Paper 8
`Trials@uspto.gov
`571-272-7822 Entered: October 2, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TWITTER, INC.,
`Petitioner,
`
`v.
`
`YOUTOO TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01133
`Patent 8,601,506 B2
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, CHARLES J. BOUDREAU, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`Trials@uspto.gov
`571-272-7822 Entered: October 2, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TWITTER, INC.,
`Petitioner,
`
`v.
`
`YOUTOO TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01133
`Patent 8,601,506 B2
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, CHARLES J. BOUDREAU, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2017-01133
`Patent 8,601,506 B2
`
`I. INTRODUCTION
`Twitter, Inc. (“Petitioner”) filed a Petition for inter partes review of
`claims 1, 4–8, 11, 13–15, 23–26, 29, and 30 of U.S. Patent No. 8,601,506 B2
`(Ex. 1001, “the ’506 patent”). Paper 1 (“Pet.”). Youtoo Technologies, LLC
`(“Patent Owner”) did not file a Preliminary Response. Institution of an inter
`partes review is authorized by statute when “the information presented in the
`petition . . . and any response . . . 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.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108.
`Upon consideration of the Petition, we conclude the information presented
`shows there is a reasonable likelihood that Petitioner would prevail in
`establishing the unpatentability of claims 1, 4–8, 11, 13–15, 23–26, 29, and
`30 of the ’506 patent.
`
`A. Related Matters
`The parties state that the ’506 patent is the subject of a court
`proceeding styled Youtoo Technologies, LLC v. Twitter, Inc., Case No. 3:16-
`cv-00764-N (N.D. Tex.). Pet. 1; Paper 4, 1. The application that issued as
`the ’506 patent claims, under 35 U.S.C. § 120, the benefit of application
`13/185,471, filed July 18, 2011, which issued as U.S. Patent No. 8,464,304
`B2 (“the ’304 patent”). The ’304 patent is involved in IPR2017-01131.
`
`B. The ’506 Patent
`The ʼ506 patent is directed to computer methods and systems for
`receiving and distributing user-generated video content. Ex. 1001, Abstract.
`Figure 2 is reproduced below.
`
`
`
`2
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`IPR2017-01133
`Patent 8,601,506 B2
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`
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`
`
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`
`
`Figure 2 shows a content creation and distribution system (CCDS)
`202. Id. at 13:66–67. System 200 can include several servers connected to
`one or more communications network(s) 204. Id. at 13:67–14:2. CCDS 202
`includes a plurality of servers 206, 208, 210, 212, 214, 216, and 218. CCDS
`202 communicates with a television distribution system 220, that can include
`a network operations center for a television network and/or uplink facility
`from which a television network feed is distributed to carriers 228 that
`provide television services. Id. at 14:24–28. A user having a mobile device
`230 capable of capturing SD or HD video or a computing device 232 having
`a video camera 234 can connect to the communications network(s) 204 and
`
`3
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`interface with CCDS 202. Id. at 14:37–43. Web hosting server 206
`provides one or more web pages through which users can access services
`provided by CCDS 202. Id. at 14:43–45. Web hosting server 206 can host a
`registration web page that allows users to register with the CCDS 202 and a
`HD recorder web page that provides users with access to a thin client
`application (or web application) that supports video capture. Id. at 14:45–
`49. Web hosting server 206 also can allow fat client applications to be
`downloaded and installed on mobile device 230 or computing device 232.
`Id. at 14:51–53.
`
`C. Illustrative Claim
`Petitioner challenges claims 1, 4–8, 11, 13–15, 23–26, 29, and 30 of
`the ’506 patent. Claims 1, 23, and 26 are independent claims. Claim 1,
`reproduced below, is illustrative of the claimed subject matter:
`1. A method performed by data processing apparatus, the
`method comprising:
`receiving video data from a client computing device at a
`server system, wherein the video data is captured using a
`camera communicably connected to the client computing
`device in accordance with instructions executed on the client
`computing device, wherein the instructions are provided to the
`client computing device by the server system and cause the
`video data to be captured in accordance with predetermined
`constraints and the predetermined constraints include a video
`length predefined at the server system in accordance with a time
`slot in a linear television programming broadcast;
`transcoding the video data, using a server included in the
`server system, into at least one different format, wherein at least
`one format of the transcoded video data defines a video file in a
`format appropriate for inclusion in the linear television
`programming broadcast; and
`
`4
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`Patent 8,601,506 B2
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`transferring the transcoded video data to a distribution
`server for distribution.
`
`Id. at 27:63–28:17.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1, 4–8, 11, 13–15, 23–26, 29, and 30 are
`unpatentable based on the following grounds (Pet. 3–4):
`Reference(s)
`Basis
`Challenged Claim(s)
`Lahti1, Conway2, and
`1, 4–8, 11, 13–15, 23–26, 29,
`Novak3
`and 30
`Lahti, Novak, Current
`1, 4–8, 11, 13–15, 23–26, 29,
`TV Mobile4, Current TV
`and 30
`FAQ5
`
`§ 103
`
`§ 103
`
`II. DISCUSSION
`
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
`
`
`1 Janne Lahti et al., “A Mobile Phone-based Context-Aware Video
`Management Application,” Multimedia on Mobile Devices II, Proc. of
`SPIE-IS&T Electronic Imaging, SPIE Vol. 6074, 60740O, 2006 (Ex. 1006)
`(“Lahti”).
`2 U.S. Patent Application Publication No. 2009/0157697 A1, filed Dec. 31,
`2008, published June 18, 2009 (Ex. 1007) (“Conway”).
`3 U.S. Patent Application Publication No. 2002/0104099 A1, filed Dec. 19,
`2000, published Aug. 1, 2002 (Ex. 1008) (“Novak”).
`4 Current TV “create & upload: mobile” webpage (Ex. 1009) (“Current TV
`Mobile”).
`5 Current TV “FAQ” webpage (Ex. 1011) (“Current TV FAQ”).
`
`5
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`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`Petitioner proposes constructions for the following claim terms found
`in the challenged claims: “‘predetermined constraints’ (all claims),” “‘video
`length defined by the instructions, with the video length predefined at the
`server system in accordance with a time slot in a linear television
`programming broadcast’ (all claims),” “‘transcoding’ (all claims),” and
`“‘buffered on the client computing device using scripts’ (claim 5).” Pet. 8–
`12.
`
`We have reviewed Petitioner’s proposed constructions and determine
`that they are consistent with the broadest reasonable interpretation. For
`purposes of this Decision, we adopt the following claim constructions:
`
`
`Claim Term
`
`predetermined
`constraints
`
`Construction
`parameters, rules, or restrictions provided to
`ensure compliance and compatibility with system
`requirements or goals, including but not limited to
`video length, video format type, video image
`resolution, and video transmission bit rate
`
`6
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`Claim Term
`video length defined
`by the instructions,
`with the video length
`predefined at the
`server system in
`accordance with a
`time slot in a linear
`television
`programming
`broadcast
`
`Construction
`
`computer instructions provided by a server
`computing device to a client computing device
`that identify a video length suitable for including
`video into a traditional television program or
`broadcast
`
`transcoding
`
`converting from one video format to another
`
`buffered on the client
`computing device
`using scripts
`
`temporarily storing data in memory of the client
`computing device using a computer program,
`software application, or other unit of computer
`code
`
`B. Asserted Obviousness of Claims over Lahti, Conway, and Novak
`
`Petitioner contends claims 1, 4–8, 11, 13–15, 23–26, 29, and 30 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Lahti, Conway, and
`Novak. Pet. 12–61. In support of its showing, Petitioner relies upon the
`declaration of Dr. Henry Houh. Id. (citing Ex. 1003).
`
`1. Lahti
`Lahti describes a video management system including a video server
`and a mobile camera-phone application called MobiCon. Ex. 1006, 1
`(Abstract). MobiCon allows a user to capture videos, annotate them with
`metadata, specify digital rights management (DRM) settings, upload videos
`over a cellular network, and share the videos with others. Id. Lahti
`describes that the MobiCon application is downloaded over the air to a
`mobile camera-phone. Id. at 5. MobiCon operates on the Candela system
`
`7
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`architecture, which was developed as a solution for general video
`management and includes tools for video creation, analysis, annotation,
`storage, search, and delivery phases. Id. at 4. Figure 3 of Lahti is
`reproduced below.
`
`
`
`
`
`Figure 3 of Lahti is a high-level description of MobiCon.
`As shown above, the UploadClient, which is a mobile Java
`application, runs on a mobile phone, and UploadGateway, which is
`implemented as a Java servlet, runs on the server. The system provides
`wireless access over a mobile phone network to enable storing video clips on
`the server where it is possible to run more computation-intensive operations
`such as video transcoding. Id. at 5.
`
`2. Conway
`Conway describes a method and system for creating variable-length
`
`media clips from a media stream that is received at a media player. Ex. 1007
`¶ 17. The player provides information about the media stream or a program
`that is currently being viewed to a remotely located server to obtain one or
`
`8
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`more rules relating to the creation of media clips. Id. The rules may include
`maximum allowable clip length, as well as limitations on displaying or
`distributing the clip, that are determined based on program name, network,
`or other information that is the source of the clip. Id. The media player
`creates the clip in accordance with received rules, and provides the clip to a
`distribution server for distribution or sharing with other users. Id.
`Limitations of display or distribution of the clip may be contained within
`metadata associated with the clip to allow the distribution server to
`implement the rules for the particular clip. Id.
`3. Novak
`Novak describes a system and method to allow presentation of media
`
`objects to an end user at a client terminal, such as a television set. Ex. 1007
`¶ 10. An individual can upload media objects to a server and specify the
`manner in which the media objects are to be played as a media program to
`an end user, including the scheduling and sequencing of the media objects.
`Id. The client terminal of the end user can be subscribed or provisioned such
`that information related to media objects, such as media program listings,
`can be provided in an electronic program guide. Id. The media program can
`be provided to the end user via a synthetic channel, which can be tuned to or
`selected by the end user. Id.
`
`4. Discussion
`Petitioner asserts that the combination of Lahti, Conway, and Novak
`describes all of the elements of claims 1, 4–8, 11, 13–15, 23–26, 29, and 30.
`Pet. 19–61. We begin our analysis with claim 1. Claim 1 recites a “method
`performed by data processing apparatus, the method comprising: receiving
`video data from a client computing device at a server system.” The present
`
`9
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`record supports the contention that Lahti describes a server system (e.g.,
`Figure 3 server and “Upload Gateway”) that performs data processing
`functions to process videos captured and uploaded by users’ mobile phones
`(client computing device). Pet. 19–22 (citing Ex. 1006, 1, 2, 5, 6, Figs. 1, 3;
`Ex. 1003 ¶¶ 86–94).
`The present record further supports the contention that Lahti describes
`“wherein the video data is captured using a camera communicably coupled
`to the client computing device in accordance with instructions executed on
`the client computing device” as recited in claim 1. Pet. 23–25. Lahti
`describes a mobile phone having an integrated camera for capturing video
`data. Ex. 1006, 1. Petitioner contends, with supporting evidence, that a
`person having ordinary skill in the art would have understood that the client
`computing device (e.g., mobile phone) and Lahti’s video camera are
`“communicably coupled” because the mobile phone has an integrated
`camera. Pet. 23 (citing Ex. 1006, 1; Ex. 1003 ¶¶ 96–97). Petitioner further
`contends, with supporting evidence, that Lahti describes that the mobile
`phone (client computing device) uses a software application called MobiCon
`(UIManager) executed on the mobile phone to capture video. Pet. 24–25
`(citing Ex. 1006, 5, 6, Figs. 3, 4; Ex. 1003 ¶¶ 95–101).
`Claim 1 recites
`wherein the instructions are provided to the client
`computing device by the server system and cause the video data
`to be captured in accordance with predetermined constraints
`and the predetermined constraints include a video length
`defined by the instructions, with the video length predefined at
`the server system in accordance with a time slot in a linear
`television programming broadcast.
`
`
`10
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`The present record supports the contention that Lahti describes providing to
`the mobile phone (client computing device), MobiCon (instructions) from
`the server system server. Pet. 26 (citing Ex. 1006, 5) (“The server allows
`distribution of MobiCon application easily to mobile phone users by using
`Over-The-Air (OTA) specification from the Open Mobile Alliance, which
`enables mobile applications to be downloaded and installed over the cellular
`network.”). The present record further supports the contention that Lahti
`describes that MobiCon provides parameters that include a frame rate
`defined by the instructions by which the mobile device (on which the
`application is executing) captures video data. Pet. 27 (citing Ex. 1006, 6;
`Ex. 1003 ¶¶ 105–106). Petitioner relies on Conway’s description of
`capturing video pursuant to predetermined constraints that include a video
`length defined by instructions provided by the server to the client to further
`meet “caus[ing] the video data to be captured in accordance with
`predetermined constraints and the predetermined constraints include a video
`length defined by the instructions.” Pet. 28–29 (citing Ex. 1007 ¶¶ 17, 18,
`26, 29, 31, 32, 38; Ex. 1003 ¶¶ 107–111). Moreover, Petitioner relies on
`Novak’s description of creating media clips of a length suitable for inclusion
`in a broadcast television schedule to meet the claim 1 requirement of “the
`video length predefined . . . in accordance with a time slot in a linear
`television programming broadcast.” Pet. 29–32 (citing Ex. 1008 ¶¶ 28, 61,
`62, Figs. 5, 7; Ex. 1003 ¶¶ 112–119).
`Claim 1 further recites “transcoding the video data, using a server
`included in the server system, into at least one different format.” The
`present record supports the contention that Lahti describes that video
`received by the server VideoManager servlet transcodes uploaded video data
`
`11
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`into at least one different format. Pet. 32–34 (citing Ex. 1006, 3, 5, 6, 7,
`Fig. 3; Ex. 1003 ¶¶ 121–125).
`The present record supports the contention that Lahti in combination
`with Conway and Novak describes “wherein at least one format of the
`transcoded video data defines a video file in a format appropriate for
`inclusion in a linear television programming broadcast.” Pet. 34–36. Lahti
`describes transcoding video data into multiple formats, including H.263 and
`H.264. Ex. 1006, 7. The present record supports the contention that H.264
`format was employed in television programming broadcasts at the time of
`the invention. Pet. 35 (citing Ex. 1003 ¶ 128; Ex. 1015, 12).
`Lastly, claim 1 recites “transferring the transcoded video data to a
`distribution server for distribution.” The present record supports the
`contention that Lahti describes storing uploaded video at the server via the
`Candela Interface and uploading videos to a streaming server for
`distribution. Pet. 36–38 (citing Ex. 1006, 4–6, Fig. 2; Ex. 1011, 3–8;
`Ex. 1003 ¶¶ 133–137).
`Independent claims 23 and 26 are similar to claim 1, and Petitioner’s
`showing is consistent for claims 23 and 26 as that for claim 1. To the extent
`there are differences, Petitioner has accounted sufficiently for those
`differences. See Pet. 38–50. For similar reasons provided above, the present
`record supports Petitioner’s contention that Lahti in combination with
`Conway and Novak renders obvious claims 23 and 26. Claims 4–8, 11, and
`13–15 depend directly from claim 1, claims 24 and 25 depend directly from
`independent claim 23, and claims 29 and 30 depend directly from
`independent claim 26. Petitioner’s contentions demonstrate, at this stage of
`the proceeding, that claims 4–8, 11, 13–15, 24, 25, 29, and 30 would have
`
`12
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`been obvious over Lahti in combination with Conway and Novak. See Pet.
`50–61.
`For all of the above reasons, we are persuaded, at this juncture of the
`proceeding, that Petitioner has established a reasonable likelihood that
`Petitioner would prevail in its challenge to claims 1, 4–8, 11, 13–15, 23–26,
`29, and 30 as obvious over Lahti, Conway, and Novak.
`
`C. Asserted Obviousness over Lahti, Novak, Current TV Mobile, and
`Current TV FAQ
`
`Petitioner contends claims 1, 4–8, 11, 13–15, 23–26, 29, and 30 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Lahti, Novak,
`Current TV Mobile, and Current TV FAQ. Pet. 61–69. In support of its
`showing, Petitioner relies upon the declaration of Dr. Henry Houh. Id.
`(citing Ex. 1003).
`
`
`
`1. Current TV Mobile and Current TV FAQ6
`Current TV Mobile states the following:
`Don’t just watch content on your mobile phone, make content
`and let the world see it—on Current’s national TV network—
`
`
`6 Petitioner contends that Current TV was an interactive television channel
`in the U.S. that permitted viewers to submit video content to be included in
`television programming. Pet. 61 (citing Ex. 1017, 8). Petitioner further
`argues that Current TV had an associated website that described the
`channel’s programming, scheduling, promotions, as well as how viewers
`could participate in programming by submitting their own content. Pet. 61.
`According to Petitioner, Current TV Mobile (Ex. 1009), Current TV
`Submission Guidelines (Ex. 1010), and Current TV FAQ (Ex. 1011) are
`pages from the Current TV associated website that were publically available
`by December 31, 2007. Pet. 61 (citing Ex. 1016, 1, 11–14, 19–29).
`Petitioner refers to pages from the website (Ex. 1009–1011) as the “Current
`TV References.” Pet. 61.
`
`13
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`now available in 28 million homes. Current is the first and only
`TV network to showcase your mobile videos.
`
`Check out the call outs below, watch a sample, shoot some
`footage with your video phone and find out how the content you
`capture with your mobile can pay those coverage charges. Oh,
`and make sure what you send to Current is something you and
`your friends would want to watch on TV!
`
`
`Ex. 1009, 2 (emphasis omitted).
`
`Current TV FAQ describes a POD as a short video that is anywhere
`from one minute to seven or eight minutes. Ex. 1011, 3.
`2. Discussion
`Petitioner asserts that the combination of Lahti, Novak, Current TV
`Mobile, and Current TV FAQ describes all of the elements of claims 1, 4–8,
`11, 13–15, 23–26, 29, and 30. Pet. 61–69. With respect to independent
`claims 1, 23, and 26, Petitioner relies on Lahti and Novak to meet limitations
`of those claims as it does with respect to the previous challenge discussed.
`See Pet. 64–65. In this challenge, Petitioner relies on Current TV Mobile
`and Current TV FAQ for teaching predetermined constraints that include a
`video length predefined at the server system as required by claims 1, 23, and
`26. Id. at 65. In addition, Petitioner provides reasons for modifying Lahti
`with Novak, Current TV Mobile, and Current TV FAQ. Id. at 62–64. For
`dependent claims 4, 5, 7, 8, 13, and 24, Petitioner relies on the descriptions
`in Lahti to meet the additional elements recited in these claims as it does
`with respect to the previous challenge discussed. Id. at 65–66.
`We also have reviewed Petitioner’s showing with respect to
`dependent claims 6, 11, 14, 14, 25, 29, and 30 and determine Petitioner’s
`contentions demonstrate, at this stage of the proceeding, that those claims
`
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`would have been obvious over Lahti in combination with Novak, Current
`TV Mobile, and Current TV FAQ. See Pet. 66–69.
`For all of the above reasons, we are persuaded, at this juncture of the
`proceeding, that Petitioner has established a reasonable likelihood that
`Petitioner would prevail in its challenge to claims 1, 4–8, 11, 13–15, 23–26,
`29, and 30 as obvious over Lahti, Novak, Current TV Mobile, and Current
`TV FAQ.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented establishes a reasonable likelihood that Petitioner would prevail in
`showing that claims 1, 4–8, 11, 13–15, 23–26, 29, and 30 of the ’506 patent
`are unpatentable.
`
`IV. ORDER
`
`Accordingly, it is:
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted as to claims 1, 4–8, 11, 13–15, 23–26, 29, and 30
`of the ’506 patent on the following grounds of unpatentability:
`Reference(s)
`Basis
`Challenged Claim(s)
`Lahti, Conway, and
`1, 4–8, 11, 13–15, 23–26, 29,
`Novak
`and 30
`Lahti, Novak, Current
`1, 4–8, 11, 13–15, 23–26, 29,
`TV Mobile, Current TV
`and 30
`FAQ
`
`§ 103
`
`§ 103
`
`
`
`15
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial, which
`commences on the entry date of this decision; and
`FURTHER ORDERED that the trial is limited to the grounds
`identified immediately above, and no other ground is authorized.
`
`FOR PETITIONER:
`Todd M. Siegel
`Andrew M. Mason
`Robert T. Cruzen
`KLARQUIST SPARKMAN, LLP
`todd.siegel@klarquist.com
`andrew.mason@klarquist.com
`rob.cruzen@klarquist.com
`
`
`FOR PATENT OWNER:
`Scott McKeown
`OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP
`cpdocketmckeown@oblon.com
`
`Spencer C. Patterson
`GRABLE MARTIN FULTON PLLC
`spatterson@gchub.com
`
`Stephen L. Levine
`CARRINGTON, COLEMAN, SLOMAN & BLUMENTHAL, L.L.P.
`slevine@ccsb.com
`
`
`
`
`
`
`16
`
`
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