Paper 69
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`
`TWITTER, INC.
`
`
`
`Petitioner
`
`
`v.
`
`
`VIDSTREAM, LLC
`
`Patent Owner
`
`_____________________________
`
`
`Case IPR2017-01131
`U.S. Patent No. 8,464,304
`_____________________________
`
`
`
`PATENT OWNER VIDSTREAM LLC’S
`
`ORAL HEARING DEMONSTRATIVE EXHIBITS
`
`
`
`
`
`73565868.1
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`
`TWITTER, INC.
`
`
`
`Petitioner
`
`
`v.
`
`
`VIDSTREAM, LLC
`
`Patent Owner
`
`_____________________________
`
`
`Case IPR2017-01131
`U.S. Patent No. 8,464,304
`_____________________________
`
`
`
`PATENT OWNER VIDSTREAM LLC’S
`
`ORAL HEARING DEMONSTRATIVE EXHIBITS
`
`
`
`
`
`73565868.1
`
`
`
`IPR2017-01131
`U.S. Patent No. 8,464,304
`In accordance with the Oral Hearing Order (Paper 62), Patent Owner
`
`VidStream LLC hereby submits its oral hearing demonstrative exhibits.
`
`
`
`
`
`
`
`
`
`Dated: October 22, 2018
`
`Respectfully submitted,
`
`NORTON ROSE FULBRIGHT US LLP
`
`/Eagle H. Robinson/
`Eagle H. Robinson (Reg. No. 61,361)
`Lead Counsel for Patent Owner
`
`
`
`73565868.1
`
`
`
`- 2 -
`
`
`
`Case IPR2017-01131
`Patent 8,464,304
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on October 22,
`
`2018, complete copies of Patent Owner VidStream LLC’s Oral Hearing
`
`Demonstratives were served on the following:
`
`
`
`
`
`
`
`
`
`Lead Counsel:
`
`Todd M. Siegel (Reg. No. 73,232)
`todd.siegel@klarquist.com
`
`Backup Counsel: Andrew M. Mason (Reg. No. 64,034)
`andrew.mason@klarquist.com
`
`Robert T. Cruzen (pro hac vice)
`rob.cruzen@klarquist.com
`
`Respectfully submitted,
`
`/Eagle H. Robinson/
`Eagle H. Robinson (Reg. No. 61,361)
`
`73565868.1
`
`- 3 -
`
`
`
`Patent Owner’s
`Demonstrative Exhibits
`IPR2017‐01131, ‐01133
`Oral Hearing
`October 19, 2018
`
`1
`
`
`
`’304 and ’506 Patents
`(1131 and 1133 Proceedings)
`
`2
`
`
`
`The patents concern a
`“content creation and
`distribution system” for
`“receiving video data from
`a client computing device,
`where the video data is
`captured using a camera
`connected to the client
`computing device in
`accordance with instructions
`executed on the client
`computing device to provide
`the video data in accordance
`with predetermined
`constraints.”
`
`’304 Patent at Fig. 1, Abstract, 9:44‐45 (Ex. 1001).
`’506 Patent at Fig. 1, Abstract, 9:49‐50 (Ex. 1001).
`1131 Response at 1‐2; 1133 Response at 1‐2.
`
`3
`
`
`
`’304 and ’506 Patents at Fig. 3 (Ex. 1001).
`1131 Response at 3; 1133 Response at 3.
`
`4
`
`
`
`Summary
`
`• Lahti ≠ capturing video according to predetermined
`constraints received from a server
`– not frame rate
`– not video length
`• Petitioner’s API / SDK arguments are untimely and irrelevant
`• POSITA would not combine Lahti and Conway to limit length
`• Lahti + Conway ≠ capturing video with preset length
`constraint
`• Lahti + Current TV ≠ capturing video with preset length
`constraint
`
`5
`
`
`
`1131 Grounds 1‐6 (all grounds)
`1133 Grounds 1‐2 (all grounds)
`
`Lahti ≠ capturing video according to
`predetermined constraints received from a server
`
`6
`
`
`
`All Grounds rely on Lahti
`
`Ex. 1006 at 1/12 (“Lahti”) (emphasis added).
`1131 and 1133 Responses at 1.
`
`7
`
`
`
`’304 Pat. = frame rate instructions from server
`
`Claims 1, 17, 22, 26 of ’304 Patent (Ex. 1001) (emphases added).
`1131 Response at 23‐24, 26, 27; Sur‐Reply at 8‐10.
`
`8
`
`
`
`’506 Pat. = length constraint instructions from server
`
`Claims 1, 22, 26 of ’506 Patent (Ex. 1001) (emphases added).
`1133 Response at 49‐53; Sur‐Reply at 7‐9.
`
`9
`
`
`
`MobiCon does not capture per predetermined constraints
`
`1131 Response at 8‐10; Ex. 2002 at ¶¶ 54‐58;
`1133 Response at 8‐10; Ex. 2002 at ¶¶ 55‐58
`(all quoting Ex. 1006 at 6/12).
`
`10
`
`
`
`Pet. ignores that its support is merely a “walkthrough of
`typical usage scenarios” “from the user perspective”
`
`Ex. 1006 at 6/12 (emphases added).
`1131 Response at 12‐13; Ex. 2002 at ¶¶ 61‐62.
`1133 Response at 12‐13; Ex. 2002 at ¶¶ 61‐62.
`
`11
`
`
`
`MobiCon lets users upload natively recorded video
`
`Ex. 1006 at 6/12 (emphases added).
`1131 Response at 10‐11; Ex. 2002 at ¶¶ 59‐60.
`1133 Response at 10‐11; Ex. 2002 at ¶¶ 59‐60.
`
`12
`
`
`
`Lahti parameters native to only disclosed phone
`
`“5. FIELD TRIAL EVALUATION . . . We lent each of the ten trial participants
`a Nokia 6630 MCP with MobiCon preinstalled.”
`Ex. 1006 at 8/12 (emphases added).
`
`Ex. 2006 at 3/7 (emphases added).
`
`Ex. 2007 at 3/5 (emphases added).
`
`1131 Response at 14‐15, 19‐20; Ex. 2002 at ¶¶ 63‐66, 72‐76.
`1133 Response at 14‐15 , 19‐20; Ex. 2002 at ¶¶ 63‐66, 72‐76.
`1131 Sur‐Reply at 13‐16; 1133 Sur‐Reply at 12‐14.
`
`13
`
`
`
`Lahti parameters native to only disclosed phone
`
`Ex. 1006 at 6/12 (Lahti) (emphases added).
`
`Ex. 2006 at 3/7 (emphases added).
`
`Ex. 2007 at 3/5 (emphases added).
`
`1131 Response at 14‐15, 19‐20; Ex. 2002 at ¶¶ 63‐66, 72‐76.
`1133 Response at 14‐15 , 19‐20; Ex. 2002 at ¶¶ 63‐66, 72‐76.
`1131 Sur‐Reply at 13‐16; 1133 Sur‐Reply at 12‐14.
`
`14
`
`
`
`Lahti = programming for diff. phones was a challenge
`
`“Mobile phone manufacturers are increasingly adding new models with
`multimedia support and most modern medium‐ to high‐end cell phones
`come with an integrated audio/video player, a camera to capture still and
`moving pictures, and some media editing software.”
`Ex. 1006 at 1/12 (emphasis added).
`
`“These restrictions come on top of the classic mobile phone application
`development nightmares (device incompatibilities, network application
`debugging, immature SDKs, and different operating system versions with
`undocumented bugs) making the development of an application like
`MobiCon challenging.”
`
`Ex. 1006 at 3/12 (emphases added).
`
`1131 Response at 17‐18; Ex. 2002 at ¶¶ 71‐72.
`1133 Response at 17‐18; Ex. 2002 at ¶¶ 71‐72.
`1131 Sur‐Reply at 21‐22; 1133 Sur‐Reply at 19‐20.
`
`15
`
`
`
`Pet’s new evidence of additional phones supports PO
`
`* * *
`
`Ex. 2002 at 72.
`1131 Sur‐Reply at 21‐22; 1133 Sur‐Reply at 19‐20.
`
`16
`
`
`
`1131 Grounds 1‐6 (all grounds)
`1133 Grounds 1‐2 (all grounds)
`
`API / SDK‐based arguments untimely / irrelevant
`
`17
`
`
`
`Invalidity positions must be disclosed in Petition
`
`“It is of the utmost importance that petitioners in the IPR
`proceedings adhere to the requirement that the initial
`petition identify ‘with particularity’ the ‘evidence that
`supports the grounds for the challenge to each claim.’”
`
`“Unlike district court litigation—where parties have greater
`freedom to revise and develop their arguments over time and
`in response to newly discovered material—the expedited
`nature of IPRs bring with it an obligation for petitioners to
`make their case in their petition to institute.”
`
`‐
`
`Intelligent Bio‐Systems, Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359,
`1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)) (emphasis added).
`‐ 1131 Sur‐Reply at 3‐4; 1133 Sur‐Reply at 3‐4.
`
`18
`
`
`
`SDK/API theories are untimely
`
`“(b)Late submission of supplemental information. A party
`seeking to submit supplemental information more than one
`month after the date the trial is instituted, must request
`authorization to file a motion to submit the information. The
`motion to submit supplemental information must show why
`the supplemental information reasonably could not have
`been obtained earlier, and that consideration of the
`supplemental information would be in the interests‐of‐
`justice.”
`
`‐ 37 CFR §42.123(b).
`‐ 1131 Sur‐Reply at 1, 2, 3, 24; 1133 Sur‐Reply at 1, 2, 3, 26.
`
`19
`
`
`
`Pet’s expert did not initially assess any phone SDKs
`
`Houh’s 1st Depo. at 64:2‐64:22 (Ex. 2008).
`1131 Response at 21‐22; 1133 Response at 21‐22.
`
`20
`
`
`
`Pet’s expert did not initially assess any phone SDKs
`
`Houh’s 1st Depo. at 79:18‐80:7 (Ex. 2008).
`1131 Sur‐Reply at 6‐7; 1133 Sur‐Reply at 6‐7.
`
`21
`
`
`
`Pet’s expert improperly supplements opinion in Reply
`
`Ex. 1052 at ¶ 14 (emphasis added).
`1131 Sur‐Reply at 6; 1133 Sur‐Reply at 5‐6.
`
`22
`
`
`
`Pet’s expert improperly supplements opinion in Reply;
`new opinions still unsupported
`
`Ex. 1052 at ¶ 14.
`1131 Sur‐Reply at 6; 1133 Sur‐Reply at 5‐6.
`
`23
`
`
`
`Pet’s expert improperly supplements opinion in Reply
`
`Ex. 1052 at ¶¶5, 7‐8 (emphases added).
`1131 Sur‐Reply at 5‐8; 1133 Sur‐Reply at 5‐7.
`
`24
`
`
`
`POSITA’s alleged knowledge ≠ disclosure
`
`“We recognize that the Board has subject matter expertise,
`but the Board cannot accept general conclusions about
`what is ‘basic knowledge’ or ‘common sense’ as a
`replacement for documentary evidence for core factual
`findings in a determination of patentability. To hold
`otherwise would be to embark down a slippery slope which
`would permit the examining process to deviate from the
`well‐established and time‐honored requirement that
`rejections be supported by evidence.”
`
`‐
`
`‐
`
`K/S HIMPP v. Hear‐Wear Techs., LLC, 751 F.3d 1362, 1366
`(Fed. Cir. 2014) (citing In re Zurko, 258 F.3d 1379, 1386
`(Fed. Cir. 2001)) (emphases added).
`1131 Sur‐Reply at 2‐3; 1133 Sur‐Reply at 2‐3.
`
`25
`
`
`
`Pet’s new theories about APIs and SDKs are untimely
`
`1131 Sur‐Reply at 5‐8 (quoting 1131 Reply at 5, 6).
`1133 Sur‐Reply at 5‐7 (quoting 1133 Reply at 5, 6).
`
`26
`
`
`
`Petitioner’s arguments suffer from hindsight bias
`
`“[T]he Court cautions us against ‘the temptation to
`read into the prior art the teachings of the
`invention in issue.’”
`
`‐ Apple Inc. v. Papst Licensing GMBH & CO. KG, 2018 Pat.
`App. LEXIS 4314, *15‐16 (P.T.A.B. April 26, 2018) (quoting
`Graham v. John Deere Co., 383 U.S. 1, 17‐18 (1966)).
`1131 Sur‐Reply at 4‐5; 1133 Sur‐Reply at 4.
`
`‐
`
`27
`
`
`
`Pet’s new theory relies on undescribed software
`
`1131 Reply at 3‐4; 1133 Reply at 3‐4 (emphases added).
`1131 Sur‐Reply at 14‐36; 1133 Sur‐Reply at 16‐18.
`
`28
`
`
`
`Dr. Houh cannot say whether the UIManager and
`Mobile Media API provide predetermined constraints
`
`Houh’s 2nd Depo. at 172:2‐16 (Ex. 2010)
`(inadvertently cited as Ex. 1052 in Sur‐Replies).
`1131 Sur‐Reply at 16‐18; 1133 Sur‐Reply at 14‐16.
`
`29
`
`
`
`Pet’s expert did not rely on the Mobile Media API
`
`* * *
`
`Houh’s 2nd Depo. at 63:3‐7, 18‐23 (Ex. 2010).
`1131 Sur‐Reply at 10‐11; 1133 Sur‐Reply at 9‐10.
`
`30
`
`
`
`Pet’s expert did not attempt to review UIManager
`
`Houh’s 2nd Depo. at 154:12‐155:2 (Ex. 2010)
`(inadvertently cited as Ex. 1052 at 54:12‐55:2 in Sur‐Replies).
`1131 Sur‐Reply at 16‐18; 1133 Sur‐Reply at 14‐16.
`
`31
`
`
`
`How Lahti could operate is irrelevant
`
`“The mere fact that a certain thing may result from
`a given set of circumstances is not sufficient to
`establish inherency.”
`
`‐
`
`‐
`
`In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993)
`(emphases added, citation and alteration omitted).
`1131 Sur‐Reply at 20‐21; 1133 Sur‐Reply at 18‐19.
`
`32
`
`
`
`Lahti’s silence as to video constraints is dispositive
`
`“While we have recognized that inherency may
`supply a missing claim limitation in an obviousness
`analysis, we have emphasized that the limitation at
`issue necessarily must be present in order to be
`inherently disclosed by the reference”
`
`‐
`
`‐
`
`Southwire Co. v. Cerro Wire LLC, 870 F.3d 1306, 1311 (Fed.
`Cir. 2017) (citation, quotation, and alteration omitted;
`emphasis in original).
`1131 Sur‐Reply at 20‐21; 1133 Sur‐Reply at 18‐19.
`
`33
`
`
`
`1133 Ground 1
`
`POSITA would not combine Lahti and Conway
`to constrain video length
`
`34
`
`
`
`POSITA would not constrain Lahti’s video length
`
`Ex. 1006 at 3/12 (emphases added).
`1133 Response at 23, 24; Ex. 2002 at ¶¶ 81‐82.
`1133 Sur‐Reply at 21‐23.
`
`35
`
`
`
`Length constraint bad for Lahti’s personal videos
`
`Ex. 1006 at 1/12 (emphasis added).
`
`Ex. 1006 at 9/12 (emphasis added).
`
`Ex. 1006 at 10/12 (emphasis added).
`
`1133 Response at 24‐28; Ex. 2002 at ¶¶ 81‐82.
`1133 Sur‐Reply at 21‐23.
`
`36
`
`
`
`Conway focused on “place shifting” + media playback
`
`Ex. 1007 at ¶¶ [0004] [0021] (emphases added).
`1133 Response at 29‐30; Ex. 2002 at ¶¶ 97‐98, 104‐107.
`
`37
`
`
`
`“Media Player” clips media generated elsewhere
`
`Ex. 1007 at Fig. 1 (annotations added).
`1133 Response at 29‐33; Ex. 2002 at ¶¶ 97‐107.
`
`38
`
`
`
`Conway does not constrain personal videos
`
`Ex. 1007 at ¶¶ [0005] , [0038] , [0061] (emphases added).
`1133 Response at 31‐32, 38‐41; Ex. 2002 at ¶¶ 99‐103, 120‐124.
`
`39
`
`
`
`Purported motivations to shorten already addressed
`‐ Limitations on device storage (Ex. 1003 at ¶ 78) addressed by uploading
`captured media to Candela server (Lahti at 3):
`
`‐ Concerns about long videos degrading server performance (Ex. 1003 at ¶ 78)
`unfounded and addressed with scalable architecture (Lahti at 2, 4, 11):
`
`1133 Response at 25‐28, 36‐38; Ex. 2002 at ¶¶ 83‐94, 116‐119.
`
`40
`
`
`
`Lahti + Conway ≠ minimizing storage or bandwidth
`
`1133 Response at 36‐38; Ex. 2002 at ¶¶ 117‐119.
`
`41
`
`
`
`1133 Ground 1
`
`Lahti and Conway ≠ capturing video
`according to predetermined length constraint
`
`42
`
`
`
`Lahti + Conway ≠ capturing video of preset length
`
`“media player”
`
`Ex. 1006 at Fig. 2 (annotations added).
`1133 Response at 33‐36; Ex. 2002 at ¶¶ 108‐112.
`
`43
`
`
`
`Pet. cherry‐picks from Conway and ignores its context
`
`“[A] patent composed of several elements is not proved
`obvious merely by demonstrating that each of its elements
`was, independently, known in the
`prior art.”
`
`‐
`
`‐
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418, 127 S. Ct. 1727,
`1741 (2007).
`1133 Sur‐Reply at 23‐24.
`
`44
`
`
`
`Petitioner’s arguments suffer from hindsight bias
`
`“While the Supreme Court made clear that a mechanical
`application of the teaching‐suggestion‐motivation test,
`requiring an explicit teaching in the prior art, is
`inappropriate, we must still be careful not to allow
`hindsight reconstruction of references to reach the claimed
`invention without any explanation as to how or why the
`references would be combined to produce the claimed
`invention.”
`
`‐
`
`‐
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342,
`1368 (Fed. Cir. 2012) (citation and alteration omitted).
`1133 Sur‐Reply at 23‐24.
`
`45
`
`
`
`1133 Ground 1
`
`Lahti and Current TV ≠ capturing video
`according to predetermined length constraint
`
`46
`
`
`
`Current TV merely suggests keeping videos short
`
`Ex. 1011 at 3/11, 6‐7/11 (annotations added).
`1133 Response at 41‐44; Ex. 2002 at ¶¶ 125‐130.
`1133 Sur‐Reply at 24‐25.
`
`47
`
`
`
`Pet’s construction acknowledges “instructions” are
`“computer instructions” not textual suggestions
`
`* * *
`
`Petition at 10 (emphases added).
`1133 Response at 45‐46; Ex. 2002 at ¶¶ 131‐133.
`
`48
`
`
`
`Current TV suggests shortening pre‐captured videos
`
`Ex. 1011 at 6‐7/11 (annotations added).
`1133 Response at 41‐44; Ex. 2002 at ¶¶ 125‐130.
`
`49
`
`
`
`Summation
`
`• Lahti ≠ capturing video according to predetermined
`constraints received from a server
`– not frame rate
`– not video length
`• Petitioner’s API / SDK arguments are untimely and irrelevant
`• POSITA would not combine Lahti and Conway to limit length
`• Lahti + Conway ≠ capturing video with preset length
`constraint
`• Lahti + Current TV ≠ capturing video with preset length
`constraint
`
`50
`
`
`
`Pet. misreads Lahti to argue not limited to home videos
`
`Ex. 1006 at 4/12; 1133 Sur‐Reply at 21‐22.
`
`51
`
`
`
`Pet. ignores disclosure re: predetermined constraints
`
`Ex. 1001 (1131) at 10:56‐11:30; see also 21:58‐56 (frame rate).
`Ex. 1001 (1133) at 10:61‐11:35.
`1131 Sur‐Reply at 22‐24; 1133 Sur‐Reply at 20‐21.
`
`52
`
`
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