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`Case IPR2022-01433
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`Patent 9,762,636
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
`
`AMAZON.COM, INC., AMAZON WEB SERVICES, INC., and
`AMAZON.COM SERVICES LLC,
`Petitioners
`v.
`WAG ACQUISITION, L.L.C.
`Patent Owner
`U.S. Pat. No. 9,762,636
`
`_______________________________________
`
`Inter Partes Review Case No. IPR2022-01433
`_______________________________________
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`PATENT OWNER’S NOTICE OF APPEAL
`
`via P-TACTS
`Patent Trial and Appeal Board
`
`via USPS Priority Mail Express®
`Director of the United States Patent and Trademark Office
`c/o Office of the Solicitor
`United States Patent and Trademark Office
`Mail Stop 8
`P.O. Box 1450, Alexandria, Virginia 22313-1450
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`via CM/ECF
`United States Court of Appeals for the Federal Circuit
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`
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`Case IPR2022-01433
`
`Patent 9,762,636
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`Pursuant to 35 U.S.C. §§ 141(c), 142, 319 and 37 C.F.R. §§ 90.2(a), 90.3(a),
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`notice is hereby given that Patent Owner WAG ACQUISITION, L.L.C., (“Patent
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`Owner”) hereby appeals to the United States Court of Appeals for the Federal
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`Circuit from the Final Written Decision of the Patent Trial and Appeal Board,
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`entered on February 15, 2024, in case IPR2022-01433, Paper 26 (a copy of which
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`is attached as Appendix A), and from all underlying findings, orders, decisions,
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`rulings, and opinions. This notice is timely filed within 63 days of the February 15,
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`2024 Final Written Decision, Paper 26. 37 C.F.R. § 90.3.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Patent Owner indicates that the
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`issues on appeal include, but are not limited to, the Board’s determinations with
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`respect to (i) claim construction, (ii) teachings of the asserted art, (iii) expert
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`testimony, (iv) patentability of claims 1-12 of U.S. Patent No. 9,762,636 over the
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`asserted art, and (v) its findings supporting or relating to the aforementioned
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`issues, and inconsistent determinations by the Board in the related, co-pending
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`cases now being appealed by Patent Owner. Patent Owner also indicates that the
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`issues on appeal include any other issues decided adversely to Patent Owner in any
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`orders, decisions, rulings, or opinions issued in the IPR proceeding.
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`A copy of this Notice of Appeal is being filed with the Patent Trial and Appeal
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`Board as well as with the Director of the United States Patent and Trademark
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`Office in accordance with 37 C.F.R. § 90.2(a)(1). In addition, this Notice of Appeal
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`Case IPR2022-01433
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`Patent 9,762,636
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`and the required fee are being submitted to the Clerk’s Office for the United States
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`Court of Appeals for the Federal Circuit.
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`Dated: March 28, 2024
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`By: /Ronald Abramson/
`Ronald Abramson
`
`By: /s/ Ronald Abramson
`Ronald Abramson
`
`(Lead Counsel)
`Reg. No. 34,762
`Liston Abramson LLP
`405 Lexington Ave., 46th Floor
`New York, NY, 10174
`Telephone: 212-257-1643
`ron.abramson@listonabramson.com
`
`Attorney for Patent Owner
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`–2–
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`Case IPR2022-01433
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`Patent 9,762,636
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies that on March 28, 2024, a true and correct
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`copy of the above-captioned “Patent Owner’s Notice of Appeal” was filed
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`electronically through the Patent Trial and Appeal Case Tracking System
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`(P-TACTS) and was filed in paper with the Director of the United States Patent and
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`Trademark office c/o the Office of the Solicitor via USPS Priority Mail Express®
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`to the following address:
`
`Office of the Solicitor
`United States Patent and Trademark Office
`Mail Stop 8
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`
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`CERTIFICATE OF FILING
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`The undersigned hereby also certifies that on March 28, 2024, a true and correct
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`copy of the above-captioned “Patent Owner’s Notice of Appeal” was filed
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`electronically with the Clerk’s Office of the United States Court of Appeals for the
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`Federal Circuit via CM/ECF, along with a copy of the Final Written Decision
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`(Paper 26). The undersigned hereby further certifies that the above-captioned
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`“Patent Owner’s Notice of Appeal” was served in its entirety on March 28, 2024,
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`upon the following counsel of record for the Petitioners via electronic mail:
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`J. David Hadden
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`dhadden@fenwick.com
`
`Saina Shamilov
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`sshamilov@fenwick.com
`
`Brian Hoffman
`FENWICK & WEST LLP
`555 California Street, 12th Floor
`San Francisco, CA 94014
`bhoffman@fenwick.com
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`Dated: March 28, 2024
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`Case IPR2022-01433
`Patent 9,762,636
`Johnathan Chai
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`jchai@fenwick.com
`
`Johnson Kuncheria
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`jkuncheria@fenwick.com
`
`Kevin X. McGann
`FENWICK & WEST LLP
`902 Broadway, 18th Floor
`New York, NY 10010
`kmcgann@fenwick.com
`
`By: /Ronald Abramson/
`Ronald Abramson
`
`By: /s/ Ronald Abramson
`Ronald Abramson
`
`(Lead Counsel)
`Reg. No. 34,762
`Liston Abramson LLP
`405 Lexington Ave., 46th Floor
`New York, NY, 10174
`Telephone: 212-257-1643
`ron.abramson@listonabramson.com
`
`Attorney for Patent Owner
`
`–2–
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`Case IPR2022-01433
`Case IPR2022-01433
`Patent 9,762,636
`Patent 9,762,636
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`Appendix A
`Appendix A
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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 26
`Date: February 15, 2024
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMAZON.COM, INC., AMAZON WEB SERVICES, INC.,
`and AMAZON.COM SERVICES LLC,
`Petitioner,
`
`v.
`
`WAG ACQUISITION, L.L.C.,
`Patent Owner.
`____________
`
`IPR2022-01433
`Patent 9,762,636 B2
`____________
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`
`
`
`Before HUBERT C. LORIN, JOHN A. HUDALLA, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`AMUNDSON, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
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`IPR2022-01433
`Patent 9,762,636 B2
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`
`I. INTRODUCTION
`Amazon.com, Inc., Amazon Web Services, Inc., and Amazon.com
`Services LLC (collectively “Petitioner”) filed a Petition requesting an inter
`partes review of claims 1–12 in U.S. Patent No. 9,762,636 B2
`(Exhibit 1001, “the ’636 patent”) under 35 U.S.C. §§ 311–319. Paper 2
`(“Pet.”). WAG Acquisition, L.L.C. (“Patent Owner”) filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”).
`In the Institution Decision, we instituted review based on all
`challenged claims and all challenges included in the Petition. Paper 7
`(“Inst. Dec.”). We have jurisdiction under 35 U.S.C. § 6. We issue this
`Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For
`the reasons explained below, Petitioner has shown by a preponderance of the
`evidence that claims 1–12 in the ’636 patent are unpatentable. See 35 U.S.C.
`§ 316(e) (2018).
`
`II. BACKGROUND
`A. Procedural History
`After we instituted review, Patent Owner filed a Response (Paper 11,
`“Resp.”), Petitioner filed a Reply (Paper 15, “Reply”), and Patent Owner
`filed a Sur-reply (Paper 16, “Sur-reply”). On December 12, 2023, we held
`an oral hearing, and the record includes the hearing transcript. Paper 25
`(“Tr.”).
`
`B. Real Parties in Interest
`Petitioner identifies the following real parties in interest:
`Amazon.com, Inc., Amazon Web Services, Inc., and Amazon.com Services
`LLC. Pet. 1. Patent Owner identifies itself as the sole real party in interest.
`Paper 4, 2. The parties do not raise any issue about real parties in interest.
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`C. Related Matters
`Petitioner and Patent Owner identify the following civil actions where
`Patent Owner has asserted the ’636 patent and related patents against
`Petitioner and other alleged infringers:
`• WAG Acquisition, L.L.C. v. Amazon.com, Inc. et al.,
`No. 6:21-cv-00815 (W.D. Tex. filed Aug. 6, 2021);
`• WAG Acquisition, L.L.C. v. Google LLC et al., No.
`6:21-cv-00816 (W.D. Tex. filed Aug. 6, 2021); and
`• WAG Acquisition, L.L.C. v. The Walt Disney Company et
`al., No. 2:21-cv-08230 (C.D. Cal. filed Oct. 18, 2021).
`Pet. 1–2; Paper 4, 2.
`Petitioner and Patent Owner identify the following Board proceedings
`as related matters involving the ’636 patent or a related patent asserted
`against Petitioner in a civil action:
`• The Walt Disney Company et al. v. WAG Acquisition,
`L.L.C., IPR2022-01227 (U.S. Patent No. 9,762,636 B2);
`• The Walt Disney Company et al. v. WAG Acquisition,
`L.L.C., IPR2022-01228 (U.S. Patent No. 9,742,824 B2);
`• The Walt Disney Company et al. v. WAG Acquisition,
`L.L.C., IPR2022-01346 (U.S. Patent No. 9,729,594 B2);
`• Google LLC v. WAG Acquisition, L.L.C., IPR2022-01411
`(U.S. Patent No. 9,729,594 B2);
`• Google LLC v. WAG Acquisition, L.L.C., IPR2022-01412
`(U.S. Patent No. 9,742,824 B2);
`• Google LLC v. WAG Acquisition, L.L.C., IPR2022-01413
`(U.S. Patent No. 9,762,636 B2);
`• Amazon.com, Inc. et al. v. WAG Acquisition, L.L.C.,
`IPR2022-01429 (U.S. Patent No. 9,729,594 B2); and
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`• Amazon.com, Inc. et al. v. WAG Acquisition, L.L.C.,
`IPR2022-01430 (U.S. Patent No. 9,742,824 B2).
`Pet. 5; Paper 4, 4–5; Prelim. Resp. 5.
`Additionally, Petitioner and Patent Owner identify numerous civil
`actions and Office proceedings involving patents related to the ’636 patent,
`e.g., U.S. Patent No. 8,122,141 B2 (Exhibit 1015). Pet. 2–4; Paper 4, 2–8.
`D. The ’636 Patent (Exhibit 1001)
`The ’636 patent, titled “Streaming Media Delivery System,” issued
`on September 12, 2017, from an application filed on October 3, 2016.
`Ex. 1001, codes (22), (45), (54). The patent identifies that application as the
`latest in a series of continuation and continuation-in-part applications that
`started with an application filed on March 28, 2001. Id. at 1:6–22,
`code (63). The patent claims priority to a provisional application filed on
`September 12, 2000. Id. at 1:22–28, code (60). The patent states that the
`invention relates to “systems and methods for delivering streaming media,
`such as audio and video, on the Internet.” Id. at 1:52–55; see id. at
`code (57).
`The ’636 patent describes problems with conventional streaming
`technologies. See Ex. 1001, 2:34–3:41. As an example, “users viewing or
`listening to streaming content over Internet connections often encounter
`interruptions,” called “dropouts,” due to “unanticipated transmission delays
`and losses that are inherent in many Internet protocols.” Id. at 2:34–40; see
`id. at 5:25–32. Conventional streaming technologies employ “a pre-
`buffering technique to store up enough audio or video data in the user’s
`computer so that it can play the audio or video with a minimum of
`dropouts.” Id. at 2:42–45. But this “process requires the user to wait until
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`enough of the media file is buffered in memory before listening or viewing
`can begin,” e.g., to wait “from ten to twenty seconds or more.” Id.
`at 2:45–47, 2:53–54.
`As another example, the “audio or video data is delivered from the
`source at the rate it is to be played out.” Ex. 1001, 2:63–65; see id. at
`5:60–65, 6:8–12, 8:64–67. Because “transmission of audio/video media data
`to the user takes place at the rate it is played out, the user’s buffer level can
`never be increased or replenished while it is playing” if Internet slowdowns
`or gaps cause the user’s buffer level to decrease from its initial level. Id.
`at 3:5–11; see id. at 10:34–35. “In time, extended or repeated occurrences
`of these gaps empty the user’s buffer.” Id. at 3:11–13; see id. at 3:34–35.
`When that occurs, the “audio/video material stops playing, and the buffer
`must be refilled to” its initial level before playing resumes. Id. at 3:13–15;
`see id. at 3:35–40.
`The ’636 patent identifies a need for “improved systems and methods
`for delivering streaming content over the Internet” that:
`(1)
`“facilitate continuous transmission of streaming content”;
`(2)
`“respond on demand without objectionable buffering
`delay”; and
`“perform without disruption or dropouts.”
`(3)
`Ex. 1001, 3:45–50.
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`Figure 1 in the ’636 patent (reproduced below) depicts a system for
`delivering streaming content over the Internet:
`
`
`Figure 1 illustrates a streaming system including server 12 with server
`buffer 14 and buffer manager 16 and at least one user computer 18 with user
`buffer 20 and buffer manager 22. Ex. 1001, 4:23–25, 6:32–37, 6:48–59,
`Fig. 1. Server 12 and user computer 18 communicate “via the Internet 10
`or other data communications medium.” Id. at 6:48–51.
`Server buffer 14 stores time-sequenced data elements. Ex. 1001,
`6:30–36. Server buffer 14 “is filled the first time the media source
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`connection is established or a disk file is read.” Id. at 8:1–2. “Once server
`buffer 14 is full, for each new data element received into the buffer the
`oldest data element is deleted (or displaced) from the buffer.” Id. at 8:7–9.
`After user computer 18 connects to server 12, the server “sends the
`media data to the user computer” at “a rate faster than the playback rate,
`which may be the highest rate that the data connection between the server
`and the user computer will support, or any lower rate that is a higher rate
`than the playback rate.” Ex. 1001, 8:13–20; see id. at 8:59–63, 9:36–39,
`14:60–62. Server 12 provides data elements at that rate until “the
`predetermined amount of data that had been stored in the server buffer has
`been transferred to” the user computer buffer. Id. at 8:20–22. After
`transferring the contents of the server buffer to the user computer buffer and
`reaching a steady-state condition, each data element “is immediately sent out
`to the user computer” when it arrives at the server. Id. at 8:23–26.
`If, however, the user computer buffer “begins to deplete or becomes
`depleted due to networking interruptions, the server will attempt to send as
`much data as is necessary to rebuild” the user computer buffer “to the proper
`level, again at higher than a playback rate.” Ex. 1001, 10:22–27. This
`permits rebuilding of the user computer buffer “under circumstances
`wherein Internet interruptions have blocked the normal flow of data.” Id.
`at 10:27–29.
`A “data communications transport mechanism,” such as the
`Transmission Control Protocol (TCP), “may be used for the reliable delivery
`of data in an ordered sequence from the source of the media data to the
`server, or from the server to the media player software of the user
`computer.” Ex. 1001, 8:36–40. “Resending missing data is the
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`responsibility of the reliable transport mechanism.” Id. at 8:40–41. “The
`server buffer 14 ‘sends’ data by delivering it to the transport mechanism.”
`Id. at 8:41–43. “The transport mechanism actually manages transmission of
`the data across the communications medium, and has processes to determine
`if all the data that has been sent has been received by the destination.” Id.
`at 8:43–46.
`“All media data to be delivered to a user computer may be sent at a
`higher than playback rate, either by the server buffer 14 passing media data
`to the transport mechanism, or by the transport mechanism delivering or
`redelivering the media data to the user computer.” Ex. 1001, 8:59–63.
`The ’636 patent describes an embodiment where the “server buffer
`manager, or the media source, provides for sequentially numbering the
`media data elements.” Ex. 1001, 14:42–45. The “server buffer manager
`does not maintain a pointer into the server buffer for each user.” Id.
`at 14:45–47. Rather, “the media player buffer manager in the user computer
`maintains a record of the serial number of the last data element that has been
`received.” Id. at 14:47–49.
`To initiate streaming, the “user computer transmits a request to the
`server to send one or more data elements, specifying the serial numbers of
`the data elements.” Ex. 1001, 14:51–53. The “server responds by sending
`the requested data elements, and depends upon the reliable transmission
`protocol to assure delivery.” Id. at 14:53–56. The “user computer then
`continues with additional data requests for the duration of playing the audio/
`video material.” Id. at 14:56–58. “In this manner, the user computer, not
`the server, maintains the record of the highest data element number stored in
`the user computer buffer.” Id. at 14:58–60. The “media data will be
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`transmitted to the user computer as fast as the data connection between the
`user computer and the server will allow.” Id. at 14:60–62.
`In the embodiment where the user computer transmits requests to
`the server for data elements and specifies the serial numbers of the requested
`data elements, the server provides “a buffer manager and a [first-in, first-out]
`FIFO buffer.” Ex. 1001, 14:62–64. The server also provides means for
`(1) “receiving the sequentially numbered media data elements from a
`broadcast media source or a file based media source” and (2) “storing those
`data elements in the FIFO buffer.” Id. at 14:62–67.
`In the embodiment where the user computer transmits requests to
`the server for data elements and specifies the serial numbers of the requested
`data elements, the server buffer manager comprises means for the following:
`(1)
`“receiving the media data”;
`(2)
`“supplying media data in order to the FIFO buffer”;
`(3)
`“supplying the FIFO buffer with a predetermined number
`of data elements”; and
`“deleting the oldest data element in the buffer as each
`new data element is received” once “the FIFO buffer is
`full.”
`Ex. 1001, 14:67–15:5. The server buffer manager attempts to maintain the
`predetermined number of data elements in the FIFO buffer. Id. at 15:6–7.
`In the embodiment where the user computer transmits requests to
`the server for data elements and specifies the serial numbers of the requested
`data elements, the user computer is “associated with a media player software
`incorporating a user buffer.” Ex. 1001, 15:9–10. Further, the user computer
`comprises means for the following:
`
`(4)
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`(1)
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`“receiving and storing a predetermined number of media
`data elements which are received sequentially by the
`media player”;
`“playing the data out sequentially as audio and/or video”;
`and
`“deleting media data elements from the buffer as they are
`played out.”
`Id. at 15:9–15. “As data is played out, the next sequential data elements are
`requested from the server in such a fashion as to approximately maintain
`the predetermined number of data elements in the user’s buffer.” Id.
`at 15:15–18.
`
`(2)
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`(3)
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`E. The Challenged Claims
`Petitioner challenges independent method claim 1, claims 2–4 that
`depend directly or indirectly from claim 1, independent system claim 5,
`claims 6–8 that depend directly or indirectly from claim 5, independent
`computer-program-product claim 9, and claims 10–12 that depend directly
`or indirectly from claim 9. Pet. 6, 8, 12–63. Claims 1 and 9 exemplify the
`challenged claims and read as follows (with formatting added for clarity and
`with bracketed numbers and letters added for reference purposes):1
`1. [1.a] 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:
`[1.b] 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;
`[1.c] upon receipt of the stream by the server system,
`
`
`1 We use the same numbers and letters that Petitioner uses to identify the
`claim language. See Pet. 18–58.
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`supplying, at the server system, media data
`elements representing the program, each media data
`element comprising a digitally encoded portion of the
`program and having a playback rate,
`[1.d] serially identifying the media data elements,
`said serial identification indicating a time sequence of the
`media data elements, and
`[1.e] storing the media data elements in a data
`structure under the control of the server system;
`[1.f] 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, each received
`request specifying one or more serial identifiers of the
`requested one or more media data elements, each received
`request originating from a requesting user system of a plurality
`of user systems; and
`[1.g] responsive to the requests, sending, by the server
`system, the one or more media data elements having the one or
`more specified serial identifiers, to the requesting user systems
`corresponding to the requests;
`wherein
`[1.h] the data connection between the server system and
`each requesting user system has a data rate more rapid than the
`playback rate of the one or more media data elements sent via
`that connection;
`[1.i] each sending is at a transmission rate as fast as the
`data connection between the server system and each requesting
`user system allows;
`[1.j] the one or more media data elements sent are
`selected without depending on the server system maintaining a
`record of the last media data element sent to the requesting user
`systems;
`[1.k] all of the media data elements that are sent by the
`server system to the plurality of user systems are sent in
`response to the requests; and
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`[1.l] all of the media data elements that are sent by the
`server system to the requesting user systems are sent from the
`data structure under the control of the server system as the
`media data elements were first stored therein.
`9. [9.a] A computer program product for distributing a live
`audio or video program over the Internet from a server system
`comprising at least one computer to a plurality of user systems,
`the computer program product comprising a non-transitory
`computer readable storage medium having program instructions
`embodied therewith, the program instructions comprising:
`[9.b] instructions executable to cause one of the at least
`one computers to receive a continuous digitally encoded stream
`for the audio or video program, via a data connection from a
`live source, in real time;
`[9.c] instructions executable to cause one of the at least
`one computers, upon receipt of the stream by the server system,
`to supply, at the server system, media data
`elements representing the program, each media data
`element comprising a digitally encoded portion of the
`program and having a playback rate,
`[9.d] to serially identify the media data elements,
`said serial identification indicating a time sequence of the
`media data elements, and
`[9.e] to store the media data elements in a data
`structure under the control of the server system;
`[9.f] instructions executable to cause one of the at least
`one computers to receive 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 in [sic] the data structure,
`each received request specifying one or more serial identifiers
`of the requested one or more media data elements, each
`received request originating from a requesting user system
`of a plurality of user systems; and
`[9.g] instructions executable to cause one of the at least
`one computers to send, responsive to the requests, the one or
`more media data elements having the one or more specified
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`IPR2022-01433
`Patent 9,762,636 B2
`
`
`Carmel
`
`serial identifiers, to the requesting user systems corresponding
`to the requests;
`wherein,
`[9.h] the data connection between the server system and
`each requesting user system has a data rate more rapid than the
`playback rate of the one or more media data elements sent via
`that connection;
`[9.i] each sending is at a transmission rate as fast as the
`data connection between the server system and each requesting
`user system allows;
`[9.j] the one or more media data elements sent are
`selected without depending on the server system maintaining a
`record of the last media data element sent to the requesting user
`systems;
`[9.k] all of the media data elements that are sent by the
`server system to the plurality of user systems are sent in
`response to the requests; and
`[9.l] all of the media data elements that are sent by the
`server system to the requesting user systems are sent from the
`data structure under the control of the server system as the
`media data elements were first stored therein.
`Ex. 1001, 16:28–17:8, 18:10–65.
`F. The Asserted References
`For its challenge, Petitioner relies on the following references:
`Name
`Reference
`Exhibit
`US 6,389,473 B1, issued May 14, 2002
`(based on an application filed March 24, 1999)
`M.H. Willebeek-LeMair et al., Bamba–Audio and
`Video Streaming over the Internet, IBM Journal
`of Research and Development, Vol. 42, No. 2,
`269–80 (March 1998)
`
`Willebeek
`
`1005
`
`1006
`
`13
`
`
`
`IPR2022-01433
`Patent 9,762,636 B2
`
`
`Name
`
`Feig2
`
`Exhibit
`
`1031
`
`Reference
`US 6,175,862 B1, issued January 16, 2001
`(based on an application filed June 17, 1998)
`Pet. 7–8. Petitioner asserts that Carmel and Feig qualify as prior art “under
`at least 35 U.S.C. § 102(e)” and that Willebeek qualifies as prior art “under
`at least 35 U.S.C. § 102(b).” Id. at 7; see 35 U.S.C. § 102(b), (e) (2006). 3
`Patent Owner does not dispute that each reference qualifies as prior
`art. See, e.g., Resp. 18–61; Sur-reply 6–18.
`G. The Asserted Challenge to Patentability
`Petitioner asserts the following challenge to patentability:
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–12
`103(a)
`Carmel, Feig, Willebeek
`Pet. 8, 18–63.
`
`H. Testimonial Evidence
`To support its challenge, Petitioner relies on the declaration of Kevin
`Jeffay, Ph.D. (Exhibit 1002). Dr. Jeffay states, “I have been asked by the
`parties requesting this review, Amazon.com, Inc., Amazon Web Services,
`Inc., and Amazon.com Services LLC (collectively ‘Petitioner’) to analyze
`U.S. Patent No. 9,762,636” and “to provide my opinions regarding the
`patentability of claims 1–12 of the ’636 patent.” Ex. 1002 ¶ 1. Dr. Jeffay
`
`
`2 Petitioner refers to this patent by the name of the inventor listed second.
`For consistency, we follow the same convention.
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`125 Stat. 284 (2011), amended 35 U.S.C. § 102 and § 103 effective
`March 16, 2013. Because the effective filing date of the challenged claims
`predates the AIA’s amendments to § 102 and § 103, this decision refers to
`the pre-AIA versions of § 102 and § 103.
`14
`
`
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`IPR2022-01433
`Patent 9,762,636 B2
`
`also states, “I received a Ph.D. in computer science from the University of
`Washington in 1989” and before that “received a M.Sc. degree in computer
`science from the University of Toronto in 1984, and a B.S. degree with
`Highest Distinction in mathematics from the University of Illinois at
`Urbana-Champaign in 1982.” Id. ¶ 4.
`Further, Petitioner relies on the declaration of Rachel J. Watters
`to establish the authenticity and public availability of Willebeek
`(Exhibit 1007). Ms. Watters states, “I have a master’s degree in Library
`and Information Studies from the University of Wisconsin-Madison.”
`Ex. 1007, 1. Ms. Watters also states, “I have worked as a librarian at the
`University of Wisconsin library system since 1998, starting as a graduate
`student employee in the Kurt F. Wendt Engineering Library and WTS, then
`as a librarian in Interlibrary Loan at Memorial Library.” Id.
`To support its positions, Patent Owner relies on the Declaration of
`W. Leo Hoarty (Exhibit 2007). Mr. Hoarty states, “I have been retained
`by counsel for” Patent Owner to “provide opinions on certain issues in
`connection with” the ’636 patent. Ex. 2007 ¶ 2. Mr. Hoarty also states,
`“I have approximately 40 years of experience in the field of” the ’636 patent,
`including “multimedia computer communications systems, and more
`particularly delivering streaming media, such as audio and video, on the
`internet (which started to become a widespread practice beginning nearly
`30 years ago).” Id. ¶ 5.
`Additionally, Petitioner submits Mr. Hoarty’s deposition testimony,
`and Patent Owner submits Dr. Jeffay’s deposition testimony. See Ex. 1033
`(Aug. 3, 2023, Hoarty Dep. Tr.); Ex. 2010 (May 23, 2023, Jeffay Dep. Tr.).
`
`15
`
`
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`IPR2022-01433
`Patent 9,762,636 B2
`
`
`Patent Owner also submits the following testimonial evidence:
`• July 8, 2022, Declaration of Henry Houh, Ph.D. in
`IPR2022-01228 (Exhibit 2008);4
`• May 25, 2023, Deposition Transcript of Dr. Nathaniel
`Polish in IPR2022-01411, IPR2022-01412, and IPR2022-
`01413 (Exhibit 2011);5
`• March 14, 2022, Evidentiary Hearing Transcript
`(Volume III) in In re Certain Fitness Devices, Streaming
`Components Thereof, and Systems Containing Same,
`International Trade Commission Investigation No. 337-
`TA-1265 (the “ITC investigation”) (Exhibit 2013);6
`• March 19, 2019, Declaration of Kevin Jeffay, Ph.D.
`in Avi Networks, Inc. v. Citrix Systems, Inc.,
`IPR2019-00845, addressing claims in U.S. Patent
`No. 9,148,493 B2 (Exhibit 2020);7
`• April 10, 2023, Deposition Transcript of Dr. Henry Houh
`in IPR2022-01227 and IPR2022-01228 (Exhibit 2021);8
`
`
`4 In IPR2022-01227, IPR2022-01228, and IPR2022-01346, the petitioner
`retained Dr. Houh to provide opinions about the patentability of the
`challenged claims.
`5 In IPR2022-01411, IPR2022-01412, and IPR2022-01413, the petitioner
`retained Dr. Polish to provide opinions about the patentability of the
`challenged claims.
`6 The ITC investigation did not involve the ’636 patent or a related patent.
`As explained below, Dr. Jeffay testified about Carmel in the ITC
`investigation. See infra § III.E.
`7 In IPR2019-00845, the petitioner retained Dr. Jeffay to provide opinions
`about the patentability of the challenged claims.
`8 Patent Owner contends that Dr. Houh’s deposition transcript “was not
`submitted for the truth of his testimony, but to note the positions he took.”
`Sur-reply 7.
`
`16
`
`
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`IPR2022-01433
`Patent 9,762,636 B2
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`
`• August 22, 2022, Declaration of Kevin Jeffay, Ph.D. in
`this proceeding (Exhibit 2636) (copy of Exhibit 1002 in
`this proceeding);9 and
`• August 22, 2022, Declaration of Kevin Jeffay, Ph.D. in
`IPR2022-01430 (Exhibit 2824).10
`I. Burden
`In an inter partes review, a petitioner bears the burden of persuasion
`to prove “unpatentability by a preponderance of the evidence.” Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015) (quoting 35 U.S.C. § 316(e)); see 37 C.F.R. § 42.1(d) (2023).
`III. PATENTABILITY ANALYSIS
`A. Legal Principles: Obviousness
`A patent may not be obtained “if the differences between the subject
`matter sought to be patented and the prior art are such that the subject matter
`as a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`35 U.S.C. § 103(a) (2006). An obviousness analysis involves underlying
`factual inquiries including (1) the scope and content of the prior art;
`(2) differences between the claimed invention and the prior art; (3) the level
`of ordinary skill in the art; and (4) where in evidence, objective indicia of
`nonobviousness, such as commercial success, long-felt but unsolved needs,
`and failure of others.11 Graham v. John Deere Co., 383 U.S. 1, 17−18, 35–
`
`
`9 Patent Owner does not cite Exhibit 2636 in the Response or the Sur-reply.
`See, e.g., Resp. 18–61; Sur-reply 6–18.
`10 Patent Owner does not cite Exhibit 2824 in the Response or the Sur-reply.
`See, e.g., Resp. 18–61; Sur-reply 6–18.
`11 The record does not include evidence or argument regarding objective
`indicia of nonobviousness.
`
`17
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`
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`IPR2022-01433
`Patent 9,762,636 B2
`
`36 (1966); Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1047–48
`(Fed. Cir. 2016) (en banc). When evaluating a combination of references,
`an obviousness analysis should address “whether there was an apparent
`reason to combine the
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