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`Case IPR2022-01413
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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
`______________________________________________
`
`GOOGLE LLC,
`Petitioner
`v.
`WAG ACQUISITION, L.L.C.
`Patent Owner
`U.S. Pat. No. 9,762,636
`
`_______________________________________
`
`Inter Partes Review Case No. IPR2022-01413
`_______________________________________
`
`PATENT OWNER’S NOTICE OF APPEAL
`
`via P-TACTS
`Patent Trial and Appeal Board
`
`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
`
`via CM/ECF
`United States Court of Appeals for the Federal Circuit
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`
`
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`
`
`Case IPR2022-01413
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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 March 20, 2024, in case IPR2022-01413, Paper 34 (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 March 20,
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`2024 Final Written Decision, Paper 34. 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 IPR2022-01413
`
`
`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
`
`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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`
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`
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`Case IPR2022-01413
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`Patent 9,762,636
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`
`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:
`
`Office of the Solicitor
`United States Patent and Trademark Office
`Mail Stop 8
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`CERTIFICATE OF FILING
`
`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 34). 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 Petitioner via electronic mail:
`
`Eamonn Gardner
`egardner@cooley.com
`COOLEY LLP
`ATTN: Patent Group
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`
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`Dated: March 28, 2024
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`Case IPR2022-01413
`Patent 9,762,636
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`
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington D.C. 20004
`
`Orion Armon
`oarmon@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington D.C. 20004
`
`Naina Soni
`nsoni@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington D.C. 20004
`
`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–
`
`
`
`
`
`
`Case IPR2022-01413
`Case IPR2022-01413
`Patent 9,762,636
`Patent 9,762,636
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`Appendix A
`Appendix A
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`Trials@uspto.gov Paper 34
`571-272-7822
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` Date: March 20, 2024
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`WAG ACQUISITION, L.L.C.,
`Patent Owner.
`____________
`
`IPR2022-01413
`Patent 9,762,636 B2
`____________
`
`
`
`Before HUBERT C. LORIN, JOHN A. HUDALLA, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`LORIN, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Dismissing Petitioner’s Motion to Exclude
`35 U.S.C. § 318(a)
`
`
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`
`IPR2022-01413
`Patent 9,762,636 B2
`
`
`I. INTRODUCTION
`This is a Final Written Decision in an inter partes review challenging
`the patentability of claims 1–12 of U.S. Patent No. 9,762,636 B2 (Ex. 1001,
`“the ’636 patent”). We have jurisdiction under 35 U.S.C. § 6.
`
`Petitioner has the burden of proving unpatentability of each claim by a
`preponderance of the evidence. 35 U.S.C. § 316(e) (2018). Having
`reviewed the arguments of the parties and the supporting evidence, we
`determine that Petitioner has demonstrated by a preponderance of the
`evidence that claims 1–12 are unpatentable.
`
`A. Background
`
`Google LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`inter partes review of claims 1–12 of the ’636 patent. WAG Acquisition,
`L.L.C. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim.
`Resp.”).
`After institution (Paper 7, “DI”), Patent Owner filed a Patent Owner
`Response (Paper 10, “PO Resp.”); Petitioner filed a Reply (Paper 13, “Pet.
`Reply”); and Patent Owner filed a Sur-reply (Paper 16, “PO Sur-reply”).
`On January 4, 2024, the parties presented arguments at an oral
`hearing, the transcript of which is of record. Paper 33.
`
`B. Related Proceedings
`
`Petitioner indicates that the ’636 patent is asserted in pending district
`court litigation styled WAG Acquisition, L.L.C. v. Google LLC, No. 6:21-cv-
`00816-ADA (W.D. Tex.). Pet. 1; see also Paper 3 (Patent Owner’s
`Mandatory Notices), 2.
`
`2
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`Patent 9,762,636 B2
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`Petitioner indicates that the ’636 patent is also the subject of the
`following other pending district court litigations:
`• WAG Acquisition, L.L.C. v. The Walt Disney Company, No. 2:21-cv-
`08230 (C.D. Cal., filed Oct. 18, 2021); and,
`
` WAG Acquisition, L.L.C. v. Amazon.com, Inc., No. 6:21-cv-00815
`(W.D. Tex., filed Aug. 6, 2021).
`
`Pet. 1; Paper 3, 2.
`Petitioner also makes us aware that the ’636 patent is the subject of
`Office proceeding IPR2022-01227 (P.T.A.B.) (filed July 13, 2022). Pet. 2.
`Patent Owner makes us aware that the ’636 patent is also the subject of
`Office proceeding IPR2022-01433 (P.T.A.B.) (filed Aug. 23, 2022). Paper
`3, 5. Final written decisions have issued in each of these proceedings.
`IPR2022-01227, Paper 27; IPR2022-01433, Paper 26.
`Patent Owner makes us aware of other district court litigations
`involving U.S. Patent Nos. 6,766,376, 8,122,141, 8,185,611, 8,327,011,
`8,364,839, 9,729,594, and 9,742,824 related to the ’636 patent. Paper 3, 3–
`4. Patent Owner makes us aware of other Office proceedings involving U.S.
`Patent Nos. 8,122,141, 8,185,611, 8,327,011, 8,364,839, 9,729,594, and,
`9,742,824 related to the ’636 patent. Id. at 5–8.
`
` •
`
`C. Real Party in Interest
`
`Petitioner identifies Google LLC and YouTube, LLC as real parties in
`interest. Pet. 1. According to Patent Owner, “WAG ACQUISITION, L.L.C.
`is the real party in interest.” Paper 4, 2.
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`3
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`Patent 9,762,636 B2
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`D. The ’636 Patent (Ex. 1001)
`
`1. Disclosure
`
`
`
`The ’636 patent, titled “Streaming Media Delivery System,” relates to
`
`“systems and methods for delivering streaming media, such as audio and
`video, on the Internet.” Ex. 1001, code (54), 1:52–55.
`The ’636 patent describes problems with prior-art streaming
`technologies, where “users viewing or listening to streaming content over
`Internet connections often encounter interruptions, due to the frequency of
`unanticipated transmission delays and losses that are inherent in many
`Internet protocols.” Ex. 1001, 2:34–38. The patent describes prior-art
`methods of addressing this, involving a “pre-buffering technique to store up
`enough audio or video data in the user’s computer so that it can play the
`audio or video with a minimum of dropouts.” Id. at 2:42–45. After several
`seconds waiting for playback to begin, the “audio or video data is delivered
`from the source at the rate it is to be played out.” Id. at 2:63–65. Playback
`would continue, but could still be interrupted by network interruptions. Id.
`at 3:5–41.
`The ’636 patent addresses this by, for example, “sending initial
`streaming media elements to the user system at a sending rate more rapid
`than the playback rate, to fill the user buffer,” and then continuing sending
`media elements “at about the playback rate.” Ex. 1001, 3:60–64. Figure 1,
`reproduced below, shows a block diagram of the elements of the streaming
`media buffering system of the ’636 patent. Id. at 4:23–25.
`
`4
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`Figure 1 shows streaming server 12, Internet 10, server buffer 14,
`buffer manager 16, and user computer 18 with buffer 20.
`Ex. 1001, 6:30–52.
`When a user connects to the server 12, the server transmits
`audio/video data, as sequential data elements, from the server’s buffer 14 to
`the user buffer 20 at a higher-than-playback rate. Ex. 1001, 9:36–39. The
`“media begins to play on the user computer 18 as soon as the user
`connection is made to the audio server 12 and a minimal amount of data
`elements have been received and stored in the user’s buffer 20.” Id. at 9:40–
`45.
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`5
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`Additionally, the patent describes the user playback device
`“maintaining a record of the identifier of the last sequential media data
`element that has been received by said player,” and then “requesting
`transmission of the next sequential media data elements following said last
`sequential media data element.” Ex. 1001, 4:7–11. The patent also
`describes that:
`If the interruptions are so severe as to deplete the user’s buffer
`and stop the play out, the media player can quickly recover as
`well, by beginning to play out again without waiting to first build
`up the buffer, as soon as the media player begins to receive media
`data elements.
`
`Id. at 6:25–29. The “source server 12 sends the media as sequential data
`elements at a rate dependent on the quality of the connection with each user
`computer 18.” Id. at 11:13–16.
`Initially, the user buffer manager 22 requests the server 12 sends
`media data elements, to start playback. Ex. 1001, 9:46–47. The server
`sends elements at a rate “higher than the playback rate,” until the server’s
`buffer has been sent. Id. at 9:48–53. A “feedback manager may be
`associated with user computer 18, including means for sending to the source
`server the serial number of the last data element received, or for requesting
`more data.” Id. at 10:50–53.
`
`2. Claims 1–12
`
`Claims 1, 5, and 9 are the independent claims, from which claims 2–4,
`6–8, and 10–12 depend, respectively. Claim 1 is reproduced below.
`
`6
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`1. [preamble]1 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[a] 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[b] upon receipt of the stream by the server system,
`1[b(i)] 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[b(ii)] serially identifying the media data elements, said serial
`identification indicating a time sequence of the media data
`elements, and
`1[b(iii)] storing the media data elements in a data structure under
`the control of the server system;
`1[c] 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,
`1[c(i)] each received request specifying one or more serial
`identifiers of the requested one or more media data elements,
`1[c(ii)] each received request originating from a requesting user
`system of a plurality of user systems; and
`1[d] responsive to the requests, sending, by the server system,
`the one or more media data elements having the one or more
`
`
`1 Petitioner’s designations to reference the elements of claim 1 are set forth
`in brackets. Pet. 13–47. Herein we refer to the elements of claim 1 using
`Petitioner’s designations.
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`specified serial identifiers, to the requesting user systems
`corresponding to the requests; wherein
`1[d(i)] 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[d(ii)] each sending is at a transmission rate as fast as the data
`connection between the server system and each requesting user
`system allows;
`1[d(iii)] 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[d(iv)] 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
`1[d(v)] 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.
`
`E. Asserted References and Testimonial Evidence
`
`Petitioner relies on the following references:
`
`Name
`
`Carmel
`
`Ravi
`
`Narayan
`
`
`Reference
`U.S. Patent No. 6,389,473 B1, issued May 14,
`2002
`U.S. Patent No. 6,292,834 B1, issued Sept. 18,
`2001
`U.S. Patent No. 6,008,853, issued Dec. 28,
`1999
`
`Ex. No.
`
`1003
`
`1004
`
`1005
`
`8
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`Petitioner also relies on the Declaration of Nathaniel Polish, Ph.D.
`(Ex. 1002), the Reply Declaration of Dr. Polish (Ex. 1111), and the
`Deposition transcript of W. Leo Hoarty (Ex. 1103) as support for the various
`contentions.
`Patent Owner relies on the Declaration of Mr. Hoarty (Ex. 2002) and
`the Deposition transcripts of Dr. Polish (Exs. 2006, 2016) as support for the
`various contentions.
`
`F. Asserted Grounds
`
`Petitioner contends that claims 1–12 of the ’636 patent are
`unpatentable under the following grounds:
`
`Claim(s)
`Challenged
`1–12
`
`1–12
`
`1–12
`
`1–12
`
`Ground
`
`I
`
`II
`
`III
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`IV
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`Pet. 4.
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`103(a)2
`
`Carmel
`
`103(a)
`
`103(a)
`
`103(a)
`
`Carmel, Narayan
`
`Carmel, Ravi
`
`Carmel, Narayan, Ravi
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
`challenged claims of the ’636 patent have an effective filing date before the
`effective date of the applicable AIA amendments, we refer to the pre-AIA
`version of 35 U.S.C. § 103 throughout this Decision.
`9
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`G. Overview of the Prior Art References
`
`1. Carmel (Ex. 1003)
`
`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. Clients connect to a server to receive a multimedia sequence,
`“substantially in real time.” Id. at 7:4–5. Figure 3A of Carmel is reproduced
`below.
`
`
`Figure 3A is a block diagram that schematically illustrates a data
`structure of a stream of broadcast data 40, typically corresponding to a
`multimedia data sequence. Ex. 1003, 7:18–22.
`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
`corresponds to a respective, successive time interval T1, T2, T3, etc.
`Ex. 1003, 7:22–25. Each slice is stored as a corresponding file with a
`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
`time relative to the beginning of the stream. Id. at 7:27–32. An 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.
`
`10
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`at 7:59–64. Each time a new file is uploaded, the slide ID is updated. Id. at
`7:65–66.
`When a client computer connects to the server, the client computer
`downloads and analyzes the index file to identify at what point in the stream
`to begin to receive the data stream from that point in substantially real time
`as it is transmitted. Ex. 1003, 8:1–7. For example, a user interface graphic
`“slider” may be displayed to computer users, allowing individual users to
`select the starting point of the streamed media. Id. at 8:17–31.
`
`2. Ravi (Ex. 1004)
`
`Ravi, titled “Dynamic Bandwidth Selection for Efficient Transmission
`of Multimedia Streams in a Computer Network,” relates “to the efficient and
`reliable delivery of multimedia streams over a diverse computer network
`with dynamically variable bandwidth capacity.” Ex. 1004, code (54), 1:56–
`60. Ravi seeks “efficient transmission of multimedia streams from a server
`to a client computer over a diverse computer network including local area
`networks (LANs) and wide area networks (WANs) such as the internet.” Id.
`at 3:2–6. The “client computer includes a playout buffer, and the
`transmission rate is dynamically matched to the available bandwidth
`capacity of the network connection between the server and the client
`computer.” Id. at 3:11–15. The “performance bottleneck is the bandwidth
`capacity of the network connection.” Id. at 7:6–10.
`
`2. Narayan (Ex. 1005)
`
`Narayan, titled “Sub-Frame Decoder with Area Dependent Update
`Rate for Digital Camcorder Transmission Standard,” relates to “encoded
`video image decoding and especially software only decoding on a personal
`
`11
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`computer.” Ex. 1005, code (54), 1:10–12. Narayan “employs a digital
`camcorder to generate the stream of video image data. This is transmitted to
`a personal computer, preferably a notebook computer, for decoding and
`display.” Id. at 1:66–2:2.
`
`II. ANALYSIS
`
`A. Principles of Law for Patentability
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) 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 ordinary skill in the art; and (4) when in evidence, objective
`evidence of nonobviousness.3 Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966).
`“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
`
`
`3 The record does not include evidence or argument regarding objective
`indicia of nonobviousness.
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`12
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`grounds for the challenge to each claim”)). This burden of persuasion does
`not shift to Patent Owner, except in limited circumstances not present here.
`See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015) (discussing the burden of proof in inter partes review).
`
`B. Level of Ordinary Skill in the Art
`
`
`
`Petitioner contends a person of ordinary skill in the art
`as of the alleged priority date would have possessed at least a
`bachelor’s degree in computer science or an equivalent field
`requiring learning computation principles, and two years of work
`experience in networking or streaming media systems,
`particularly audio and video, over the Internet. Additional
`education could compensate for less practical experience.
`Conversely, additional practical experience could compensate
`for less education.
`
`Pet. 8–9 (citing Ex. 1002 ¶¶ 21–23).
`
`Patent Owner “largely agrees” with Petitioner’s formulation of a
`person of ordinary skill in the art. PO Resp. 6. But Patent Owner adds the
`“clarification” that “the level of skill thus specified would include 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. (citing Ex. 2002
`¶ 13).
`
`Petitioner states that “[Patent Owner]’s clarification does not impact
`the analysis because, if anything, it only raises the level of skill and makes
`the claims more obvious.” Pet. Reply 2 (citing Ex. 1111 ¶¶ 11–13).
`We observe that Patent Owner cites no intrinsic evidence to support
`its “clarification” to Petitioner’s description of a person of ordinary skill in
`
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`
`
`the art. See PO Resp. 6; Ex. 2002 ¶ 13. Be that as it may, our analysis
`would not change if we adopted Patent Owner’s “clarification” to
`Petitioner’s description of a person of ordinary skill in the art. As Petitioner
`indicates, Patent Owner’s “clarification” would increase the level of
`ordinary skill. See PO Resp. 6; Ex. 2002 ¶ 13. “[I]t is generally easier to
`establish obviousness under a higher level of ordinary skill.” Kinetic
`Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir.
`2012).
`Accordingly, we adopt Petitioner’s proposed definition for the level of
`skill in the art possessed by a person of ordinary skill in the art because it
`comports with the technology and claims in the ’636 patent and the asserted
`references and appears reasonable.
`
`C. Claim Construction
`
`“[Claims] of a patent . . . shall be construed using the same claim
`construction standard that would be used to construe the [claims] in a civil
`action under 35 U.S.C. [§] 282(b), including construing the [claims] in
`accordance with the ordinary and customary meaning of such claim[s] as
`[would have been] understood by one of ordinary skill in the art and the
`prosecution history pertaining to the patent.” 37 C.F.R. § 42.100 (2023); see
`also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). The
`meaning of claim terms may be determined by “look[ing] principally to the
`intrinsic evidence of record, examining the claim language itself, the written
`description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
`v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
`(citing Phillips, 415 F.3d at 1312–17).
`
`14
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`Patent 9,762,636 B2
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`
`Petitioner provides a table, reproduced below, listing three “Disputed
`Term[s]” with corresponding “Petitioner’s Construction[s]” and “Patent
`Owner’s Construction[s].” Pet. 10. The table appears to reflect the parties’
`positions in the underlying district court litigation. See Ex. 1040, 8–15.
`Petitioner does not contend “that any term requires express construction.”
`Id. at 9. Rather, its “analysis accommodates the narrowest versions of the
`constructions” set forth in the table. Id.
`
`Petitioner’s table listing three “Disputed Term[s]” with
`corresponding proposed “Petitioner’s Construction[s]” and
`“Patent Owner’s Construction[s].” Pet. 10.
`Except as it relates to the “Disputed Term” “supplying, at the server
`system, media data elements representing the program” (see 1[b(i)]), Patent
`
`
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`Owner does not raise a dispute in this proceeding over the information set
`forth in the table. See generally PO Resp. 6–56.
`Patent Owner asserts constructions for the preambles of the
`independent claims and for 1[c]–1[c(ii)], 1[d] (relating to 1[c]–1[c(ii)]),
`1[d(i)], 1[d(iii)] and 1[d(iv)] and their respective limitations in claims 5 and
`9. PO Resp. 7–23.
`Petitioner responds that “[Patent Owner]’s positions—which were not
`advanced in district court or the [Prelim. Response] —are unclear (lacking
`any actual construction), unsupported by intrinsic evidence, and should be
`rejected.” Pet. Reply 3. Petitioner nevertheless addresses each of Patent
`Owner’s asserted constructions. Id. at 3–9.
`Patent Owner responds to Petitioner by reiterating its asserted
`constructions. PO Sur-reply 3–7.
`The parties’ positions relative to Patent Owner’s asserted
`constructions have been reviewed. They impact claim scope and for that
`reason they will be addressed in our analysis of the patentability of claim 1.
`See infra § II.D.1.
`“[O]nly those terms need be construed that are in controversy, and
`only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017).
`
`D. Ground 1—Obviousness over Carmel Alone
`
`Petitioner challenges claims 1–12 as unpatentable under 35 U.S.C.
`§ 103(a) over Carmel. Pet. 14–57.
`
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`1. Independent claim 1
`
`
`
`[preamble] A method for distributing a live audio or
`1.
`video program over the Internet from a server system to a
`plurality of user systems, the method comprising:
`Petitioner contends that Carmel teaches the preamble. Pet. 13–14
`(citing Ex. 1003, 2:1–4, Abstract).
`Relying on Figure 2 of Carmel, Petitioner explains that “computer 34
`‘receives audiovisual input from input device 22,’ where input device 22
`may be a video camera (to capture video and/or audio) or a microphone (to
`capture audio).” Pet. 14 (citing Ex. 1002 ¶ 95). Petitioner explains that
`Carmel teaches a system whereby computer 34 is a transmitting computer
`which generates a “multimedia sequence.” Id. (citing Ex. 1003, 6:28–30;
`see also id. at 6:26). According to Petitioner, a person of ordinary skill in
`the art would understand “‘multimedia’ refers to a broad array of
`communications, including live video or audio.” Id. (citing Ex. 1003, 6:32–
`35).
`
`In support of its contention that Carmel teaches distributing the live
`audio or video over the Internet, Petitioner quotes Carmel: “[computer 34,] a
`plurality of clients 30, and network server 36, all of which communicate
`over network 28, preferably using the well-known Internet Protocol (IP).”
`Pet. 14 (quoting Ex. 1003, 6:28–31). Petitioner provides (with respect to
`limitation 1[a]) an annotated version of Figure 2 of Carmel (reproduced
`below), with Carmel’s server system highlighted by a blue box, showing that
`it comprises transmitting computer 34 and network server 36, and a green
`box showing the input device. Id. at 16.
`
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`Figure 2 is a schematic illustration of a computer system comprising a
`transmitting computer 34 that receives audiovisual input from device
`22, a plurality of clients 30, and a network server 36, all communicating
`with each other over a network 28. Ex. 1003, 6:24–35.
`Patent Owner has provided no substantive argument challenging
`Petitioner’s contentions as to the preamble. See generally PO Resp. 36–56.
`Rather, Patent Owner proposes that the Board construe the term
`“program” in claim 1’s preamble to mean “an entire program.” PO Resp. 8.
`Generally, a preamble does not limit a claim. Allen Eng’g Corp. v.
`Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). Here, Patent
`Owner’s proposed construction would limit the claim to an “entire
`program.”
`Patent Owner argues that “[t]he plain meaning of the claims is that the
`claimed method, server, and program are for distributing an entire program
`over the internet, and not merely some portion of a program.” PO Resp. 8.
`Patent Owner explains, inter alia, that “[t]his understanding is reflected in
`the body of each claim” “by way of the first step of receiving ‘a continuous
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`digitally encoded stream for the audio or video program’ [1[a]] and a second
`step of supplying media data elements ‘representing the program’ [1[b(ii)]],”
`and “confirmed by the specification.” Id. (quoting Ex. 1001, 14:56–58
`(“The user computer then continues with additional data requests for the
`duration of playing the audio/video material.”)). Patent Owner cites a
`number of claim limitations (id. at 9–11) which it argues show “the body of
`claim 1 makes clear that the recited method is applicable to the entire
`program, and not merely some portion thereof.” Id. at 9. According to
`Patent Owner, it is “reasonably evident on the face of the claims, [and]
`closely track[ing] the specification,” that the claims “address a continuous,
`time-sensitive process, whose continuity is critical to the user . . . and its
`limitations apply for the entire streaming of the program.” Id. at 11.
`
`Petitioner disagrees principally because “[t]he claims do not include
`the word ‘entire.’” Pet. Reply 3. The “limitations [Patent Owner] cites do
`not require the streaming of an ‘entire’ live audio/video program.” Id. at 4
`(citing Ex. 1002 ¶¶ 25–26). Petitioner also indicates that the statement in the
`specification that the Patent Owner refers to (i.e., Ex. 1001, 14:56–58),
`“merely discloses sending requests ‘for the duration of playing’—not for the
`‘entire’ program.” Id.
`
`Patent Owner responds, inter alia, that Petitioner’s position “falter[s]
`when viewed together with limitations that apply by their terms to ‘all’ of
`the media data elements or ‘each’ sending.” PO Sur-reply 3. Patent Owner
`explains:
`In view of the preamble’s reference to a method (or system, or
`recorded medium) “for distributing a live audio or video
`program,” and in view of the specification’s disclosure that the
`user computer “continues with additional data requests for the
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`duration of playing the audio/video material”—and that these are
`the same “requests” referenced in the claim as being
`correspondingly received by the server over the same duration—
`it is clear that the claim addresses a process structured to be
`sustainable over the duration of the corresponding client’s
`playback, and that the server must therefore be implemented so
`that the limitations will be met for a transmission of that duration.
`
`Id.
`We need not decide whether claim 1’s preamble limits the claim.
`
`Carmel teaches claim 1’s preamble even
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