UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONERFORPATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/014,834
`
`08/25/2021
`
`8122141
`
`125737.538655
`
`8070
`
`11/17/2023
`
`7590
`ERNEST D. BUFF
`ERNEST D. BUFF & ASSOCIATES
`231 SOMERVILLE ROAD
`BEDMINSTER, NJ 07921
`
`EXAMINER
`
`FERRIS III, FRED 0
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`11/17/2023
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`WAG, Exhibit 2017
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 1 of 10
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONERFORPATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/014,834
`
`08/25/2021
`
`8122141
`
`125737.538655
`
`8070
`
`11/17/2023
`
`7590
`ERNEST D. BUFF
`ERNEST D. BUFF & ASSOCIATES
`231 SOMERVILLE ROAD
`BEDMINSTER, NJ 07921
`
`EXAMINER
`
`FERRIS III, FRED 0
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`11/17/2023
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`WAG, Exhibit 2017
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 1 of 10
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PA TENT TRIAL AND APPEAL BOARD
`
`Ex parte WAG ACQUISITION, LLC
`Patent Owner and Appellant
`
`Appeal2023-003319
`Reexamination Control 90/014,834
`Patent 8,122,141 B2
`Technology Center 3900
`
`Before JOHN A. JEFFERY, ERICB. CHEN, andBRIAN J. McNAMARA,
`Administrative Patent Judges.
`
`CHEN, Administrative Patent Judge.
`
`DECISION ON APPEAL
`
`Pursuantto 35 U.S.C. §§ 134(b) and 306, PatentOwner 1 appeals from
`
`the final rejection of claims 1, 5, 8, 24, and 28. Claims2-4, 6, 7, 9, and 25-
`
`27 were not subject to reexamination. Claims 10-23 were cancelled in a
`
`previous inter part es review proceeding.
`
`A video oral hearing was held on September 18, 2023. The record
`
`includes a written transcript of the oral hearing. We have jurisdiction under
`
`35 U.S.C. § 6(b).
`
`We REVERSE.
`
`1 Patent Owner identifies the real party in interest as WAG Acquisition,
`LLC. (Appeal Br. 2.)
`
`1
`
`WAG, Exhibit 2017
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 2 of 10
`
`
`
`Appeal 2023-003319
`Reexamination Control 90/014 ,834
`Patent 8,122,141 B2
`
`STATEMENT OF THE CASE
`
`Reexamination Proceedings
`
`A request for ex parte reexamination ofU. S. Patent No. 8,122,141 B2
`
`("the' 141 patent") was filed on August 25, 2021 and assigned Control No.
`
`90/014,834. The' 141 patent, entitled "Streaming Media Buffering System"
`
`issued February 21, 2012 to Harold Edward Price, based on Application
`
`No. 12/800, 152, filed May 10,2010. The' 141 patent is part of a series of
`
`multiple continuing applications, with the first application filed on
`
`March 28, 2001, which claims priority to provisional Application No.
`
`60/231,997, filed on September 12, 2000.
`
`Claimed Subject Matter
`
`The claims are directed to streaming media, sent via the Internet, such
`
`that the media in the user buffer accumulates and is immediately played on a
`
`user's computer. Media data is transmitted from the server more rapidly
`
`than it is played out by the user's computer. (Abstract.)
`
`Related Litigation
`
`The' 141 patent has been asserted in the following litigation: (i) WAG
`
`Acquisition, LLC v. Sobonito Investments, Ltd. et al., No. 2: 14-cv-1661
`
`(D.N.J.) ( dismissed); (ii) WAG Acquisition, LLC v. Multi Media, LLC et al.,
`
`No. 2: 14-cv-2340 (D.N.J.) ( dismissed); (iii) WAG Acquisition, LLC v. Data
`
`Conversions, Inc. et al., No. 2: 14-cv-2345 (D.N.J.) ( dismissed); (iv) WAG
`
`Acquisition, LLC v. Flying Crocodile, Inc. et al., No. 2: 14-cv-2674 (D.N.J.);
`
`(v) WAG Acquisition, LLCv. Gattyan GroupS.a.r.l. eta!., No. 2:14-cv-
`
`WAG, Exhibit 2017
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 3 of 10
`
`
`
`Appeal 2023-003319
`Reexamination Control 90/014 ,834
`Patent 8,122,141 B2
`
`2832 (D.N.J.) ( dismissed); (vi) WAG Acquisition, LLC v. MFCXY, Inc. et al.,
`
`Case No. 2-14-cv-3196 (D.N.J.) ( dismissed); (vii) WAG Acquisition, LLCv.
`
`FriendFinder Networks Inc. et al., No. 2: 14-cv-3456 (D.N.J. ); (viii) WAG
`
`Acquisition, LLCv. Vubeology, Inc. eta!., No. 2:14-cv-4531 (D.N.J.)
`
`( dismissed); (ix) WAG Acquisition, LLC v. GameLinklnt '! Ltd. et al., No.
`
`2: 15-cv-3416 (D.N.J.) ( dismissed); and (x) WAG AcquisitionLLCv.
`
`WebPower, Inc. etal.,No. 2:15-cv-3581 (D.N.J.)(dismissed).
`
`The' 141 patent was subject to the following petitions for inter partes
`
`review: (i)FriendFinder Networks Inc. eta!. v. WAG AcquisitionL.L.C.,
`
`IPR2015-01037 (PTAB Oct. 19, 2015) (institution denied); (ii) WebPower v.
`
`WAG Acquisition LL. C., IPR2016-01238 (final written decision cancelling
`
`claims 10-23), remanded WAG Acquisition, LLCv. WebPower, Inc., 781 F.
`
`App'x 1007 (Fed. Cir. 2019).
`
`The Claims
`
`Claim 1 is illustrative of the claimed subject matter, and reproduced
`
`below with disputed limitations in italics:
`
`A method for distributing streaming media via a
`1.
`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, comprising
`providing a server programmed to receive requests from
`the user system for media data elements corresponding to
`specified serial identifiers and 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; and
`
`WAG, Exhibit 2017
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 4 of 10
`
`
`
`Appeal 2023-003319
`Reexamination Control 90/014 ,834
`Patent 8,122,141 B2
`
`providing a machine-readable medium accessible to said
`user, on which there
`has been recorded software for implementing am edia
`player for receiving and playing the streaming media on said
`user system, said software being programmed
`to cause the media player to maintain a record of the
`identifier of the last data element that has been received; and
`to transmit requests to the server to send one or more data
`elements, specifying the identifiers of the data elements, as said
`media player requires in order to maintain a sufficient number
`of media data elements in the media player for uninterrupted
`playback.
`
`REFERENCES
`
`US 6,389,473 Bl
`US 7,529,806Bl
`
`REJECTIONS
`Claims 1, 5, 8,24, and28standrejectedunder35U.S.C. § 102(e)as
`
`being anticipated by Carmel.
`
`Claims 1, 5, 8, 24, and28 stand rejected under 35 U. S.C. § 103(a) as
`
`being unpatentable over Carmel and Shteyn.
`
`OPINION
`
`§ 102 Rejection
`
`We are persuaded by Patent Owner's arguments ( Appeal Br. 13) that
`
`Carmel does not describe the limitation "providing a server programmed to
`
`receive requests from the user system for media data elements corresponding
`
`to specified serial identifiers," as recited in independent claim 1.
`
`WAG, Exhibit 2017
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 5 of 10
`
`
`
`Appeal 2023-003319
`Reexamination Control 90/014 ,834
`Patent 8,122,141 B2
`
`The Examiner found that: (i) Figure 6B of Carmel, in which client 30
`
`assesses rate of data transfer and changes the quality level accordingly; and
`
`(ii) Figure 3C of Carmel, which illustrates slider 55 with symbolsJ, J+ 1,
`
`J+2, ... N as indices for the slices of stream 40, collectively correspond to
`
`the limitation "providing a server programmed to receive requests from the
`
`user system for media data elements." (Final Act. 16-17; see also Ans. 3-
`
`4.) We do not agree with the Examiner's fin dings.
`
`Carmel relates to "network data communications, and specifically to
`real-time multimedia broadcasting over a network." (Col. 1, 11. 10-12.)
`
`Figure 2 of Carmel, reproduced below, illustrates a computer broadcast
`network( col. 5, 11. 43-44), which includes computer system 32 having
`
`transmitting computer 34, network server 36, network 28, and clients 30,
`(col. 6, 11. 24-31).
`
`rff -
`
`WAG, Exhibit 2017
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 6 of 10
`
`
`
`Appeal 2023-003319
`Reexamination Control 90/014 ,834
`Patent 8,122,141 B2
`
`Figure 2 illustrates a computer broadcast network.
`
`Figure 6B of Carmel, reproduced below, illustrates a flow chart for
`
`downloading broadcast data from server 36 to client 30. (Col. 6, 11. 7-9.)
`
`FIG. 6B
`
`Figure 6B illustrates a flow chart for downloading broadcast data from
`server 36 to client 30.
`
`WAG, Exhibit 2017
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 7 of 10
`
`
`
`Appeal 2023-003319
`Reexamination Control 90/014 ,834
`Patent 8,122,141 B2
`
`In reference to Figure 6B, Carmel explains that"[ r ]esponsive to the
`
`selection, server 36 begins to transmit data slices at the chosen quality level"
`
`( col. 11, 11. 5-7) and "client 30 makes an assessment of the rate of data
`
`transfer over the link from the server and, if necessary, changes the quality
`
`level accordingly" ( col. 11, 11. 9-11 ).
`
`Figure 3C of Carmel, reproduced below, illustrates a schematic
`
`representation of a user interface graphic "slider" 55. (Col. 8, 11. 18-19.)
`
`FIG. 3C
`
`56
`
`J J+1
`
`J+2
`
`J+,3
`
`• • • N
`
`55 -----
`
`58
`
`Figure 3C illustrates a user interface graphic slider 55.
`
`In reference to Figure 3C, Carmel explains that"[ s ]lider 55 ... includes a
`
`bar 56 and a movable indicator 58" and "[t]he symbolsJ, J+ 1, J+2, ... Nin
`
`the figure are the indices of the slices of stream 40 that are stored on server
`
`36, wherein N is the index of the most recent slice, andJ is the index of the
`
`earliest stored slice." (Col. 8, 11. 17-26.)
`
`Although the Examiner cited to: ( i) Figure 6B of Carmel, in which
`
`client 30 continuously assesses rate of data transfer and changes the quality
`
`level; and (ii) Figure 3C of Carmel, which illustrates indices as symbols J,
`
`J+ 1, J+2, ... N of the slices of stream 40, the Examiner has provided
`
`insufficient evidence to support a finding that Carmel describes the
`
`WAG, Exhibit 2017
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 8 of 10
`
`
`
`Appeal 2023-003319
`Reexamination Control 90/014 ,834
`Patent 8,122,141 B2
`
`limitation "providing a server programmed to receive requests from the user
`
`system for media data elements corresponding to specified serial
`
`identifiers." In particular, while Carmel explains that "client 30 makes an
`
`assessment of the rate of data transfer over the link from the server and, if
`
`necessary, changes the quality level accordingly" ( col. 11, 11. 9-11 ), the
`
`Examiner has not demonstrated that such changes in quality in Figure 6B are
`
`correlated to symbols J, J+ 1, J+2, ... N for bar 56, as required by claim 1.
`
`Accordingly, we are persuaded by Patent Owner's arguments as
`
`follows:
`
`Carmel actually discloses one circumstance-and one
`circumstance only-in which its player makes a request to its
`server to send an element, specifying to the server the serial ID
`of that element, and that is with regard to the first element of a
`requested stream. There is no evidence that there are any
`requests for any element after the first, separately or otherwise,
`let alone by serial ID. The only scenario disclosed in Carmel
`that would even concern an element requested by serial ID is
`the first element in a requested stream.
`(Appeal Br. 13.)
`
`Thus, we do not sustain the rejection of independent claim 1 under
`
`35U.S.C. § 102(e). Claims5,8,and28dependfromclaiml. Wedonot
`
`sustain the rejection of claims 5, 8, and28 under 35 U. S.C. § 102( e) for the
`
`same reasons discussed with respect to claim 1.
`
`Independent claim 24 recites limitations similar to those discussed
`
`with respect to independent claim 1. We do not sustain the rejection of
`
`claim 24, for the same reasons discussed with respect to claim 1.
`
`WAG, Exhibit 2017
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 9 of 10
`
`
`
`Appeal 2023-003319
`Reexamination Control 90/014 ,834
`Patent 8,122,141 B2
`
`§ 103 Rejection
`
`We do not sustain the rejection of claims 1, 5, 8, 24, and28 under
`
`35 U.S. C. § 103( a) over Carmel and Shteyn for the same reasons discussed
`
`previously withrespectto the rejection of claims 1, 5, 8, 24, and28 under
`
`35 U.S.C. § 102(e)as being anticipated by Carmel.
`
`DECISION SUMMARY
`
`In summary:
`II@iffitiJ
`ae·ected
`1,5,8,24,
`28
`1, 5, 8, 24,
`28
`Overall
`Outcome
`
`102(e)
`
`103(a)
`
`Carmel
`
`Carmel, Shteyn
`
`REVERSED
`
`1, 5, 8, 24,
`28
`1, 5, 8, 24,
`28
`1, 5, 8, 24,
`28
`
`PATENT OWNER:
`
`ERNESTD. BUFF
`ERNESTD. BUFF & ASSOCIATES
`231 SOMERVILLEROAD
`BEDMINSTER, NJ 07921
`
`THIRD PARTY REQUESTER:
`
`FRANKM. GASPARO
`VENABLELLP
`1290 A VENUE OF THE AMERICAS
`NEW YORK, NY 10104-3800
`
`WAG, Exhibit 2017
`Google LLC v. WAG Acquisition, LLC, IPR2022-01413
`Page 10 of 10
`
`
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