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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AT&T SERVICES, INC.,
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`Petitioner,
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`v.
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`CONVERGENT MEDIA SOLUTIONS, LLC,
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`Patent Owner.
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`
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`
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`
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`Patent No. 8,850,507
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`
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,850,507B2
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`
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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 ................................................................ 4
`B.
`IDENTIFICATION OF CHALLENGE ................................................ 4
`1.
`Claims Challenged ...................................................................... 4
`2.
`The Prior Art ............................................................................... 4
`3.
`Supporting Evidence Relied Upon For The Challenge .............. 5
`4.
`Statutory Ground(s) Of Challenge And Legal Principles ........... 5
`5.
`Claim Construction ..................................................................... 5
`6.
`How Claims Are Unpatentable Under Statutory Grounds ......... 5
`IV. OVERVIEW OF THE ’507 PATENT ............................................................ 6
`A.
`PRIORITY DATE OF THE ’507 PATENT ......................................... 6
`B.
`SUMMARY OF THE ’507 PATENT ................................................... 6
`C.
`LEVEL OF ORDINARY SKILL IN THE ART .................................. 8
`D.
`PROPOSED CLAIM CONSTRUCTION ............................................. 8
`BACKGROUND OF THE PRIOR ART ........................................................ 9
`V.
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’507 PATENT IS UNPATENTABLE ............................. 15
`A.
`IDENTIFICATION OF THE REFERENCES AS PRIOR ART ........ 16
`B.
`SUMMARY OF INVALIDITY POSITIONS .................................... 20
`VII. DETAILED EXPLANATION OF GROUNDS FOR UNPATENTABILITY
`OF CLAIMS 1-17 OF THE ’507 PATENT .................................................. 20
`
`
`
`i
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`
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`A. GROUND 1: CLAIMS 1 AND 3-17 ARE OBVIOUS OVER
`ELABBADY AND ZINTEL .............................................................. 20
`1.
`The Prior Art ............................................................................. 20
`2.
`The Elabbady-Zintel Combination ........................................... 24
`3.
`ELABBADY AND ZINTEL RENDER CLAIMS 1 AND 3-17
`OBVIOUS ................................................................................. 28
`B. GROUND 2: CLAIM 2 IS OBVIOUS OVER ELABBADY,
`ZINTEL, AND JANIK ........................................................................ 58
`1.
`The Elabbady-Zintel-Janik combination .................................. 58
`2.
`The Elabbady-Zintel-Janik Combination Renders Obvious
`Claim 2 ...................................................................................... 62
`VIII. CONCLUSION .............................................................................................. 64
`
`
`
`ii
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`EXHIBIT LIST1
`U.S. Patent No. 8,850,507 to Reisman (the “’507 patent”)
`
`EX1001
`
`EX1002
`
`U.S. Patent No. 8,893,212 to Reisman (the “’212 patent”)
`
`EX1003
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`U.S. Patent No. 6,910,068 (“Zintel”)
`
`EX1004
`
`U.S. Patent No. 7,483,958 (“Elabbady”)
`
`EX1005
`
`U.S. Provisional Application No. 60/278804 (“Elabbady Provisional”)
`
`EX1006
`
`U.S. Application Publication No. 2001/0042107 (“Palm”)
`
`EX1007
`
`U.S. Patent No. 7,130,616 (“Janik”)
`
`EX1008
`
`U.S. Patent No. 6,847,778 (“Vallone”)
`
`EX1009
`
`Declaration of Dr. Wolfe
`
`EX1010 Windows ME White Paper
`
`EX1011 Miller et al., Home Networking with Universal Plug and Play, IEEE
`0163-6804 (Dec. 2001)
`
`EX1012
`
`Steinfeld, Devices that Play Together, Work Together (Sept. 2001)
`
`EX1013
`
`Bell et al., A Call For The Home Media Network (May 2001)
`
`EX1014
`
`UPnP Newsletter 3Q00
`
`EX1015
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`UPnP Newsletter 4Q00
`
`EX1016
`
`UPnP Newsletter 1Q01
`
`
`1 For the benefit of the Board, Petitioner has used the same exhibit numbering
`
`system for this Petition as used in IPR2016-01761 for Exhibits 1-27. Further,
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`Petitioner is concurrently filing a Petition on U.S. Patent No. 8,914,840 and is
`
`using the same numbering system in that petition.
`
`
`
`iii
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`
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`EX1017
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`UPnP Newsletter 2Q01
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`EX1018
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`UPnP Newsletter 4Q01
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`EX1019
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`UPnP Newsletter 1Q02
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`EX1020
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`UPnP Device Architecture V.1 Specification (June 2000)
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`EX1021 Microsoft Press Release re UPnP Formation (April 1999)
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`EX1022
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`LinkSys WAP11 Product Page (June 2001)
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`EX1023
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`LinkSys WAP11 User Guide (2001)
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`EX1024
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`U.S. Patent No. 6,084,876 (“Kwok”)
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`EX1025
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`U.S. Patent No. 7,031,335 (“Donahue”)
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`EX1026
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`U.S. Patent No. 6,134,035 (“Krimmel”)
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`EX1027
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`U.S. Provisional Application No. 60/174,706 (“Palm Provisional”)
`
`
`
`iv
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`
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`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100, AT&T Services, Inc.
`
`(“Petitioner”) petitions for inter partes review (“IPR”) of claims 1-17 (“Challenged
`
`Claims”) of U.S. Patent No. 8,850,507 (the “’507 patent,” EX1001), currently
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`assigned to Convergent Media Solutions, LLC (“Patent Owner” or “PO”).
`
`This Petition shows a reasonable likelihood that Petitioner will prevail with
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`respect to at least one of claims 1-17 challenged under 35 U.S.C. § 314 (a).
`
`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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`Ground 2:
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`Elabbady Zintel
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`Claims 1, 3-17
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`Elabbady, Zintel, and Janik
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`Claim 2
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`Petitioner respectfully requests that the Board institute an IPR trial and
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`cancel claims 1-17.
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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), the real party in
`
`interest for this IPR is AT&T Services, Inc. (hereinafter “AT&T”). AT&T
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`Services, Inc. also identifies AT&T Inc. as its parent holding company. Each of
`
`
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`1
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`
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`AT&T Inc.’s subsidiaries, including AT&T Services, Inc., maintains its own
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`independent status, identity, and structure.
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`B. RELATED MATTERS
`Patent Owner has asserted the ’507 patent against Petitioner AT&T in lead
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`case Convergent Media Solutions, LLC v. AT&T Services,
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`Inc., No.
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`3:15-cv-2156-M (N.D. Tex.). Related cases filed by Patent Owner, including
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`Convergent Media Solutions, LLC v. Netflix Inc., No. 3:15-cv-2160, and
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`Convergent Media Solutions, LLC v. Roku, Inc., No. 3:15-cv-2163, were
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`subsequently consolidated in the lead case on November 12, 2015. See
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`Convergent Media Solutions, LLC v AT&T, Inc., No. 3:15-cv-2156-M, Order, Dkt.
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`23 (N.D. Tex. Nov. 12, 2015).
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`PO has also asserted U.S. Patent No. 8,914,840 against AT&T. AT&T plans
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`to simultaneously file an IPR against this patent.
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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), Petitioner
`
`appoints Kurt Pankratz (Reg. No. 46,977) as its lead counsel, and Eliot Williams
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`(Reg. No. 50,822), Roger Fulghum (Reg. No. 39,678), and Brian Johnston (Reg.
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`No. 69,041) as its back-up counsel.
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`
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`The contact information for the above-listed attorneys is as follows:
`
`Kurt Pankratz
`Brian Johnston
`
`2
`
`
`
`
`
`2001 Ross Avenue, Suite 700
`Dallas, Texas 75201
`Tele: (214) 953-6500
`Fax: (214) 953-6503
`kurt.pankratz@bakerbotts.com
`brian.johnston@bakerbotts.com
`
`Roger Fulghum
`One Shell Plaza
`910 Louisiana Street
`Houston, Texas 77002
`Tele: (713) 229-1234
`Fax: (713) 229-1522
`roger.fulghum@bakerbotts.com
`
`Eliot Williams
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, California 94304-1007
`Tele: (650) 739-7500
`Fax: (650) 739-7699
`eliot.williams@bakerbotts.com
`
`The following email may be used for service and all communications:
`
`DLInternalATTConvergent@BakerBotts.com
`
`
`
`
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`
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`Petitioner hereby consents to electronic service under 37 C.F.R. § 42.6(e).
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney executed by AT&T
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`Services, Inc. appointing the above designated counsel is filed concurrently
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`herewith.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW
`This Petition is complete, complies with all requirements including those
`
`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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`
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`3
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`
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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), Petitioner certifies that the ’507 patent is available
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`for IPR and that Petitioner are not barred or estopped from requesting an IPR
`
`challenging claims of the ’507 patent on the grounds identified herein. Specifically,
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`Petitioner have the standing and meet all requirements to file this Petition under 35
`
`U.S.C. §§ 315(a)(1), 315(b), 315(e)(1), and 325(e)(1), and 37 C.F.R.
`
`§§42.73(d)(1), 42.101, and 42.102.
`
`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 1-17 of the ’507 patent
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`because they are invalid on the presented grounds and evidence.
`
`The Prior Art
`
`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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`4
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`
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`Supporting Evidence Relied Upon For The Challenge
`
`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
`
`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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`Claim Construction
`
`5.
`The ’507 patent has not expired and the Patent Office must apply the
`
`broadest reasonable interpretation (BRI) standard in this IPR to give each
`
`challenged claim “its broadest reasonable construction in light of the specification
`
`of the patent in which it appears” to a person of ordinary skill in the art
`
`(“POSITA”). See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S.
`
`Ct. 2131, 2142-46 (2016).
`
`6. How Claims Are Unpatentable Under Statutory Grounds
`Pursuant to 37 C.F.R. § 42.104 (b)(4), Section VII provides an explanation
`
`of how Claims 1-17 are unpatentable under 35 U.S.C. § 103, including the
`
`identification of where each claim element is found in the cited prior art.
`
`
`
`5
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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
`
`application No. 10/434,032, filed on May 8, 2003, now Pat. No. 7,987,491.
`
`The ’507 patent claims the benefit of priority to three U.S. provisional
`
`applications with U.S. Provisional Appl. 60/379,635, filed May 10, 2002, being the
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`earliest filing. Although, Petitioner does not concede that the Challenged Claims
`
`are supported by any provisional application such that they can be accorded an
`
`early priority date, the cited prior art pre-dates May 10, 2002, the earliest claimed
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`priority date.
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`SUMMARY OF THE ’507 PATENT
`
`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
`
`application of prior art technologies such as Universal Plug and Play (“UPnP”).
`
`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.
`
`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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`
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`6
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`
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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 relating
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`to a user’s session with one device set are recorded, e.g., “VCR-like . . . controls”
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`(id. at 8:22-25), and transferred from the controlling device to the controlled
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`device. See id. at 33:6-63. Control can be based on known methods, such as SOAP
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`(Simple Object Access Protocol) and XML (id. at 10:3-32; 103:52-62; 153:2-12;
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`158:3-17), and the “communications process could desirably be based on and
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`compatible with . . . UPnP.” Id. at 37:38-41. The ’507 patent acknowledges that
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`UPnP supports remote command and control across networked devices. Id. at
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`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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`
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`7
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`
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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
`
`¶¶ 32-33.
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`PROPOSED CLAIM CONSTRUCTION
`
`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
`
`patent in which it appears” to POSITA. 37 C.F.R. § 42.100(b); see Cuozzo, 136
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`S.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
`
`construction standard applies. For the purposes of this petition, and to comply with
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`
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`8
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`
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`37 C.F.R. §§ 42.100(b) and 42.104(b)(3), Petitioner propose that the BRI of all
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`claim terms in the ’507 patent is their plain and ordinary meaning.
`
`V. BACKGROUND OF THE PRIOR ART
`As mentioned above, the ’507 patent is directed to an obvious application of
`
`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
`
`generally EX1010-EX1013 (prior art articles and papers providing overviews of
`
`UPnP), EX1009 at ¶¶ 36-53.
`
`The UPnP Forum was formed by Microsoft, Intel, and others in April 1999
`
`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
`
`(Microsoft Press Release). The basic architecture of UPnP was well established by
`
`June 2000, when the UPnP Device Architecture v1.0 specification (EX1020) was
`
`published. Numerous articles were published about UPnP and its potential
`
`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.
`
`“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
`
`services. “For instance, a VCR device may consist of a tape transport service, a
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`
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`9
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`
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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
`
`on other devices that remotely control the controlled device over the network.
`
`
`EX1010 at 10 (excerpted left); EX1012 at 66 (excerpted right); see also, e.g.,
`
`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”).
`
`UPnP facilitates device interaction through device discovery, description,
`
`and control. EX1010 at 18-19. Discovery is the process by which devices on the
`
`network find one another. Id. UPnP uses a protocol called Simple Service
`
`
`
`10
`
`
`
`Discovery Protocol (SSDP) for device discovery. Id. SSDP allows devices to
`
`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.
`
`Description is the process by which devices learn about one another’s
`
`capabilities. Id. at 19. Once a control point has discovered a device of interest, it
`
`can obtain a device description with basic information about the device and the
`
`services it performs. Id. The control point can then obtain a service description
`
`with details about a service of interest and how to interact with it. Id. The figure
`
`below illustrates the description process.
`
`EX1020 at 0014.
`
`Control is the process by which the control point controls a device. EX1010
`
`at 19. Because the information obtained during description describes the services
`
`performed by the remote device and how to interact with them, the control point
`
`
`
`
`
`11
`
`
`
`can use that information to send commands to the controlled device. Id. The figure
`
`below illustrates the control process.
`
`EX1020 at 0032.
`
`UPnP uses a number of communication protocols stacked on top of a
`
`foundational Internet Protocol (IP) layer.
`
`
`
`
`
`12
`
`
`
`
`EX1010 at 12-13 (excerpted and annotated above); see also id. at 13-16
`
`(discussing protocols). As shown above, SSDP (including HTTPMU & HTTPU) is
`
`used for discovery, HTTP is used for description, and SOAP and HTTP are used
`
`for control. See also EX1020 at 0002 (complete protocol stack); 0007 (discovery);
`
`0030 (description); 0032-33 (control). From early on, the UPnP Forum included
`
`working committees focused on different applications of UPnP, including the
`
`Audio/Video Working Committee which included Microsoft, Broadcom, Philips,
`
`
`
`13
`
`
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`Sony, and others. EX1015 at 7. By late 2000, the Audio/Video working committee
`
`was working on “services that enable control of peer-to-peer AV streaming.” Id.
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`By early 2001, the committee had developed a Device Interaction Model which
`
`enabled a User Control Point to discover and select AV content on the network,
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`identify and select an appropriate rendering device, and control the playback of
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`that content to provide “a consistent entertainment experience where all AV
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`content in the home is available, browsable, and controllable from any control
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`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
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`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).
`
`By the end of 2001, UPnP members had successfully tested scenarios in which a
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`UPnP control point from one manufacturer could locate content on a device from
`
`another manufacturer, and control the rendering of that content on a device from a
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`third manufacturer:
`
`
`
`14
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`
`
`
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`EX1019 at 0001-0002.
`
`Therefore, the supposedly inventive concept described and claimed in the
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`’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 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
`
`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.
`
`
`
`15
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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
`
`and published July 21, 2005. Zintel is a continuation-in-part that claims priority to
`
`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), 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 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,
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`656 F.3d 1331, 1335 (Fed. Cir. 2011) (holding broad and unequivocal language
`
`was effective to incorporate-by-reference an entire application’s disclosure).
`
`
`
`16
`
`
`
`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
`
`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.
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`17, 2016). Both dates pre-date the earliest provisional date of the ’507 patent.
`
`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
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`2 Petitioner does not have the burden to establish an early priority date for
`
`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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`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.
`
`
`
`17
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`
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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,
`
`2001.
`
`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 media library service to provide metadata
`associated with the media content files
`available for sharing to a media catalog
`service;
`
`Elabbady Provisional
`See EX1005 at 1-2; 15-17, 27, 42-46.
`
`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.
`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.
`
`
`3 See IPR2014-01093, Paper 69 at 11 (citing Giacomini, 612 F.3d 1380, 1383 (Fed.
`
`Cir. 2010)).
`
`
`
`18
`
`
`
`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 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;
`
`the home network
`determine whether
`device is properly registered;
`
`the digital rights
`to
`send a request
`management client for
`the
`temporary
`media playing
`license relating
`to
`the
`particular media content file when the
`home
`network
`device
`is
`properly
`registered; and
`
`
`
`19
`
`
`
`send the temporary media playing license
`to the home network device.
`
`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
`
`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 3-17
`
`of the ’507 patent. EX1009 at ¶¶ 34, 80. Like the ’507 patent, Elabbady teaches the
`
`use of one device to control another. Zintel describes UPnP.
`
`The combination of Elabbady, Zintel, and Janik renders obvious claim 2 of
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`the ’507 patent. EX1009 at ¶¶ 34, 80. This claim adds “enhancement content,” a
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`feature that the ’507 patent itself admits was well-known and widely used.
`
`VII. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY OF CLAIMS 1-17 OF THE ’507 PATENT
`A. GROUND 1: CLAIMS 1 AND 3-17 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)
`
`of client devices to access a catalog of multimedia content, select content items for
`
`
`
`20
`
`
`
`playback, and then stream the content from other devices on the network or the
`
`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
`
`Invention Summary
`
`DigitalAudioReceiver (“DAR”) Device Template
`
`DAR Architecture
`
`Digital Media Description Language
`
`Media Library Service Template
`
`Music Manager Specification
`
`Media Library Service System Architecture
`
`Pages (EX1005)
`
`1-4
`
`5-12
`
`13-17
`
`18-24
`
`25-36
`
`37-57
`
`58-66
`
`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; EX1005 at 1-2;
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`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.
`
`
`
`21
`
`
`
`Client devices include control points that provide a user interface for
`
`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;
`
`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 315 resides on client device 300 which also includes
`
`media player 324 (EX1004 at 9:56-60):
`
`
`
`22
`
`
`
`
`
`After a content item has been selected, the user can select the playback
`
`device from among those available on the network. EX1005 at 15-17; see also id.
`
`at 2. The control point then sends a PLAY command along with the URL for the
`
`selected content item to the selected playback device so that it can begin streaming
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`the content. EX1005 at 15-17; see also EX1004 at 10:17-32; 12:18-27.
`
`Elabbady also provides playback control; it describes functions such as
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`“play, pause, and stop” that can be used by a User Control Point to manipulate
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`playback on another device. EX1005 at 15; see also id. at 7 (describing the
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`“AVTransport” module that “enables control over the transport of audio and video
`
`streams”); 9 (same); 47 (describing a UI for play, pause, scan, skip, and to query
`
`and navigate the music catalog which can be used remotely and locally); 50
`
`(same). Other control features can be used such as “volume control” (id. at 7; 9);
`
`see also EX1009 at ¶¶ 54-64.
`
`b.
`Zintel is a Microsoft patent and provides a detailed description of UPnP.
`
`Zintel (EX1003)
`
`EX1003 at Abstract; 2:62-3:20; 4:57-6:52. Zintel describes “User Control Points”
`
`which may be on a wide array of devices such as “PC[s],” “digital television[s],”
`
`“set-top box[es],” Id. at 6:60-7:14. Zintel also describes “Controlled Devices”
`
`which may include VCRs, DVD players, and “audio/video playback device[s].” Id.
`
`at 7:14-32. Zintel describes how user control points and controlled devices
`
`
`
`23
`
`
`
`communicate to perform discovery, description, and control. Id. at 13:44-14:19;
`
`12:22-13:2; 19:24-20:48
`
`(discovery); 20:49-60; 25:47-28:2
`
`(description);
`
`28:3-29:24 (control).
`
`Zintel describes how UPnP supports flexible interactions between control
`
`points and controlled devices. For example, a single control point can