Case: 18-1617 Document: 69 Page: 1 Filed: 08/26/2019
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`
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`WAG ACQUISITION, LLC,
`Appellant
`
`v.
`
`WEBPOWER, INC., FRIENDFINDER NETWORKS
`INC., STREAMRAY INC., WMM, LLC, WMM
`HOLDINGS, LLC, MULTI MEDIA, LLC, DUODECAD
`IT SERVICES LUXEMBOURG S.A.R.L., ACCRETIVE
`TECHNOLOGY GROUP, INC., ICF TECHNOLOGY,
`INC., RISER APPS LLC, STREAMME, INC., FKA
`VUBEOLOGY, INC.,
`Appellees
`______________________
`
`2018-1617
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2016-
`01238.
`
`______________________
`
`Decided: August 26, 2019
`______________________
`
`RONALD ABRAMSON, Liston Abramson LLP, New York,
`NY, argued for appellant. Also represented by ARI JASON
`JAFFESS.
`
`
`WAG, Exhibit 2001
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 1 of 12
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`Case: 18-1617 Document: 69 Page: 2 Filed: 08/26/2019
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`WAG ACQUISITION, LLC v. WEBPOWER, INC.
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` JONATHAN L. FALKLER, Venable LLP, Washington, DC,
`argued for all appellees. Appellees WebPower, Inc.,
`FriendFinder Networks Inc., Streamray Inc., WMM, LLC,
`WMM Holdings, LLC, Multi Media, LLC also represented
`by FRANK M. GASPARO, TODD M. NOSHER, New York, NY.
`
` KEVIN MICHAEL O'BRIEN, Baker & McKenzie LLP,
`Washington, DC, for appellee Duodecad IT Services Lux-
`embourg S.A.R.L.
`
` BRIAN G. BODINE, Lane Powell PC, Seattle, WA, for ap-
`pellees Accretive Technology Group, Inc., ICF Technology,
`Inc., Riser Apps LLC, StreamMe, Inc. Also represented by
`ALAN D. MINSK.
` ______________________
`
`Before NEWMAN, CHEN, and STOLL, Circuit Judges.
`STOLL, Circuit Judge.
`WebPower, Inc. sought inter partes review of claims 1–
`28 of U.S. Patent No. 8,122,141 (the ’141 patent) before the
`U.S. Patent and Trademark Office’s Patent Trial and Ap-
`peal Board.1 The Board instituted review of claims 10–23
`of the ’141 patent and, in its final written decision, found
`all of these claims unpatentable. WAG Acquisition, LLC,
`owner of the ’141 patent, appeals the Board’s decision as to
`claims 10–18. Because the Board’s validity analysis rests
`on an incorrect claim construction, we vacate the decision
`
`
`1 FriendFinder Networks Inc., Steamray Inc.,
`WWM, LLC, WWM Holdings, LLC, Multi Media, LLC, Du-
`odecad IT Services Luxembourg S.A.R.L., Accretive Tech-
`nology Group, Inc., ICF Technology, Inc., Riser Apps LLC,
`and StreamMe, Inc. joined as parties to the proceeding on
`June 5, 2017.
`
`WAG, Exhibit 2001
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 2 of 12
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`WAG ACQUISITION, LLC v. WEBPOWER, INC.
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`as to the appealed claims and remand for further proceed-
`ings consistent with this opinion.
`BACKGROUND
`I
`The ’141 patent discloses a buffering system for
`streaming media, such as audio/video, on the Internet.
`’141 patent col. 1 ll. 30–33. At the time of the invention,
`users attempting to stream media over the Internet expe-
`rienced persistent interruptions in playback due to poor
`connection quality, degradation of bandwidth, or conges-
`tion. Id. at col. 2 ll. 10–30. Prior art solutions to this issue
`incorporated a user buffer, which would store audio and/or
`video data in the user’s computer so that playback could
`continue in the event of an interruption in the data trans-
`mission. Id. at col. 2 ll. 35–38. With this prior art buffer,
`playback would not begin until the buffer was filled to a
`specified level and, if the buffer became fully depleted,
`playback would pause until the buffer could be refilled. Id.
`at col. 2 l. 64–col. 3 l. 7. As noted in the specification,
`“[b]ecause transmission of the data to the user takes place
`at the rate it is played out, the user’s buffer level can never
`be increased or replenished while it is playing.” Id. at col. 2
`l. 65–col. 3 l. 1. Users thus experienced both a delayed
`start to viewing streamed content and a higher likelihood
`of interruptions as the buffer could not be refilled during
`playback.
`The ’141 patent specification describes two solutions to
`this problem. The first involves maintaining both a server-
`side buffer and a user-side buffer, with the server-side
`buffer storing a certain amount of data elements for trans-
`mission to the user. Id. at col. 4 ll. 58–66. When a user
`initiates streaming, the server sends the stored data “at the
`highest rate that the data connection between the server
`and user computer will support until the predetermined
`amount of data that had been stored in the server buffer
`has been transferred to the user’s computer.” Id. at col. 5
`
`WAG, Exhibit 2001
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 3 of 12
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`WAG ACQUISITION, LLC v. WEBPOWER, INC.
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`ll. 57–61. The user’s buffer “is built up while the audio is
`playing, and can be restored if diminished by data trans-
`mission interruptions.” Id. at col. 9 ll. 47–49. This is be-
`cause, if a user buffer is not full, “data is transmitted from
`the server more rapidly than it is played out by the user
`system,” restoring the buffer to a full state. Id. at col. 9
`ll. 51–54. The server keeps track of the last data element
`that has been sent to each user by way of a software
`“pointer” that alerts the server when a data transmission
`has been interrupted and identifies the last data element
`that had been sent to that user when the interruption oc-
`curred. Id. at col 7 ll. 15–27.
`Like the first solution, the second solution incorporates
`a server-side buffer that stores sequentially numbered me-
`dia data elements for transmission to a user buffer. Id.
`at col. 8 ll. 35–38. Instead of using a pointer, however, “the
`user computer, not the server, maintains the record of the
`highest data element number stored in the user computer
`buffer.” Id. at col. 8 ll. 50–52. Using “standard data com-
`munications protocol techniques such as TCP, the user
`computer transmits a request to the server to send one or
`more data elements, specifying the serial numbers of the
`data elements.” Id. at col. 8 ll. 42–46. The requested data
`“will be transmitted to the user computer as fast as the
`data connection between the user computer and the server
`will allow.” Id. at col. 8 ll. 52–55.
`On appeal, WAG focuses on claims 10 and 15, which
`recite as follows:
`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 sequen-
`tial media data elements for a digitally encoded au-
`dio or video program, said user system being
`assumed to have a media player for receiving and
`playing the streaming media on said user system,
`
`WAG, Exhibit 2001
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 4 of 12
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`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 el-
`ements, 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 execut-
`ing the machine-readable executable rou-
`tines, an operating system, at least one
`connection to the communications medium,
`and a communications system providing a
`set of communications protocols for com-
`municating through said at least one con-
`nection;
`a machine-readable, executable routine
`containing instructions to cause the server
`to assign serial identifiers to the sequential
`media data elements comprising the pro-
`gram;
`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 specify-
`ing the identifiers of the requested data el-
`ements; and
`a machine-readable, executable routine
`containing instructions to cause the server
`to send media data elements to the user sys-
`tem responsive to said requests, at a rate
`more rapid than the rate at which said
`streaming media is played back by a user.
`
`WAG, Exhibit 2001
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 5 of 12
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`WAG ACQUISITION, LLC v. WEBPOWER, INC.
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`15. The server of claim 10, wherein said server does
`not maintain a pointer into a buffer established
`within said server, for each said user.
`Id. at col. 13 l. 63–col. 14 l. 28, col. 14 ll. 38–40 (emphases
`on disputed claim limitations).
`II
`On January 4, 2017, the Board instituted review of
`claims 10–11 and 13–18 of the ’141 patent on the ground
`that these claims were anticipated by U.S. Patent
`No. 6,389,473 (“Carmel”).2 The Board also instituted re-
`view of claim 12 on the ground that it would have been ob-
`vious over Carmel in view of International Standard
`ISO/IEC 11172.3
`Carmel discloses a method for streaming live or prere-
`corded media from a server to multiple client computers
`over the Internet. See Carmel at Abstract. Carmel dis-
`closes dividing content into “slices,” each containing a seg-
`ment of video and/or audio data. Id. at col. 7 ll. 22–26. The
`slices are labeled based on time interval, mapped to an in-
`dex, and uploaded to the server. Id. at col. 7 ll. 27–34.
`When a user connects to the data stream, the user com-
`puter downloads the index file to identify the point in the
`stream at which to begin. Id. at col. 8 ll. 1–5. The user can
`choose to join the stream in substantially real time or,
`
`
`2 The Board also instituted review of claims 19–23
`on multiple grounds. WAG has not challenged the Board’s
`unpatentability determinations with respect to these
`claims.
`International Standard ISO/IEC 11172-1, -2, -3, In-
`3
`formation Technology—Coding of moving pictures and as-
`sociated audio for digital storage media at up to about 1,5
`Mbit/s (ISO/IEC, August 1993).
`
`WAG, Exhibit 2001
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`alternatively, start the stream at an earlier point in the
`broadcast. Id. at col. 8 ll. 5–8.
`Carmel teaches several methods for recovering from
`lag caused by interruptions in the data stream. First, the
`data transmission rate can be increased by altering the size
`of each data slice sent from the server to the user computer.
`Id. at col. 7 ll. 39–44. Second, the compression level of the
`data can be adjusted to reflect any change in available
`bandwidth. Id. at col. 7 ll. 44–49. Finally, the client can
`open additional links with the server in the event of lag “in
`order to increase the overall data rate.” Id. at col. 10 ll. 55–
`63.
`
`The parties’ dispute before the Board centered primar-
`ily on whether Carmel discloses “instructions to cause the
`server to send media data elements to the user system re-
`sponsive to said requests, at a rate more rapid than the rate
`at which said streaming media is played back by a user” in
`independent claim 10. ’141 patent col. 14 ll. 24–28.
`WebPower argued that Carmel’s description of the respon-
`sive adjustments made to accommodate the detection of lag
`includes sending media data elements at a rate more rapid
`than the playback rate. Specifically, WebPower argued
`that Carmel discloses using multiple links to increase the
`overall data rate, and that it expresses an objective of send-
`ing multimedia data at a rate “generally equal to or faster”
`than the playback rate. See Carmel col. 2 ll. 56–59. In re-
`sponse, WAG argued that the data rate referred to in Car-
`mel is the overall data rate, rather than the rate at which
`individual data slices are sent as required by claim 10.
`The Board first addressed what it viewed as WAG’s im-
`plicit claim construction argument that the “rate” in
`claim 10 refers to “the rate at which data elements are sent
`on an individual link to the user system” as opposed to the
`“overall rate achieved with multiple links to the user sys-
`tem.” WebPower, Inc. v. WAG Acquisition, LLC, No.
`IPR1016-01238, 2017 WL 6597962, at *4 (P.T.A.B. Dec. 26,
`
`WAG, Exhibit 2001
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 7 of 12
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`WAG ACQUISITION, LLC v. WEBPOWER, INC.
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`2017) (emphases in original). The Board found that “noth-
`ing in the express language of the claim, nor in the Specifi-
`cation of the ’141 patent . . . compels a construction of ‘rate’
`limited to the rate at which data are sent over an individ-
`ual link.” Id. While the Board agreed with WAG that Car-
`mel describes “transmission on individual links . . . below
`the generation rate,” it found that Carmel’s disclosure of an
`overall transmission rate across multiple links that was
`faster than the playback rate was sufficient to disclose the
`limitation at issue in claim 10. Id. at *7–8.
`The parties also disputed whether Carmel anticipates
`
`claim 15 of the ’141 patent. Claim 15 depends from
`claim 10 and recites the negative limitation that “said
`server does not maintain a pointer into a buffer established
`within said server, for each said user.” ’141 patent col. 14
`ll. 38–40. The Board rejected WAG’s argument that use of
`a server-side pointer was inherent in Carmel, finding that
`“features of Carmel, including disclosure of client-side con-
`trol, a lack of specialized server software, and similar
`pointerless protocols as used in the ’141 patent, meet the
`claim limitation.” WebPower, 2017 WL 6597962 at *11.
`The Board thus held that Carmel anticipates claim 15.
`
`The Board similarly concluded that dependent
`claims 11–14 and 16–18 were unpatentable, noting that
`WAG did not argue the patentability of these claims sepa-
`rately from claim 10. WAG appeals. We have jurisdiction
`under 28 U.S.C. § 1295(a)(4)(A).
`DISCUSSION
`WAG makes two primary arguments on appeal:
`(1) that the Board erred in its construction of claim 10 and
`hence its determination that Carmel discloses the “rate”
`limitation in claim 10; and (2) that the Board erred in its
`determination that Carmel discloses the negative pointer
`limitation in claim 15. We address these issues in turn.
`
`WAG, Exhibit 2001
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`I
`We first address the Board’s finding that Carmel antic-
`ipates claim 10, and in particular that Carmel discloses the
`“rate” limitation at issue. The Board premised its findings
`on its construction of the term “rate” in this limitation. The
`Board construed “rate” in light of the disclosures in Car-
`mel, concluding that “nothing in the express language of
`the claim, nor in the [s]pecification of the ’141 patent . . .
`compels a construction of ‘rate’ limited to the rate at which
`data are sent over an individual link.” WebPower, 2017 WL
`6597962, at *4. Accordingly, the Board found that Car-
`mel’s description of using multiple links to achieve an over-
`all data rate that is at times more rapid than the playback
`rate discloses claim 10’s “rate” limitation. We disagree.
`We review the Board’s construction of a claim term de
`novo, reviewing any underlying fact findings for substan-
`tial evidence. Teva Pharm. USA, Inc. v. Sandoz, Inc.,
`135 S. Ct. 831, 841 (2015); Praxair Distrib., Inc. v.
`Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1031
`(Fed. Cir. 2018) (citing HTC Corp. v. Cellular Commc’ns
`Equip., LLC, 877 F.3d 1361, 1367 (Fed. Cir. 2017)). While
`the words of a claim “are generally given their ordinary and
`customary meaning,” a claim term is read “not only in the
`context of the particular claim in which the disputed term
`appears, but in the context of the entire patent, including
`the specification.” Phillips v. AWH Corp., 415 F.3d 1303,
`1312–13 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp.
`v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
`During an inter partes review, claims are given the “broad-
`est reasonable interpretation” consistent with the specifi-
`cation.4 Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2146 (2016).
`
`
`4 This standard has recently changed. For petitions
`filed on or after November 13, 2018, the Board will apply
`
`WAG, Exhibit 2001
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`WAG ACQUISITION, LLC v. WEBPOWER, INC.
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`In our view, the “rate” in claim 10 refers to the rate at
`which each requested media data element is transmitted
`from the server to the user computer. This construction
`stems from the plain language of the claim, which requires
`the server “to send media data elements to the user system
`responsive to said requests” at a rate more rapid than the
`playback rate. ’141 patent col. 14 ll. 24–28 (emphasis
`added). The antecedent basis for “said requests” is con-
`tained in the prior limitation, which identifies “requests
`from the user system for one or more media data elements
`specifying the identifiers of the requested data elements.”
`Id. at col. 14 ll. 21–23 (emphases added). The rate limita-
`tion in claim 10 therefore refers to the rate at which re-
`quested media data elements are sent, not the overall rate
`at which data is transmitted from the server to the user
`computer.
`Our conclusion is further supported by the patent spec-
`ification, which discloses that:
`[T]he user computer transmits a request to the
`server to send one or more data elements, specify-
`ing the serial numbers of the data elements. The
`server responds by sending the requested data ele-
`ments. . . . The media data will be transmitted to
`the user computer as fast as the data connection
`between the user computer and the server will al-
`low.
`Id. at col. 8 ll. 42–55. Construing the claimed “rate” as the
`rate at which each requested data element is transmitted
`from the server to the user computer is consistent with the
`
`
`the Phillips claim construction standard. 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) (to be codified at
`37 C.F.R. pt. 42).
`
`WAG, Exhibit 2001
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
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`specification and the operational intent of the invention de-
`scribed in the specification.
` We thus disagree with the Board’s conclusion that
`“nothing in the express language of the claim, nor in the
`Specification of the ’141 patent . . . compels a construction
`of ‘rate’ limited to the rate at which data are sent over an
`individual link.” WebPower, 2017 WL 6597962, at *4. We
`note that WAG’s patent specification does not even use the
`terminology “individual link” or “multiple links.” This ter-
`minology comes from the prior art Carmel reference. Ra-
`ther, the claims and patent specification consistently refer
`to the rate at which each requested data element is trans-
`mitted from the server to the user computer. We thus con-
`strue the claim term “rate” accordingly.
` WAG argues that, under this construction, Carmel
`does not disclose the claimed “rate.” For its part,
`WebPower argues that, even under this construction, Car-
`mel teaches the claimed “rate.”5 Because the Board did not
`consider Carmel’s disclosures under the proper construc-
`tion, we remand to the Board for it to resolve this factual
`dispute in the first instance.
`II
` WAG also appeals the Board’s finding that Carmel an-
`ticipates claim 15 of the ’141 patent. While claim 15
`
`5 WebPower also asserts that WAG waived its claim
`construction argument by not raising it before the Board.
`We are not convinced. The Board concluded that the claim
`term required construction in order to resolve the factual
`dispute of anticipation, WAG raised its construction at oral
`argument when answering questions regarding anticipa-
`tion, and WAG’s proffered construction derives from the
`plain meaning of the claim terms. Under these particular
`circumstances, we conclude that WAG did not waive its po-
`sition on claim construction.
`
`WAG, Exhibit 2001
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`depends from claim 10—issues about which we have re-
`manded for further fact findings—we nonetheless address
`this dispute for purposes of judicial efficiency.
`WAG argues that Carmel either expressly or inher-
`ently discloses the use of a pointer, and thus fails to dis-
`close the negative limitation that the “server does not
`maintain a pointer into a buffer.” ’141 patent col. 14 ll. 38–
`40. Contrary to the Board’s findings, WAG argues that
`Carmel does not disclose sufficient client-side control to
`render the use of a pointer unnecessary. In order to antic-
`ipate a claim, a prior art reference must “disclose all ele-
`ments of the claim within the four corners of the
`document.” Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052,
`1068 (Fed. Cir. 2017) (quoting Net MoneyIN, Inc. v. Ver-
`iSign, Inc., 545 F.3d 1369, 1369 (Fed. Cir. 2008)). Antici-
`pation is a question of fact, reviewed for substantial
`evidence. Id. We are not convinced by WAG’s arguments.
`A reasonable fact finder could find that Carmel does not
`require use of a pointer for the reasons stated by the Board:
`Carmel emphasizes client control, lacks specialized server
`software, and uses pointerless protocols. While Carmel
`does not specify that a pointer is not used, nothing in the
`record suggests that a pointer must be used. The Board’s
`findings are therefore supported by substantial evidence.
`CONCLUSION
`For the foregoing reasons, we vacate the decision of the
`Board and remand for further proceedings consistent with
`this opinion.
`VACATED AND REMANDED
`COSTS
`
`Costs to appellant.
`
`
`
`WAG, Exhibit 2001
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 12 of 12
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