Ex. 2002 for IPR2022-01412, -01413, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`------------------
`
`GOOGLE LLC,
`
`Petitioner,
`
`v.
`
`WAG ACQUISITION, L.L.C.,
`
`Patent Owner.
`
`------------------
`
`Case IPR2022-01412
`U.S. Patent Nos. 9,742,824
`
`Case IPR2022-01413
`U.S. Patent Nos. 9,762,636
`------------------
`
`DECLARATION OF W. LEO HOARTY
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`WAG, Exhibit 2002
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 1 of 73
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`

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`Ex. 2002 for IPR2022-01412, -01413, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`
`
`
`Table of Contents
`QUALIFICATIONS .............................................................................................. 1
`
`MATERIALS REVIEWED ................................................................................... 4
`
`UNDERSTANDINGS AS TO LEGAL ISSUES ................................................... 5
`
`LEVEL OF SKILL IN THE ART .......................................................................... 5
`
`OVERVIEW OF THE ’824/’636 DISCLOSURE AND THE CHALLENGED
`CLAIMS ................................................................................................................ 6
`
`Background of the ’824 and ’636 Family Patents ............................................... 6
`
`Prior PTAB History ..........................................................................................13
`
`Invalidity Contentions Herein ...........................................................................24
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`GROUNDS BASED ON CARMEL .....................................................................24
`
`Overview of Carmel ..........................................................................................24
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`Opinions concerning the Petition’s assertions regarding Carmel .......................31
`
`Comparison of challenged claims with Carmel .................................................36
`
`b {a} (’824 patent); b(ii) (’636 patent) – “creating” vs “supplying” ..............36
`f {g} (Requests by serial ID) ...........................................................................37
`f(i) (’824 patent)/d(i) (’636 patent) {h} (data connection data rate more rapid
`than the playback rate) ..................................................................................39
`
`f(iii) {j} (no dependency on server maintaining record of last element it sent)
` ......................................................................................................................42
`f(iv) {k} (all elements sent in response to the requests) ...................................43
`
`Asserted combination of Carmel with Ravi .......................................................48
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`Asserted combinations with Narayan ................................................................49
`
`APPENDIX A – CURRICULUM VITAE ............................................................51
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`Professional Summary ...............................................................51
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`Technology Summary ................................................................51
`
`Expert Witness Summary ..........................................................52
`
`APPENDIX B – Understandings as to Rules of Claim Construction and Patent
`Validity .................................................................................................................59
`
`My Understandings as to Claim Construction ...................................................59
`
`My Understandings as to Anticipation ..............................................................59
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`WAG, Exhibit 2002
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 2 of 73
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`Ex. 2002 for IPR2022-01412, -01413, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`
`My Understandings as to Obviousness ..............................................................61
`
`APPENDIX C – Materials Considered .................................................................64
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`
`
`–ii–
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`WAG, Exhibit 2002
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 3 of 73
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`Ex. 2002 for IPR2022-01412, -01413, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`
`
`
`1.
`
`2.
`
`I, W. LEO HOARTY, declare the following:
`
`I have been retained by counsel for Patent Owner, WAG Acquisition,
`
`L.L.C. (“WAG” or “Patent Owner”), to provide opinions on certain issues in
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`connection with U.S. Patent Nos. 9,742,824 (the ’824 patent) and 9,762,636 (the
`
`“’636 patent”).1
`
`3.
`
`I am being compensated at a normal hourly rate for my time in preparing
`
`this declaration, with reimbursement for actual expenses. My compensation is not
`
`contingent on the outcome of this matter, or on the substance of my opinions.
`
`4.
`
`I have been informed that WAG is a real-party-in-interest to the Petition. I
`
`have no financial interest in WAG. Nor do I have any financial interest in the
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`Petitioner (Google LLC).
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`QUALIFICATIONS
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`5.
`
`I have approximately 40 years of experience in the field of the ’824 and
`
`’636 patents, and their related family patents, including multimedia computer
`
`communications systems, and more particularly delivering streaming media, such
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`as audio and video, on the internet (which started to become a widespread practice
`
`
`1 This declaration addresses both the ’824 (pre-recorded media) and ’636 (live
`media) patent, which share a common disclosure. Unless otherwise noted, (i)
`column and line citations are to the ’824 patent, and (ii) arguments herein with
`respect to the ’824 patent should be understood as also applying to the ’636 patent.
`The claims differ between the two patents to the extent shown by the redline
`comparison in EX2013.
`
`WAG, Exhibit 2002
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 4 of 73
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`Ex. 2002 for IPR2022-01412, -01413, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
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`beginning nearly 30 years ago). My education, training, experience, and other
`
`qualifications in this field are set forth at length in my CV, a copy of which is
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`reproduced in Appendix A hereto.
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`6.
`
`I am familiar with the technology described in the ’824 and ’636 family
`
`patents as of their earliest claimed priority date of September 12, 2000. I have also
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`appeared and qualified as an expert in numerous cases involving computer and
`
`network patents and technology, including before the PTAB, as also set forth in my
`
`CV. Highlights of my relevant qualifications, as set forth in my CV, include
`
`without limitation the following:
`
`● Dotcast Inc. (MovieBeam)—I founded the company in 1999 and
`served as CTO. The company developed a settop box that received
`both over-the-air (OTA) and broadband (Internet) delivery of feature
`films stored on an internal hard drive of the settop. Movies were
`delivered in slower than real-time on 24/7 schedule (trickle filled
`cache.) Consumers selected programming from an internal user
`interface guide and purchased movies for rental under similar rules as
`Blockbuster. Service was live from 2004 to 2007 in the top 50 DMAs
`in the U.S. Service utilized HTTP, TCP, UDP, both OTA and via
`broadband.
`
`● ICTV—Founded by me in 1990, renamed ActiveVideo Networks
`(AVN) in 2003, I was a founder and served as CTO. The company
`developed VOD as well as virtual cable TV settop cloud-based
`systems to deliver video as well as interactive program guide over
`managed (cable TV) and unmanaged (Internet) networks. AVN
`service is currently live in 24 million households of the Charter and
`TimeWarner systems. The system employed HTTP, TCP, UDP and
`custom adaptive bit rate streaming technologies.
`
`–2–
`
`WAG, Exhibit 2002
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 5 of 73
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`Ex. 2002 for IPR2022-01412, -01413, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
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`● Vizio—Starting in 2018, I wrote three patents for video watermarking
`and helped develop dynamic ad insertion technology in use by major
`broadcast networks under the name Project OAR. Client software runs
`on smart TVs that detect and decode video watermarks and then call a
`Content Delivery Network node to download a TV ad to substitute for
`the existing ad of the program based on zip code and demographic
`profiles, all actions occur within 100msec. The replacement TV ad is
`delivered faster than playback via an HTTP/UDP link.
`
`● Vizio—In 2015 I wrote a patent for audio-based automated content
`recognition (ACR). Client software runs in a smart TV and generates
`fingerprints from TV audio and sends the fingerprints to a cloud-based
`server system streaming fingerprints in real-time to content matching
`servers which identify content currently play on the respective smart
`TV. In some services, media related to currently playing programing
`is returned to smart TV for display of supplemental information.
`Employs HTTP, TCP, UDP, MPEG DASH.
`
`● I served on the ISO MPEG committee in the early 1990s, acquiring
`familiarity with MPEG CODECs and containers.
`
`● Other relevant standards committee work (in addition to ISO
`MPEG)— IEEE, SCTE (Society of Cable Television Engineers),
`ATSC.
`
`● Software architecture, design, coding, implementation, and testing.
`
`● Designing and implementing streaming media servers and clients.
`
`● Responsibility for managing development and advising management.
`
`● Detailed familiarity with network standards and Internet RFCs,
`including standards and RFCs for TCP, all versions of HTTP.
`
`● Wireshark and like tools, which I use regularly.
`
`● Awards and recognition:
`
`○ Vizio won a Technology Emmy in 2023 for audience
`measurement partially based on my audio ACR.
`
`–3–
`
`WAG, Exhibit 2002
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
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`Ex. 2002 for IPR2022-01412, -01413, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
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`○ Finalist in US Department of Agriculture AIM4C competition
`for best smart agricultural technology for system to analyze
`honeybee beehive health correlated with environmental
`conditions analyzed by an artificial intelligence system.
`
`● Two years of education in Electronics Engineering at Ohio State
`University
`
`
`7. Based on the foregoing, I believe that I am qualified to provide reliable
`
`technical opinions in the field of the ’824 and ’636 family patents, and how the
`
`relevant technology was known and practiced as of the September 2000 timeframe.
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`MATERIALS REVIEWED
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`8.
`
`In preparing my opinions expressed herein, I have reviewed the ’824 and
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`’636 patents and their prosecution history and the patents and printed publications
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`listed in Appendix C hereto. I have used my accumulated experience and insights
`
`along with the above-noted references as the basis for my opinions herein. I have
`
`further formed an understanding of the level of skill possessed by a person of
`
`ordinary skill in the art (“POSITA”) in the above-identified field, as of the earliest
`
`claimed priority date of the ’824 and ’636 patents, and considered how I believe
`
`the subject matter addressed by the claims of the ’824 and ’636 patents would have
`
`been viewed by a POSITA in the field as of that time. The material I considered
`
`includes the declaration of Petitioners’ expert, Dr. Nathaniel Polish (EX1002), and
`
`the expert declarations by Dr. Henry Houh and Dr. Kevin Jeffay in co-pending
`
`IPRs challenging other ’824 and ’636 family patents. I attended Dr. Houh’s April
`
`–4–
`
`WAG, Exhibit 2002
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
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`Ex. 2002 for IPR2022-01412, -01413, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
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`10, 2023 deposition as well. I have also considered prior testimony by Dr. Jeffay as
`
`listed in Appendix C, and the deposition transcripts of Drs. Houh, Jeffay, and
`
`Polish.
`
`UNDERSTANDINGS AS TO LEGAL ISSUES
`
`9.
`
`I am not giving opinions on legal issues. I have been instructed as to the
`
`governing legal principles in this case, as set forth in Appendix B hereto. I am
`
`going by what is in Appendix B to the extent the issues addressed therein bear on
`
`my analysis, or on my use of words that have specific legal meaning.
`
`10. As noted in Appendix B, “obviousness” is considered a legal conclusion,
`
`although it is based on the factual underpinnings. My testimony addresses the
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`underlying technical facts and provides technical analysis that this Board or a
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`reviewing court can use to address whether there should (or should not) be a legal
`
`conclusion of obviousness.
`
`11.
`
`I further understand that obviousness is determined as of the time of the
`
`claimed invention. I have been instructed to use the earliest claimed priority date of
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`September 12, 2000 for this purpose.
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`LEVEL OF SKILL IN THE ART
`
`12. As part of this inquiry, I have been asked to consider the level of ordinary
`
`skill in the field that someone would have had at the time the claimed invention
`
`was made. In deciding the level of ordinary skill, I considered the following:
`
`–5–
`
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`Ex. 2002 for IPR2022-01412, -01413, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
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`● the levels of education and experience of persons working in the field;
`● the types of problems encountered in the field; and
`● the sophistication of the technology.
`
`
`
`13.
`
`I largely agree with Dr. Polish’s criteria for a POSITA as set forth in par.
`
`21 of his declaration (EX1002). One clarification that I would add is 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.
`
`14.
`
`I myself qualify as at least a POSITA under the criteria stated above, by
`
`virtue of a combination of education and experience, which includes two years of
`
`university study in Electrical Engineering, plus considerably more than three years’
`
`full-time experience implementing both server- and client-side software that
`
`included internet delivered streaming programming. This experience involved in-
`
`depth familiarity with basic internet protocols including TCP and HTTP, as well as
`
`streaming-specific protocols, and both server-side and client-side implementations
`
`for interactive content delivery, including streaming media. This was in fact the
`
`technology that I used in my day-to-day working environment for many years.
`
`OVERVIEW OF THE ’824/’636 DISCLOSURE AND THE CHALLENGED
`CLAIMS
`
`Background of the ’824 and ’636 Family Patents
`
`15. The invention concerns distribution of streaming media over the internet.
`
`–6–
`
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`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
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`Ex. 2002 for IPR2022-01412, -01413, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
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`16. Some networks, such as ATM (Asynchronous Transfer Mode) networks,
`
`come with built-in levels of Quality of Service. Where a sufficient QOS has been
`
`arranged, a server on an ATM network can serve a stream and rely on its complete
`
`and timely delivery.
`
`17. This is not so with the internet, which uses a switched method of routing
`
`data from one distributed node to another, and which only assures best efforts with
`
`respect to delivering individual data elements. Transport protocols such as TCP
`
`can be layered over the internet, creating end-to-end sessions that provide for
`
`retransmission of packets that failed to arrive. Such protocols can provide
`
`“reliable” delivery, but still not “timely” delivery.
`
`18. For streaming, the object in general is to stream the data at about the
`
`transmission speed at which it will need to be played back. If the rate is too slow,
`
`the player will run out of material to play and be interrupted. If the rate is too high,
`
`it could overflow whatever capacity the player has to store the data, again resulting
`
`in loss of some part of the program.
`
`19. Prior art approaches sought, for example, to clock out the contents of a
`
`FIFO buffer to control transmission timing. ’824 patent, EX1001-2:2-10. The
`
`inventor of the ’824 and ’636 family patents found the efforts of the server to pace
`
`its output in such a manner was not effective, resulting in considerable
`
`interruptions for “buffering,” which users found frustrating.
`
`–7–
`
`WAG, Exhibit 2002
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 10 of 73
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`Ex. 2002 for IPR2022-01412, -01413, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
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`20. Solutions to this problem, provided by the ’824 and ’636 family patents,
`
`include alternative embodiments reflecting: (first embodiment, referred to as
`
`“push” or “buffering”) putting streaming data (whether from a live or prerecorded
`
`source) into a server FIFO buffer at about the playback rate, and beginning
`
`delivery from the server, via a transport mechanism, only after a predetermined
`
`amount of media had been built up in the server buffer, with the server maintaining
`
`a pointer into its buffer to maintain a record of the last element sent to each client,
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`and (second, distinct embodiment, referred to as “pull”) dividing the input into
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`serially identified sequential elements, and having the client request the elements
`
`by serial identifier as needed to maintain the client’s (receive) buffer at a specified
`
`level. Both embodiments rely on the ability of the connection between the server
`
`and the client to transmit media data elements faster than the playback rate, when
`
`this is called for.
`
`21. The terms “push” and “pull,” which I referred to above, reflect how
`
`engineers think about systems that involve the transfer of data sequences from a
`
`device regarded as a server to a device regarded as a client. In the context of
`
`internet streaming, where streams comprise sequential data elements from a sender
`
`to a receiver, push is understood to mean that movement of the data elements is
`
`initiated by the sender. Pull is understood to mean that movement of the data
`
`elements is initiated by the receiver. The difference implicates not only the
`
`–8–
`
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`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
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`Ex. 2002 for IPR2022-01412, -01413, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
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`direction of control, but the timing of transmission, the relative complexity of the
`
`server vs. the client, and the requirements for the linking communication channel.
`
`In a push, the server controls the rate of transmission, at least in the first instance.
`
`In a pull, the client controls the pace of delivery. See EX2012 (Microsoft Computer
`
`Dictionary).
`
`22. The pull embodiment, described at EX1001-14:42-15:18, is the one most
`
`pertinent to the claims. The patent’s description of the pull embodiment reads as
`
`follows:
`
`In another embodiment, the server is connected to the Internet
`and provisioned as initially described. The server buffer
`manager, or the media source, provides for sequentially
`numbering the media data elements. The server buffer manager
`does not maintain a pointer into the server buffer for each user.
`Instead, the media player buffer manager in the user computer
`maintains a record of the serial number of the last data element
`that has been received.
`
`Via the use of standard data communications 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. The server responds by
`sending the requested data elements, and depends upon the
`reliable transmission protocol to assure delivery. The user
`computer then continues with additional data requests for the
`duration of playing the audio/video material. In this manner, the
`user computer, not the server, maintains the record of the
`highest data element number stored in the user computer buffer.
`The media data will be transmitted to the user computer as fast
`as the data connection between the user computer and the server
`will allow. As before, the server provides a buffer manager and
`
`–9–
`
`WAG, Exhibit 2002
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
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`Ex. 2002 for IPR2022-01412, -01413, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`
`a FIFO buffer, and provides a means for receiving the
`sequentially numbered media data elements from a broadcast
`media source or a file based media source, and storing those
`data elements in the FIFO buffer. The buffer manager
`comprises means for: receiving the media data; supplying
`media data in order to the FIFO buffer; supplying the FIFO
`buffer with a predetermined number of data elements; and, once
`the FIFO buffer is full, deleting the oldest data element in the
`buffer as each new data element is received.
`
`Such means is arranged to maintain the pre-determined number
`of data elements in the FIFO buffer. At least one user computer
`is connected to the server via the Internet.
`
`The user computer is associated with a media player software
`incorporating a user buffer and comprises means for receiving
`and storing a predetermined number of media data elements
`which are received sequentially by the media player, playing
`the data out sequentially as audio and/or video, and deleting
`media data elements from the buffer as they are played out. As
`data is played out, the next sequential data elements are
`requested from the server in such a fashion as to approximately
`maintain the predetermined number of data elements in the
`user’s buffer.
`
`23. Pull by serial identifier, as described in this embodiment, allows the client
`
`to specifically requests the elements it needs to sustain uninterrupted playback.
`
`24. The “pull” character of the embodiment allows the client to determine
`
`when and how many elements it needs to keep its buffer at the specified level,
`
`which it can readily do by, among other things, monitoring its own buffer level (as
`
`opposed to the server having to act based on an estimate of what is occurring on
`
`the (remote) client side of the connection).
`
`–10–
`
`WAG, Exhibit 2002
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
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`Ex. 2002 for IPR2022-01412, -01413, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
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`25. Because the pull requests are based on observed conditions, there is no set
`
`schedule for the requests, and the system must be able to service a request for an
`
`element that is made at a point closer in time to when needed than the time it will
`
`take to play back the element (e.g., the client may determine it needs elements
`
`totaling five seconds of playback, with only four seconds to retrieve them). Hence,
`
`the system will rely on having a connection with a data rate faster than the
`
`playback rate, in order to maintain a steady buffer.
`
`26. The timing of retrieval by repeatedly pulling sequential elements (as
`
`disclosed) is further impacted by the latency of the request/response cycle for each
`
`requested element, which adds more time for each request and response, on top of
`
`the time required to transfer the responsive element itself. A connection whose data
`
`rate is equal to the playback rate will not do, as the data rate of the connection must
`
`be faster than the playback rate, to accommodate the requests and server responses,
`
`as well as the time needed to transmit the actual elements. In practice, however,
`
`though a suitable connection rate will be specified, contracted for, etc. (and the
`
`claims so recite), the internet cannot guarantee timely delivery, and there will be
`
`recurring delays and interruptions, no matter what level of connection is specified.
`
`This problem is at the root of the motivations for the subject patent. The problem is
`
`addressed, in the push embodiment, by providing, in a server buffer, an initial
`
`buffer load comprising an “amount [of data] preferably adequate to bridge gaps
`
`–11–
`
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`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
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`Ex. 2002 for IPR2022-01412, -01413, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
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`typical of Internet and modem delays to the user.” EX1001-8:1-6. This initial
`
`tranche of buffered data is rapidly transferred to the client (more rapidly than the
`
`playback rate) (EX1001-8:13-22), thereby providing the client with a buffer of the
`
`“predetermined” number of elements, which, as stated, was chosen to be “adequate
`
`to bridge gaps typical of [internet delivery].” The disclosure also describes how to
`
`keep supplying stream data to this process (EX1001-8:23-26), and use the server’s
`
`underlying transport mechanism to maintain this buffer during playback (EX1001-
`
`10:40-67).
`
`27.
`
`In the pull embodiment (claimed here), the description of which begins at
`
`EX1001-14:40, the irregularity of the internet connection is likewise addressed by
`
`the “predetermined number” of media data elements originating on the server
`
`(EX1001-15:2-3) and established in the player buffer (EX1001-15:9-13), which, as
`
`in the pull embodiment, serves to protect the playback process against gaps in
`
`internet delivery. The disclosure further describes the client request mechanism for
`
`establishing and maintaining approximately the predetermined number of data
`
`elements in the player buffer (EX1001-14:32-41, EX1001-15:17-19). In each case,
`
`the predetermined amount of data buffered on the client, and kept buffered by the
`
`disclosed mechanisms, is sufficient to insulate playback from interruptions of less
`
`duration than the playback duration of the amount of media buffered. EX1001-
`
`12:14-18.
`
`–12–
`
`WAG, Exhibit 2002
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
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`Ex. 2002 for IPR2022-01412, -01413, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`
`Prior PTAB History
`
`28. The Petition seeks to make arguments about how this case should be
`
`decided based on a prior PTAB decision, the Final Written Decision after remand
`
`in IPR2016-001238 (EX2011), which concerned a related patent (U.S. Patent No.
`
`8,122,141 (the “’141 patent”) (EX1061)).
`
`29.
`
`I am not offering opinions about the prior IPR rulings per se. I am only
`
`commenting to the extent of providing the context of those rulings and the present
`
`case, and to compare and contrast, technically, the patent claims at issue in the two
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`cases, and to point out how those claims differ.
`
`30. The ’824 and ’636 patents are in a family of continuing patents based on
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`common underlying disclosures. The family includes the ’141 patent, the claims of
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`which were also based on the disclosed pull embodiment. However, the particular
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`claims of the ’824 and ’636 patents differ materially from those of the ’141 patent.
`
`31.
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`I understand that the prior IPR involving the ’141 patent (IPR2016-01238)
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`was instituted, went to a final written decision, was reversed on appeal (on claim
`
`construction) and remanded for reconsideration in view of the appeals court’s
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`claim construction, and ruled on again, on remand, applying the construction
`
`specified by the appeals court. Though the claims at issue in the prior IPR of the
`
`’141 patent differed from the ’824 and ’636 patent claims challenged herein,
`
`–13–
`
`WAG, Exhibit 2002
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 16 of 73
`
`

`

`Ex. 2002 for IPR2022-01412, -01413, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`
`Petitioners now rely on the same principal reference (Carmel et al., U.S. Pat. No.
`
`6,389,473 (EX1003)) that was cited in the earlier IPR proceedings.
`
`32. The prior IPR litigated issues concerning claim 10 of the ’141 patent.
`
`Claim 10 of the ’141 patent reads as follows:
`
`[PRIOR CLAIM FROM OLDER PATENT] 10. A server
`for distributing streaming media via a data communications
`medium such as the Internet to at least one user system of at
`least one user, the streaming media comprising a plurality of
`sequential media data elements for a digitally encoded audio
`or video program, said user system being assumed to have a
`media player for receiving and playing the streaming media on
`said user system, which is operable to obtain media data
`elements from said server by transmitting requests to said
`server to send one or more specified media data elements, said
`server comprising
`
`at least one data storage device, memory for storing machine-
`readable executable routines and for providing a working
`memory area for routines executing on the server, a central
`processing unit for executing the machine-readable executable
`routines, an operating system, at least one connection to the
`communications medium, and a communications system
`providing a set of communications protocols for
`communicating through said at least one connection;
`
`a machine-readable, executable routine containing instructions
`to cause the server to assign serial identifiers to the sequential
`media data elements comprising the program;
`
`a machine-readable, executable routine containing instructions
`to cause the server to receive requests from the user system for
`one or more media data elements specifying the identifiers of
`the requested data elements; and
`
`–14–
`
`WAG, Exhibit 2002
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 17 of 73
`
`

`

`Ex. 2002 for IPR2022-01412, -01413, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`
`a machine-readable, executable routine containing instructions
`to cause the server to send media data elements to the user
`system responsive to said requests, at a rate more rapid
`than the rate at which said streaming media is played back
`by a user.
`
`EX1061, claim 10.
`
`33. The Patent Owner argued in the prior referenced IPR that claim 10 of the
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`’141 patent, in particular, the words “send media data elements to the user system
`
`responsive to said requests, at a rate more rapid than the rate at which said
`
`streaming media is played back by a user,” required that all requested media data
`
`elements be sent faster than the playback rate. The Board concluded that claim 10
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`of the ’141 patent did not so require (1st Final Written Decision (EX2010)). For
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`example, the limitation could be satisfied by providing an option during operation
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`of opening multiple parallel channels that in combination could transfer data faster
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`than the playback rate. EX2010 at 18.
`
`34. Patent Owner appealed to the United States Court of Appeals for the
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`Federal Circuit (the court to which appeals from the PTAB are taken), on issues
`
`that included the interpretation of claim 10. The Federal Circuit reversed the Board
`
`(EX2001), holding that “In our view, the ‘rate’ in claim 10 [of the ’141 patent]
`
`refers to the rate at which each requested media data element is transmitted from
`
`the server to the user computer.” EX2001 at 10. The Federal Circuit remanded for
`
`–15–
`
`WAG, Exhibit 2002
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 18 of 73
`
`

`

`Ex. 2002 for IPR2022-01412, -01413, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`
`the PTAB to reconsider anticipation of claim 10 by Carmel under the proper claim
`
`construction, which the Federal Circuit had determined.
`
`35. On remand, the PTAB had another opportunity to consider anticipation of
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`claim 10 of the ’141 patent by Carmel, this time on the basis of the more narrow
`
`claim interpretation reached by the Federal Circuit. The PTAB, on remand, again
`
`found anticipation of claim 10 by Carmel. EX2011 at 23 (“disagree[ing]” that,
`
`even though the Federal Circuit had said “each” element must be sent in
`
`accordance with claim 10’s “rate” limitation, that this required “that every media
`
`data element be transmitted faster than the playback rate”). The Federal Circuit’s
`
`conclusion that the claim required “each” element to be sent faster than the
`
`playback rate did not, according to the Board, require that the requirement had to
`
`be met for “every” element. The Board cited Carmel’s disclosure of “generally
`
`equal to or faster than” the playback rate (EX1003-2:56-59), plus evidence that
`
`equal to or faster than suggested to a POSITA sometimes sending s