`571-272-7822
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`
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`
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`Paper 22
`Entered: December 26, 2017
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`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.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`IPR2022-01228
`EXHIBIT 1006 - PAGE 0001
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`IPR2016-01238
`Patent 8,122,141 B2
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`In response to a Petition (Paper 1, “Pet.”) filed by WebPower, Inc., we
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`instituted an inter partes review of claims 10–23 of U.S. Patent No.
`
`8,122,141 B2 (“the ’141 patent”). Paper 7 (“Dec.”), 22–23. We
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`subsequently joined FriendFinder Networks Inc., Steamray Inc., WWM,
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`LLC, WWM Holdings, LLC, Multi Media, LLC, Duodecad IT Services
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`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
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`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
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`Reply (Paper 15, “Reply”). An oral hearing was held on September 25,
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`2017, and a copy of the transcript was entered into the record. Paper 21
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`(“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
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`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
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`claims on which we instituted trial. Based on the record before us, Petitioner
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`has shown, by a preponderance of the evidence that claims 10–23 are
`
`unpatentable.
`
`
`
`I. BACKGROUND
`
`A. The ’141 Patent
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`The ’141 patent describes a system for streaming media, such as audio
`
`or video, via the Internet with reduced playback interruptions. Ex. 1001, col.
`
`4, ll. 39–44. A number of factors can affect the continuity of streaming
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`media, including the quality of a user’s connection with the Internet,
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`variations in Internet traffic that may cause congestion at various points
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`along the route that data flows, and the dropping of data packets by
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`overloaded routers. Id. at col. 2, ll. 10–30. The ’141 patent describes a
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`buffering system for streaming media that seeks to limit such deficiencies.
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`Id. at col. 4, ll. 33–35.
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`Figure 1 of the ’141 patent is reproduced below.
`
`
`Figure 1 is a schematic diagram that illustrates elements of a streaming
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`media buffering system. Id. at col. 10, ll. 7–9. Server 12 is connected to the
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`Internet for transmitting sequenced streaming-media data elements. Id. at
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`col. 10, ll. 22–25. Associated with server 12 are buffer manager 16 and
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`first-in–first-out (“FIFO”) buffer 14, which stores at least one of the data
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`elements for transmission. Id. at col. 10, ll. 25–27. Buffer manager 16
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`receives the media data, supplies the media data in order to FIFO buffer 14,
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`and maintains pointers 24a–24n into the buffer for user computers,
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`indicating the last media data element that has been sent to respective users
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`and thus indicating the next element or elements to be sent. Id. at col. 10, ll.
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`30–38. Once FIFO buffer 14 is full, the oldest data elements in the buffer
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`are deleted as new elements are received. Id. at col. 10, ll. 38–40. A
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`predetermined number of data elements are kept in FIFO buffer 14. Id. at
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`col. 10, ll. 40–41.
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`At least one user computer 18 is connected to server 12 via the
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`Internet. Id. at col. 10, ll. 45–46. User buffer 20 is associated with user
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`computer 18 and stores a predetermined number of the media data elements.
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`Id. at col. 10, ll. 47–49. Buffer manager 22, associated with user computer
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`18, receives and stores a predetermined number of media data elements
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`received by the media player, plays the data out sequentially as audio and/or
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`video, and deletes media data elements from buffer 20 as they are played out
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`to approximately maintain the predetermined number of data elements in the
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`user’s buffer. Id. at col. 10, ll. 53–59, col. 8, ll. 31–34.
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`In an alternative embodiment, buffer manager 22 (or the media
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`source) provides for sequentially numbering the media data elements and
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`does not maintain a pointer into buffer 20 for each user. Id. at col. 8, ll. 38–
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`40. “Instead, the media player buffer manager in the user computer
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`maintains a record of the serial number of the last data element that has been
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`received.” Id. at col. 8, ll. 40–42. By using standard data communications
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`protocol techniques, “such as TCP,” user computer 18 transmits requests to
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`server 12 for data elements specified by their serial numbers. Id. at col. 8, ll.
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`42–46. Server 12 responds with the requested data elements, depending
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`“upon the reliable transmission protocol” to assure delivery, with user
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`computer 18 then continuing with additional data requests for the duration of
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`4
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`playing the streamed material. Id. at col. 8, ll. 46–50. “In this manner, the
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`user computer, not the server, maintains the record of the highest data
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`element number stored in the user computer buffer.” Id. at col. 8, ll. 50–52.
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`
`
`B. Illustrative Claims
`
`Independent claims 10 and 19 are illustrative of the claims at issue,
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`and are reproduced below.
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`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;
`routine containing
`
`a machine-readable, executable
`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
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`than the rate at which said streaming media is played back by a
`user.
`
`
`Id. at col. 13, l. 63–col. 14, l. 28.
`
`
`19. A non-transitory machine-readable medium on which there
`has been recorded a computer program for use in operating a
`computer to prepare streaming media content for transmission by
`a server wherein said server responds to user requests for media
`data elements identified by a serial identifier, said program
`recorded on said non-transitory machine readable medium
`comprising a routine to store and serially identify sequential data
`elements comprising said streaming media content, in a format
`capable of being served to users by said server.
`
`
`Id. at col. 14, ll. 49–58.
`
`
`
`C. Instituted Grounds of Unpatentability
`
`Petitioner relies on the following references. Pet. 7–10.
`
`Oct. 13, 1998
`US 5,822,524
`Chen
`Carmel US 6,389,473 B1 May 14, 2002
`
`
`Ex. 1002
`Ex. 1003
`
`M. H. Willebeek-LeMair, K. G. Kumar, and E. C. Snible,
`Bamba—Audio and video streaming over the Internet, 42 IBM
`J. Res. Develop. 269 (March, 1998) (Ex. 1004) (“Willebeek”)
`
`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”)
`
`
`6
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`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
`
`
`We instituted trial on the following bases. Dec. 22–23.
`
`Reference(s)
`
`Chen
`Chen and Willebeek
`Chen and ISO-11172
`Carmel
`
`Carmel and ISO-11172
`
`
`Basis(es)
`§ 102(b)
`§ 103(a)
`§ 103(a)
`§ 102(a)
`§ 102(e)
`§ 103(a)
`
`Claim(s) Challenged
`19, 20, and 23
`21
`22
`10, 11, 13–21, and 23
`
`12 and 22
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`D. Real Parties in Interest and Related Proceedings
`
`In addition to the parties identified in the caption, real parties in
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`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, Web Mind Licenses 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-
`
`
`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.
`
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`00820, Paper 2, 2. Patent Owner identifies only itself as a real party in
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`interest. Paper 4, 2.
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`The parties identify the following matters as involving the ’141
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`patent: (1) WAG Acquisition, LLC v. Sobonito Investments, Ltd., No. 2A14-
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`cv-1661-ES-MAH (D.N.J.); (2) WAG Acquisition, LLC v. Multi Media, LLC,
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`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
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`Acquisition, LLC v. Flying Crocodile, Inc., No. 2:14-cv-2674-ES-MAH
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`(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
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`(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.
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`2:14-cv-3196-ES-MAH (D.N.J.). Pet. 2, Paper 4, 2–3.
`
`The ’141 patent is also the subject of IPR2015-01037, and a
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`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
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`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
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`partes review were denied; and (2) U.S. Patent No. 8,364,836 was the
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`subject of IPR2015-01036, for which a final written decision was issued by
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`the Board on October 20, 2016.
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`II. ANALYSIS
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`A. Claim Construction
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`The Board interprets claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
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`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`
`reasonable interpretation standard); Office Patent Trial Practice Guide, 77
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`Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`
`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
`
`ordinary skill in the art.” Pet. 10. Patent Owner does not expressly address
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`claim construction in its Response. Nevertheless, the parties’ arguments
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`regarding the prior art apply different understandings of the term “rate,”
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`which is recited in independent claim 10 as part of the limitation “a
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`machine-readable, executable routine containing instructions to cause the
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`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).
`
`Patent Owner implicitly applies a construction in which it construes
`
`“rate” as the rate at which data elements are sent on an individual link to the
`
`user system, while Petitioner applies a broader construction in which the
`
`“rate” may collectively include the overall rate achieved with multiple links
`
`to the user system. Compare, e.g., Pet. 56 with PO Resp. 4. Because the
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`import of this distinction is clearer when applied to the prior art, we discuss
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`it more fully below. We discern nothing in the express language of the
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`claim, nor in the Specification of the ’141 patent, that compels a
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`construction of “rate” limited to the rate at which data are sent over an
`
`individual link. The broader construction applied by Petitioner is reasonable
`
`in light of the Specification of the ’141 patent.
`
`
`
`B. Legal Principles
`
`Petitioner makes both anticipation and obviousness challenges. A
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`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
`
`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,
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`631 (Fed. Cir. 1987).
`
`A claim is unpatentable for obviousness under 35 U.S.C. § 103 if the
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`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
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`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.2 Graham v. John Deere Co.,
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`383 U.S. 1, 17–18 (1966).
`
`
`2 The parties do not address secondary considerations, which, accordingly,
`do not form part of our analysis.
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`Additionally, the obviousness inquiry typically requires an analysis of
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`“whether there was an apparent reason to combine the known elements in
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`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
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`obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
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`(Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG
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`v. C. H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)).
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`To prevail on its challenges, Petitioner must demonstrate by a
`
`preponderance of the evidence that the claims are unpatentable. 35 U.S.C.
`
`§ 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes review], the petitioner has
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`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
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`1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter
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`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
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`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).
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`C. Level of Skill in the Art
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`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
`
`provide an opinion, “including what a person having ordinary skill in the art
`
`would have understood.” Ex. 2001 ¶ 10.
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`We find Dr. Polish’s statement of the level of ordinary skill in the art
`
`reasonable, and adopt it for this Final Written Decision.
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`
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`D. Carmel
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`Carmel describes a method for streaming live or prerecorded media
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`from a server to multiple client computers over the Internet. Ex. 1003, col.
`
`2, ll. 1–21. Figure 2 of Carmel is reproduced below.
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`Figure 2 is a schematic illustration of a computer broadcast network. Id. at
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`col. 5, ll. 43–45. System 32 comprises transmitting computer 34 (which
`
`receives audiovisual input from devices 22), a plurality of clients 30, and
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`network server 36, all of which communicate over network 28. Id. at col. 6,
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`ll. 28–35. After preparing a multimedia sequence, computer 34 uploads the
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`sequence over network 28, thereby allowing clients 30 connected with server
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`36 to receive the multimedia sequence in substantially real time. Id. at col.
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`6, l. 50–col. 7, l. 17.
`
`Figure 3A of Carmel is reproduced below.
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`Figure 3A schematically illustrates the structure of broadcast data generated
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`by computer 34, “typically corresponding to a multimedia data sequence.”
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`Id. at col. 7, ll. 19–23. Data stream 40 comprises a series of data slices 42,
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`44, 46, 48, etc., with each slice containing a segment of video and/or audio
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`data that corresponds to a respective, successive time interval T1, T2, T3, etc.
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`Id. at col. 7, ll. 22–25. Each slice is stored as a corresponding file with a
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`running slice index 1, 2, 3, . . . N, and perhaps also a time stamp that
`
`indicates a real time at which the data in the file were recorded or an elapsed
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`time relative to the beginning of the stream. Id. at col. 7, ll. 27–32. An
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`index file that comprises a slice ID is uploaded to a server, with the slice ID
`
`indicating the index of the file in the data stream that was most recently
`
`uploaded. Id. at col. 7, ll. 59–64. Each time a new file is uploaded, the slide
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`ID is updated. Id. at col. 7, ll. 65–66.
`
`Figure 4 of Carmel is reproduced below.
`
`
`Figure 4 schematically illustrates communication between computer 34 and
`
`server 36 over network 28. Id. at col. 9, ll. 10–13. According to Carmel,
`
`computer 34 “should preferably ensure that there is sufficient
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`communication bandwidth between the computer and the server.” Id. at col.
`
`9, ll. 13–17. Accordingly, the computer may open multiple links 60, 62, 64,
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`66, 68, 70, multiple of which may “operate simultaneously” over a single
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`line or each of which may be “routed differently from the other links”
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`through different lines. Id. at col. 9, ll. 17–23.
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`Computer 34 monitors the rate of data being transmitted over each of
`
`the links, and allocates files according to the data rates, perhaps varying file
`
`sizes by adjusting slice durations T1, T2, T3, etc. Id. at col. 9, ll. 31–37.
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`Carmel notes that “[t]he bandwidth open for transmission between computer
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`34 and server 36 is effectively roughly equal to a sum of the bandwidths of
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`the plurality of open links.” Id. at col. 9, ll. 37–39. A similar process is
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`performed when server 36 sends data stream 40 to client computers 30, but,
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`in addition, client computer 30 can read the index file and determine from
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`which slice to begin receiving the data stream. Id. at col. 8, ll. 1–9.
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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
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`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
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`accordingly reviewed Petitioner’s analysis for claim 1, id. at 50–62, as well
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`as its identification of which elements of claim 10 have counterparts in claim
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`1, see id. at 31–38, and conclude that Petitioner demonstrates, by a
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`preponderance of the evidence, that claim 10 is anticipated by Carmel. We
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`highlight aspects of that analysis below for emphasis, especially including
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`the single aspect of Petitioner’s analysis that Patent Owner contests in its
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`Response (whether Carmel discloses sending media data elements to a user
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`system “at a rate more rapid than the rate at which the streaming media is
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`played back by a user”). See PO Resp. 3–14.
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`With respect to the structural components of the server recited in
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`claim 10, Petitioner contends that these “would have been common to any
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`server as of the filing date of the application leading to the ’141 patent,” and
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`supports that contention with testimony by Dr. Polish. Id. (citing Ex. 1005
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`¶ 43). Such servers include the Sun Microsystems and Windows NT servers
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`explicitly disclosed by Carmel. Id. (citing Ex. 1003, col. 1, ll. 34–38, col. 6,
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`ll. 40–44; Ex. 1005 ¶ 43). On this point, we credit the testimony of Dr.
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`Polish, which is uncontested by Patent Owner. In addition, we agree with
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`Petitioner’s identification of explicit disclosure in Carmel of aspects of these
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`elements. Pet. 65 (citing Ex. 1003, col. 1, ll. 34–38 (disclosing operating
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`system), col. 7, ll. 55–58 (disclosing memory), col. 6, ll. 36–40 (disclosing
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`network connection), col. 6, ll. 50–56 (disclosing communications
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`protocols)).
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`In addition, Petitioner adequately identifies disclosure in Carmel of
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`sequential media data elements (in the form of data slices 42 shown in
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`Figure 4, reproduced above) that are transmitted from the server to a user’s
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`media player. See id. at 53–56. Petitioner also adequately identifies
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`disclosure of assigning serial identifiers to the sequential media data
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`elements in the form of the running slice indexes 1, 2, 3, . . . N. See id. 54–
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`56. As Petitioner contends, Carmel describes causing the server to receive
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`requests from the user system for such media data elements, specifying such
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`identifiers. See id.
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`With respect to claim 10’s recitation of “instructions to cause the
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`server to send media data elements to the user system responsive to said
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`requests, at a rate more rapid than the rate at which said streaming media is
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`played back by the user,” i.e., the only limitation that Patent Owner
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`expressly contests, the Petition identifies multiple disclosures. First, the
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`Petition observes that Carmel expresses an objective that “the data rate
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`should be generally equal to or faster than the rate at which the data are
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`generated at the transmitting computer.” Id. at 56 (quoting Ex. 1003, col. 2,
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`ll. 51–59). In addition, the Petition highlights Carmel’s description of
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`responsive adjustments made to accommodate the detection of lag:
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`Computer 34 monitors the time codes as file 40 is transmitted,
`and clients 30 similarly monitor the time codes as the file is
`received, in order to ensure that the transmission or reception is
`“keeping up” with the input of the data to the computer. In the
`event that a lag is detected, steps are taken to increase the data
`transmission or reception rate, as described further herein below.
`For example, as shown in FIG. 3A, time intervals T1, T2, T3, etc.,
`are not all equal, but rather are adjusted by computer 34 in
`response to the transmission rate. Alternatively or additionally,
`the compression level of the data is varied, as is likewise
`described below, so as to adjust the data streaming rate to the
`available bandwidth over one or more channels between
`computer 34 and server 36, and/or between server 36 and client
`30.
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`Ex. 1003, col. 7, ll. 35–49. We agree with Petitioner that the portions of
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`Carmel it cites disclose the limitation.
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`Patent Owner disputes such a finding, contending that “the Petition
`
`fails to explain what Carmel means by ‘the data rate’ in this disclosure [that
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`‘the data rate should be generally equal to or faster than the rate at which the
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`data are generated at the transmitting computer’].” PO Resp. 4. According
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`to Patent Owner, “[t]he Petition does not explain or provide any basis as to
`
`why the words ‘data rate’ necessarily refer to the rate at which the server in
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`Carmel sends individual slices 42-48 to a user system.” Id. (emphasis
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`added). Patent Owner contends that, in context, Carmel’s reference to the
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`“data rate” “is actually addressing the bandwidth of the available
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`transmission channel and not the rate at which individual media data
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`elements are sent.” Id. at 5 (citing Ex. 2001 ¶¶ 16–17). Patent Owner
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`supports this reading of Carmel with testimony of Dr. Chiang. Ex. 2001
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`¶¶ 16–17.
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`We do not understand Petitioner’s argument to be that the individual
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`slices of Carmel are transmitted at a rate faster than the rate at which they
`
`are generated. Rather, Petitioner’s argument is based on the overall rate at
`
`which slices are sent to a user system, which may include the parallel
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`transmission of such slices over the multiple links disclosed by Carmel. See
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`Reply 3 (“A first way Carmel describes increasing the transmission rate
`
`(thus recovering from lag) is by opening additional download links”
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`(emphasis added)). In this respect, the parties essentially agree on what
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`Carmel discloses, which is consistent with our independent reading of
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`Carmel: transmission on individual links is below the generation rate, but
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`the overall transmission rate across multiple links may be above the
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`generation rate. See Tr. 8:11–15 (Petitioner agreeing that the data rate in
`
`Carmel for each individual link would still be below the playback rate),
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`23:23–24:10 (Patent Owner agreeing). Whether Carmel discloses the
`
`limitation thus depends on whether “rate” in the claim is construed to be
`
`limited to the rate on an individual link or may more broadly encompass the
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`rate across multiple links. As we note above, we discern nothing in the
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`express language of the claim nor in the Specification of the ’141 patent that
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`compels the more narrow reading Patent Owner implicitly applies.
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`We questioned the parties extensively about this distinction at the oral
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`hearing. E.g., Tr. 6:5–7:9, 19:2–19, 21:14–23:9, 23:23–24:10. Several
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`points are worthy of note.
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`First, Patent Owner asserted at the oral hearing that it “disclaim[s]”
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`anything that does not operate by an individual link, i.e. “that the claim
`
`covers a situation where each media data element is sent in response to a
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`request for an element by its serial identifier, and those are each sent faster
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`than the playback rate.” Id. at 21:22–26. Patent Owner also asserted that
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`“[i]f there could be a multichannel implementation I don’t know that we
`
`have to disclaim that in order to avoid this art.” Id. at 22:1–2. Although the
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`’141 patent has not expired, Patent Owner has not filed a motion to amend
`
`the claims, nor any other paper that would act as a disclaimer of the scope
`
`defined by the broadest reasonable interpretation of the claims in light of the
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`Specification. See 35 U.S.C. § 316(a)(9); 37 C.F.R. § 42.121(a) (authorizing
`
`a patent owner to file one motion to amend a patent after conferring with the
`
`Board). Accordingly, notwithstanding the response to a question at the oral
`
`hearing, Patent Owner has not formally effected any disclaimer of claim
`
`scope.
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`Second, Patent Owner contends that Petitioner’s arguments are
`
`“nowhere in the petition” and that the argument that the download rate is
`
`increased with additional download links “didn’t even come up in the reply.”
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`Tr. 19:19–23. We disagree with the latter contention because the Reply
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`specifically argues that “[a] first way Carmel describes increasing the
`
`transmission rate (thus recovering from lag) is by opening additional
`
`download links.” Reply 3. We find that argument, as well as other certain
`
`arguments made in the Reply, to be properly responsive to Patent Owner’s
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`position in its Response that Carmel does not disclose sending media data
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`elements to the user system at a rate that exceeds the playback rate.
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`Although such arguments expand on the Petition’s position that the
`
`limitation is disclosed by Carmel, they do not rely on newly submitted
`
`evidence. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
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`48,767 (Aug. 14, 2012). And they relevantly address Patent Owner’s
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`implicit construction of the claims at issue.
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`For example, as the Reply observes, Carmel explains that “[w]hen 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.” Reply 2 (quoting Ex. 1003, col. 2, ll. 51–59). We
`
`agree with Petitioner that, because Carmel thus