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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Google LLC,
`Petitioner,
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`v.
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`WAG Acquisition, L.L.C.,
`Patent Owner.
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`IPR2022-01413
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`U.S. Patent No. 9,762,636 B2
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`PETITIONER’S RESPONSE TO PATENT OWNER’S BRIEF
`REGARDING RELEVANCE OF DECISION ON APPEAL IN EX PARTE
`WAG ACQUISITION, APPEAL 2023-003319 (WAG ʼ141 Patent)
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`In its Brief in Support of Relevance of Decision on Appeal in Ex Parte WAG
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`Acquisition, Appeal 2023-003319 (Paper No. 27 (“Brief”)), Patent Owner WAG
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`Acquisition, LLC (“PO”) admits that the Decision on Appeal in Appeal 2023-
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`003319 (Exhibit 2017 (“’319 Reexam Decision”)) is distinguishable because “it
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`concerned different claim language.” (Brief at 1.) This is not the only reason that
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`the ’319 Reexam Decision is not relevant or persuasive to the analysis here. As an
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`initial matter, the ’319 Reexam Decision cannot be used against Google because
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`Google was not a party to Appeal 2023-003319 and did not have an opportunity to
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`present evidence or argument in that appeal or the underlying proceedings. Comair
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`Rotron, Inc. v. Nippon Densan, Corp., 49 F.3d 1535, 1537 (Fed. Cir. 1995) (party
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`asserting estoppel “must show that in the prior action the party against whom
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`estoppel is sought had a full and fair opportunity to litigate the issue”).
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`Most critically though, the Board’s ’319 Reexam Decision was narrowly
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`focused on a specific argument that differs from the arguments regarding the Carmel
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`prior art reference (Exhibit 1003) in this IPR. In particular, there the Board found
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`that the quality level assessment “diamond boxes” in Figure 6B of Carmel do not
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`meet the “providing a server programmed to receive requests from the user…”. (See
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`’319 Reexam Decision at 6, 8-9; Exhibit 1117 at 25-27 (summarizing the panel’s
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`understanding of the argument at issue).) The Board found that the examiner did not
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`sufficiently “demonstrate[] that such changes in quality in Figure 6B” (the
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`IPR2022-01413
`U.S. Patent No. 9,762,636 B2
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`“diamond boxes”) “are correlated to symbols J, J+1, J+2, . . . N for bar 56,” as
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`depicted in Figure 3C of Carmel and as required by claim 1 of the ʼ141 patent. (’319
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`Reexam Decision at 8-9 (emphasis added).) The paragraph PO cites from the ’319
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`Reexam Decision is thus in the context of analyzing only specific portions of those
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`figures from Carmel. (Id. at 9.) The ’319 Reexam Decision does not include any
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`analysis of any other figures, including Figures 6A and 3A, of Carmel. (See
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`generally id.)
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`Here, Google’s Petition (Paper No. 1 (“Petition”)) focuses on different figures
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`and different aspects of those figures. In particular, Google has presented evidence
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`explaining why the looping nature of Figure 6A of Carmel discloses claim limitation
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`1[c] of the ʼ636 patent, reciting “receiving requests at the server system via one or
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`more data connections over the Internet, for one or more of the media data elements
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`stored in the data structure[.]” (See, e.g., Petition at 28-29 (“in both options, Carmel
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`Figure 6A confirms this process is repeated for each slice”), 30-31, 40-43; Reply to
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`Patent Owner’s Response (Paper No. 13 (“Reply”)) at 10-18.) Google has further
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`explained how, contrary to PO’s assertions, Carmel discloses a client-controlled
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`system where “[p]referably, each segment or slice is contained in a separate,
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`respective file,” such as in Figure 3A, and slices are requested each loop in order to
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`support requesting separate files on separate links as shown in Figure 6A. (Reply at
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`IPR2022-01413
`U.S. Patent No. 9,762,636 B2
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`12-13 (quoting Carmel, 2:22-23); Petition at 12, 19-20.) Nothing in the ’319
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`Reexam Decision contradicts or even relates to these issues.
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`Google does not rely on the “diamond boxes” of Figures 6B (see Exhibit 1117
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`at 25:11-24), nor has Google limited its arguments to Figures 3C and 6B, to disclose
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`the limitations of the ʼ636 patent in this IPR. Instead, Google has presented different
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`arguments and different evidence that were not at issue in the ’319 Reexam Decision.
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`As such, the Board’s reasoning in the ’319 Reexam Decision—reviewing different
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`figures and disclosures of Carmel against different claim language—is not relevant
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`to the analysis here.
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`For at least these reasons, the Board in this IPR should give the ’319 Reexam
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`Decision little to no weight.
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`Dated: December 21, 2023
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, DC 20004
`Tel: (202) 842-7885
`Fax: (202) 842-7899
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`Respectfully submitted,
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`By:
`/Eamonn Gardner/
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` Eamonn Gardner
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` (Reg. No. 63,322)
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`-3-
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`Pursuant to 37 C.F.R. §§42.6(e)(4)(i) et seq., a complete copy of the attached
`PETITIONER’S RESPONSE TO PATENT OWNER’S BRIEF REGARDING
`RELEVANCE OF DECISION ON APPEAL IN EX PARTE WAG
`ACQUISITION, APPEAL 2023-003319 (WAG ʼ141 Patent) is being served via
`email on the 21st day of December 2023, upon Patent Owner’s appointed attorneys
`of record:
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`CERTIFICATE OF SERVICE
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`Ronald Abramson
`ron.abramson@listonabramson.com
`M. Michael Lewis
`michael.lewis@listonabramson.com
`Ari J. Jaffess
`ari.jaffess@listonabramson.com
`Gina K. Kim
`gina.kim@listonabramson.com
`LISTON ABRAMSON LLP
`405 Lexington Ave, 46th Floor
`New York, NY 10174
`Telephone: (212) 257-1630
`Facsimile: (914) 462-4175
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`Dated: December 21, 2023
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`COOLEY LLP
`ATTN: Patent Docketing
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, D.C. 20004
`Tel: (202) 842-7885
`Fax: (202) 842-7899
`
`
`
`
`/Eamonn Gardner/
`Eamonn Gardner
`(Reg. No. 63,322)
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`-4-
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