Trials@uspto.gov
`571-272-7822
`
`Paper 8
`Date: April 21, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BYTEDANCE LTD. and TIKTOK INC.,
`Petitioner,
`v.
`TRILLER, INC.,
`Patent Owner.
`
`IPR2021-00099
`Patent 9,691,429 B2
`
`
`
`
`
`
`
`
`
`Before GEORGIANNA W. BRADEN, GREGG I. ANDERSON, and
`MINN CHUNG, Administrative Patent Judges.
`ANDERSON, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 8
`Date: April 21, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BYTEDANCE LTD. and TIKTOK INC.,
`Petitioner,
`v.
`TRILLER, INC.,
`Patent Owner.
`
`IPR2021-00099
`Patent 9,691,429 B2
`
`
`
`
`
`
`
`
`
`Before GEORGIANNA W. BRADEN, GREGG I. ANDERSON, and
`MINN CHUNG, Administrative Patent Judges.
`ANDERSON, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`
`IPR2021-00099
`Patent 9,691,429 B2
`
`INTRODUCTION
`I.
`ByteDance Ltd. and TikTok Inc. (collectively “Petitioner”) filed a
`Petition requesting inter partes review of claims 1–10 of U.S. Patent
`No. 9,691,429 B2 (Ex. 1001, “the ’429 patent”). Paper 2 (“Pet.”). Triller,
`Inc. (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim.
`Resp.”).
`We have jurisdiction under 35 U.S.C. § 314. Upon considering the
`record developed thus far, for reasons discussed below, we institute inter
`partes review.
`
`II. BACKGROUND
`A. Real Parties in Interest
`Petitioner identifies ByteDance Ltd., ByteDance Inc., TikTok Inc.,
`and TikTok Pte. Ltd. as real parties-in-interest. Paper 6, 2. Patent Owner
`identifies itself as a real party-in-interest. Paper 5, 2. Patent Owner also
`states that Triller Holdco LLC is the parent corporation to Triller, Inc. but
`“[i]t is unclear whether Triller Holdco LLC is considered a real party in
`interest in this Petition for Inter Partes Review, but Triller provides this
`information in the spirit of full disclosure.” Id.
`B. Related Matters
`The parties identify Triller, Inc. v. TikTok Inc., Case No. 6:20-cv-
`00693 (W.D. Tex.) (“District Court Case” or “District Court Lawsuit”) as a
`related matter. Pet. 82; Paper 5, 2. Patent Owner also identifies ByteDance,
`Inc., et al v. Triller, Inc., Case No. 3:20-cv-07572 (N.D. Cal.) as a related
`matter. Paper 5, 2.
`
`C. The ’429 Patent
`The application for the ’429 patent was filed May 11, 2015. Ex. 1001
`at [22].
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`Patent 9,691,429 B2
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`1. Technology
`The ’429 patent discloses that mobile devices have capabilities that
`allow almost any individual to record and edit music, and capture video, via
`that single device. Ex. 1001, 1:18–23. Individuals are now able to create
`their own music videos with mobile devices, including music videos based
`on one’s favorite song or a popular song. Id. at 1:23–28.
`According to the ’429 patent, music videos created by most of the
`conventional video applications, however, have drawbacks. Ex. 1001, 1:28–
`30. A music video created by playing an audio track in the background of a
`single video has extremely poor quality because there are not visual
`transitions between parts of an audio track. Id. at 1:31–35. A music video
`created by a linear application of a video and audio track is extremely
`limited because it does not allow the use of multiple videos and requires
`videos to be taken in chronological order, no matter their location. Id. at
`1:42–51. Other applications may capture video of an individual within a
`silhouette but the latter restricts the location and movement of the individual.
`Id. at 1:58–67. In addition, music videos have been made by using only a
`small portion of an audio track with a single video for that small audio track
`portion. Id. at 2:3–6. However, this creates short, dull, unprofessional
`music videos. Id. at 2:8–10.
`In view of the above, the ’429 patent states that “it would be
`beneficial to allow a user to create a professional style music video that uses
`portions of multiple videos taken at different times and different locations,
`which are automatically synchronized to an audio track.” Ex. 1001, 2:11–
`17.
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`2. ’429 Patent Overview
`The ’429 patent describes “systems, methods, and non-transitory
`computer readable mediums for creating music videos that are synchronized
`to an audio track.” Ex. 1001, 2:26–28. The ’429 patent discloses that its
`process includes selecting an audio track. Id. at 2:31–32. A plurality of
`video takes may be captured via a user’s device and, while the plurality of
`video takes are being captured, they may be synchronized with the audio
`track. Id. at 2:34–37. The ’429 patent states that the synchronization
`permits the video takes to be aesthetically and/or musically synchronized
`with an appropriate audio track section. Id. at 2:37–40. A music video may
`then be created that includes the audio track and at least a subset of the video
`takes already synchronized to that audio track. Id. at 2:40–43.
`The ’429 patent discloses that a selected audio track may begin to play
`when a user begins recording video and an image capturing process may
`capture images until the audio track, or a selection portion, has completed.
`Ex. 1001, 9:18–21, 9:25–29, 14:49–51. For example, the audio track may
`play through the speakers of a user device while the user device’s camera
`captures a video take. Id. at 14:62–64. The ’429 patent describes that “[i]n
`some embodiments, by playing the selected audio track while an video take
`is captured, that video take may be synchronized with the audio track
`automatically.” Id. at 14:53–56. For instance, the ’429 patent explains that
`“each moment of the captured video take may be synchronized to a
`corresponding section of the selected audio track, as the video take is
`captured in time with the audio track as it plays.” Id. at 14:56–59.
`Figures 6A–6C of the ’429 patent are reproduced below.
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`Patent 9,691,429 B2
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`Figures 6A–6C depict user interfaces that display video takes captured
`by a user device for a music video.
`Ex. 1001, 3:46–49. Figures 6A, 6B, and 6C respectively show user
`interfaces 600, 620, and 640. Id. at 9:54–58. The ’429 patent discloses that
`user interface 600 may include video take indicator 612, which may indicate
`which video take a user is currently on. Id. at 10:27–28, 10:40–42. For
`example, video take indicator 612 in Figure 6A may indicate a first video
`take, video take indicator 626 in Figure 6B may indicate a second video
`take, and video take indicator 646 in Figure 6C may indicate a third video
`take. Id. at 10:40–55.
`Figure 7B of the ’429 patent is reproduced below.
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`Patent 9,691,429 B2
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`Figure 7B shows a diagram of a created music video that includes a
`plurality of synchronized video takes.
`Ex. 1001, 3:50–53. Figure 7B depicts block diagram 702 of a music video.
`Id. at 13:36. As shown in Figure 7B, a video may include three video takes:
`“Take 1,” “Take 2,” and “Take 3,” as depicted in Figures 6A–6B above,
`which may be captured at different locations and contain different images.
`Id. at 13:38–41. The ’429 patent states that “each video take may also be of
`equal duration as an audio track,” such as the audio track shown in Figure
`7B. Id. at 13:41–44. The darkened portions of block diagram 702
`correspond to video take portions used to make the music video, whereas
`white or empty portions of block diagram 702 correspond to unused video
`portions. Id. at 13:45–49.
`The ’429 patent discloses that “[t]he music video, in one embodiment,
`combines the various video takes and the selected audio track into one
`synchronized item that may be enjoyed by the user, shared by the user,
`published by the user, and/or modified by the user.” Ex. 1001, 22:20–24.
`
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`IPR2021-00099
`Patent 9,691,429 B2
`
`Illustrative Claim
`D.
`Petitioner challenges claims 1–10 of the ’429 patent. Pet. 1. Of those,
`claim 1 is the sole independent claim and claims 2–10 depend directly or
`indirectly from claim 1. All claims are directed to “[a] method for creating a
`music video.” Ex. 1001, 26:55. Claim 1 is reproduced below as illustrative
`of the claimed subject matter.
`[1.0]1 A method for creating a music video in which a plurality
`of video takes is synchronized to an audio track, the method
`comprising:
`
`[1.1] selecting an audio track;
`
`[1.2] capturing a plurality of video takes;
`
`[1.3] synchronizing each video take of the plurality of captured
`video takes with the selected audio track while each video take
`of the plurality of video takes is being captured, wherein
`synchronizing further comprises playing, from a first beginning,
`the selected audio track at substantially the same time as a second
`beginning of capturing each video take of the plurality of video
`takes; and
`
`[1.4] creating a music video comprising:
`
`
`the selected audio track; and
`
`at least a subset of the plurality of video takes comprising
`at least two video takes of the plurality of video takes
`synchronized with the selected audio track.
`
`
`Ex. 1001, 26:55–27:6.
`
`
`1 We adopt Petitioner’s format for labeling the claim limitations, i.e., the
`claim number followed by numbers for each limitation. See, e.g., Pet. v, 10–
`20 (claim 1).
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`Patent 9,691,429 B2
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`E. Evidence of Record
`This proceeding relies on the following prior art references:
`Crosland (Ex. 1004): Crosland et al., US 2013/0163963 A1, filed
`Dec. 21, 2011, published June 27, 2013;
`Hozumi (Ex. 1005): Hozumi, US 2012/0148208 A1, filed Dec. 7,
`2011, published June 14, 2012; and
`Beauregard (Ex. 1006): Beauregard et al., US 2010/0183280 A1, filed
`Dec. 10, 2009, published July 22, 2010.
`Petitioner also relies on the Declaration of Dr. Jeremy Cooperstock
`(“Cooperstock Declaration,” Ex. 1003).
`F. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1–10 would have been obvious on the
`following grounds (Pet. 2, 9–75):
`Claim(s) Challenged
`35 U.S.C. §
`1, 3–10
`102
`1, 3–10
`103
`1, 3, 4, 6, 7
`102
`1, 3–10
`103
`1–10
`103
`
`Reference(s)/Basis
`Crosland
`Crosland
`Hozumi
`Hozumi, Crosland
`Beauregard, Hozumi
`
`
`
`III. ANALYSIS
`Discretion to Institute
`A.
`The Board has discretion not to institute trial. See 35 U.S.C. § 314(a)
`(authorizing institution of a trial under particular circumstances, but not
`requiring institution under any circumstances); 37 C.F.R. § 42.108(a)
`(stating “the Board will authorize the review to proceed”); cf. Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision
`to deny a petition is a matter committed to the Patent Office’s discretion.”);
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`Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016)
`(explaining that under § 314(a), “the PTO is permitted, but never compelled,
`to institute an [inter partes review] proceeding”).
`Our precedential and informative decisions make clear that the Board
`may exercise discretion not to institute a trial before the Board in light of the
`advanced state of ongoing, parallel litigation. See NHK Spring Co. v. Intri-
`Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018)
`(precedential) (“NHK Spring”) and Apple Inc. v. Fintiv, Inc., IPR2020-
`00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv I”); see also
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (PTAB May 13, 2020)
`(informative) (denying institution in light of an ongoing, parallel district
`court proceeding) (“Fintiv II”); Sand Revolution II, LLC v. Cont’l
`Intermodal Grp. – Trucking LLC, IPR2019-01393, Paper 24 (PTAB June 16,
`2020) (informative) (applying Fintiv I factors in light of ongoing, parallel
`district court litigation and instituting trial).
`In NHK Spring, the Board considered the advanced state of a parallel
`district court proceeding as a factor favoring denial of institution of an inter
`partes review proceeding. NHK Spring at 19–20. The Board later identified
`a non-exclusive list of factors to consider when applying NHK Spring to
`determine if we should exercise discretion to not institute a trial in light of a
`parallel proceeding in an advanced state. Fintiv I at 5–6.
`Although Petitioner presents preemptive arguments based on Fintiv I,
`Petitioner also contends the America Invents Act is violated by Fintiv I
`because the required analysis essentially eliminates the one year grace
`period for filing based on 35 U.S.C. § 315(b). Pet. 75 n.4. Despite
`Petitioner’s argument, we follow the Fintiv I precedent. Thus, we consider
`the factors set forth in Fintiv I in determining whether to exercise discretion
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`to deny institution under 35 U.S.C. § 314(a). Fintiv I at 9. The facts
`regarding the status of the District Court Lawsuit are not in dispute.
`Factor 1. Whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted.
`
`Petitioner has filed a motion to stay the District Court Lawsuit
`pending a motion to transfer the case to the Northern District of California.
`See Prelim. Resp. 46. Petitioner indicates that it intends to move for a stay if
`we institute this proceeding. Pet. 75. Petitioner argues that moving for a
`stay allows the District Court to simplify the issues, particularly if we
`institute trial. Id. Patent Owner argues this factor is neutral to our
`determination because the District Court has not ruled on a motion to stay
`pending the motion to transfer or this proceeding. Prelim. Resp. 47 (citing
`Fintiv I, at 12).
`We weigh this factor as neutral. On this record, we have no evidence
`on how or when the District Court may decide any motion to stay.
`Factor 2. Proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision.
`
`Patent Owner contends that the District Court has set a trial date of
`April 25, 2022. Prelim. Resp. 46 (citing Ex. 2007, (January 25, 2021, email
`from District Court Law Clerk); Ex. 2008 (Joint Submission Regarding
`Scheduling Order, dated February 5, 2021 (“Joint Submission”)). Patent
`Owner points out that this Decision has a due date of May 17, 2021, and a
`Final Decision would not be due until May 17, 2022, after the proposed trial
`date. Id. at 48 (citing 35 U.S.C. § 316(a)(11)).
`Petitioner conducted a search of filed patent cases and found the
`District Court has more patent cases than any “patent court” in the country.
`Pet. 76–77. Additionally, Petitioner points to the uncertainty of the ongoing
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`COVID-19 outbreak, which it points out is likely to result in more “waves.”
`Id. at 77 (citation omitted). In sum, Petitioner contends any trial date is
`“unreliable, even in normal times.” Id. at 76.
`Petitioner’s arguments are based on speculation. Regardless, it is
`likely that our Final Written Decision will issue in prior to and in close
`proximity to the District Court’s trial date. As required by statute, our Final
`Written Decision will issue by April 25, 2022. 35 U.S.C. § 316(a)(11).
`Thus, if the District Court commences trial on April 25, 2022, our decision
`will have already issued. Accordingly, this factor weighs in favor of
`proceeding with institution.
`Factor 3. Investment in the parallel proceeding by the court and the
`parties.
`
`Patent Owner points to the Joint Submission schedule where parties
`have agreed to a trial date, as discussed above. Prelim. Resp. 48. In
`addition the parties have agreed to deadlines for serving preliminary
`infringement contentions and preliminary invalidity contentions. Id. (citing
`Ex. 2008). Patent Owner points out that some of the agreed deadlines have
`already passed. Id. The Joint Submission further provides that the claim
`construction process begins on April 15, 2021, with “briefing to begin on
`May 20, 2021, and for a Markman hearing to occur on July 22, 2021.” Id.
`(citing Ex. 2008). Patent Owner compares the above investment with the
`investment Petitioner alleges is present in this proceeding (Pet. 78) and
`argues Petitioner “will have every opportunity to use the prior art and
`arguments presented in the petition” in the District Court Lawsuit. Id. at 49.
`Petitioner argues it filed the Petition diligently and that the District
`Court Lawsuit is still “at a relatively early phase.” Pet. 77. Petitioner
`alleges its diligence in filing the Petition “mitigates somewhat the
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`Patent 9,691,429 B2
`investment in the District Court litigation by the parties.” Id. at 77–78
`(citing Apple Inc. v. Seven Networks, LLC, IPR2020-00180, Paper 12, 12
`(PTAB Aug. 14, 2020)).
`We weigh this factor as favoring institution. The District Court has
`not completed the claim construction process nor has it held a Markman
`hearing. Fact discovery does not commence until after the Markman
`hearing, on July 23, 2021. See Ex. 2008, 4. The District Court is still in the
`initial stages of its process and we find that neither the District Court nor the
`parties have invested substantially in the District Court Lawsuit.
`Factor 4. Overlap between issues raised in the petition and in the
`parallel proceeding.
`
`Petitioner argues claims 2 and 8–10 will not be addressed in District
`Court. Pet. 79 (citing Ex. 1012 (“Complaint for Patent Infringement”)).
`Contrary to Petitioner’s assertion, Patent Owner argues that “all but two
`claims challenged here (dependent claims 2 and 10) will be addressed in the
`district court litigation.” Prelim. Resp. 49. As to claims 2 and 10, Patent
`Owner argues Petitioner has not shown that “key issues” exist that are not
`raised by the other claims or that they are not “similar” to the other claims.
`Id. at 50 (citing Amazon.com, Inc. v. Freshub, Ltd., IPR2020-01145, Paper
`10 at 16–17 (PTAB Jan. 11, 2021) (concluding that a difference of 3
`dependent claims out of a total of 11 claims constituted “considerable
`overlap” and weighed in favor of exercising discretion to deny institution)).
`Petitioner stipulates that it “will not rely upon any of the references”
`relied on in the Petition (Crosland, Hozumi, Beauregard) in pursuing its
`validity defenses to the District Court “either alone or in combination with
`other printed publication prior art, in pursuing invalidity on a basis that
`could have been brought in IPR.” Pet. 79 (citing Ex. 1008 (Letter sent via
`
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`email dated October 28, 2020)). Petitioner argues the “stipulation minimizes
`the chance of potentially conflicting findings in the two proceedings.” Id.
`(quoting Seven Networks, at 15).
`On this record, it appears the art asserted in the District Court is or
`may be different from that asserted in the Petition. See, e.g., Ex. 1008, 1
`(“[T]he RPIs reserve their right to rely on any prior art other than the
`References.”). To the extent Crosland, Hozumi, and Beauregard are asserted
`in both proceedings, there is overlap. To a limited extent, the stipulation
`offsets the overlap by potentially removing Crosland, Hozumi, and
`Beauregard from the District Court Lawsuit. The stipulation, however, does
`not entirely resolve the prior art that may be at issue before the District
`Court. See Ex. 1008, 1; see Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01019, Paper 12 at 18 (Dec. 1, 2020) (precedential) (the Board
`instituted an IPR proceeding after its Fintiv analysis determined that the
`Petitioner’s broadly stipulated to not purse in the District Court litigation
`“any ground raised or that could have been reasonably raised” in the IPR);
`see Sand Revolution II, Paper 24 at 11–12 (finding Petitioner’s stipulation to
`“not pursue the same grounds in district court litigation” if inter partes
`review is instituted “mitigates to some degree the concerns of duplicative
`efforts between the district court and the Board, as well as concerns of
`potentially conflicting decisions.”). Because Petitioner’s stipulation is
`broader than that offered in Sand Revolution II but narrower than that of
`Sotera, this factor weights somewhat in favor of not exercising discretion to
`deny institution.
`
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`Factor 5. Whether the petitioner and the defendant in the parallel
`proceeding are the same party.
`
`It is not disputed that Petitioner and Patent Owner are parties in the
`District Court Lawsuit. See Pet. 80; Prelim. Resp. 51. We are not persuaded
`this fact is offset by the possibility of adding future accused infringers.
`Pet. 80. We weigh this factor as favoring exercising discretion to deny
`institution.
`Factor 6. Other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`
`Petitioner contends “it is more likely than not that the Petition’s
`institution would result in invalidation of the Challenged Claims.” Pet. 81.
`We understand this argument to suggest that the District Court would
`“invalidate” claims based on our final decision. The District Court is not
`required to follow what we do in a final decision. Unlike the District Court,
`we do not have jurisdiction to “invalidate” a patent claim but rather to cancel
`claims. See 35 U.S.C. §§ 318(a), (b).
`Patent Owner argues the best case for Petitioner is that the Petition
`and supporting evidence have raised a “close call” on the merits. Prelim.
`Resp. 52. Accordingly, Patent Owner argues this factor dictates we deny
`institution. Id. (citing Fintiv II, Paper 15 at 17).
`We weigh this factor as neutral. As detailed in our analysis of the
`merits, we do not view the unpatentability showing in the Petition to be
`“particularly strong.” See Fintiv I, 11 at 14–15 (“if the merits of a ground
`raised in the petition seem particularly strong on the preliminary record, this
`fact has favored institution.”). However, the references are relevant to
`patentability and we preliminarily find that at least one asserted ground
`meets the standard for institution of trial. See Section III.D below.
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`Determination on Discretion to Institute
`In weighing the Fintiv I factors, we do not merely treat them as a
`scorecard, totaling up the individual outcomes. Instead, we take a holistic
`view of the factors. See, e.g., Fintiv II at 17 (“On balance, these facts, when
`viewed holistically, lead us to determine that efficiency is best served by
`denying institution.”). After weighing all of the factors and taking a holistic
`view of the relevant circumstances of this proceeding, we determine that
`exercising our discretion to deny institution under 35 U.S.C. § 314(a) in
`favor of the parallel district court proceeding is not warranted.
`We weigh favorably for institution the facts that the parallel litigation
`is in the early stages. The District Court Lawsuit is proceeding but is not so
`far advanced that there is no place for inter partes review. We find the
`stipulation regarding references will, upon institution here, limit
`consideration of Crosland, Hozumi, and Beauregard to this proceeding. We
`also weigh favorably that the stipulation that those three references cannot
`be relied on for invalidity in the District Court, regardless of our final
`decision. Ex. 1008, 1 (“[I]n the event the PTAB institutes an IPR based on
`the Petition, [Petitioner/Defendants] will not rely on the References to
`challenge the validity of the claims of U.S. Patent No. 9,691,429 in the
`Litigation.”) Of further significance is that the estimated trial date will
`happen in close proximity to, or after, our final decision.
`These facts favor a determination that instituting this proceeding
`would be an efficient use of Board resources and that the likelihood that our
`final written decision may affect the integrity of the patent system through a
`potentially conflicting decision is low. What has occurred in both
`proceedings up until now suggests that there is an opportunity for
`coordination and avoidance of conflict. After considering the factors set
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`forth in Fintiv, we decline to exercise our discretion to deny institution under
`§ 314(a).
`
`B. Claim Construction
`In an inter partes review for petitions filed on or after November 13,
`2018, a claim shall be construed using the same claim construction standard
`that would be used to construe the claim in a civil action under 35 U.S.C.
`§ 282(b), including construing the claim in accordance with the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent. 37 C.F.R.
`§ 42.100 (2019); see Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
`(en banc). The Petition was accorded a filing date of October 28, 2020, and
`these claim construction considerations guide our analysis. Paper 3.
`The “specification may reveal a special definition given to a claim
`term by the patentee that differs from the meaning it would otherwise
`possess.” Phillips, 415 F.3d at 1316. “[O]nly those terms need be construed
`that are in controversy, and only to the extent necessary to resolve the
`controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`Petitioner argues that “the term ‘synchronizing’ has a meaning well
`understood to POSITAs” and “POSITAs would have understood the term
`‘synchronizing’ to include establishing a relationship between each of a
`plurality of video takes and an audio track.” Pet. 7. Beyond specifically
`identifying “synchronizing,” Petitioner alleges “no formal claim
`constructions are necessary in this proceeding” in view of Petitioner’s
`asserted evidence, “striking similarities between the prior art’s description of
`the claimed elements and that found within the ’429 patent specification, and
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`the well-established [principle] that ‘claim terms need only be construed to
`the extent necessary to resolve the controversy.’” Id. at 6–7 (citing
`Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir.
`2011)).
`As discussed below, Patent Owner argues a construction for the term
`“video take.” Prelim. Resp. 5. Patent Owner does not otherwise propose
`any claim construction or respond to what Petitioner alleges. See generally
`Prelim. Resp.
`
`1. “synchronizing”
`Petitioner provides examples of “synchronizing” based on the usage
`in the asserted prior art, as well as other references. Pet. 7–8 (citations
`omitted). According to Petitioner a person of ordinary skill “would have
`understood the term ‘synchronizing’ to include establishing a relationship
`between each of a plurality of video takes and an audio track.” Id. at 7
`(citing Ex. 1003 ¶ 16). By way of example, Petitioner points to the
`references relied on in the Petition (Exs. 1005 and 1006) and other
`references teaching “mouth movements [in a video take] are coordinated
`with the singing [in an audio track].” Id. at 7 (quoting Ex. 1006 ¶ 8; also
`citing Ex. 1005 ¶ 78; Ex. 1013;2 Ex. 1014, 3 7:36–43; Ex. 10154 ¶ 6).
`The claim language of claim 1 recites, in part, “synchronizing each
`video take of the plurality of captured video takes with the selected audio
`track.” The cited language is consistent with Petitioner’s “established
`relationship” argument, but more importantly, is consistent with the plain
`and ordinary meaning of “synchronizing.” The term is not in dispute in the
`
`2 Greene, US 2016/0134785 A1, published May 12, 2016.
`3 MacLeod, US 8,185,297 B2, issued May 22, 2012.
`4 Beauregard, US 2008/0016114 A1, published Jan. 17, 2008.
`
`17
`
`
`
`IPR2021-00099
`Patent 9,691,429 B2
`papers and express construction is not required. We proceed on the plain
`and ordinary meaning of “synchronizing.”
`2. “video take”
`Patent Owner’s overview of the ’429 patent includes a proposed
`construction for “video take” as “a segment of recorded video that was
`continuously recorded, i.e., recorded without stopping and restarting the
`recording.” Prelim. Resp. 5. This construction is then used to argue that
`“video clips,” as taught by the prior art to Crosland, are not the recited
`“video take.” Id. at 22 (citing Ex. 1004, Fig. 4C (showing “video clips”)).
`Initially, the claim language for limitation 1.3—“synchronizing
`further comprises playing, from a first beginning, the selected audio track at
`substantially the same time as a second beginning of capturing each video
`take of the plurality of video takes”—is consistent with Patent Owner’s
`proposed construction. This claim language was added during prosecution of
`the application for the ’429 patent. Ex. 1002, 5 161 (showing amendments to
`original claim 1). This language is described by Patent Owner, and is
`hereafter referred to, as the “the beginning-beginning synchronization
`requirement.” Prelim. Resp. 6.
`We are not persuaded, however, that “video take” requires
`construction beyond its plain and ordinary meaning. Neither are we
`persuaded that a “video take” excludes a “video clip” or a video segment.
`We have reviewed the various dictionary definitions of “take” cited by
`
`
`5 Excerpts from the prosecution history of ’429 patent.
`
`18
`
`
`
`IPR2021-00099
`Patent 9,691,429 B2
`Patent Owner. Prelim. Resp. 4–5 (citing Ex. 2001, 4;6 Ex. 2002, 3;7
`Ex. 2003, 48). The proffered extrinsic evidence is in general less reliable
`than intrinsic evidence in determining how to interpret the claim. Phillips,
`415 F.3d at 1318 (listing reasons extrinsic evidence lacks reliability of the
`patent and its prosecution history). Regardless, nothing about the definitions
`of record for “take” are inconsistent with a “video clip” or other piece of
`video from being a “video take.”
`Consistent with the dictionary evidence, nothing in the Specification
`precludes a “video take” from being the same as or including a “video clip”
`or other piece of video. The Specification states that “each video take,
`whether it begins at the beginning of the audio track or at some other point
`of the audio track, will be synchronized to the audio track.” Ex. 1001,
`10:24–26. We understand the preceding to describe a video clip or segment
`of video. See also Prelim. Resp. 6 n.1 (citing Ex. 1001, 10:25).
`Patent Owner’s inclusion of “continuous” in its proposal raises at least
`one question. The plain language of the beginning-beginning
`synchronization requirement means that the “beginning” of the audio track
`and video take occur at the same time. Ex. 1001, 26:63–67 (the beginning-
`beginning synchronization requirement of claim 1), id. at Figs. 6A–6C,
`Fig. 7A. The claim is silent, however, as to whether or not both the audio
`track and the video take must have the same end point and are therefore
`“continuous” from the beginning to the end of both. The Specification
`
`6 “take:” “a short piece of action which is filmed in one continuous process
`for a movie.” COLLINS DICTIONARY.
`7 “take:” “[a] scene or sequence of sound or vision photographed or recorded
`continuously at one time.” LEXICO DICTIONARY.
`8 “take:” “the uninterrupted photographing or televising of a scene.”
`MERRIAM-WEBSTER DICTIONARY.
`
`19
`
`
`
`IPR2021-00099
`Patent 9,691,429 B2
`arguably supports that the “video take” is continuous with the audio track.
`See Ex. 1001, Figs. 6A–6C, 7A (all showing that the three video takes
`depicted run for the entirety of the audio track for which a music video is to
`be made). However, on this record we decline to read “continuous” into the
`plain and ordinary meaning of “video take.”
`In summary, neither the claim language nor the Specification
`precludes a video clip or other piece of video from the person of ordinary
`skill’s understanding of “video take.” Accordingly, we preliminarily
`determine on this record that express construction is not required and we
`apply the plain and ordinary meaning of “video take,” which includes a
`video clip or video segment.
`C. Legal Standard Obviousness
`A patent claim is invalid as obvious if the differences between the
`claimed invention and the prior art are “such that the claimed invention as a
`whole would have been obvious before the effective filing date of the
`claimed invention to a person having ordinary skill in the art to which the
`claimed invention pertains.” See 35 U.S.C. § 103.
`“The ultimate determination of obviousness is a question of law, but
`that determination is based on underlying factual findings.” In re Nuvasive,
`Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016). The underlying
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