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`Case IPR2022-01413
`Patent 9,762,636
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
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`GOOGLE LLC,
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`Petitioner
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`v.
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`WAG ACQUISITION, LLC
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`Patent Owner
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`U.S. Pat. No. 9,762,636
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`
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`_______________________________________
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`Inter Partes Review Case No. IPR2022-01413
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`_______________________________________
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`PATENT OWNER’S BRIEF IN SUPPORT OF RELEVANCE OF DECISION
`ON APPEAL IN EX PARTE WAG ACQUISITION, APPEAL 2023-003319
`(WAG ’141 Patent)
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`Case IPR2022-01413
`Patent 9,762,636
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`LIST OF PATENT OWNER’S EXHIBITS
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`Exhibit
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`Description
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`2001
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`WAG Acquisition, LLC v. WebPower, Inc., 781 F. App’x 1007
`(Fed. Cir. 2019)
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`2002
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`Declaration of W. Leo Hoarty
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`2003
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`Declaration of Henry Houh (Ex. 1002 of IPR2022-01228)
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`2004
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`May 23, 2023, Deposition of Dr. Kevin Jeffay
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`2005
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`IETF RFC 2068
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`2006
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`May 25, 2023, Deposition of Dr. Nathaniel Polish
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`2007
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`2008
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`2009
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`2010
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`2011
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`Declaration of Dr. Nathaniel Polish, Emblaze Ltd. v. Apple Inc.,
`case no. 11-CV-01079 (N.D. Ca. Feb. 14, 2014)
`
`In re Certain Fitness Devices, Streaming Components Thereof,
`and System Containing Same, Inv. No. 337-TA-1265, Initial
`Determination (ITC, Sept. 9, 2022) (CALJ Clark S. Cheney)
`
`In re Certain Fitness Devices, Streaming Components Thereof,
`and System Containing Same, Inv. No. 337-TA-1265, Evidentiary
`Hearing – Volume III (ITC, March 14, 2022)
`
`Final Written Decision, WebPower v. WAG Acquisition, LLC,
`IPR2016-01238, Paper No. 22 (Dec. 26, 2017)
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`Final Written Decision on Remand, WebPower v. WAG
`Acquisition, LLC, IPR2016-01238, Paper No. 28 (July 16, 2020)
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`2012
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`Microsoft Computer Dictionary, Fifth ed. (excerpts)
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`2013
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`Redline comparison of claims of ’824 and ’636 patents
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`2014
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`Claim term concordance table
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`2015
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`IETF RFC 1945
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`–i–
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`Case IPR2022-01413
`Patent 9,762,636
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`2016
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`October 4, 2023, Deposition of Dr. Nathaniel Polish
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`2017*
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`Ex parte WAG Acquisition, LLC, Appeal 2023-003319, Reexam
`90/014,834, Decision on Appeal (PTAB November 17, 2023)
`(U.S. Patent No. 8,122,141)
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` Addressed herein.
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` *
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`–ii–
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`Case IPR2022-01413
`Patent 9,762,636
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`EX2017 is a PTAB appeals decision in a related case, the outcome of which,
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`though it concerned different claim language, turned on the panel’s reading of the
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`same prior art, Carmel (EX1003), with respect to the feature of repeated streaming
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`element requests, which the Petition asserts corresponds to the claims herein and is
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`taught by Carmel. The appeals panel read Carmel not to disclose that feature,
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`which reading aligns with Patent Owner’s arguments herein, and is inconsistent
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`with Petitioner’s.
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`The Petition relies on Carmel relative to limitations that require repeated
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`requests made by the client and received by the server, for successive individually
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`identified data elements comprising the desired media stream. See generally
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`Petition at 25-43. The appeals panel rejected the assertion that Carmel disclosed
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`such repeated client requests by serial ID. This Panel should take the other panel’s
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`analysis into account:
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`[W]e are persuaded by Patent Owner's arguments as follows:
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`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.)
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`Patent 9,762,636
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`Thus, we do not sustain the rejection of independent claim 1 under
`35U.S.C. § 102(e).
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`EX2017 at 9.
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`EX2017 confirms Patent Owner’s expert, Mr. Hoarty, that Carmel (EX1003)
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`does not teach repeated client requests for successive individually identified
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`elements. See EX2002 ¶¶ 53-69, 71-75, 84-94. Mr. Hoarty, referencing analysis by
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`others, as well as himself, came to the same conclusion. As there is no disclosure
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`anywhere in Carmel that supports a contrary interpretation, the record is
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`exceedingly strong that Carmel does not disclose streaming via successive
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`elements requests and is instead tailored throughout to a client-server system that
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`will perform continuous push streaming from the server.
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`Dated: December 14, 2023
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`Respectfully submitted,
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`/Ronald Abramson/
`Ronald Abramson
`(Attorney for Patent Owner)
`Reg. No. 34,762
`212-257-1630
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`–2–
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`Case IPR2022-01413
`Patent 9,762,636
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.205(b), the undersigned certifies that on December
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`14, 2023, a complete and entire copy of this Patent Owner’s Brief in Support of
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`Relevance of Decision on Appeal in Ex parte WAG Acquisition, Appeal 2023-
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`003319 (WAG ’141 Patent), and related exhibit thereto, was provided to the
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`Petitioner by filing through the Patent Trial and Appeal Case Tracking System and
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`via email, as authorized in Petitioner’s mandatory notices, by serving the following
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`email address:
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`Dated: December 14, 2023
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`egardner@cooley.com
`oarmon@cooley.com
`nsoni@cooley.com
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`Respectfully submitted,
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`/Ronald Abramson/
`Ronald Abramson
`(Attorney for Patent Owner)
`Reg. No. 34,762
`212-257-1630
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