Reply Declaration of Nathaniel Polish in Support of
`Petitions for Inter Partes Review of
`U.S. Patent No. 9,742,824 B2 and
`U.S. Patent No. 9,762,636 B2
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Google LLC,
`Petitioner
`
`v.
`
`WAG Acquisition, L.L.C.
`Patent Owner.
`
`IPR2022-01412
`
`U.S. Patent No. 9,742,824 B2
`Issue Date: August 22, 2017
`
`Title: STREAMING MEDIA DELIVERY SYSTEM
`
`IPR2022-01413
`
`U.S. Patent No. 9,762,636 B2
`Issue Date: September 12, 2017
`
`Title: STREAMING MEDIA DELIVERY SYSTEM
`
`REPLY DECLARATION OF NATHANIEL POLISH, Ph.D.
`
`Petitioner's Exhibit 1111
`Google LLC v. WAG Acquisition, IPR2022-01413
`Page 0001
`
`

`

`Reply Declaration of Nathaniel Polish in Support of
`Petitions for Inter Partes Review of
`U.S. Patent No. 9,742,824 B2 and
`U.S. Patent No. 9,762,636 B2
`
`
`TABLE OF CONTENTS
`
`
`
`
`Page
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS .............................................. 4
`A. Qualifications and Experience ............................................................. 4
`B. Materials Considered ............................................................................ 7
`PERSON OF ORDINARY SKILL IN THE ART ....................................... 13
`II.
`III. DESCRIPTION OF THE DISCLOSURE AND CLAIMS .......................... 14
`IV. PRIOR PTAB HISTORY ............................................................................. 15
`V.
`CLAIM CONSTRUCTION ......................................................................... 18
`A.
`Preambles ........................................................................................... 18
`B.
`“Request” Limitations ........................................................................ 23
`C.
`“Data Rate of the Data Connection” Limitations ............................... 26
`D.
`“No Dependency on Server Maintaining A Record” Limitations ..... 40
`VI. CARMEL GROUNDS ................................................................................. 41
`A. Description of Carmel – Carmel’s Disclosure of Pull ....................... 43
`1.
`Background on HTTP1.1 ......................................................... 43
`2.
`Response to Patent Owner’s and Mr. Hoarty’s Positions ........ 49
`“Supplying Media Data Elements at the Server System”
`Limitations .......................................................................................... 58
`1.
`[’824 Patent Only] “Stored in a Digitally Encoded Form” ..... 59
`“Request” Limitations ........................................................................ 60
`“Data Rate of the Data Connection” Limitations ............................... 62
`1.
`Carmel discloses a data connection that is capable of
`transferring the media data elements more rapid than the
`playback rate ............................................................................ 62
`
`B.
`
`C.
`D.
`
`
`
`
`
`2
`
`
`
`Petitioner's Exhibit 1111
`Google LLC v. WAG Acquisition, IPR2022-01413
`Page 0002
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`2.
`
`E.
`F.
`G.
`
`H.
`
`Patent Owner’s undefined, alternative constructions do
`not define a non-obvious invention ......................................... 69
`“No Dependency on Server Maintaining A Record” Limitations ..... 70
`“All Elements Sent in Response to the Requests” Limitations .......... 70
`Carmel Combined with Narayan (ʼ636 Petition Ground 2, ʼ824
`Petition Ground 3) .............................................................................. 72
`Carmel Combined with Ravi (ʼ636 Petition Ground 3, ʼ824
`Petition, Ground 2) ............................................................................. 72
`VII. CONCLUSION ............................................................................................. 74
`
`
`
`
`
`
`
`
`-3-
`
`
`
`Petitioner's Exhibit 1111
`Google LLC v. WAG Acquisition, IPR2022-01413
`Page 0003
`
`

`

`Reply Declaration of Nathaniel Polish in Support of
`Petitions for Inter Partes Review of
`U.S. Patent No. 9,742,824 B2 and
`U.S. Patent No. 9,762,636 B2
`
`I, Nathaniel Polish, declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`
`A. Qualifications and Experience
`
`1.
`
`I have personal knowledge of the facts stated in this declaration and
`
`could and would testify to these facts under oath if called upon to do so.
`
`2.
`
`I previously submitted a Declaration (EX1002) on behalf of Petitioner
`
`Google LLC (“Petitioner” or “Google”) in IPR2022-01412 (the “ʼ824 IPR”), and
`
`I previously submitted a Declaration (EX1002) on behalf of Google in IPR2022-
`
`01413 (the “ʼ636 IPR”). My relevant experience, background, and curriculum
`
`vitae are included in those Declarations, which I hereby incorporate into this Reply
`
`Declaration. I understand that Google relied on the opinions I provided in those
`
`Declarations to support the unpatentability of claims 1-12 of the ʼ824 patent (i.e.,
`
`the “Challenged ʼ824 Claims”) and claims 1-12 of the ʼ636 patent (i.e., the
`
`“Challenged ʼ636 Claims”). I understand that the Patent Office has instituted a
`
`review of the patentability of the Challenged ʼ824 Claims based on the Grounds
`
`set forth in the ʼ824 IPR Petition and the supporting opinions I provided in my
`
`Opening Declaration. I also understand that the Patent Office has instituted a
`
`review of the patentability of the Challenged ʼ636 Claims based on the Grounds
`
`set forth in the ʼ636 IPR Petition and the supporting opinions I provided in my
`
`4
`
`Petitioner's Exhibit 1111
`Google LLC v. WAG Acquisition, IPR2022-01413
`Page 0004
`
`

`

`Reply Declaration of Nathaniel Polish in Support of
`Petitions for Inter Partes Review of
`U.S. Patent No. 9,742,824 B2 and
`U.S. Patent No. 9,762,636 B2
`
`
`Opening Declaration.
`
`3. For the ʼ824 IPR, I have reviewed the Decision Granting Instituting of
`
`Inter Partes Review (Paper 8 (“ʼ824 ID” or “ʼ824 Institution Decision”)), the
`
`Petition and supporting exhibits thereto, the Patent Owner’s Preliminary Response
`
`(Paper 7 (“ʼ824 POPR” or “ʼ824 Preliminary Response”)), the Patent Owner’s
`
`Response (Paper 11 (“ʼ824 POR” or “ʼ824 Response”)), and the technical evidence
`
`submitted in support of the Patent Owner’s Response, including the declaration of
`
`Mr. Hoarty (EX2002), as well as the exhibits cited and attached to the declaration.
`
`4. For the ʼ636 IPR, I have reviewed the Decision Granting Instituting of
`
`Inter Partes Review (Paper 7 (“ʼ636 ID” or “ʼ636 Institution Decision”)), the
`
`Petition and supporting exhibits thereto, the Patent Owner’s Preliminary Response
`
`(Paper 6 (“ʼ636 POPR” or “ʼ636 Preliminary Response”)), the Patent Owner’s
`
`Response (Paper 10 (“ʼ636 POR” or “ʼ636 Response”)), and the technical evidence
`
`submitted in support of the Patent Owner’s Response, including the declaration of
`
`Mr. Hoarty (EX2002), as well as the exhibits cited and attached to the declaration.
`
`5. For the purposes of this Reply Declaration, I have also reviewed certain
`
`deposition transcripts of Patent Owner’s technical witness in this IPR proceeding
`
`(Mr. Hoarty), exhibits introduced and discussed during those depositions (see
`
`EX1101-1103), and all documents cited herein.
`
`5
`
`Petitioner's Exhibit 1111
`Google LLC v. WAG Acquisition, IPR2022-01413
`Page 0005
`
`

`

`Reply Declaration of Nathaniel Polish in Support of
`Petitions for Inter Partes Review of
`U.S. Patent No. 9,742,824 B2 and
`U.S. Patent No. 9,762,636 B2
`
`
`6.
`
`I also understand that in the ʼ824 IPR Petition and the ʼ636 IPR Petition,
`
`and my Opening Declarations in support of each (EX1002 in both proceedings),
`
`Petitioner and I identify the same first three Grounds, though Grounds 2 and 3 are
`
`switched between both Petitions. In other words, the first Ground for both the ʼ824
`
`IPR Petition and ʼ636 IPR Petition is obviousness over Carmel (EX1003); the
`
`second Ground for the ʼ824 IPR Petition and third Ground for the ʼ636 IPR Petition
`
`is Carmel in view of Ravi (EX1004); and the third Ground for the ʼ824 IPR Petition
`
`and second Ground for the ʼ636 IPR Petition is Carmel in view of Narayan
`
`(EX1005). Additionally, Petitioner and I identify a fourth Ground for the ʼ636
`
`IPR: Carmel in view of Narayan and Ravi.
`
`7.
`
`I understand that Mr. Hoarty submitted a joint declaration in support of
`
`the ʼ824 POR and ʼ636 POR. (See EX2002 (titled “Ex. 2002 for IPR2022-01412,
`
`-01413, Declaration of W. Leo Hoarty, U.S. Patent Nos. 9,742,824 and
`
`9,762,636”).) Based on my review, I also understand that Patent Owner largely
`
`makes the same arguments challenging Petitioner’s Grounds and prior art in both
`
`the ʼ824 POR and ʼ636 POR.
`
`8. After considering the evidence and arguments offered by Patent Owner,
`
`I maintain my opinions as stated in my Opening Declaration that the Challenged
`
`ʼ824 Claims are invalid as being obvious over Carmel (Ground 1), Carmel in view
`
`6
`
`Petitioner's Exhibit 1111
`Google LLC v. WAG Acquisition, IPR2022-01413
`Page 0006
`
`

`

`Reply Declaration of Nathaniel Polish in Support of
`Petitions for Inter Partes Review of
`U.S. Patent No. 9,742,824 B2 and
`U.S. Patent No. 9,762,636 B2
`
`
`of Ravi (Ground 2), and Carmel in view of Narayan (Ground 3). (See, e.g., ʼ824
`
`Polish Decl. (EX1002), ¶¶92-231.) Likewise, after considering the evidence and
`
`arguments offered by Patent Owner, I maintain my opinions as stated in my
`
`Opening Declaration that the Challenged ʼ636 Claims are invalid as being obvious
`
`over Carmel (Ground 1), Carmel in view of Narayan (Ground 2), Carmel in view
`
`of Ravi (Ground 3), and Carmel in view of Narayan and Ravi (Ground 4). (See,
`
`e.g., ʼ636 Polish Decl. (EX1002), ¶¶92-239.)
`
`9.
`
`I have prepared this Reply Declaration to offer my opinions in response
`
`to the evidence, opinions, and arguments made in the ʼ824 POR and ʼ636 POR and
`
`the supporting evidence thereto.
`
`B. Materials Considered
`
`10. The analysis that I provide in this Reply Declaration is based on my
`
`education, research, and experience, as well as the documents and information I
`
`have considered. In forming my opinions, I have read and considered U.S. Patent
`
`No. 9,742,824 B2 (the “ʼ824 patent” or “ʼ824”) and U.S. Patent No. 9,762,636 B2
`
`(the “ʼ636 patent” or “ʼ636”) and their prosecution histories, my Opening
`
`Declarations and the exhibits cited therein, the submissions and technical evidence
`
`relied on by Petitioner and Patent Owner in this proceeding, the Board’s Institution
`
`Decisions, as well as the evidence and information described or cited within this
`
`7
`
`Petitioner's Exhibit 1111
`Google LLC v. WAG Acquisition, IPR2022-01413
`Page 0007
`
`

`

`Reply Declaration of Nathaniel Polish in Support of
`Petitions for Inter Partes Review of
`U.S. Patent No. 9,742,824 B2 and
`U.S. Patent No. 9,762,636 B2
`
`Reply Declaration, including the following:
`
`Exhibit
`No.
`1001
`
`Description of Document
`
`ʼ824 Patent in ʼ824 IPR
`ʼ636 Patent in ʼ636 IPR
`1003 U.S. Patent No. 6,389,473 to Sharon Carmel et al. (filed March 24,
`1999, issued May 14, 2002) (“Carmel”)
`1004 U.S. Patent No. 6,292,834 to Hemanth Srinivas Ravi et al. (filed March
`14, 1997, issued September 18, 2001) (“Ravi”)
`1005 U.S. Patent No. 6,008,853 to Ajai Narayan et al. (filed November 12,
`1997, issued December 28, 1999) (“Narayan”)
`1009 U.S. Patent No. 5,867,230 to Feng Chi Wang et al. (filed June 30, 1997,
`issued February 2, 1999)
`1010 U.S. Patent No. 6,637,031 to Phillip A. Chou (filed December 4, 1998,
`issued October 21, 2003)
`Shanwei Cen et al., Flow and Congestion Control for Internet Media
`Streaming Applications (1997)
`Jian Lu, Signal Processing for Internet Video Streaming: A Review
`(2000)
`1013 H. Schulzrinne et al., Network Working Group Request for Comments:
`2326, Real Time Streaming Protocol (RTSP) (1998)
`1014 U.S. Patent No. 7,529,806 to Yevgeniy Eugene Shteyn (filed November
`4, 1999, issued May 5, 2009)
`1015 U.S. Patent No. 5,721,878 to Hal Hjalmar Ottesen et al. (filed June 7,
`1995, issued February 24, 1998
`1016 R. Fielding et al., Hypertext Transfer Protocol -- HTTP/1.1 (1999)
`1017
`Sam Iren and Paul D. Amer, The Transport Layer: Tutorial and Survey
`(1999)
`1018 U.S. Patent No. 5,793,980 to Robert D. Glaser et al. (filed November
`30, 1994, issued August 11, 1998)
`
`1011
`
`1012
`
`8
`
`Petitioner's Exhibit 1111
`Google LLC v. WAG Acquisition, IPR2022-01413
`Page 0008
`
`

`

`Reply Declaration of Nathaniel Polish in Support of
`Petitions for Inter Partes Review of
`U.S. Patent No. 9,742,824 B2 and
`U.S. Patent No. 9,762,636 B2
`
`
`Description of Document
`
`Exhibit
`No.
`1019 M.H. Willebeek-Lemair et al., Bamba – Audio and video streaming
`over the Internet (1998)
`1020 Excerpts from David Austerberry, The Technology of Video and Audio
`Streaming (2004)
`1021 Cannon DV Format,
`https://web.archive.org/web/19991013131445/http://canondv.com:80/s
`hared/dvinfo/dvinfo2.html (1999)
`1022 Alan T. Wetzel and Michael R. Schell, Consumer Applications of the
`IEEE 1394 Serial Bus, and a 1394/DV Video Editing System (1996)
`1023 U.S. Patent No. 5,568,192 to Eric C. Hannah (filed August 30, 1995,
`issued October 22, 1996)
`1024 U.S. Patent No. 5,402,170 to Kenneth A. Parulski et al. (filed August
`31, 1992, issued March 28, 1995)
`Jean-Phillipe Martin-Flatin, Push vs. Pull in Web-Based Network
`Management (1999)
`1026 Lixin Gao et al., Catching and Selective Catching: Efficient Latency
`Reduction Techniques for Delivering Continuous Multimedia Streams
`(1999)
`1027 U.S. Patent No. 5,822,524 to Huey-Shiang Chen et al. (filed July 21,
`1995, issued October 13, 1998)
`Sriram S. Rao et al., Comparative Evaluation of Server-push and Client-
`pull Architectures for Multimedia Servers (1996)
`ʼ636 Patent Prosecution History File
`1029
`ʼ824 Patent Prosecution History File
`1030
`1032 U.S. Patent No. 7,237,254 B1 to Nosakhare D. Omoigui (filed March
`29, 2000, issued June 26, 2007)
`1033 WAG Acquisition, L.L.C.’s Proposed Claim Constructions from WAG
`Acquisition, L.L.C. v. Google LLC, No. 6:21-cv-00816-ADA (W.D.
`Tex.), dated February 18, 2022
`
`1025
`
`1028
`
`9
`
`Petitioner's Exhibit 1111
`Google LLC v. WAG Acquisition, IPR2022-01413
`Page 0009
`
`

`

`Reply Declaration of Nathaniel Polish in Support of
`Petitions for Inter Partes Review of
`U.S. Patent No. 9,742,824 B2 and
`U.S. Patent No. 9,762,636 B2
`
`
`1035
`
`Description of Document
`
`Exhibit
`No.
`1034 U.S. Patent No. 5,488,433 to Kinya Washino et al. (filed March 1, 1995,
`issued January 30, 1996)
`Panasonic DV-PV910,
`https://web.archive.org/web/19990505044020/http://www.panasonic.c
`om:80/consumer_electronics/video/pv_dv910.htm (archived May 5,
`1999)
`1036 Canon Elura,
`https://web.archive.org/web/19990424171105/http://www.canondv.co
`m:80/elura/index.html (archived April 24, 1999)
`1037 Canon XL1,
`https://web.archive.org/web/19990420230845/http://canondv.com:80/
`xl1/index2.html (archived April 20, 1994)
`1038 Anthony D. Mercando, Multimedia Mania (1994)
`1039 Brad Hansen, The Dictionary of Multimedia (1997)
`1040 Defendants Google LLC and YouTube, LLC’s Opening Claim
`Construction Brief from WAG Acquisition, L.L.C. v. Google LLC, No.
`6:21-cv-00816-ADA (W.D. Tex.), Dkt. No. 37, filed March 14, 2022
`1041 Declaration of Keith J. Teruya from WAG Acquisition, L.L.C. v. Google
`LLC, No. 6:21-cv-00816-ADA (W.D. Tex.), filed April 1, 2022
`Jonathan C. Soo, Live Multimedia over HTTP (1994)
`from WAG
`Plaintiff’s Responsive Claim Construction Brief
`Acquisition, L.L.C. v. Google LLC, No. 6:21-cv-00816-ADA (W.D.
`Tex.), filed April 1, 2022
`1044 Defendants Google LLC and YouTube, LLC’s Reply Claim
`Construction Brief from WAG Acquisition, L.L.C. v. Google LLC, No.
`6:21-cv-00816-ADA (W.D. Tex.), Dkt. No. 43, filed April 15, 2022
`Phil Karn and Craig Partridge, Improving Round-Trip Time Estimates
`in Reliable Transport Protocols (1988)
`
`1042
`1043
`
`1045
`
`10
`
`Petitioner's Exhibit 1111
`Google LLC v. WAG Acquisition, IPR2022-01413
`Page 0010
`
`

`

`Reply Declaration of Nathaniel Polish in Support of
`Petitions for Inter Partes Review of
`U.S. Patent No. 9,742,824 B2 and
`U.S. Patent No. 9,762,636 B2
`
`
`Description of Document
`
`Exhibit
`No.
`1046 Hari Balakrishnan et al., Improving TCP/IP Performance over Wireless
`Networks (1995)
`1047 WAG Acquisition, L.L.C.’s Preliminary Infringement Contentions
`from WAG Acquisition, L.L.C. v. Google LLC, No. 6:21-cv-00816-
`ADA (W.D. Tex.), dated November 15, 2021
`1057 Original Complaint for Patent Infringement from WAG Acquisition,
`L.L.C. v. Google LLC, No. 6:21-cv-00816-ADA (W.D. Tex.), Dkt. No,
`1, filed August 6, 2021
`1058 Opening Claim Construction Brief of Amazon.com, Inc., Amazon Web
`Services, Inc., and Amazon.com Services, LLC from WAG Acquisition,
`L.L.C. v. Amazon.com, Inc., No. 6:21-cv-00815-ADA (W.D. Tex.), Dkt.
`No. 37, filed March 11, 2022
`1060 List of Claims
`1061 U.S. Patent No. 8,122,141 to Harold Edward Price (filed May 10, 2010,
`issued February 21, 2012)
`ʼ636 YouTube Amended Infringement Contentions from WAG
`Acquisition, L.L.C. v. Google LLC, No. 6:21-cv-00816-ADA (W.D.
`Tex.), served February 8, 2022
`ʼ824 YouTube Amended Infringement Contentions from WAG
`Acquisition, L.L.C. v. Google LLC, No. 6:21-cv-00816-ADA (W.D.
`Tex.), served February 8, 2022
`Proof of Service – YouTube, Inc. from WAG Acquisition, L.L.C. v.
`Google LLC, No. 6:21-cv-00816-ADA (W.D. Tex.), Dkt. 13
`Proof of Service – Google LLC from WAG Acquisition, L.L.C. v.
`Google LLC, No. 6:21-cv-00816-ADA (W.D. Tex.), Dkt. 14
`1067 Curriculum Vitae of Dr. Nathaniel Polish
`1101
`July 6, 2023 Deposition of Patent Owner’s Expert W. Leo Hoarty for
`IPR2022-01227 and IPR2022-01228
`
`1063
`
`1064
`
`1065
`
`1066
`
`11
`
`Petitioner's Exhibit 1111
`Google LLC v. WAG Acquisition, IPR2022-01413
`Page 0011
`
`

`

`Reply Declaration of Nathaniel Polish in Support of
`Petitions for Inter Partes Review of
`U.S. Patent No. 9,742,824 B2 and
`U.S. Patent No. 9,762,636 B2
`
`
`Description of Document
`
`Exhibit
`No.
`1102 August 3, 2023 Deposition of Patent Owner’s Expert W. Leo Hoarty for
`IPR2022-01430 and IPR2022-01433
`1103 August 21, 2023 Deposition of Patent Owner’s Expert W. Leo Hoarty
`for IPR2022-01411, IPR2022-01412, and IPR2022-01413
`Swaminathan, Viswanathan, and Sheng Wei, “Low latency live video
`streaming using HTTP chunked encoding,” 2011 IEEE 13th
`International Workshop on Multimedia Signal Processing, IEEE, 2011.
`1105 Orallo, E. Hernandez, and Joan Vila-Carbó, “A fast method to optimise
`network resources for Video-on-demand Transmission,” Proceedings
`of the 26th Euromicro Conference, EUROMICRO 2000, Informatics:
`Inventing the Future, Vol. 1., pp. 440-447, IEEE, Sep. 5, 2000.
`1106 Tierney, Brian, et al., “Distributed parallel data storage systems: A
`scalable approach to high speed image servers,” Proceedings of the
`second ACM international conference on Multimedia, pp. 399-405, Oct.
`15, 1994.
`1107 Bradley, Adam D., Azer Bestavros, and Assaf J. Kfoury, “A typed
`model for encoding-based protocol interoperability,” Proceedings of the
`12th IEEE International Conference on Network Protocols, 2004, ICNP
`2004, IEEE, Oct. 8, 2004.
`1108 Claim Construction Order, Emblaze Ltd. v. Apple Inc., Case No. 5:11-
`cv-01079-PSG (N.D. Cal. Oct. 9, 2014)
`1109 WAG Acquisition’s May 15, 2023 Reply Brief, Reexam Control No.
`90/014,833 (U.S. Patent No. 8,327,011)
`1110 Claim Construction Order, Emblaze Ltd. v. Microsoft Corp., Case No.
`12-cv-05422-JST (N.D. Cal. July 29, 2014)
`In re Certain Fitness Devices, Streaming Components Thereof, and
`System Containing Same, Inv. No. 337-TA-1265, Evidentiary Hearing
`– Volume II (ITC, March 10, 2022)
`Israeli Patent Application No. 123819
`1113
`1114 Microsoft Computer Dictionary, 5th Ed. © 2002 (excerpts)
`
`1104
`
`1112
`
`12
`
`Petitioner's Exhibit 1111
`Google LLC v. WAG Acquisition, IPR2022-01413
`Page 0012
`
`

`

`Reply Declaration of Nathaniel Polish in Support of
`Petitions for Inter Partes Review of
`U.S. Patent No. 9,742,824 B2 and
`U.S. Patent No. 9,762,636 B2
`
`II.
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`11. I understand that Patent Owner “clarif[ies]” the definition of a person
`
`of ordinary skill in the art to state 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.” (See, e.g., ʼ824 POR, 6; ʼ636 POR,
`
`6; EX2002, ¶13.) I do not understand what Patent Owner means by “theoretical
`
`understanding,” and Patent Owner does not explain why its clarification is
`
`necessary.
`
`12. I do not believe this clarification is necessary, as a bachelor’s in
`
`computer science would provide knowledge and familiarity with basic internet
`
`protocols and tools for working with dynamic content and creating interactive web
`
`sites to handle such content. However, if this clarification is used, I note that I
`
`have familiarity with basic internet protocols, dynamic content, and creating
`
`interactive web sites to handle such content. As noted above, I already addressed
`
`my qualifications in my opening declaration. (ʼ824 Polish Decl. (EX1002), ¶¶4-
`
`16; ʼ636 Polish Decl. (EX1002), ¶¶4-16.) Accordingly, I am a person of ordinary
`
`skill in the art (“POSITA”) under either Petitioner’s or Patent Owner’s definition.
`
`13. In addition, if Patent Owner’s definition is adopted it would not change
`
`13
`
`Petitioner's Exhibit 1111
`Google LLC v. WAG Acquisition, IPR2022-01413
`Page 0013
`
`

`

`Reply Declaration of Nathaniel Polish in Support of
`Petitions for Inter Partes Review of
`U.S. Patent No. 9,742,824 B2 and
`U.S. Patent No. 9,762,636 B2
`
`
`my positions regarding the invalidity of the Challenged ʼ824 Claims and
`
`Challenged ʼ636 Claims. Patent Owner appears to be arguing that a POSITA
`
`would have additional knowledge, and in my opinion that additional knowledge
`
`would only serve to confirm the invalidity of the Challenged ʼ824 Claims and
`
`Challenged ʼ636 Claims. Accordingly, my opinions do not change under either
`
`Petitioner’s or Patent Owner’s definition.
`
`III. DESCRIPTION OF THE DISCLOSURE AND CLAIMS
`
`14. Neither Patent Owner nor Mr. Hoarty present any disagreement with
`
`my prior description of the ’636 and ’824 patents. However, the ʼ824 POR, the
`
`ʼ636 POR, and Mr. Hoarty’s declaration include sections entitled “Description of
`
`the Disclosure and Claims” that include potentially misleading inaccuracies that I
`
`would like to address.
`
`15. First, Patent Owner and Mr. Hoarty divide the ’636 and ’824 patents
`
`into “push” and “pull” embodiments and contend the present claims follow such
`
`an approach. (See, e.g., ’636 POR, 2-6; ’824 POR, 2-6; EX2002, ¶¶22-27.) I
`
`disagree. The ’636 and ’824 patents do not use the terms “push” or “pull” and the
`
`description in the specification does not divide along such lines. Mr. Hoarty agrees
`
`that in one embodiment in the common specification for the ’636 and ’824 patents,
`
`the specification indicates to a POSITA that the user will send a single request to
`
`14
`
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`Google LLC v. WAG Acquisition, IPR2022-01413
`Page 0014
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`

`

`Reply Declaration of Nathaniel Polish in Support of
`Petitions for Inter Partes Review of
`U.S. Patent No. 9,742,824 B2 and
`U.S. Patent No. 9,762,636 B2
`
`
`the server but that the server will continue to send data after that single request.
`
`(EX1102, 24-26 (discussing ’824); EX1103, 100:9-101:3 (confirming prior
`
`testimony).) As discussed herein, the claims cover such an embodiment even
`
`though it may be what Mr. Hoarty deems as “push” rather than “pull.”
`
`16. Second, the “Description of the Disclosure and Claims” sections mix
`
`between describing the ʼ636 and ʼ824 patents and the claims in a misleading way.
`
`For example, one of the paragraphs in the POR begins with “[t]he data connection
`
`as claimed is over the internet”—which is part of the claims—but then includes
`
`purported discussion of the specification that is not recited in any claim. (’636
`
`POR, 5 (citing EX2002, ¶¶23-27); ʼ824 POR, 5 (same).)
`
`17. Third, Patent Owner and Mr. Hoarty include discussion of the
`
`specification that is wholly unrelated to the current claims—such as discussion of
`
`maintaining a “predetermined number” of media data elements, which appears in
`
`the ’594 patent claims but not the claims of the ’636 or ’824 patents.
`
`IV. PRIOR PTAB HISTORY
`
`18. Mr. Hoarty includes a section of his report entitled “Prior PTAB
`
`History.” (EX2002, ¶¶28-49.)
`
`19. First, Mr. Hoarty spends several paragraphs suggesting that the PTAB
`
`incorrectly interpreted the Federal Circuit’s decision related to the ’141 patent IPR.
`
`15
`
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`Google LLC v. WAG Acquisition, IPR2022-01413
`Page 0015
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`

`

`Reply Declaration of Nathaniel Polish in Support of
`Petitions for Inter Partes Review of
`U.S. Patent No. 9,742,824 B2 and
`U.S. Patent No. 9,762,636 B2
`
`
`(EX2002, ¶¶31-36.) In particular, Mr. Hoarty argues that when the Federal Circuit
`
`stated “[i]n 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” that the Federal Circuit instead intended to say that the “rate” in claim
`
`10 of the ’141 patent refers to the rate at which each-and-every requested media
`
`data element is transmitted from the server to the user computer. (EX2002, ¶¶34-
`
`35.) I disagree with Mr. Hoarty’s attempt to rewrite the Federal Circuit’s decision
`
`related to the ’141 patent. Moreover, as further discussed in relation to Patent
`
`Owner’s claim construction argument, Mr. Hoarty cannot plausibly be arguing that
`
`the claims of the ’636 or ’824 patents require that each-and-every media data
`
`element be transmitted at a rate faster than the playback rate, because both Mr.
`
`Hoarty and WAG agree that any system that uses the Internet will experience
`
`interruptions and cannot guarantee a sufficient rate:
`
`Q. I want to go back to my example, and we'll just try to
`clarify with this language. So we're still in a system where
`the playback rate is 100 bits per second. The capacity is
`500 bits per second. Now, let's assume that the short-term
`average due to congestion or other interruptions is only 50
`bits per second. Do you understand?
`
`A. I do.
`
`Q. Now, in that case, you would still agree that the data
`connection meets the requirement of the claim of having a
`
`16
`
`Petitioner's Exhibit 1111
`Google LLC v. WAG Acquisition, IPR2022-01413
`Page 0016
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`

`

`Reply Declaration of Nathaniel Polish in Support of
`Petitions for Inter Partes Review of
`U.S. Patent No. 9,742,824 B2 and
`U.S. Patent No. 9,762,636 B2
`
`
`data rate more rapid than the playback rate because the
`data connection is at 500 bits per second even though the
`short-term average would only be at 50 bits per second,
`correct?
`
`A. I believe I understand that. Yes, correct.
`
`(EX1103, 33:17-34:9.) Indeed, the common ’636 and ’824 patent specification
`
`recognizes that interruptions can be so severe that it could deplete the player buffer
`
`and even stop play out. (See, e.g., ’636, 6:25-29 (“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.”).)
`
`20. Both Patent Owner and Mr. Hoarty acknowledge that the common
`
`“specification makes clear that there will be reception interruptions with an internet
`
`connection” such that this limitation cannot require “that the instantaneous transfer
`
`rate of the connection be faster than the playback rate at all times during
`
`transmission of the requested program[.]” (ʼ824 POR, 15; ʼ636 POR, 15; EX2022,
`
`¶49.)
`
`21. Second, Mr. Hoarty attempts to distinguish certain aspects of the claims
`
`in the ’141 patent with the Challenged ʼ824 Claims and Challenged ʼ636 Claims
`
`based on what appear to be claim construction type arguments. I have addressed
`
`17
`
`Petitioner's Exhibit 1111
`Google LLC v. WAG Acquisition, IPR2022-01413
`Page 0017
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`

`

`Reply Declaration of Nathaniel Polish in Support of
`Petitions for Inter Partes Review of
`U.S. Patent No. 9,742,824 B2 and
`U.S. Patent No. 9,762,636 B2
`
`
`claim construction below.
`
`V. CLAIM CONSTRUCTION
`
`22. I understand that Patent Owner raises a number of disputes regarding
`
`how various claim limitations of the ʼ636 and ʼ824 patents should be construed.
`
`A.
`
`Preambles
`
`23. I understand that Patent Owner argues that the preambles of
`
`independent claims 1, 5, and 9 of the ʼ824 and ʼ636 patents should be construed to
`
`require “distributing an entire program over the internet, and not merely some
`
`portion of a program.” (ʼ824 POR, 9-11; ʼ636 POR, 8-11.)
`
`24. My Opening Declarations in the ʼ636 IPR and ʼ824 IPR (EX1002 in
`
`both) provided my opinions under the plain language of the preambles, which
`
`requires receiving an audio or video program (which can include a single audio or
`
`video program, multiple audio or video programs, an entire audio or video
`
`program, or a portion of an audio or video program). In my opinion, a POSITA
`
`would not interpret the preambles as narrowly as Patent Owner now does. Nor
`
`does Patent Owner’s proposed construction provide clarity to the term. For
`
`example, even if the preamble could be read to require distributing “an entire
`
`program,” Patent Owner does not define what “an entire program” means (e.g.,
`
`Does watching a movie but not the credits count as “an entire program”?; If you
`
`18
`
`Petitioner's Exhibit 1111
`Google LLC v. WAG Acquisition, IPR2022-01413
`Page 0018
`
`

`

`Reply Declaration of Nathaniel Polish in Support of
`Petitions for Inter Partes Review of
`U.S. Patent No. 9,742,824 B2 and
`U.S. Patent No. 9,762,636 B2
`
`
`change the channel during commercials while watching TV have you failed to
`
`watch “an entire program”?; What marks the beginning and end to a radio
`
`“program”?; etc.).
`
`25. As an example, the preamble of claim 1 of the ʼ636 patent recites
`
`(emphasis added):
`
`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:
`
`And the preamble of claim 1 of the ʼ824 patent recites (emphasis added):
`
`A method for distributing over the Internet, from a server
`system to one or more user systems, a pre-recorded
`audio or video program stored in digitally encoded form
`on computer-readable media, the method comprising:
`
`Neither the preamble nor the remainder of the claims uses the word “entire” or refer
`
`to an “entire” program. Patent Owner states, for both the ʼ636 and ʼ824 patents, that
`
`“the body of claim 1 makes clear that the recited method is applicable to the entire
`
`program, and not merely some portion thereof. Limitation ‘a’ of the body recites
`
`‘receiving/reading . . . the . . . program [and not just some portion of it] . . .’ from
`
`either the live source (the ʼ636 patent) or the computer-readable media (the ʼ824
`
`patent). (ʼ636 POR, 9; ’824 POR, 10.) However, the bracketed portion “and not
`
`just some portion of it” is not in the body of the claims (or the specifications) of the
`
`19
`
`Petitioner's Exhibit 1111
`Google LLC v. WAG Acquisition, IPR2022-01413
`Page 0019
`
`

`

`Reply Declaration of Nathaniel Polish in Support of
`Petitions for Inter Partes Review of
`U.S. Patent No. 9,742,824 B2 and
`U.S. Patent No. 9,762,636 B2
`
`ʼ824 and ʼ636 patents. Rather, these limitations read in their entirety:
`
`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;
`
`(ʼ636, cl. 1 (emphasis added).)
`
`reading, by at least one computer of the server system,
`the pre-recorded audio or video program from the
`computer-readable media;
`
`(ʼ824, cl. 1 (emphasis added).) A POSITA would not understand these limitations
`
`as Patent Owner casts them, based on the actual language of the claims.
`
`26. Similarly, the other limitations that Patent Owner cites do not require
`
`an “entire program;” rather, the other limitations that Patent Owner cites would
`
`suggest to a POSITA that the claims can refer to portions of a program. For
`
`example, Patent Owner cites limitations “b” (ʼ824 patent) and “b(i)” (ʼ636 patent)
`
`which recite “supplying, at the server system, media data elements representing the
`
`program[.]” (ʼ824 POR, 10; ʼ636 POR, 10.) Again, a POSITA would understand
`
`this limitatio