Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 28
`Entered: July 16, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`WEBPOWER, INC.,
`
`FRIENDFINDER NETWORKS INC., STREAMRAY INC., WMM, LLC,
`WWM HOLDINGS, LLC, and MULTIMEDIA, LLC,
`
`DUODECAD IT SERVICES LUXEMBOURG S.À R.L.,
`ACCRETIVE TECHNOLOGY GROUP INC., ICF TECHNOLOGY, INC.,
`RISER APPS LLC, and STREAMME, INC. (f/k/a VUBEOLOGY, INC.),
`
`Petitioner,
`
`v.
`
`WAG ACQUISITION, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01238
`Patent 8,122,141 B2
`
`____________
`
`
`
`Before TREVOR M. JEFFERSON, BRIAN J. McNAMARA, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`
`
`
`IPR2022-01227
`EXHIBIT 1007 - PAGE 0001
`
`
`571-272-7822
`
`
`
`
`
`Paper 28
`Entered: July 16, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`WEBPOWER, INC.,
`
`FRIENDFINDER NETWORKS INC., STREAMRAY INC., WMM, LLC,
`WWM HOLDINGS, LLC, and MULTIMEDIA, LLC,
`
`DUODECAD IT SERVICES LUXEMBOURG S.À R.L.,
`ACCRETIVE TECHNOLOGY GROUP INC., ICF TECHNOLOGY, INC.,
`RISER APPS LLC, and STREAMME, INC. (f/k/a VUBEOLOGY, INC.),
`
`Petitioner,
`
`v.
`
`WAG ACQUISITION, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01238
`Patent 8,122,141 B2
`
`____________
`
`
`
`Before TREVOR M. JEFFERSON, BRIAN J. McNAMARA, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`
`
`
`IPR2022-01227
`EXHIBIT 1007 - PAGE 0001
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`IPR2016-01238
`Patent 8,122,141 B2
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`
`JUDGMENT
`Final Written Decision on Remand
`Determining All Challenged Claims Unpatentable
`35 U.S.C. §§ 144, 318(a) and 37 C.F.R. § 42.73
`
`
`I. INTRODUCTION
`
`We address this case on remand after a decision by the U.S. Court of
`
`Appeals for the Federal Circuit in WAG Acquisition, LLC v. Webpower, Inc.,
`
`781 F. App’x 1007 (Fed. Cir. 2019).
`
`
`
`A. Background
`
`In response to a Petition (Paper 1, “Pet.”) filed by WebPower, Inc., we
`
`instituted an inter partes review of claims 10–23 of U.S. Patent No.
`
`8,122,141 B2 (“the ’141 patent”). Paper 7, 22–23. We subsequently joined
`
`FriendFinder Networks Inc., Steamray Inc., WWM, LLC, WWM Holdings,
`
`LLC, Multi Media, LLC, Duodecad IT Services Luxembourg S.à r.l.,
`
`Accretive Technology Group, Inc., ICF Technology, Inc., Riser Apps LLC,
`
`and StreamMe, Inc. (f/k/a Vubeology, Inc.) as parties to the proceeding.
`
`Papers 12, 13. We refer collectively to all petitioners herein as “Petitioner.”
`
`During the trial, WAG Acquisition, LLC (“Patent Owner”) timely
`
`filed a Response (Paper 11, “PO Resp.”), to which Petitioner timely filed a
`
`Reply (Paper 15, “Reply”). An oral hearing was held on September 25,
`
`2017, and a copy of the transcript was entered into the record. Paper 21
`
`(“Tr.”).
`
`Following consideration of the fully developed record, we issued a
`
`Final Written Decision in which we concluded that Petitioner had shown, by
`
`a preponderance of the evidence, that claims 10–23 of the ’141 patent are
`
`2
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`Patent 8,122,141 B2
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`unpatentable. Paper 22 (“Dec.”). Patent Owner appealed our Decision to
`
`the Federal Circuit “as to claims 10–18.” WAG Acquisition, 781 F. App’x at
`
`1008. The Federal Circuit vacated our Decision “as to the appealed claims”
`
`and remanded for further consideration whether claims 10–18 are
`
`unpatentable in light of the Court’s construction of a disputed limitation
`
`recited in independent claim 10. Id. Because Patent Owner did not appeal
`
`the Board’s prior conclusion that claims 19–23 are unpatentable, those
`
`claims and related issues are not before the Board on remand. See id. at
`
`1009 n.2.
`
`On remand, the parties jointly proposed submission of simultaneous
`
`briefs addressing the patentability of claims 10–18 in light of the Federal
`
`Circuit’s decision, and we adopted this procedure. Paper 25. Accordingly,
`
`Petitioned filed a Petitioner’s Brief on Remand (Paper 26, “Pet. Remand
`
`Br.”) and Patent Owner filed a Patent Owner’s Supplemental Brief After
`
`Remand (Paper 27, “PO Remand Br.”).
`
`For the reasons discussed below, we conclude, in view of the Federal
`
`Circuit’s claim construction, and a full record that includes the parties’
`
`remand briefs, that Petitioner shows, by a preponderance of the evidence,
`
`that claims 10–18 are unpatentable.
`
`
`
`B. The ’141 Patent
`
`The ’141 patent describes a system for streaming media, such as audio
`
`or video, via the Internet with reduced playback interruptions. Ex. 1001,
`
`4:39–44. A number of factors can affect the continuity of streaming media,
`
`including the quality of a user’s connection with the Internet, variations in
`
`Internet traffic that may cause congestion at various points along the route
`
`3
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`that data flows, and the dropping of data packets by overloaded routers. Id.
`
`at 2:10–30. The ’141 patent describes a buffering system for streaming
`
`media that seeks to limit such deficiencies. Id. at 4:33–35.
`
`Figure 1 of the ’141 patent is reproduced below.
`
`
`Figure 1 is a schematic diagram that illustrates elements of a streaming
`
`media buffering system. Id. at 10:7–9. Server 12 is connected to the
`
`Internet for transmitting sequenced streaming-media data elements. Id. at
`
`10:22–25. Associated with server 12 are buffer manager 16 and first-in–
`
`first-out (“FIFO”) buffer 14, which stores at least one of the data elements
`
`for transmission. Id. at 10:25–27. Buffer manager 16 receives the media
`
`data, supplies the media data in order to FIFO buffer 14, and maintains
`
`pointers 24a–24n into the buffer for user computers, indicating the last
`
`media data element that has been sent to respective users and thus indicating
`
`the next element or elements to be sent. Id. at 10:30–38. Once FIFO buffer
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`4
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`14 is full, the oldest data elements in the buffer are deleted as new elements
`
`are received. Id. at 10:38–40. A predetermined number of data elements are
`
`kept in FIFO buffer 14. Id. at 10:40–41.
`
`At least one user computer 18 is connected to server 12 via the
`
`Internet. Id. at 10:45–46. User buffer 20 is associated with user computer
`
`18 and stores a predetermined number of the media data elements. Id. at
`
`10:47–49. Buffer manager 22, associated with user computer 18, receives
`
`and stores a predetermined number of media data elements received by the
`
`media player, plays the data out sequentially as audio and/or video, and
`
`deletes media data elements from buffer 20 as they are played out to
`
`approximately maintain the predetermined number of data elements in the
`
`user’s buffer. Id. at 10:53–59, 8:31–34.
`
`In an alternative embodiment, buffer manager 22 (or the media
`
`source) provides for sequentially numbering the media data elements and
`
`does not maintain a pointer into buffer 20 for each user. Id. at 8:38–40.
`
`“Instead, 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 8:40–42. By using standard data communications protocol techniques,
`
`“such as TCP,” user computer 18 transmits requests to server 12 for data
`
`elements specified by their serial numbers. Id. at 8:42–46. Server 12
`
`responds with the requested data elements, depending “upon the reliable
`
`transmission protocol” to assure delivery, with user computer 18 then
`
`continuing with additional data requests for the duration of playing the
`
`streamed material. Id. at 8:46–50. “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 8:50–52.
`
`5
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`
`C. Illustrative Claim
`
`Independent claim 10 is illustrative of the claims at issue, and is
`
`reproduced below.
`
`10. A server for distributing streaming media via a data
`communications medium such as the Internet to at least one
`user system of at least one user, the streaming media
`comprising a plurality of sequential media data elements for a
`digitally encoded audio or video program, said user system
`being assumed to have a media player for receiving and playing
`the streaming media on said user system, which is operable to
`obtain media data elements from said server by transmitting
`requests to said server to send one or more specified media data
`elements, said server comprising
`
`at least one data storage device, memory for storing
`machine-readable executable routines and for providing a
`working memory area for routines executing on the server, a
`central processing unit for executing the machine-readable
`executable routines, an operating system, at least one
`connection to the communications medium, and a
`communications system providing a set of communications
`protocols for communicating through said at least one
`connection;
`
`a machine-readable, executable routine containing
`instructions to cause the server to assign serial identifiers to the
`sequential media data elements comprising the program;
`
`a machine-readable, executable routine containing
`instructions to cause the server to receive requests from the user
`system for one or more media data elements specifying the
`identifiers of the requested data elements; and
`
`a machine-readable, executable routine containing
`instructions 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.
`
`
`Id. at 13:63–14:28.
`
`
`6
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`
`D. Grounds of Unpatentability
`
`In relevant part, Petitioner relies on the following references. Pet. 8–
`
`10.
`
`Carmel US 6,389,473 B1 May 14, 2002
`
`
`Ex. 1003
`
`International Standard ISO/IEC 11172-1, Information
`Technology—Coding of moving pictures and associated audio
`for digital storage media at up to about 1,5 Mbit/s—Part 1:
`Systems (ISO/IEC, August 1993) (Ex. 1018) (“ISO-11172-1”)
`
`International Standard ISO/IEC 11172-2, Information
`Technology—Coding of moving pictures and associated audio
`for digital storage media at up to about 1,5 Mbit/s—Part 2:
`Video (ISO/IEC, August 1993) (Ex. 1019) (“ISO-11172-2”)
`
`International Standard ISO/IEC 11172-3, Information
`Technology—Coding of moving pictures and associated audio
`for digital storage media at up to about 1,5 Mbit/s—Part 3:
`Audio (ISO/IEC, August 1993) (Ex. 1020) (“ISO-11172-3”) 1
`
`
`The following challenges are at issue. See Pet. 5.
`
`Claim(s) Challenged
`10, 11, 13–18
`12
`
`35 U.S.C. §
`102(a), 102(e)
`103(a)
`
`References
`Carmel
`Carmel and ISO-11172
`
`
`
`
`1 In its challenges, Petitioner refers collectively to ISO-11172-1,
`ISO-11172-2, and ISO-11172-3 as “ISO-11172.” Because the challenges
`involving these references are all under 35 U.S.C. § 103(a), and because
`their description of the same standard provides a self-evident reason to
`combine their teachings, we do not address whether they are properly
`considered as a single reference or as three separate references.
`
`7
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`
`E. Real Parties in Interest and Related Proceedings
`
`In addition to the parties identified in the caption, real parties in
`
`interest with one or more of the petitioners include Various, Inc., Interactive
`
`Network, Inc., DataTech Global, LLC, DataTech Systems, LLC, Docler
`
`Media, LLC, Docler Holding S.à r.l., Gattyàn Family Irrevocable Trust
`
`(including Mr. György Gattyàn in his capacity as Grantor and Investment
`
`Advisor), Duodecad IT Services Hungary KFT, WebMindLicenses KFT,
`
`and Gattyàn Group S.à r.l. Pet. 2; FriendFinder Networks Inc. et al. v. WAG
`
`Acquisition, LLC, Case No. IPR2017-00786, Paper 2, 1–2; Duodecad IT
`
`Services Luxembourg S.à r.l. v. WAG Acquisition, LLC, Case No. IPR2017-
`
`00820, Paper 2, 2. Patent Owner identifies only itself as a real party in
`
`interest. Paper 4, 2.
`
`The parties identify the following matters as involving the ’141
`
`patent: (1) WAG Acquisition, LLC v. Sobonito Investments, Ltd., No. 2A14-
`
`cv-1661-ES-MAH (D.N.J.); (2) WAG Acquisition, LLC v. Multi Media, LLC,
`
`No. 2:14-cv-2340-ES-MAH (D.N.J.); (3) WAG Acquisition, LLC v. Data
`
`Conversions, Inc., No. 2:14-cv-2345-ES-MAH (D.N.J.); (4) WAG
`
`Acquisition, LLC v. Flying Crocodile, Inc., No. 2:14-cv-2674-ES-MAH
`
`(D.N.J.); (5) WAG Acquisition, LLC v. Gattyàn Group S.à r.l., No. 2:14-cv-
`
`2832-ES-MAH (D.N.J.); (6) WAG Acquisition, LLC v. FriendFinder
`
`Networks Inc., No. 2:14-cv-3456-ES-MAH (D.N.J); (7) WAG Acquisition,
`
`LLC v. Vubeology, Inc., No. 2:14-cv-4531-ES-MAH (D.N.J.); (8) WAG
`
`Acquisition, LLC v. Gamelink Int’l Ltd. No. 2:15-cv-3416-ES-MAH
`
`(D.N.J.); (9) WAG Acquisition LLC v. WebPower, Inc., No. 2:15-cv-3581-
`
`ES-MAH (D.N.J.); and (10) WAG Acquisition, LLC v. MFCXY, Inc., No.
`
`2:14-cv-3196-ES-MAH (D.N.J.). Pet. 2, Paper 4, 2–3.
`
`8
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`
`The ’141 patent is also the subject of IPR2015-01037, and a
`
`continuation of the ’141 patent, U.S. Patent No. 8,327,011 B2, is the subject
`
`of IPR2015-01033 and IPR2016-01161. The petitions for institution of an
`
`inter partes review were denied for each of those proceedings. In addition,
`
`two other related patents were the subject of further inter partes review
`
`proceedings: (1) U.S. Patent No. 8,185,611 B2 was the subject of IPR2015-
`
`01035 and IPR2016-01162, both of whose petitions for institution of an inter
`
`partes review were denied; and (2) U.S. Patent No. 8,364,836 was the
`
`subject of IPR2015-01036, for which a final written decision was issued by
`
`the Board on October 20, 2016.
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review proceeding based on a petition filed prior to
`
`November 13, 2018, the Board interprets claims of an unexpired patent
`
`using the broadest reasonable construction in light of the specification in
`
`which they appear. See 37 C.F.R. § 42.100(b) (2017)2; Cuozzo Speed
`
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of
`
`the broadest reasonable interpretation standard).
`
`Petitioner asserts that, in this proceeding, “no constructions are
`
`necessary,” and “proposes . . . that all claim terms of the ’141 patent take on
`
`their ordinary and customary meaning that the terms would have to one of
`
`
`2 A recent amendment to this regulation does not apply here because the
`Petition was filed before November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018).
`
`9
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`ordinary skill in the art.” Pet. 10. Patent Owner does not expressly address
`
`claim construction in its Response. Nevertheless, we determined in our
`
`Final Written Decision that it was necessary to construe the term “rate,”
`
`which is recited in independent claim 10 as part of the limitation “a
`
`machine-readable, executable routine containing instructions 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 the user” (emphases added). Dec. 9–10.
`
`The context provided by our prior construction, and the Federal
`
`Circuit’s disagreement with that construction, is relevant to the parties’
`
`arguments on remand. In particular, we construed rate as an “overall rate”
`
`such as might be achieved with multiple links over which data elements are
`
`sent to the recited user system. Id. The Federal Circuit instead construed
`
`rate as “the rate at which each requested data element is transmitted from the
`
`server to the user computer.” WAG Acquisition, 781 F. App’x at 1011. In so
`
`construing the term, the Federal Circuit distinguished its construction as
`
`excluding the “overall rate” of our earlier construction: “The rate limitation
`
`in claim 10 therefore refers to the rate at which requested media data
`
`elements are sent, not the overall rate at which data is transmitted from the
`
`server to the user computer.” Id. at 1012.
`
`We adopt the Federal Circuit’s construction for this Decision.
`
`
`
`B. Legal Principles
`
`Petitioner makes both anticipation and obviousness challenges. A
`
`claim is unpatentable as anticipated under 35 U.S.C. § 102 if a single prior-
`
`art reference expressly or inherently describes each limitation set forth in the
`
`10
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`claim. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed.
`
`Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
`
`631 (Fed. Cir. 1987).
`
`A claim is unpatentable for obviousness under 35 U.S.C. § 103 if the
`
`differences between the claimed subject matter 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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations, including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of skill in the art; and (4) objective evidence of non-
`
`obviousness, i.e., secondary considerations. 3 Graham v. John Deere Co.,
`
`383 U.S. 1, 17–18 (1966).
`
`Additionally, the obviousness inquiry typically requires an analysis of
`
`“whether there was an apparent reason to combine the known elements in
`
`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
`
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
`
`reasoning with some rational underpinning to support the legal conclusion of
`
`obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
`
`(Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG
`
`v. C. H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)).
`
`To prevail on its challenges, Petitioner must demonstrate by a
`
`preponderance of the evidence that the claims are unpatentable. 35 U.S.C.
`
`
`3 The parties do not address secondary considerations, which, accordingly,
`do not form part of our analysis.
`
`11
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`§ 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes review], the petitioner has
`
`the burden from the onset to show with particularity why the patent it
`
`challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc. 815 F.3d
`
`1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter
`
`partes review petitions to identify “with particularity . . . the evidence that
`
`supports the grounds for the challenge to each claim”)). This burden never
`
`shifts to Patent Owner. See Dynamic Drinkware, LLC. v. Nat’l Graphics,
`
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v.
`
`Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the
`
`burden of proof in inter partes review). Furthermore, Petitioner does not
`
`satisfy its burden of proving obviousness by employing “mere conclusory
`
`statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed.
`
`Cir. 2016).
`
`
`
`C. Level of Skill in the Art
`
`Petitioner’s declarant, Nathaniel Polish, Ph.D., 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).” Ex. 1005 ¶ 21. Dr. Polish
`
`further states that “[t]hese descriptions are approximate, and a higher level
`
`of education or specific skill might make up for less experience, and vice-
`
`versa.” Id. ¶ 22.
`
`Neither Patent Owner nor its declarant, Mung Chiang, Ph.D., proffers
`
`a characterization of the education and experience of a person of ordinary
`
`skill, although Dr. Chiang attests that his own qualifications permit him to
`
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`provide an opinion, “including what a person having ordinary skill in the art
`
`would have understood.” Ex. 2001 ¶ 10.
`
`We find Dr. Polish’s statement of the level of ordinary skill in the art
`
`reasonable, and adopt it for this Final Written Decision.
`
`
`
`D. Carmel
`
`Carmel describes a method for streaming live or prerecorded media
`
`from a server to multiple client computers over the Internet. Ex. 1003, 2:1–
`
`21. Figure 2 of Carmel is reproduced below.
`
`
`Figure 2 is a schematic illustration of a computer broadcast network. Id. at
`
`5:43–45. System 32 comprises transmitting computer 34 (which receives
`
`audiovisual input from devices 22), a plurality of clients 30, and network
`
`server 36, all of which communicate over network 28. Id. at 6:28–35. After
`
`preparing a multimedia sequence, computer 34 uploads the sequence over
`
`network 28, thereby allowing clients 30 connected with server 36 to receive
`
`the multimedia sequence in substantially real time. Id. at 6:50–7:17.
`
`13
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`Figure 3A of Carmel is reproduced below.
`
`
`Figure 3A schematically illustrates the structure of broadcast data generated
`
`by computer 34, “typically corresponding to a multimedia data sequence.”
`
`Id. at 7:19–23. Data stream 40 comprises a series of data slices 42, 44, 46,
`
`48, etc., with each slice containing a segment of video and/or audio data that
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`corresponds to a respective, successive time interval T 1, T2, T3, etc. Id. at
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`7:22–25. Each slice is stored as a corresponding file with a running slice
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`index 1, 2, 3, . . . N, and perhaps also a time stamp that indicates a real time
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`at which the data in the file were recorded or an elapsed time relative to the
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`beginning of the stream. Id. at 7:27–32. An index file that comprises a slice
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`ID is uploaded to a server, with the slice ID indicating the index of the file in
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`the data stream that was most recently uploaded. Id. at 7:59–64. Each time
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`a new file is uploaded, the slide ID is updated. Id. at 7:65–66.
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`Figure 4 of Carmel is reproduced below.
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`14
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`EXHIBIT 1007 - PAGE 0014
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`Patent 8,122,141 B2
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`Figure 4 schematically illustrates communication between computer 34 and
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`server 36 over network 28. Id. at 9:10–13. According to Carmel, computer
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`34 “should preferably ensure that there is sufficient communication
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`bandwidth between the computer and the server.” Id. at 9:13–17.
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`Accordingly, the computer may open multiple links 60, 62, 64, 66, 68, 70,
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`multiple of which may “operate simultaneously” over a single line or each of
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`which may be “routed differently from the other links” through different
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`lines. Id. at 9:17–23.
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`Computer 34 monitors the rate of data being transmitted over each of
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`the links, and allocates files according to the data rates, perhaps varying file
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`sizes by adjusting slice durations T 1, T2, T3, etc. Id. at 9:31–37. Carmel
`
`notes that “[t]he bandwidth open for transmission between computer 34 and
`
`server 36 is effectively roughly equal to a sum of the bandwidths of the
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`plurality of open links.” Id. at 9:37–39. A similar process is performed
`
`when server 36 sends data stream 40 to client computers 30, but, in addition,
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`client computer 30 can read the index file and determine from which slice to
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`begin receiving the data stream. Id. at 8:1–9.
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`
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`15
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`EXHIBIT 1007 - PAGE 0015
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`1. Anticipation of Claim 10 by Carmel
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`Petitioner challenges claim 10 as anticipated by Carmel. Pet. 65.
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`Several limitations of claim 10 correspond to limitations recited in
`
`independent method claim 1, on which we did not institute review, and
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`Petitioner refers to its analysis of claim 1 for those limitations. Id. We have
`
`accordingly reviewed Petitioner’s analysis for claim 1, id. at 50–62, as well
`
`as its identification of which elements of claim 10 have counterparts in claim
`
`1, see id. at 31–38, and conclude that Petitioner demonstrates, by a
`
`preponderance of the evidence, that claim 10 is anticipated by Carmel. The
`
`parties dispute only a single, well-defined issue, namely whether Carmel
`
`discloses the last limitation of claim 10, which recites “a machine-readable,
`
`executable routine containing instructions 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,”
`
`in light of the Federal Circuit’s construction of “rate.” Ex. 1001, 14:24–28
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`(emphasis added); see Pet. Remand Br. 1 (“The question on remand is
`
`whether Carmel discloses the last limitation of the claim by sending
`
`individual requested media data elements (the same ‘one or more media data
`
`elements’ requested in the penultimate limitation) from the server to the user
`
`computer ‘at a rate more rapid than the rate at which ]they are] played
`
`back.”); PO Remand Br. 2 (“The final element, the ‘rate limitation’ was the
`
`sole point of dispute between the parties regarding claim 10 in this IPR.”).
`
`Petitioner identifies two aspects of Carmel that it contends disclose
`
`the limitation. First, Petitioner contends that “Carmel discloses that the
`
`system in normal operation has a data rate for ‘each slice’ that is ‘generally
`
`equal to or faster than’ the playback rate.” Pet. Remand Br. 2. Second,
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`16
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`EXHIBIT 1007 - PAGE 0016
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`Petitioner contends that “Carmel discloses the system can recover from lag
`
`(i.e., an interruption in transmission such that transmission is slower than
`
`playback) by requesting a lower quality level which will be transmitted
`
`faster than playback to catch up.” Id. In asserting that “Petitioner raised
`
`both during the original briefing and they can now be relied upon to meet the
`
`new construction,” Petitioner cites its Reply. Id. (citing Reply, 2, 5–11); see
`
`also Paper 21, 15:20–16:3 (Petitioner explaining, at oral hearing, responsive
`
`nature of argument in Reply).
`
`We have reviewed Petitioner’s Reply argument, and agree that
`
`Petitioner’s discussion of these aspects of Carmel is properly responsive to
`
`Patent Owner’s argument in its Response that “Carmel does not disclose
`
`sending media data elements to a user system responsive to requests
`
`therefrom, at a rate more rapid than the rate at which the streaming media is
`
`played back by a user.” PO Resp. 3 (emphasis omitted). Patent Owner
`
`devoted a significant portion of its Response to that argument, and Petitioner
`
`was entitled to address it in its Reply—and now to address it further on
`
`remand in the context of the Federal Circuit’s claim construction. See
`
`Idemitsu Kosan Co., Ltd. v. SFC Co. Ltd., 870 F.3d 1376, 1381 (“To the
`
`extent Idemitsu suggests that the Board could not reach a counterargument
`
`because it was not preemptively addressed by the petition or institution
`
`decision, Idemitsu is plainly mistaken.”); Genzyme Therapeutic Prod. Ltd.
`
`P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366 (Fed. Cir. 2016)
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`(“There is no requirement, either in the Board’s regulations, in the APA, or
`
`as a matter of due process, for the institution decision to anticipate and set
`
`forth every legal or factual issue that might arise in the course of the trial.”).
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`
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`EXHIBIT 1007 - PAGE 0017
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`a. Normal Operation
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`To support its contention that Carmel teaches sending media data
`
`elements at a rate more rapid than the playback rate during “normal
`
`operation,” Petitioner quotes the following disclosure:
`
`In some preferred embodiments of the present invention, the
`transmitting computer and the clients monitor the uploading
`and downloading of data to and from the server, respectively, in
`order to determine the amount of time required to convey
`each slice and to verify that the slices are conveyed at a
`sufficient rate. When the data stream comprises multimedia
`data, the data rate should be generally equal to or faster than
`the rate at which the data are generated at the transmitting
`computer.
`
`
`
`Pet. Remand Br. 3 (quoting Ex. 1003, 2:51–59) (emphasis by Petitioner).
`
`As Petitioner correctly observes, “this passage is describing the ‘sufficient
`
`rate’ during normal streaming operation (uploading and downloading of data
`
`to and from the server), not the later-described embodiments using multiple
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`links as one way to compensate for lag or slow connections.” Id. at 3–4.
`
`Petitioner reasons that the last limitation of independent claim 10 is met
`
`because Carmel explicitly teaches that such normal operation may use a data
`
`rate that is “faster” than the rate at which the data are generated by the
`
`transmitting computer. Id.
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`In addition to this intrinsic evidence, Petitioner further supports its
`
`contention by pointing to testimony by Patent Owner’s expert, Mung
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`Chiang, Ph.D. See id. at 5–6. On cross examination, Dr. Chiang explained
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`that “Carmel adjusts the slices so that they are transmitted at about the
`
`playback rate.” Ex. 1022, 91:10–12. When Petitioner explored the
`
`consequences of what Dr. Chiang meant in describing transmission of slices
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`18
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`IPR2022-01227
`EXHIBIT 1007 - PAGE 0018
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`IPR2016-01238
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`“at about the playback rate,” Dr. Chiang conceded that “[i]f it is transmitted
`
`slightly faster than playback rate and then slightly lower, slightly higher,
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`slightly lower, which is what ‘about playback rate’ means.” Id. at 92:16–19.
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`Petitioner argues that, because Carmel teaches that transmission
`
`occurs, at least sometimes, at a rate greater than the playback rate, the last
`
`limitation of claim 10 is met. Pet. Remand Br. 6 (“This is a dispositive
`
`admission—transmitting at least sometimes ‘slightly faster’ than playback
`
`meets the claim limitation of sending ‘one or more’ requested data elements
`
`faster than playback is met.”). In advancing that argument, Petitioner relies
`
`on Broadcom Corporation v. Emulex Corporation, 732 F.3d 1325, 1333
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`(Fed. Cir. 2013) for the proposition that a claim limitation is met by a device
`
`that performs the function “some of the time.” Id.
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`Patent Owner does not specifically dispute that Carmel teaches
`
`transmission faster than the playback rate, but instead argues that “the flip is
`
`also true”: “Carmel’s sending at about the playback rate necessarily means
`
`that it sometimes sends slower than the playback rate.” PO Remand Br. 7.
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`Although we agree with Patent Owner that Carmel thus also discloses
`
`sometimes transmitting slices at a rate slower than the playback rate, we do
`
`not agree with Patent Owner’s conclusion that “Carmel cannot teach that
`
`each requested media data element is sent faster than the playback rate, as
`
`required by the Federal Circuit’s construction of the rate limitation.” Id.
`
`That conclusion relies on an improper importation of an additional limitation
`
`into the claim, namely that all requested media data elements must be sent
`
`by the server at a rate more rapid than the rate at which the streaming media
`
`is played back by a user.
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`19
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`EXHIBIT 1007 - PAGE 0019
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`That is, Patent Owner appears to read the word “each” in the Federal
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`Circuit’s construction as requiring that all media data elements be
`
`transmitted faster than the playback rate. As we summarize above, the
`
`context in which the Federal Circuit arrived at its construction distinguished
`
`from our prior construction of “rate” as corresponding to the “overall rate”
`
`of transmission from the server to the user computer, such as might be
`
`achieved with multiple links over which data elements are sent to the user
`
`system. In referring to “the rate at which each requested data element is
`
`transmitted,” the Federal Circuit is clearly excluding such an overall rate, as
`
`is apparent from its explanation that “[t]he rate limitation in claim 10
`
`therefore refers to the rate at which requested media data elements are sent,
`
`not the overall rate at which data is transmitted from the server to the user
`
`computer.” WAG Acquisition, 781 F. App’x at 1012. We discern nothing in
`
`the Federal Circuit’s decision that compels Patent Owner’s implicit
`
`additional requirement that all media data elements be transmitted faster
`
`than the playback r
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