`
`DOCKET NO.: 410797-000029
`Filed on behalf of The Walt Disney Company, Disney Streaming Services LLC,
`and Hulu LLC.
`By: Larissa S. Bifano, Reg. No. 59,051
`
`Anand Mohan, Reg. No. 76,518
`
`
`
`
`
`
`
`DLA Piper LLP (US)
`33 Arch Street, 26th Floor
`Boston, Massachusetts 02110-1447
`Email: larissa.bifano@us.dlapiper.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`The Walt Disney Company, Disney Streaming Services LLC, and Hulu LLC,
`
`Petitioner
`
`v.
`
`WAG Acquisition LLC,
`
`Patent Owner
`
`IPR2022-01227
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,762,636
`CHALLENGING CLAIMS 1-12
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
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`IPR2022-01227
`U.S. Pat. No. 9,762,636
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`
`TABLE OF CONTENTS
`INTRODUCTION .......................................................................................... 1
`
`I.
`
`II. MANDATORY NOTICES ............................................................................ 1
`
`A.
`
`Real Party-in-Interest ........................................................................... 1
`
`B.
`
`Related Matters ..................................................................................... 1
`
`C.
`
`Counsel ................................................................................................. 4
`
`D.
`
`Service Information, Email, Hand Delivery, and Postal ...................... 4
`
`III. CERTIFICATION OF GROUNDS FOR STANDING ................................. 5
`
`IV. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ................... 5
`
`A.
`
`Prior Art Patents and Printed Publications ........................................... 5
`
`B.
`
`Grounds for Challenge ......................................................................... 6
`
`V. OVERVIEW OF THE ’636 PATENT ........................................................... 6
`
`A.
`
`Summary of the Alleged Invention ...................................................... 6
`
`B.
`
`Level of Ordinary Skill in the Art ........................................................ 8
`
`C.
`
`Prosecution History .............................................................................. 8
`
`VI. CLAIM CONSTRUCTION ........................................................................... 9
`
`i
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`U.S. Pat. No. 9,762,636
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`VII. GROUNDS FOR PETITION ....................................................................... 10
`
`A. Ground 1: Claims 1-12 are obvious over Carmel .............................. 11
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Overview of Carmel ................................................................. 11
`
`Independent claims 1, 5, and 9 are obvious over Carmel ........ 13
`
`Claims 2, 6, and 10 are obvious over Carmel .......................... 51
`
`Claims 3, 7, and 11 are obvious over Carmel .......................... 52
`
`Claims 4, 8, and 12 are obvious over Carmel .......................... 53
`
`B.
`
`Ground 2: Claims 1-12 are obvious over Carmel in view of
`
`Shteyn ................................................................................................. 54
`
`1.
`
`2.
`
`Overview of Shteyn ................................................................. 55
`
`Carmel in view of Shteyn ........................................................ 56
`
`VIII. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION TO
`
`DENY INSTITUTION ................................................................................. 69
`
`A.
`
`§314(a) ................................................................................................ 69
`
`1.
`
`2.
`
`The General Plastic Factors Do Not Favor Denial ................. 69
`
`The Fintiv Factors Do Not Favor Denial ................................. 69
`
`B.
`
`§325(d) ............................................................................................... 72
`
`
`
`ii
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`1.
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`2.
`
`Becton, Dickinson Factors (A), (B), and (D) ........................... 72
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`Becton, Dickinson Factors (C), (E), and (F) ............................ 72
`
`IX. CONCLUSION ............................................................................................. 73
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`
`
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`iii
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`IPR2022-01227
`U.S. Pat. No. 9,762,636
`
`I.
`
`INTRODUCTION
`
`The Walt Disney Company, Disney Streaming Services LLC, and Hulu LLC
`
`(collectively “Petitioner”) petition for inter partes review under 35 U.S.C. §§ 312
`
`and 37 C.F.R. § 42 claims 1-12 (“the Challenged Claims”) of U.S. Patent No.
`
`9,762,636 (“’636 patent”) (EX1001). The ’636 patent is assigned to WAG
`
`Acquisition, LLC (“Patent Owner”) according to assignment records at the United
`
`States Patent and Trademark Office. 1 The ’636 patent expired on March 28, 2021.
`
`II. MANDATORY NOTICES
`
`A. Real Party-in-Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), the Petitioner is the real party-in-interest.
`
`Further, the Petitioner certifies that no other party exercised control or could exercise
`
`control over the filing of this petition or Petitioner’s participation in any proceeding
`
`instituted on this petition.
`
`B. Related Matters
`
`No.
`1
`
`Case Caption
`WAG Acquisition, L.L.C. v. Flying
`Crocodile, Inc. et al., No. 2:19-cv-
`01278-BJR
`
`Court
`WDWA
`(transferred
`from DNJ)
`
`Patent(s)
`8,122,141
`8,327,011
`8,185,611
`8,364,839
`
`
`1 Petitioner reserves the right to challenge in any litigation WAG Acquisition’s
`
`standing to assert the ’636 patent and any related patents.
`
`
`
`
`
`
`1
`
`
`
`2
`
`3
`
`WAG Acquisition, L.L.C. v.
`Amazon.com, Inc. et al, 6:21-cv-
`00815-ADA
`WAG Acquisition, L.L.C. v. Google
`LLC et al, 6:21-cv-00816-ADA
`
`WDTX
`
`WDTX
`
`IPR2022-01227
`U.S. Pat. No. 9,762,636
`
`9,742,824
`9,729,594
`9,762,636
`9,742,824
`9,729,594
`9,762,636
`9,742,824
`9,729,594
`9,742,824
`9,729,594
`9,762,636
`9,742,824
`9,729,594
`
`WDTX
`
`CDCA
`
`CDCA
`
`4
`
`5
`
`6
`
`WAG Acquisition, L.L.C. v. Netflix,
`Inc., 6:21-cv-01083-ADA
`WAG Acquisition, L.L.C. v. The
`Walt Disney Company et al, 2:21-
`cv-08230-JAK-E
`WAG Acquisition, LLC v. Hulu
`LLC, 2:21-cv-08242-JAK-E
`
`The Hulu case has been
`consolidated into the Walt Disney
`case above.
`Ex Parte Reexamination, Control
`Number: 90/014,833.
`Ex Parte Reexamination, Control
`Number: 90/014,834.
`Ex Parte Reexamination, Control
`Number: 90/014,835.
`Ex Parte Reexamination, Control
`Number: 90/014,836.
`11 WAG Acquisition, L.L.C. v.
`Gattyàn Group S.à r.l. et al., No.
`2:14-cv-2832-ES-MAH
`
`7
`
`8
`
`9
`
`10
`
`USPTO
`
`8,327,011
`
`USPTO
`
`8,122,141
`
`USPTO
`
`8,185,611
`
`USPTO
`
`8,364,839
`
`DNJ
`
`8,122,141
`8,327,011
`8,185,611
`8,364,839
`8,122,141
`8,327,011
`
`8,122,141
`8,327,011
`
`8,122,141
`8,327,011
`8,364,839
`
`12 WAG Acquisition, L.L.C. v.
`Vubeology, Inc. et al., No. 1:19-cv-
`00805-LY
`13 WAG Acquisition, L.L.C. v. Data
`Conversions, Inc. et al., No. 3:19-
`cv-00489-MMD-CLB
`14 WAG Acquisition L.L.C. v.
`WebPower, Inc. et al., No. 9:19-cv-
`81155-RAR
`
`WDTX
`(transferred
`from DNJ)
`DNV
`(transferred
`from DNJ)
`SDFL
`(transferred
`from DNJ)
`
`
`
`
`
`
`2
`
`
`
`IPR2022-01227
`U.S. Pat. No. 9,762,636
`
`8,185,611
`8,122,141
`8,327,011
`
`8,122,141
`8,327,011
`8,185,611
`8,364,839
`8,122,141
`8,327,011
`
`8,122,141
`8,327,011
`8,185,611
`8,364,839
`6,766,376
`
`8,122,141
`
`8,364,839
`
`SDNY
`
`PTAB
`
`PTAB
`
`PTAB
`
`8,364,839
`
`PTAB
`
`8,185,611
`
`PTAB
`
`8,122,141
`
`15 WAG Acquisition, LLC v. Multi
`Media, L.L.C. et al., No. 2:19-cv-
`07076-JAK-GJS
`16 WAG Acquisition, L.L.C. v.
`Sobonito Investments, Ltd. et al.,
`No. 2:14-cv-1661-ES-MAH
`
`CDCA
`(transferred
`from DNJ)
`DNJ
`
`17 WAG Acquisition, L.L.C. v.
`Gamelink Int’l Ltd. et al., No. 2:15-
`cv-3416-ES-MAH
`18 WAG Acquisition, L.L.C. v.
`MFCXY, Inc. et al., No. 2:14-cv-
`3196-ES-MAH
`
`DNJ
`
`DNJ
`
`19 WAG Acquisition, L.L.C. v. XM
`Satellite Radio, Inc. et al, No. 1:08-
`cv-06357-RMB-MHD
`20 WebPower et al. v. WAG
`Acquisition LLC, IPR2016-012382
`21 WebPower et al. v. WAG
`Acquisition L.L.C., IPR2016-
`012393
`Duodecad IT Services Luxembourg
`S.à r.l. et al v. WAG Acquisition
`L.L.C., IPR2015-01036
`Duodecad IT Services Luxembourg
`S.à r.l. et al v. WAG Acquisition
`L.L.C., IPR2015-01035
`FriendFinder Networks Inc. et al.
`v. WAG Acquisition L.L.C.,
`IPR2015-01037
`
`22
`
`23
`
`24
`
`
`2 IPR2017-00820 and IPR2017-00786 were joined with IPR2016-01238.
`
`3 IPR2017-00784 and IPR2017-00785 were joined with IPR2016-01239.
`
`
`
`
`
`
`3
`
`
`
`25
`
`28
`
`FriendFinder Networks Inc. et al.
`v. WAG Acquisition L.L.C.,
`IPR2015-01033
`26 WebPower v. WAG Acquisition
`L.L.C., IPR2016-01161
`27 WebPower v. WAG Acquisition
`L.L.C., IPR2016-01162
`I.M.L. SLU v. WAG Acquisition
`L.L.C., IPR2016-01655
`I.M.L. SLU v. WAG Acquisition
`L.L.C., IPR2016-01656
`I.M.L. SLU v. WAG Acquisition
`L.L.C., IPR2016-01657
`I.M.L. SLU v. WAG Acquisition
`L.L.C., IPR2016-016584
`
`29
`
`30
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`31
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`IPR2022-01227
`U.S. Pat. No. 9,762,636
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`PTAB
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`8,327,011
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`PTAB
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`PTAB
`
`PTAB
`
`PTAB
`
`PTAB
`
`PTAB
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`8,327,011
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`8,185,611
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`8,327,011
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`8,122,141
`
`8,185,611
`
`8,364,839
`
`
`
`C. Counsel
`
`Lead Counsel: Larissa S. Bifano (Reg. No. 59,051)
`
`Backup Counsel: Anand Mohan (Reg. No. 76,518)
`
`D.
`
`Service Information, Email, Hand Delivery, and Postal
`
`Petitioner consents
`
`to electronic service at mailto: DLA-Disney-
`
`IPR@us.dlapiper.com.
`
`Petitioner can be reached at DLA Piper LLP (US), 33 Arch Street, 26th Floor,
`
`Boston, Massachusetts 02110, Phone: 617-406-6000, Fax: 617-406-6100.
`
`
`4 IPR2017-01179 was joined with IPR2016-01658.
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`4
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`IPR2022-01227
`U.S. Pat. No. 9,762,636
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`III. CERTIFICATION OF GROUNDS FOR STANDING
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`Petitioner certifies pursuant to Rule 42.104(a) that the patent for which review
`
`is sought is available for inter partes review, and that Petitioner is not barred or
`
`estopped from requesting an inter partes review challenging the patent claims on the
`
`grounds identified in this Petition.
`
`IV. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`
`Pursuant to Rules 42.22(a)(1) and 42.104(1)-(2), Petitioner challenges claims
`
`1-12 of the ’636 patent.
`
`A.
`
`Prior Art Patents and Printed Publications
`
`The ’636 patent issued from U.S. Patent Application No. 15/283,544 (“’544
`
`application”), filed on October 3, 2016. The ’544 application is a continuation of
`
`Application No. 13/815,040, filed on Jan 25, 2013, which is a continuation of
`
`Application No. 13/385,375, filed on February 16, 2012, which is a continuation of
`
`Application No. 12/800,177, filed on May 10, 2010, which is a continuation of
`
`Application No. 10/893,814, filed on July 19, 2004, which is a continuation-in-part
`
`of Application No. 09/819,337, filed on March 28, 2001, which claims priority to
`
`Application No. 60/231,997 (“’997 application”), filed on September 12, 2000
`
`(“Critical Date”).
`
`Petitioner applies prior art with a priority date earlier than the Critical Date.
`
`but reserves the right to challenge the priority date (and chain) in any litigation.
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`
`
`
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`5
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`
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`IPR2022-01227
`U.S. Pat. No. 9,762,636
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`The following references are pertinent to the grounds of unpatentability:5
`
`1.
`
`U.S. Patent No. 6,389,473 (“Carmel”) (EX1004), filed as Application
`
`No. 09/275,703 on March 24, 1999, is prior art under at least 35 U.S.C.
`
`§ 102 (e).
`
`2.
`
`U.S. Patent No. 7,529,806 (“Shteyn”) (EX1008), filed as Application
`
`No. 09/433,257 on November 4, 1999, is prior art under at least 35
`
`U.S.C. § 102 (e).
`
`B. Grounds for Challenge
`
`This Petition, supported by the declaration of Dr. Henry Houh (“Houh Decl.”)
`
`(EX1002), requests cancellation of claims 1-12 as unpatentable under 35 U.S.C. §
`
`103. See 35 U.S.C. § 314(a). The grounds for challenge include the following:
`
` Grounds References
`
`Challenged Claims
`
`1. §103
`
`Carmel
`
`2. §103
`
`Carmel and Shteyn
`
`1-12
`
`1-12
`
`
`
`V. OVERVIEW OF THE ’636 PATENT
`
`A.
`
`Summary of the Alleged Invention
`
`The ’636 patent relates to “multimedia computer communication systems; and
`
`
`5 Because the ’636 patent issued from an application filed prior to enactment of the
`
`America Invents Act (“AIA”), the pre-AIA statutory framework applies.
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`6
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`more particularly, to systems and methods for delivering streaming media, such as
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`audio and video, on the Internet.” EX1001, 1:52-55.
`
`The ’636 patent allegedly streams live or prerecorded media data elements
`
`stored in a server’s data structure based on requests from clients for such data by an
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`identifier. Id., claim 1, 3:65-4:12. This is known in the prior art as a client-pull
`
`system because the client requests the data from the server. EX1002, ¶¶39-41. This
`
`contrasts with a “server-push” system, where the server initiates the streaming to the
`
`client. Id.
`
`Against this backdrop of well-known techniques, the ’636 patent asserts that
`
`“[t]here is a need for improved systems and methods…which facilitate continuous
`
`transmission of streaming content, respond on demand without objectionable
`
`buffering delay, and perform without disruption or dropouts.” EX1001, 3:45-50.
`
`EX1002, ¶¶39-41. The ’636 patent, attempts to address these concerns by the “data
`
`connection between the server system and each requesting user system [having] a
`
`data rate more rapid than the playback rate” and “sending [media data elements] at
`
`a transmission rate as fast as the data connection between the server system and each
`
`requesting user system allow.” EX1001, claim 1. EX1002, ¶¶42-49. This alleged
`
`solution, however, was also well known in the art, as described in detail below.
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`7
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`B.
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`Level of Ordinary Skill in the Art
`
`Petitioner submits that a person having ordinary skill in the art (“POSITA”)
`
`would have had a B.S. degree in computer science or electrical engineering (or
`
`comparable degree) and two years of experience in networking or streaming media,
`
`or a M.S. in computer science or electrical engineering (or comparable degree).
`
`EX1002, ¶¶54-55. A higher level of education or specific skill might make up for
`
`less experience, and vice-versa. Id. The PTAB previously adopted a similar level in
`
`the ’141 patent. Final Written Decision on Remand (EX1007), 13.
`
`C.
`
`Prosecution History
`
`The ’544 application was filed on October 3, 2016, and included claims 1-12,
`
`of which claims 1, 5, and 9 were independent. ’636 Patent File History (EX1003),
`
`2355-2360. On December 29, 2016, the pending claims were rejected based on 35
`
`U.S.C. § 103 in view of “Hooper et al. (Patent number US 5414455 A) . . . Omoigui
`
`(Patent number US 7237254 B1) . . .Tobias et al. (Patent number US 6981050 B1) .
`
`. . Hodgkinson et al. (Patent number US 7209437 B1) . . . Chen et al. (Patent number
`
`US 5822524 A).” Id., 310-321. Additionally, claims 9-12 were rejected as being
`
`“directed to nonstatutory subject matter.” Id. EX1002, ¶50.
`
`Applicant responded on March 29, 2017, amending claims 1, 5, and 9 to recite
`
`“said serial identification indicating a time sequence of the media data
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`8
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`elements6” and argued that this claim amendment would be sufficient to overcome
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`the prior art of record. Id., 202-211. EX1002, ¶51.
`
`The ’544 application was allowed on June 20, 2017, stating “the prior art
`
`references . . . disclose that the client does not maintain a record/list of the last data
`
`element sent by the server.” Id., 50-56. The application issued as the ’636 patent on
`
`September 12, 2017. Id., 4. EX1002, ¶52.
`
`VI. CLAIM CONSTRUCTION
`
`Claims subject to inter partes review are to 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(b).
`
`Petitioner submits that the Challenged Claims should be interpreted according
`
`to their plain and ordinary meaning. No district court has construed the terms of the
`
`’824 patent or related patents. Patent Owner and their expert Keith J. Teruya contend
`
`in the Google and Amazon litigations that various terms should be accorded their
`
`“plain and ordinary meaning.” See Dkt. No. 38 (EX1015), at iv in 6:21-cv-00815-
`
`
`6 Unless otherwise noted, all emphasis is added.
`
`
`
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`9
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`ADA (“playback rate” and “data rate”), id., Dkt. No. 38-1 (EX1016), at 9; Dkt. No.
`
`39 (EX1012), 13-18 (“each sending is at a transmission rate as fast as the data
`
`connection between the server system and each requesting user system allows”),
`
`Dkt. No. 39-1 (EX1013), at 9. Against Disney and Hulu, Patent Owner takes a
`
`contrary position, contending here that no terms require construction.
`
`The Federal Circuit previously construed “rate” in the phrase “to cause the
`
`server to send media data elements to the user system responsive to said requests, at
`
`a rate more rapid than the rate at which said streaming media is played back by a
`
`user” of claims in the ’141 patent as “the rate at which each requested data element
`
`is transmitted from the server to the user computer.” WAG Acquisition v. WebPower,
`
`Inc., 781 Fed. App’x 1007, 1012 (Fed. Cir. 2019). Additionally, the PTAB in the
`
`context of U.S. Patent No. 8,364,839 construed “playback rate” as “a rate at which
`
`the data is encoded for playback to a user.” Duodecad IT Services Luxembourg
`
`S.a.r.l v. WAG Acquisition, LLC, IPR2015-01036, Final Written Decision, Paper No.
`
`17, at 9 (Oct. 20, 2016) (adopting constructions in Paper 8). Logic and consistency
`
`require the same constructions here.
`
`VII. GROUNDS FOR PETITION
`
`Pursuant to Rule 42.104(b)(4)-(5), the following sections, as supported by the
`
`Houh Decl. (EX1002), detail the grounds of unpatentability, the limitations of the
`
`challenged claims of the ’636 patent, and how these claims are obvious in view of
`
`
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`
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`10
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`U.S. Pat. No. 9,762,636
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`the prior art.
`
`A. Ground 1: Claims 1-12 are obvious over Carmel
`
`Carmel was not substantively considered during prosecution of the ’636
`
`patent and is highly relevant to claims 1-12 of the ’636 patent. EX1002, ¶ 50-51.
`
`1. Overview of Carmel
`
`Carmel, entitled “Network media streaming,” was filed March 24, 1999, and
`
`issued on May 14, 2002. Carmel teaches a method for streaming live or
`
`prerecorded media from a server to multiple client computers over the Internet.
`
`EX1004, 2:1–21, 6:24-26, 6:57-60, 2:29-31. EX1002, ¶52.
`
`FIG. 2 of Carmel, below, illustrates a computer system (32) for broadcasting
`
`of a multimedia sequence of a network (28). EX1004, 6:24–26. EX1002, ¶52.
`
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`11
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`System 32 comprises transmitting computer 34 (which receives audiovisual
`
`input from devices 22), a plurality of clients 30, and network server 36. EX1004,
`
`6:28–35. EX1002, ¶54. The transmitting computer 34 generates a multimedia data
`
`sequence (data stream 40), which comprises a series of data slices 42, 44, 46, 48,
`
`etc., with each slice containing a segment of video and/or audio data that
`
`corresponds to a respective, successive time interval T1, T2, T3, etc. EX1004,
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`7:22–25, and FIG. 3A (shown below). EX1002, ¶55.
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`
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`After preparing a multimedia sequence, computer 34 uploads the sequence
`
`over network 28, thereby allowing clients 30 connected with server 36 to receive
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`the multimedia sequence in substantially real time using Internet protocols such as
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`TCP/IP. EX1004, 6:50–7:17, 6:28-31, 6:36-38; EX1002, ¶56; EX1007, at 23-24
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`(finding Carmel discloses TCP).
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`12
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`Clients 30 connected with server 36 read an index file containing such
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`numbered slices and request or pull the sequential slices by identifier at a fast rate
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`over the network. EX1004, 10:25-48, FIG. 6A, 7:39-8:5, 2:51-59, 11:9-22.
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`EX1002, ¶56. The slices can have different quality level files. EX1004, 3:5-9,
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`8:56-9:5, FIG. 3D. EX1002, ¶56.
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`The server sends the slices as fast as allowed to the clients, or in other words,
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`it uses the available bandwidth. Id., 7:44-49 (“the compression level of the data is
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`varied . . . so as to adjust the data streaming rate to the available bandwidth over one
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`or more channels . . . between server 36 and client 30.”); id., 9:6-9 (“[e]ach of clients
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`30 chooses . . . the quality level appropriate to the bandwidth of its link on network
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`28 to server 36.”); id., 3:5-13; EX1002, ¶57; EX1007, 22-23 (PTAB finding quality
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`level slices sent faster than playback rate).
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`Carmel “contains instructions for sending media data elements at a rate more
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`rapid than the playback rate.” Id., 21; EX1004, 2:51-59 (“the data rate should be
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`generally equal to or faster than the rate at which the data are generated at the
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`transmitting computer.”) EX1002, ¶57.
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`2.
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`Independent claims 1, 5, and 9 are obvious over Carmel
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`Independent claim 1 is a method claim that recites steps for distributing over
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`the Internet, from a server system to a plurality of user systems, a live audio or
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`video program. EX1001, 16:28-17:8. Independent claim 5 recites a server system
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`13
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`with at least one computer and a machine-readable, executable routine containing
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`instructions to be executed by the at least one computer to perform steps similar in
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`scope to the method of claim 1. Id., 17:15-18:3. Independent claim 9 recites a
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`computer program product comprising a non-transitory computer readable storage
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`medium having program instructions to be executed by at least one computer to
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`perform steps similar in scope to the method of claim 1. Id., 18:10-65. Carmel
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`teaches or renders obvious each of the limitations of claims 1, 5, and 9. EX1002,
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`¶¶58-61.
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`a.
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`Preamble Limitations
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`[1.a.]: “A method for distributing a live audio or video program over
`the Internet from a server system to a plurality of user systems, the
`method comprising:”
`
`[5.a]: “A server system for distributing a live audio or video program
`over the Internet to a plurality of user systems, the server system
`comprising:”
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`[9.a.]: “A computer program product for distributing a live audio or
`video program over the Internet from a server system comprising at
`least one computer to a plurality of user systems, the computer program
`product comprising a non-transitory computer readable storage
`medium having program instructions embodied therewith, the program
`instructions comprising:”
`
`To the extent the preambles of claims 1, 5, and 9 are limiting, Carmel
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`teaches them. EX1002, ¶62.
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`Carmel teaches distributing a data stream from a server system (server 36) to
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`a plurality of user systems (clients 30) over a network (network 28). For example,
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`14
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`“a transmitting computer [that] generates a data stream and broadcasts the data
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`stream via a network server to a plurality of clients.” EX1004, 2:1-4; and “[a]
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`method for real-time broadcasting from a transmitting computer to one or more
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`client computers over a network, including providing at the transmitting
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`computer a data stream having a given data rate.” Id., Abstract. This is shown in
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`FIG. 2, below. EX1002, ¶63.
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`
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`Carmel’s server system comprises at least one computer. For example, the
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`“[s]erver 36 may comprise any suitable type of computer or computer system,
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`for example, a Sun Microsystems UltraSPARC station or a Windows NT server, as
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`are commonly used by Internet Service Providers (ISPs).” EX1004, 6:40-43.
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`EX1002, ¶64.
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`15
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`The network in Carmel used for distribution of the data stream includes the
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`Internet. For example, “[n]etwork 28 preferably comprises the Internet,
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`although it may equally comprise a LAN, WAN, intranet or other computer
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`network as is known in the art.” EX1004, 6:36-38; and “clients download the data
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`stream from the server, preferably using an Internet protocol.” Id., 2:11-12.
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`EX1002, ¶65.
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`Carmel’s data stream includes an audio or video program. For example, “the
`
`data stream comprises multimedia data,” which is broadly defined to “include
`
`still images, video, graphics, animation or any combination thereof.” EX1004,
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`2:30-37. The multimedia data is generated by “[o]ne or more input devices 22
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`(for example, a video camera and/or microphone),” and “transmitted to a
`
`plurality of clients 30 via a network 28.” Id., 1:25-28. EX1002, ¶66.
`
`The audio or video program in Carmel is a live program that is in “real-time
`
`broadcast[ed] from a transmitting computer to one or more client computers.”
`
`EX1004, 12:54-58, Abstract. This is repeated throughout Carmel. For example, id.,
`
`2:7-9 (“[t]he transmitting computer uploads the sequence of slices to the server
`
`substantially in real time”); id., 3:25-27 (“a method for real-time broadcasting
`
`from a transmitting computer to one or more client computers over a network”);
`
`id., 4:50-51 (“apparatus for real-time broadcasting of a data stream”). See also,
`
`id., 6:45-47; 6:57-58; 7:4-5; 8:4-5; 10:14-15; 13:47-50. EX1002, ¶67.
`
`
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`16
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`Furthermore, Carmel states that the data may also be a “live broadcast
`
`transmission.” Id., 12:54-58.
`
`Carmel also teaches a computer program product comprising a non-
`
`transitory computer readable storage medium having program instructions
`
`embodied therewith. For example, Carmel provides “[a]n appendix [with]
`
`computer-readable files, which exemplify aspects of the operation of system 32
`
`(FIG. 2) and of the file structures and methods described hereinabove.” EX1004,
`
`13:55-59. The computer-readable files are “stored on disk in a common folder or
`
`directory.” EX1004, 14:9-10. See also id., 6:40-43; 2:11-12. EX1002, ¶68.
`
`Further, the PTAB in its Final Written Decision (EX1006) found that
`
`Carmel teaches a similar preamble limitation in claims 10 and 19 of the ’141
`
`patent. EX1005, claim 10 (“A server for distributing streaming media…[over
`
`the Internet] comprising a plurality of sequential media data elements for a
`
`digitally encoded audio or video program……”). Id., claim 19(“A non-
`
`transitory machine-readable medium on which there has been recorded a
`
`computer program … to prepare streaming media content for transmission
`
`by a server … said program recorded on said non-transitory machine
`
`readable medium ….”). EX1006 at 15-16, 27-28.
`
`Patent Owner does not dispute the PTAB’s decision regarding the preambles
`
`of claims 10 and 19 of the ’141 patent. See, e.g., EX1007,10. Because Patent
`
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`17
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`Owner never appealed this PTAB determination, it became final. Arunachalam v.
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`IBM, 759 F. App’x 927, 933 (Fed. Cir. 2019) (“[T]he proper recourse for raising
`
`such arguments was to have appealed the Board’s decision to this Court. . . Given
`
`that Dr. Arunachalam did not do so, the Board’s decision invalidating both claims
`
`is final and may not be collaterally attacked through a separate litigation.”)
`
`(citation omitted); see also Phil-Insul Corp. v. Airlite Plastics Co., 854 F.3d 1344,
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`1357 (Fed. Cir. 2017) (“Accordingly, the noninfringement determinations in
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`Reward Wall are final for collateral estoppel purposes by virtue of IntegraSpec’s
`
`failure to appeal them.”). Thus, the PTAB determination that Carmel invalidates a
`
`similar preamble limitation requires the same finding here.
`
`b.
`
`Limitations reciting reading the live program
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`[1.b]: “receiving at the server system a continuous digitally encoded
`stream for the audio or video program, via a data connection from a live
`source, in real time, the server system comprising at least one
`computer;”
`
`[5.b]: “at least one computer having a connection to the Internet; a
`machine-readable, executable routine containing instructions to cause
`one of the at least one computers to receive a continuous digitally
`encoded stream for the live audio or video program, via a data
`connection from a live source, in real time;”
`
`[9.b]: “instructions executable to cause one of the at least one computers
`to receive a continuous digitally encoded stream for the audio or video
`program, via a data connection from a live source, in real time;”
`
`Carmel teaches this limitation. EX1002, ¶69.
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`18
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`The part of claim [5.b] that recites “at least one computer having a
`
`connection to the Internet” has previously been addressed in Section VII.A.2.a,
`
`supra. EX1002, ¶70.
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` Carmel’s server system receives a data stream of the audio or video
`
`program from a live source (i.e., “input devices 22 (for example, a video camera
`
`and/or microphone)” EX1004, 1:25-26). For example, “[b]roadcast data [is] input
`
`to the computer…from input devices 22 …. [the] [c]omputer 34 [then] conveys
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`file 40 [i.e., broadcast data] to server 36 … using FTP, at step 84.” EX1004,
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`9:64-10:3. See also, id., 6:32-33. Additionally, Carmel teaches that an audio or
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`video program can be generated by the transmitting computer, thereby being a live
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`source for the program. For example, “data inputs.… may be generated at or by
`
`computer 34 using any suitable means known in the art.” Id., 6:33-34.
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`Furthermore, Carmel teaches that the program conveyed from the computer 34
`
`may also be a “live broadcast transmission.” Id., 12:54-58. EX1002, ¶71-72.
`
`Carmel’s server system receives this audio or video program via a data
`
`connection in real time. For example, “[t]he transmitting computer uploads the
`
`sequence of slices to the server substantially in real time, preferably using an
`
`Internet protocol…” EX1004., 2:7-10; and “[c]omputer 34 continues to upload
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`files 42, 44, 46, etc., until data stream 40 is finished or terminated by a user of
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`computer 34. All of the files in the data stream may be saved on server 36 for
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`19
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`any desired period of time….” Id., 7:50-55. See also, id., 10:64-11:8, 8:21-29,
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`14:33-35, and FIG. 6B. EX1002, ¶¶71-72. The uploading of an audio or video
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`program via FTP to the server is shown in FIG. 5 below (highlighting added). Id.
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`
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`The audio or video program is in the form of a continuous digitally encoded
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`stream. For example, “[t]he data stream is divided into a sequence of segments
`
`or slices of the data, preferably time slices, wherein the data are preferably
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`compressed.” EX1004, 2:1-14; and “[t]he sequence is preferably generated and
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`compressed in real time”. Id., 6:57-58. EX1002, ¶73. It was well known in the art
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`that compression is a form of encoding. Id., ¶77.
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`Further, the PTAB previously found for the ’141 patent that Carmel teaches
`
`“the server is adapted to obtain the streaming media from a live source (claim 17) or
`
`a disk file (claim 18).” EX1007, at 24 (internal citation omitted).
`
`c.
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`Limitations reciting supplying media data elements
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`[1.c]: “upon receipt of the stream by the server system, supplying, at the
`server system, media data elements representing the program, each
`media data element comprising a digitally encoded portion of the
`program and having a playback rate;”
`
`[5.c]: “a machine-readable media, executable routine containing
`instructions to cause one of the at least one computers, upon receipt of
`the stream by the server system, to supply, at the server system, media
`data elements representing the program, each media data element
`comprising a digitally encoded portion of the program and having a
`playback rate,”
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`[9.c]: “instructions executable to cause one of the computer-readable
`media at least one computers, upon receipt of the stream by the server
`system, to supply, at the server system, media data elements
`representing the program, each media data element comprising a
`digitally encoded portion of the program and having a playback rate,”
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`Carmel teaches these limitations. EX1002, ¶74.
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`In limitations [1.c], [5.c], and [9.c], the recitation “upon receipt of the stream
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`by the server system” has previously been addressed in Section VII.A.2.b, supra.
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`Id. In limitations [5.c], and [9.c], the recitation “a machine-readable media,
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`executable routine containing instructions to cause one of the at least one
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`21
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`computers” and “instructions executable to cause one of the computer-readable
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`media at least one computers” respectively, have previously been addressed in
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`Section VII.A.
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