for example, on a DAR,
`
`on a PDA used as a remote, or on a PC. EX1005 at 16; 45. In Figure 2A
`
`(annotated below), the control point 31