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`Case IPR2022-01227
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`Patent 9,762,636
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
`
`THE WALT DISNEY COMPANY, DISNEY STREAMING SERVICES LLC, and
`HULU LLC,
`Petitioners
`v.
`WAG ACQUISITION, L.L.C.
`Patent Owner
`U.S. Pat. No. 9,762,636
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`_______________________________________
`
`Inter Partes Review Case No. IPR2022-01227
`_______________________________________
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`PATENT OWNER’S NOTICE OF APPEAL
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`via P-TACTS
`Patent Trial and Appeal Board
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`via USPS Priority Mail Express®
`Director of the United States Patent and Trademark Office
`c/o Office of the Solicitor
`United States Patent and Trademark Office
`Mail Stop 8
`P.O. Box 1450, Alexandria, Virginia 22313-1450
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`via CM/ECF
`United States Court of Appeals for the Federal Circuit
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`Case IPR2022-01227
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`Patent 9,762,636
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`Pursuant to 35 U.S.C. §§ 141(c), 142, 319 and 37 C.F.R. §§ 90.2(a), 90.3(a),
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`notice is hereby given that Patent Owner WAG ACQUISITION, L.L.C., (“Patent
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`Owner”) hereby appeals to the United States Court of Appeals for the Federal
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`Circuit from the Final Written Decision of the Patent Trial and Appeal Board,
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`entered on January 31, 2024, in case IPR2022-01227, Paper 27 (a copy of which is
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`attached as Appendix A), and from all underlying findings, orders, decisions,
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`rulings, and opinions. This notice is timely filed within 63 days of the January 31,
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`2024 Final Written Decision, Paper 27. 37 C.F.R. § 90.3.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Patent Owner indicates that the
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`issues on appeal include, but are not limited to, the Board’s determinations with
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`respect to (i) claim construction, (ii) teachings of the asserted art, (iii) expert
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`testimony, (iv) patentability of claims 1-12 of U.S. Patent No. 9,762,636 over the
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`asserted art, and (v) its findings supporting or relating to the aforementioned
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`issues, and inconsistent determinations by the Board in the related, co-pending
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`cases now being appealed by Patent Owner. Patent Owner also indicates that the
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`issues on appeal include any other issues decided adversely to Patent Owner in any
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`orders, decisions, rulings, or opinions issued in the IPR proceeding.
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`A copy of this Notice of Appeal is being filed with the Patent Trial and Appeal
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`Board as well as with the Director of the United States Patent and Trademark
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`Office in accordance with 37 C.F.R. § 90.2(a)(1). In addition, this Notice of Appeal
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`Case IPR2022-01227
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`Patent 9,762,636
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`and the required fee are being submitted to the Clerk’s Office for the United States
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`Court of Appeals for the Federal Circuit.
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`Dated: March 28, 2024
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`By: /Ronald Abramson/
`Ronald Abramson
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`By: /s/ Ronald Abramson
`Ronald Abramson
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`(Lead Counsel)
`Reg. No. 34,762
`Liston Abramson LLP
`405 Lexington Ave., 46th Floor
`New York, NY, 10174
`Telephone: 212-257-1643
`ron.abramson@listonabramson.com
`
`Attorney for Patent Owner
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`–2–
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`Case IPR2022-01227
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`Patent 9,762,636
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies that on March 28, 2024, a true and correct
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`copy of the above-captioned “Patent Owner’s Notice of Appeal” was filed
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`electronically through the Patent Trial and Appeal Case Tracking System
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`(P-TACTS) and was filed in paper with the Director of the United States Patent and
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`Trademark office c/o the Office of the Solicitor via USPS Priority Mail Express®
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`to the following address:
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`Office of the Solicitor
`United States Patent and Trademark Office
`Mail Stop 8
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`CERTIFICATE OF FILING
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`The undersigned hereby also certifies that on March 28, 2024, a true and correct
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`copy of the above-captioned “Patent Owner’s Notice of Appeal” was filed
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`electronically with the Clerk’s Office of the United States Court of Appeals for the
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`Federal Circuit via CM/ECF, along with a copy of the Final Written Decision
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`(Paper 27). The undersigned hereby further certifies that the above-captioned
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`“Patent Owner’s Notice of Appeal” was served in its entirety on March 28, 2024,
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`upon the following counsel of record for the Petitioners via electronic mail:
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`DLA-Disney-IPR@us.dlapiper.com
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`Larissa S. Bifano
`DLA Piper, LLP (US)
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`Dated: March 28, 2024
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`Case IPR2022-01227
`Patent 9,762,636
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`33 Arch Street, 26th Floor
`Boston, MA 02110
`larissa.bifano@dlapiper.com
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`Thomas Fuller
`DLA Piper, LLP (US)
`2000 University Ave
`Palo Alto, CA 94303
`thomas.fuller@dlapiper.com
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`
`By: /Ronald Abramson/
`Ronald Abramson
`
`By: /s/ Ronald Abramson
`Ronald Abramson
`
`(Lead Counsel)
`Reg. No. 34,762
`Liston Abramson LLP
`405 Lexington Ave., 46th Floor
`New York, NY, 10174
`Telephone: 212-257-1643
`ron.abramson@listonabramson.com
`
`Attorney for Patent Owner
`
`–2–
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`Case IPR2022-01227
`Case IPR2022-01227
`Patent 9,762,636
`Patent 9,762,636
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`Appendix A
`Appendix A
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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 27
`Date: January 31, 2024
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`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, L.L.C.,
`Patent Owner.
`____________
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`IPR2022-01227
`Patent 9,762,636 B2
`____________
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`
`
`
`Before HUBERT C. LORIN, JOHN A. HUDALLA, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
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`AMUNDSON, Administrative Patent Judge.
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`
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`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
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`IPR2022-01227
`Patent 9,762,636 B2
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`I. INTRODUCTION
`The Walt Disney Company, Disney Streaming Services LLC, and
`Hulu LLC (collectively “Petitioner”) filed a Petition requesting an inter
`partes review of claims 1–12 in U.S. Patent No. 9,762,636 B2
`(Exhibit 1001, “the ’636 patent”) under 35 U.S.C. §§ 311–319. Paper 1
`(“Pet.”). WAG Acquisition, L.L.C. (“Patent Owner”) filed a Preliminary
`Response. Paper 10 (“Prelim. Resp.”).
`In the Institution Decision, we instituted review based on all
`challenged claims and all challenges included in the Petition. Paper 11
`(“Inst. Dec.”). We have jurisdiction under 35 U.S.C. § 6. We issue this
`Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For
`the reasons explained below, Petitioner has shown by a preponderance of the
`evidence that claims 1–12 in the ’636 patent are unpatentable. See 35 U.S.C.
`§ 316(e) (2018).
`
`II. BACKGROUND
`A. Procedural History
`After we instituted review, Patent Owner filed a Response (Paper 15,
`“Resp.”), Petitioner filed a Reply (Paper 17, “Reply”), and Patent Owner
`filed a Sur-reply (Paper 19, “Sur-reply”). On November 13, 2023, we held
`an oral hearing, and the record includes the hearing transcript. Paper 26
`(“Tr.”).
`
`B. Real Parties in Interest
`Petitioner identifies the following real parties in interest: The Walt
`Disney Company, Disney Streaming Services LLC, Disney Streaming
`Technology LLC, Disney Platform Distribution, Inc., BAMTECH, LLC,
`ESPN, Inc., and Hulu LLC. Pet. 1; Paper 8, 1; Paper 9, 1. Patent Owner
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`2
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`identifies itself as the sole real party in interest. Paper 5, 2. The parties do
`not raise any issue about real parties in interest.
`C. Related Matters
`Petitioner and Patent Owner identify the following civil actions where
`Patent Owner has asserted the ’636 patent and related patents against
`Petitioner and other alleged infringers:
`• WAG Acquisition, L.L.C. v. Amazon.com, Inc. et al.,
`No. 6:21-cv-00815 (W.D. Tex. filed Aug. 6, 2021);
`• WAG Acquisition, L.L.C. v. Google LLC et al., No.
`6:21-cv-00816 (W.D. Tex. filed Aug. 6, 2021); and
`• WAG Acquisition, L.L.C. v. The Walt Disney Company et
`al., No. 2:21-cv-08230 (C.D. Cal. filed Oct. 18, 2021).
`Pet. 2; Paper 5, 2; Paper 8, 1–2; Paper 9, 1.
`Petitioner and Patent Owner identify the following Board proceedings
`as related matters involving the ’636 patent or a related patent asserted
`against Petitioner in a civil action:
`• The Walt Disney Company et al. v. WAG Acquisition,
`L.L.C., IPR2022-01228 (U.S. Patent No. 9,742,824 B2);
`• The Walt Disney Company et al. v. WAG Acquisition,
`L.L.C., IPR2022-01346 (U.S. Patent No. 9,729,594 B2);
`• Google LLC v. WAG Acquisition, L.L.C., IPR2022-01411
`(U.S. Patent No. 9,729,594 B2);
`• Google LLC v. WAG Acquisition, L.L.C., IPR2022-01412
`(U.S. Patent No. 9,742,824 B2);
`• Google LLC v. WAG Acquisition, L.L.C., IPR2022-01413
`(U.S. Patent No. 9,762,636 B2);
`• Amazon.com, Inc. et al. v. WAG Acquisition, L.L.C.,
`IPR2022-01429 (U.S. Patent No. 9,729,594 B2);
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`• Amazon.com, Inc. et al. v. WAG Acquisition, L.L.C.,
`IPR2022-01430 (U.S. Patent No. 9,742,824 B2); and
`• Amazon.com, Inc. et al. v. WAG Acquisition, L.L.C.,
`IPR2022-01433 (U.S. Patent No. 9,762,636 B2).
`Paper 8, 4; Paper 9, 3–4; Prelim. Resp. 3.
`Additionally, Petitioner and Patent Owner identify numerous civil
`actions and Office proceedings involving patents related to the ’636 patent,
`e.g., U.S. Patent No. 8,122,141 B2 (Exhibit 1005). Pet. 1–4; Paper 5, 2–7;
`Paper 8, 1–4; Paper 9, 1–3.
`D. The ’636 Patent (Exhibit 1001)
`The ’636 patent, titled “Streaming Media Delivery System,” issued
`on September 12, 2017, from an application filed on October 3, 2016.
`Ex. 1001, codes (22), (45), (54). The patent identifies that application as the
`latest in a series of continuation and continuation-in-part applications that
`started with an application filed on March 28, 2001. Id. at 1:6–22,
`code (63). The patent claims priority to a provisional application filed on
`September 12, 2000. Id. at 1:22–28, code (60). The patent states that the
`invention relates to “systems and methods for delivering streaming media,
`such as audio and video, on the Internet.” Id. at 1:52–55; see id. at
`code (57).
`The ’636 patent describes problems with conventional streaming
`technologies. See Ex. 1001, 2:34–3:41. As an example, “users viewing or
`listening to streaming content over Internet connections often encounter
`interruptions,” called “dropouts,” due to “unanticipated transmission delays
`and losses that are inherent in many Internet protocols.” Id. at 2:34–40; see
`id. at 5:25–32. Conventional streaming technologies employ “a pre-
`buffering technique to store up enough audio or video data in the user’s
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`computer so that it can play the audio or video with a minimum of
`dropouts.” Id. at 2:42–45. But this “process requires the user to wait until
`enough of the media file is buffered in memory before listening or viewing
`can begin,” e.g., to wait “from ten to twenty seconds or more.” Id.
`at 2:45–47, 2:53–54.
`As another example, the “audio or video data is delivered from the
`source at the rate it is to be played out.” Ex. 1001, 2:63–65; see id. at
`5:60–65, 6:8–12, 8:64–67. Because “transmission of audio/video media data
`to the user takes place at the rate it is played out, the user’s buffer level can
`never be increased or replenished while it is playing” if Internet slowdowns
`or gaps cause the user’s buffer level to decrease from its initial level. Id.
`at 3:5–11; see id. at 10:34–35. “In time, extended or repeated occurrences
`of these gaps empty the user’s buffer.” Id. at 3:11–13; see id. at 3:34–35.
`When that occurs, the “audio/video material stops playing, and the buffer
`must be refilled to” its initial level before playing resumes. Id. at 3:13–15;
`see id. at 3:35–40.
`The ’636 patent identifies a need for “improved systems and methods
`for delivering streaming content over the Internet” that:
`(1)
`“facilitate continuous transmission of streaming content”;
`(2)
`“respond on demand without objectionable buffering
`delay”; and
`“perform without disruption or dropouts.”
`(3)
`Ex. 1001, 3:45–50.
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`Figure 1 in the ’636 patent (reproduced below) depicts a system for
`delivering streaming content over the Internet:
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`
`Figure 1 illustrates a streaming system including server 12 with server
`buffer 14 and buffer manager 16 and at least one user computer 18 with user
`buffer 20 and buffer manager 22. Ex. 1001, 4:23–25, 6:32–37, 6:48–59,
`Fig. 1. Server 12 and user computer 18 communicate “via the Internet 10
`or other data communications medium.” Id. at 6:48–51.
`Server buffer 14 stores time-sequenced data elements. Ex. 1001,
`6:30–36. Server buffer 14 “is filled the first time the media source
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`connection is established or a disk file is read.” Id. at 8:1–2. “Once server
`buffer 14 is full, for each new data element received into the buffer the
`oldest data element is deleted (or displaced) from the buffer.” Id. at 8:7–9.
`After user computer 18 connects to server 12, the server “sends the
`media data to the user computer” at “a rate faster than the playback rate,
`which may be the highest rate that the data connection between the server
`and the user computer will support, or any lower rate that is a higher rate
`than the playback rate.” Ex. 1001, 8:13–20; see id. at 8:59–63, 9:36–39,
`14:60–62. Server 12 provides data elements at that rate until “the
`predetermined amount of data that had been stored in the server buffer has
`been transferred to” the user computer buffer. Id. at 8:20–22. After
`transferring the contents of the server buffer to the user computer buffer and
`reaching a steady-state condition, each data element “is immediately sent out
`to the user computer” when it arrives at the server. Id. at 8:23–26.
`If, however, the user computer buffer “begins to deplete or becomes
`depleted due to networking interruptions, the server will attempt to send as
`much data as is necessary to rebuild” the user computer buffer “to the proper
`level, again at higher than a playback rate.” Ex. 1001, 10:22–27. This
`permits rebuilding of the user computer buffer “under circumstances
`wherein Internet interruptions have blocked the normal flow of data.” Id.
`at 10:27–29.
`A “data communications transport mechanism,” such as the
`Transmission Control Protocol (TCP), “may be used for the reliable delivery
`of data in an ordered sequence from the source of the media data to the
`server, or from the server to the media player software of the user
`computer.” Ex. 1001, 8:36–40. “Resending missing data is the
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`responsibility of the reliable transport mechanism.” Id. at 8:40–41. “The
`server buffer 14 ‘sends’ data by delivering it to the transport mechanism.”
`Id. at 8:41–43. “The transport mechanism actually manages transmission of
`the data across the communications medium, and has processes to determine
`if all the data that has been sent has been received by the destination.” Id.
`at 8:43–46.
`“All media data to be delivered to a user computer may be sent at a
`higher than playback rate, either by the server buffer 14 passing media data
`to the transport mechanism, or by the transport mechanism delivering or
`redelivering the media data to the user computer.” Ex. 1001, 8:59–63.
`The ’636 patent describes an embodiment where the “server buffer
`manager, or the media source, provides for sequentially numbering the
`media data elements.” Ex. 1001, 14:42–45. The “server buffer manager
`does not maintain a pointer into the server buffer for each user.” Id.
`at 14:45–47. Rather, “the media player buffer manager in the user computer
`maintains a record of the serial number of the last data element that has been
`received.” Id. at 14:47–49.
`To initiate streaming, the “user computer transmits a request to the
`server to send one or more data elements, specifying the serial numbers of
`the data elements.” Ex. 1001, 14:51–53. The “server responds by sending
`the requested data elements, and depends upon the reliable transmission
`protocol to assure delivery.” Id. at 14:53–56. The “user computer then
`continues with additional data requests for the duration of playing the audio/
`video material.” Id. at 14:56–58. “In this manner, the user computer, not
`the server, maintains the record of the highest data element number stored in
`the user computer buffer.” Id. at 14:58–60. The “media data will be
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`transmitted to the user computer as fast as the data connection between the
`user computer and the server will allow.” Id. at 14:60–62.
`In the embodiment where the user computer transmits requests to
`the server for data elements and specifies the serial numbers of the requested
`data elements, the server provides “a buffer manager and a [first-in, first-out]
`FIFO buffer.” Ex. 1001, 14:62–64. The server also provides means for
`(1) “receiving the sequentially numbered media data elements from a
`broadcast media source or a file based media source” and (2) “storing those
`data elements in the FIFO buffer.” Id. at 14:62–67.
`In the embodiment where the user computer transmits requests to
`the server for data elements and specifies the serial numbers of the requested
`data elements, the server buffer manager comprises means for the following:
`(1)
`“receiving the media data”;
`(2)
`“supplying media data in order to the FIFO buffer”;
`(3)
`“supplying the FIFO buffer with a predetermined number
`of data elements”; and
`“deleting the oldest data element in the buffer as each
`new data element is received” once “the FIFO buffer is
`full.”
`Ex. 1001, 14:67–15:5. The server buffer manager attempts to maintain the
`predetermined number of data elements in the FIFO buffer. Id. at 15:6–7.
`In the embodiment where the user computer transmits requests to
`the server for data elements and specifies the serial numbers of the requested
`data elements, the user computer is “associated with a media player software
`incorporating a user buffer.” Ex. 1001, 15:9–10. Further, the user computer
`comprises means for the following:
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`(4)
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`(1)
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`“receiving and storing a predetermined number of media
`data elements which are received sequentially by the
`media player”;
`“playing the data out sequentially as audio and/or video”;
`and
`“deleting media data elements from the buffer as they are
`played out.”
`Id. at 15:9–15. “As data is played out, the next sequential data elements are
`requested from the server in such a fashion as to approximately maintain
`the predetermined number of data elements in the user’s buffer.” Id.
`at 15:15–18.
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`(2)
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`(3)
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`E. The Challenged Claims
`Petitioner challenges independent method claim 1, claims 2–4 that
`depend directly or indirectly from claim 1, independent system claim 5,
`claims 6–8 that depend directly or indirectly from claim 5, independent
`computer-program-product claim 9, and claims 10–12 that depend directly
`or indirectly from claim 9. Pet. 6, 11–68. Claims 1 and 9 exemplify the
`challenged claims and read as follows (with formatting added for clarity and
`with bracketed numbers and letters added for reference purposes):1
`1. [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:
`[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;
`[1.c] upon receipt of the stream by the server system,
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`1 We use the same numbers and letters that Petitioner uses to identify the
`claim language. See Pet. 14–50.
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`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,
`[1.d] serially identifying the media data elements,
`said serial identification indicating a time sequence of the
`media data elements, and
`[1.e] storing the media data elements in a data
`structure under the control of the server system;
`[1.f] receiving requests at the server system via one or
`more data connections over the Internet, for one or more of the
`media data elements stored in the data structure, each received
`request specifying one or more serial identifiers of the
`requested one or more media data elements, each received
`request originating from a requesting user system of a plurality
`of user systems; and
`[1.g] responsive to the requests, sending, by the server
`system, the one or more media data elements having the one or
`more specified serial identifiers, to the requesting user systems
`corresponding to the requests;
`wherein
`[1.h] the data connection between the server system and
`each requesting user system has a data rate more rapid than the
`playback rate of the one or more media data elements sent via
`that connection;
`[1.i] each sending is at a transmission rate as fast as the
`data connection between the server system and each requesting
`user system allows;
`[1.j] the one or more media data elements sent are
`selected without depending on the server system maintaining a
`record of the last media data element sent to the requesting user
`systems;
`[1.k] all of the media data elements that are sent by the
`server system to the plurality of user systems are sent in
`response to the requests; and
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`[1.l] all of the media data elements that are sent by the
`server system to the requesting user systems are sent from the
`data structure under the control of the server system as the
`media data elements were first stored therein.
`9. [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:
`[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;
`[9.c] instructions executable 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,
`[9.d] to serially identify the media data elements,
`said serial identification indicating a time sequence of the
`media data elements, and
`[9.e] to store the media data elements in a data
`structure under the control of the server system;
`[9.f] instructions executable to cause one of the at least
`one computers to receive requests at the server system via one
`or more data connections over the Internet, for one or more of
`the media data elements stored in in [sic] the data structure,
`each received request specifying one or more serial identifiers
`of the requested one or more media data elements, each
`received request originating from a requesting user system
`of a plurality of user systems; and
`[9.g] instructions executable to cause one of the at least
`one computers to send, responsive to the requests, the one or
`more media data elements having the one or more specified
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`serial identifiers, to the requesting user systems corresponding
`to the requests;
`wherein,
`[9.h] the data connection between the server system and
`each requesting user system has a data rate more rapid than the
`playback rate of the one or more media data elements sent via
`that connection;
`[9.i] each sending is at a transmission rate as fast as the
`data connection between the server system and each requesting
`user system allows;
`[9.j] the one or more media data elements sent are
`selected without depending on the server system maintaining a
`record of the last media data element sent to the requesting user
`systems;
`[9.k] all of the media data elements that are sent by the
`server system to the plurality of user systems are sent in
`response to the requests; and
`[9.l] all of the media data elements that are sent by the
`server system to the requesting user systems are sent from the
`data structure under the control of the server system as the
`media data elements were first stored therein.
`Ex. 1001, 16:28–17:8, 18:10–65.
`F. The Asserted References
`For its challenges, Petitioner relies on the following references:
`Name
`Reference
`Exhibit
`US 6,389,473 B1, issued May 14, 2002
`(based on an application filed March 24, 1999)
`US 7,529,806 B1, issued May 5, 2009
`(based on an application filed November 4, 1999)
`
`Carmel
`
`1004
`
`1008
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`
`Shteyn
`
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`Pet. 6. Petitioner asserts that each reference qualifies as prior art “under at
`least 35 U.S.C. § 102(e).” Id. at 6, 54; see 35 U.S.C. § 102(e) (2006).2
`Patent Owner does not dispute that each reference qualifies as prior
`art. See, e.g., Resp. 21–61; Sur-reply 8–26.
`G. The Asserted Challenges to Patentability
`Petitioner asserts the following challenges to patentability:
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–12
`103(a)
`Carmel
`1–12
`103(a)
`Carmel, Shteyn
`Pet. 6, 11–68.
`
`H. Testimonial Evidence
`To support its challenges, Petitioner relies on the Declaration of
`Henry Houh, Ph.D. (Exhibit 1002)3 and the Supplemental Declaration of
`Henry Houh, Ph.D. (Exhibit 1030). Dr. Houh states, “I have been retained
`by counsel for” Petitioner to analyze the ’636 patent and “provide my
`opinions regarding the patentability of claims 1–12 of the ’636 patent.”
`Ex. 1002 ¶ 1; see Ex. 1030 ¶ 3. Dr. Houh also states, “I was awarded a
`Ph.D. degree in Electrical Engineering and Computer Science in February
`1998 from Massachusetts Institute of Technology (MIT)” and “also received
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`125 Stat. 284 (2011), amended 35 U.S.C. § 102 and § 103 effective
`March 16, 2013. Because the effective filing date of the challenged claims
`predates the AIA’s amendments to § 102 and § 103, this decision refers to
`the pre-AIA versions of § 102 and § 103.
`3 Dr. Houh’s initial declaration (Exhibit 1002) includes two different sets of
`paragraphs numbered 46–55. To the extent necessary to distinguish between
`these two sets in our analysis below, we additionally reference the page
`number in the bottom-right corner of the affected pages.
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`a Master of Science (M.S.) in Electrical Engineering and Computer Science
`(February 1991), a Bachelor of Science in Electrical Engineering and
`Computer Science (June 1989) and a Bachelor of Science in Physics
`(February 1990) from MIT.” Ex. 1002 ¶ 4.
`To support its positions, Patent Owner relies on the Declaration of
`W. Leo Hoarty (Exhibit 2006). Mr. Hoarty states, “I have been retained
`by counsel for” Patent Owner to “provide opinions on certain issues in
`connection with” the ’636 patent. Ex. 2006 ¶ 2. Mr. Hoarty also states,
`“I have approximately 40 years of experience in the field of” the ’636 patent,
`including “multimedia computer communications systems, and more
`particularly delivering streaming media, such as audio and video, on the
`internet (which started to become a widespread practice beginning nearly
`30 years ago).” Id. ¶ 5.
`Additionally, Petitioner submits Mr. Hoarty’s deposition testimony,
`and Patent Owner submits Dr. Houh’s deposition testimony. See Ex. 1029
`(July 6, 2023, Hoarty Dep. Tr.); Ex. 2005 (Apr. 10, 2023, Houh Dep. Tr.);4
`Ex. 2010 (Aug. 25, 2023, Houh Dep. Tr.).
`I. Burden
`In an inter partes review, a petitioner bears the burden of persuasion
`to prove “unpatentability by a preponderance of the evidence.” Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015) (quoting 35 U.S.C. § 316(e)); see 37 C.F.R. § 42.1(d) (2023).
`
`
`4 Patent Owner submits a duplicate of Exhibit 2005 as Exhibit 2009.
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`III. PATENTABILITY ANALYSIS
`A. Legal Principles: Obviousness
`A patent may not be obtained “if the differences between the subject
`matter sought to be patented and the prior art are such that the subject matter
`as a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`35 U.S.C. § 103(a) (2006). An obviousness analysis involves underlying
`factual inquiries including (1) the scope and content of the prior art;
`(2) differences between the claimed invention and the prior art; (3) the level
`of ordinary skill in the art; and (4) where in evidence, objective indicia of
`nonobviousness, such as commercial success, long-felt but unsolved needs,
`and failure of others.5 Graham v. John Deere Co., 383 U.S. 1, 17−18, 35–36
`(1966); Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1047–48
`(Fed. Cir. 2016) (en banc). When evaluating a combination of references,
`an obviousness analysis should address “whether there was an apparent
`reason to combine the known elements in the fashion claimed by the patent
`at issue.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`We analyze the obviousness issues according to these principles.
`B. Level of Ordinary Skill in the Art
`Factors pertinent to determining the level of ordinary skill in the art
`include (1) the educational level of the inventor; (2) the type of problems
`encountered in the art; (3) prior-art solutions to those problems; (4) the
`rapidity with which innovations are made; (5) the sophistication of the
`technology; and (6) the educational level of workers active in the field.
`
`5 Patent Owner does not address objective indicia of nonobviousness. See,
`e.g., Resp. 21–61; Sur-reply 8–26.
`
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`Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir.
`1983). Not all factors may exist in every case, and one or more of these or
`other factors may predominate in a particular case. Id. These factors are not
`exhaustive, but merely a guide to determining the level of ordinary skill in
`the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir.
`2007). Moreover, the prior art itself may reflect an appropriate skill level.
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`Petitioner asserts that a person of ordinary skill in the art 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).” Pet. 8. Petitioner also asserts that a “higher level of
`education or specific skill might make up for less experience, and vice-
`versa.” Id. Dr. Houh’s testimony supports Petitioner’s assertions. See
`Ex. 1002 ¶ 54;6 Ex. 1030 ¶ 12.
`Patent Owner “largely agrees” with Petitioner’s description of a
`person of ordinary skill in the art. Resp. 9. But Patent Owner adds the
`“clarification” that a skilled artisan would also have had “some theoretical
`understanding as well as some familiarity with basic internet protocols and
`tools for working with dynamic content and creating interactive web sites to
`handle such content.” Id.; see Sur-reply 3. Mr. Hoarty’s testimony supports
`Patent Owner’s position. See Ex. 2006 ¶ 13.
`Petitioner urges the Board to reject Patent Owner’s “clarification”
`because Patent Owner “cites no intrinsic evidence support, and such
`
`
`6 This citation references paragraph 54 on bottom-right pages 0031 and 0032
`in Exhibit 1002.
`
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`additions render” the definition “unbounded and confusing with ‘some
`theoretical understanding’ and ‘tools for working with dynamic content,’ as
`confirmed during the deposition of WAG’s expert W. Leo Hoarty.” Reply 2
`(citing Ex. 1029, 20:17–25:16; Ex. 1030 ¶¶ 13–15).
`We adopt Petitioner’s description of a person of ordinary skill in the
`art because it comports with the technology and claims in the ’636 patent as
`well as the asserted references. See, e.