`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`Google LLC,
`Petitioner,
`
`v.
`
`WAG Acquisition, L.L.C.,
`Patent Owner.
`
`
`
`IPR2022-01413
`
`U.S. Patent No. 9,762,636 B2
`
`
`
`
`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)
`
`
`
`
`
`
`
`
`In its Brief in Support of Relevance of Decision on Appeal in Ex Parte WAG
`
`Acquisition, Appeal 2023-003319 (Paper No. 27 (“Brief”)), Patent Owner WAG
`
`Acquisition, LLC (“PO”) admits that the Decision on Appeal in Appeal 2023-
`
`003319 (Exhibit 2017 (“’319 Reexam Decision”)) is distinguishable because “it
`
`concerned different claim language.” (Brief at 1.) This is not the only reason that
`
`the ’319 Reexam Decision is not relevant or persuasive to the analysis here. As an
`
`initial matter, the ’319 Reexam Decision cannot be used against Google because
`
`Google was not a party to Appeal 2023-003319 and did not have an opportunity to
`
`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
`
`asserting estoppel “must show that in the prior action the party against whom
`
`estoppel is sought had a full and fair opportunity to litigate the issue”).
`
`
`
`Most critically though, the Board’s ’319 Reexam Decision was narrowly
`
`focused on a specific argument that differs from the arguments regarding the Carmel
`
`prior art reference (Exhibit 1003) in this IPR. In particular, there the Board found
`
`that the quality level assessment “diamond boxes” in Figure 6B of Carmel do not
`
`meet the “providing a server programmed to receive requests from the user…”. (See
`
`’319 Reexam Decision at 6, 8-9; Exhibit 1117 at 25-27 (summarizing the panel’s
`
`understanding of the argument at issue).) The Board found that the examiner did not
`
`sufficiently “demonstrate[] that such changes in quality in Figure 6B” (the
`
`
`
`
`
`IPR2022-01413
`U.S. Patent No. 9,762,636 B2
`
`
`“diamond boxes”) “are correlated to symbols J, J+1, J+2, . . . N for bar 56,” as
`
`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
`
`Reexam Decision is thus in the context of analyzing only specific portions of those
`
`figures from Carmel. (Id. at 9.) The ’319 Reexam Decision does not include any
`
`analysis of any other figures, including Figures 6A and 3A, of Carmel. (See
`
`generally id.)
`
`Here, Google’s Petition (Paper No. 1 (“Petition”)) focuses on different figures
`
`and different aspects of those figures. In particular, Google has presented evidence
`
`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
`
`more data connections over the Internet, for one or more of the media data elements
`
`stored in the data structure[.]” (See, e.g., Petition at 28-29 (“in both options, Carmel
`
`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
`
`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
`
`
`
`
`
`-2-
`
`
`
`
`
`IPR2022-01413
`U.S. Patent No. 9,762,636 B2
`
`
`12-13 (quoting Carmel, 2:22-23); Petition at 12, 19-20.) Nothing in the ’319
`
`Reexam Decision contradicts or even relates to these issues.
`
`Google does not rely on the “diamond boxes” of Figures 6B (see Exhibit 1117
`
`at 25:11-24), nor has Google limited its arguments to Figures 3C and 6B, to disclose
`
`the limitations of the ʼ636 patent in this IPR. Instead, Google has presented different
`
`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
`
`figures and disclosures of Carmel against different claim language—is not relevant
`
`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.
`
`
`
`Dated: December 21, 2023
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, DC 20004
`Tel: (202) 842-7885
`Fax: (202) 842-7899
`
`
`Respectfully submitted,
`
`
`By:
`/Eamonn Gardner/
`
` Eamonn Gardner
`
` (Reg. No. 63,322)
`
`
`
`
`-3-
`
`
`
`
`
`
`
`
`
`
`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:
`
`
`CERTIFICATE OF SERVICE
`
`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
`
`
`
`
`
`
`
`
`
`Dated: December 21, 2023
`
`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)
`
`
`
`
`
`
`-4-
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`
`
`
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