`U.S. Patent Nos. 9,742,824 and 9,762,636
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`------------------
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`AMAZON.COM, INC., AMAZON WEB SERVICES, INC.,
`AND AMAZON.COM SERVICES LLC.,
`
`Petitioners,
`
`v.
`
`WAG ACQUISITION, L.L.C.,
`
`Patent Owner.
`
`------------------
`
`Case IPR2022-01430
`U.S. Patent Nos. 9,742,824
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`DECLARATION OF W. LEO HOARTY
`
`
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`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`WAG, Exhibit 2007
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 1 of 61
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`
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`Ex. 2007 for IPR2022-01430 and IPR2022-01433, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`
`Table of Contents
`
`
`
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`QUALIFICATIONS .............................................................................................. 2
`MATERIALS REVIEWED ................................................................................... 4
`UNDERSTANDINGS AS TO LEGAL ISSUES ................................................... 5
`LEVEL OF SKILL IN THE ART .......................................................................... 6
`CLAIMS ................................................................................................................ 7
`Background of the ’824 and ’626 Patents ........................................................... 7
`Prior PTAB History ..........................................................................................12
`OVERVIEW OF THE PRINCIPAL REFERENCE (CARMEL) ..........................23
`THE PETITION’S ASSERTIONS REGARDING CARMEL...............................30
`Limitation j (no server dependency on record of last sent element) ...................34
`made by their respective serial IDs) ..................................................................36
`Limitation h (“rate” limitation) .........................................................................37
`APPENDIX A – CURRICULUM VITAE ............................................................44
`Professional Summary ...............................................................44
`Technology Summary ................................................................44
`Expert Witness Summary ..........................................................45
`Validity .................................................................................................................52
`My Understandings as to Claim Construction ...................................................52
`My Understandings as to Anticipation ..............................................................52
`My Understandings as to Obviousness ..............................................................54
`APPENDIX C – Materials Considered .................................................................57
`
`APPENDIX B – Understandings as to Rules of Claim Construction and Patent
`
`OVERVIEW OF THE ’824/’626 DISCLOSURE AND THE CHALLENGED
`
`Limitation k (all elements sent were sent responsive to the requests that were
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`WAG, Exhibit 2007
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 2 of 61
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`Ex. 2007 for IPR2022-01430 and IPR2022-01433, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`
`1. I, W. LEO HOARTY, declare the following:
`
`
`
`
`2. I have been retained by counsel for Patent Owner, WAG Acquisition,
`
`L.L.C. (“WAG” or “Patent Owner”), to provide opinions on certain issues in
`
`connection with U.S. Patent Nos. 9,742,824 (the ’824 patent) and 9,762,636 (the
`
`“’636 patent”).1
`
`3. I am being compensated at a normal hourly rate for my time in preparing
`
`this declaration, with reimbursement for actual expenses. My compensation is not
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`contingent on the outcome of this matter, or on the substance of my opinions.
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`4. I have been informed that WAG is a real-party-in-interest to the Petition. I
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`have no financial interest in WAG. Nor do I have any financial interest in any of
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`the Petitioners.
`
`
`1 This declaration addresses both the ’824 (pre-recorded media) and ’636 (live
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`media) patent, which share a common disclosure. Unless otherwise noted, (i)
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`column and line citations are to the ’824 patent, and (ii) arguments herein with
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`respect to the ’824 patent should be understood as also applying to the ’636 patent.
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`The claims differ between the two patents to the extent shown by the redline
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`comparison in Ex. 2015.
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`WAG, Exhibit 2007
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 3 of 61
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`Ex. 2007 for IPR2022-01430 and IPR2022-01433, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`
`QUALIFICATIONS
`5. I have approximately 40 years of experience in the field of the ’824 and
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`’636 patents, including multimedia computer communications systems, and more
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`particularly delivering streaming media, such as audio and video, on the internet
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`(which started to become a widespread practice beginning nearly 30 years ago).
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`My education, training, experience, and other qualifications in this field are set
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`forth at length in my CV, a copy of which is reproduced in Appendix A hereto.
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`6. I am familiar with the technology described in the ’824 and ’636 patents as
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`of their earliest claimed priority date of September 12, 2000. I have also appeared
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`and qualified as an expert in numerous cases involving computer and network
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`patents and technology, including before the PTAB, as also set forth in my CV.
`
`Highlights of my relevant qualifications, as set forth in my CV, include without
`
`limitation the following:
`
`● Dotcast Inc. (Moviebeam)—I founded the company in 1999 and
`served as CTO. The company developed a settop box that received
`both over-the-air (OTA) and broadband (Internet) delivery of feature
`films stored on an internal hard drive of the settop. Movies were
`delivered in slower than real-time on 24/7 schedule (trickle filled
`cache.) Consumers selected programming from an internal user
`interface guide and purchased movies for rental under similar rules as
`Blockbuster. Service was live from 2004 to 2007 in the top 50 DMAs
`in the U.S. Service utilized HTTP, TCP, UDP, both OTA and via
`broadband.
`● ICTV—Founded by me in 1990, renamed ActiveVideo Networks
`(AVN) in 2003, I was a founder and served as CTO. The company
`
`–2–
`
`WAG, Exhibit 2007
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 4 of 61
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`Ex. 2007 for IPR2022-01430 and IPR2022-01433, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`developed VOD as well as virtual cable TV settop cloud-based
`systems to deliver video as well as interactive program guide over
`managed (cable TV) and unmanaged (Internet) networks. AVN is
`currently live in 24 million households of the Charter and
`TimeWarner systems. The system employed HTTP, TCP, UDP and
`custom adaptive bit rate streaming technologies.
`● Vizio—Starting in 2018 I wrote three patents for video watermarking
`and helped develop dynamic ad insertion technology in use by major
`broadcast networks under the name Project OAR. Client software runs
`on smart TVs that detect and decode video watermarks and then call a
`Content Delivery Network node to download a TV ad to substitute for
`the existing ad of the program based on zip code and demographic
`profiles, all actions occur within 100msec. The replacement TV ad is
`delivered faster than playback via an HTTP/UDP link.
`● Vizio—In 2015 I wrote a patent for audio-based automated content
`recognition (ACR). Client software runs in a smart TV and generates
`fingerprints from TV audio and sends the fingerprints to a cloud-based
`server system streaming fingerprints in real-time to content matching
`servers which identify content currently play on the respective smart
`TV. In some services, media related to currently playing programing
`is returned to smart TV for display of supplemental information.
`Employs HTTP, TCP, UDP, MPEG DASH.
`● I served on the ISO MPEG committee in the early 1990s, acquiring
`familiarity with MPEG CODECs and containers.
`● Other relevant standards committee work (in addition to ISO
`MPEG)— IEEE, SCTE (Society of Cable Television Engineers),
`ATSC.
`● Software architecture, design, coding, implementation, and testing.
`● Designing and implementing streaming media servers and clients.
`● Responsibility for managing development and advising management.
`● Detailed familiarity with network standards and Internet RFCs,
`including standards and RFCs for TCP, all versions of HTTP.
`
`–3–
`
`WAG, Exhibit 2007
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 5 of 61
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`Ex. 2007 for IPR2022-01430 and IPR2022-01433, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`● Wireshark and like tools, which I use regularly.
`● Awards and recognition:
`○ Vizio won a Technology Emmy in 2023 for audience
`measurement based on my audio ACR.
`○ Finalist in US Department of Agriculture AIM4C competition
`for best smart agricultural technology for system to analyze
`honeybee beehive health correlated with environmental
`conditions analyzed by an artificial intelligence system.
`● Two years of education in Electronics Engineering at Ohio State
`University
`
`7. Based on the foregoing, I believe that I am qualified to provide reliable
`
`technical opinions in the field of the ’824 and ’636 patents, and how the relevant
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`technology was known and practiced as of the September 2000 timeframe.
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`MATERIALS REVIEWED
`8. In preparing my opinions expressed herein, I have reviewed the ’824 and
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`’636 patents and their prosecution history and the patents and printed publications
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`listed in Appendix C hereto. I have used my accumulated experience and insights
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`along with the above-noted references as the basis for my opinions herein. I have
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`further formed an understanding of the level of skill possessed by a person of
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`ordinary skill in the art (“POSITA”) in the above-identified field, as of the earliest
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`claimed priority date of the ’824 and ’636 patents, and considered how I believe
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`the subject matter addressed by the claims of the ’824 and ’636 patents would have
`
`been viewed by a POSITA in the field as of that time. The material I considered
`
`–4–
`
`WAG, Exhibit 2007
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 6 of 61
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`Ex. 2007 for IPR2022-01430 and IPR2022-01433, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`includes the declaration of Petitioners’ expert, Dr. Kevin Jeffay (EX1002), and the
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`expert declarations by Drs. Henry Houh and Nathaniel Polish in co-pending IPRs
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`challenging other patents in the family the patent challenged herein. I attended Dr.
`
`Houh’s April 10, 2023, deposition as well. I have also considered prior testimony
`
`by Dr. Jeffay as listed in Appendix C, and the deposition transcripts of Drs. Houh,
`
`Jeffay, and Polish.
`
`UNDERSTANDINGS AS TO LEGAL ISSUES
`9. I am not giving opinions on legal issues. I have been instructed as to the
`
`governing legal principles in this case, as set forth in Appendix B hereto. I am
`
`going by what is in Appendix B to the extent the issues addressed therein bear on
`
`my analysis, or on my use of words that have specific legal meaning.
`
`10. As noted in Appendix B, “obviousness” is considered a legal conclusion,
`
`although it is based on the factual underpinnings. My testimony addresses the
`
`underlying technical facts and provides technical analysis that this Board or a
`
`reviewing court can use to address whether there should (or should not) be a legal
`
`conclusion of obviousness.
`
`11. I further understand that obviousness is determined as of the time of the
`
`claimed invention. I have been instructed to use the earliest claimed priority date of
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`September 12, 2000, for this purpose.
`
`–5–
`
`WAG, Exhibit 2007
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 7 of 61
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`Ex. 2007 for IPR2022-01430 and IPR2022-01433, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`
`LEVEL OF SKILL IN THE ART
`
`12. As part of this inquiry, I have been asked to consider the level of ordinary
`
`skill in the field that someone would have had at the time the claimed invention
`
`was made. In deciding the level of ordinary skill, I considered the following:
`
`● the levels of education and experience of persons working in the field;
`● the types of problems encountered in the field; and
`● the sophistication of the technology.
`
`13. I largely agree with Dr. Jeffay’s criteria for a POSITA as set forth in par. 51
`
`
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`of his declaration (EX1002). One clarification that I would add is that the level of
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`skill thus specified would include some theoretical understanding as well as some
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`familiarity with basic internet protocols and tools for working with dynamic
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`content, and creating interactive web sites to handle such content.
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`14. I myself qualify as at least a POSITA under the criteria stated above, by
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`virtue of a combination of education and experience, which includes two years of
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`university study in Electrical Engineering, plus considerably more than three years’
`
`full-time experience implementing both server- and client-side software that
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`included internet delivered streaming programming. This experience involved in-
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`depth familiarity with basic internet protocols including TCP and HTTP, as well as
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`streaming-specific protocols, and both server-side and client-side implementations
`
`for interactive content delivery, including streaming media. This was in fact the
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`technology that I used in my day-to-day working environment for many years.
`
`–6–
`
`WAG, Exhibit 2007
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 8 of 61
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`Ex. 2007 for IPR2022-01430 and IPR2022-01433, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`OVERVIEW OF THE ’824/’626 DISCLOSURE AND THE CHALLENGED
`CLAIMS
`Background of the ’824 and ’626 Patents
`15. The invention concerns distribution of streaming media over the internet.
`
`16. Some networks, such as ATM (Asynchronous Transfer Mode) networks,
`
`come with built-in levels of Quality of Service (QoS). Where a sufficient QoS has
`
`been arranged, a server on an ATM network can serve a stream and rely on its
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`complete and timely delivery.
`
`17. This is not so with the internet, which uses a switched method of routing
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`data from one distributed node to another, and which only assures best efforts with
`
`respect to delivering individual data elements. Transport protocols such as TCP
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`can be layered over the internet, creating end-to-end sessions that provide for
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`retransmission of packets that failed to arrive. Such protocols can provide
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`“reliable” delivery, but still not “timely” delivery.
`
`18. For streaming, the object in general is to stream the data at about the
`
`transmission speed at which it will need to be played back. If the rate is too slow,
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`the player will run out of material to play and be interrupted. If the rate is too high,
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`the player could overflow whatever capacity it has to store the data, again resulting
`
`in loss of some part of the program.
`
`19. Streaming may be performed by way of either a “push” technique or a
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`“pull” technique. “Push” refers to systems in which the server sends data to the
`
`–7–
`
`WAG, Exhibit 2007
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 9 of 61
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`Ex. 2007 for IPR2022-01430 and IPR2022-01433, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`client at the instigation of the server. See, e.g., EX2019. “Pull,” by contrast, refers
`
`to systems in which the client actively retrieves the media from the server. Id.
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`Hence, in push systems the server controls the pacing of content delivery to the
`
`client, whereas in pull systems the client controls this pacing.
`
`20. Prior art approaches sought, for example, to clock out the contents of a first-
`
`in-first-out (FIFO) buffer to control transmission timing. EX1001-2:2-10. The
`
`inventor of the ’824 and ’636 patents found the efforts of the server to pace its
`
`output in such a manner was not effective, resulting in considerable interruptions
`
`for “buffering,” which users found frustrating.
`
`21. Solutions to this problem, provided by the ’824 and ’636 patents, include
`
`alternative embodiments reflecting: (first embodiment, referred to as “push” or
`
`“buffering”) putting streaming data (whether from a live or prerecorded source)
`
`into a server FIFO buffer at about the playback rate, and beginning delivery from
`
`the server, via a transport mechanism, only after a predetermined amount of media
`
`had been built up in the server buffer, with the server maintaining a pointer into its
`
`buffer to maintain a record of the last element sent to each client, and (second,
`
`distinct embodiment, referred to as “pull”) dividing the input into serially
`
`identified sequential elements, and having the client request the elements by serial
`
`identifier as needed to maintain the client’s (receive) buffer at a specified level.
`
`Both embodiments rely on the ability of the connection between the server and the
`
`–8–
`
`WAG, Exhibit 2007
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 10 of 61
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`Ex. 2007 for IPR2022-01430 and IPR2022-01433, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`client to transmit media data elements faster than the playback rate, when this is
`
`called for.
`
`22. The pull embodiment, described at 14:48-15:25 of EX1001, is the one most
`
`pertinent to the claims. The patent’s description of the pull embodiment reads as
`
`follows:
`
`In another embodiment, the server is connected to the Internet
`and provisioned as initially described. The server buffer
`manager, or the media source, provides for sequentially
`numbering the media data elements. The server buffer manager
`does not maintain a pointer into the server buffer for each user.
`Instead, 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.
`
`Via the use of standard data communications protocol
`techniques such as TCP, the user computer transmits a request
`to the server to send one or more data elements, specifying the
`serial numbers of the data elements. The server responds by
`sending the requested data elements, and depends upon the
`reliable transmission protocol to assure delivery. The user
`computer then continues with additional data requests for the
`duration of playing the audio/video material. In this manner, the
`user computer, not the server, maintains the record of the
`highest data element number stored in the user computer buffer.
`The media data will be transmitted to the user computer as fast
`as the data connection between the user computer and the server
`will allow. As before, the server provides a buffer manager and
`a FIFO buffer, and provides a means for receiving the
`sequentially numbered media data elements from a broadcast
`media source or a file based media source, and storing those
`data elements in the FIFO buffer. The buffer manager
`comprises means for: receiving the media data; supplying
`media data in order to the FIFO buffer; supplying the FIFO
`
`–9–
`
`WAG, Exhibit 2007
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 11 of 61
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`Ex. 2007 for IPR2022-01430 and IPR2022-01433, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`buffer with a predetermined number of data elements; and, once
`the FIFO buffer is full, deleting the oldest data element in the
`buffer as each new data element is received.
`
`Such means is arranged to maintain the pre-determined number
`of data elements in the FIFO buffer. At least one user computer
`is connected to the server via the Internet.
`
`The user computer is associated with a media player software
`incorporating a user buffer and comprises means for 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. 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.
`
`23. Pull by serial identifier, as described in this embodiment, allows the client
`
`to specifically requests the elements it needs to sustain uninterrupted playback.
`
`24. The “pull” character of the embodiment allows the client to determine when
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`and how many elements it needs to keep its buffer at the specified level, which it
`
`can readily do by, among other things, monitoring its own buffer level (as opposed
`
`to the server having to act based on an estimate of what is occurring on the
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`(remote) client side of the connection).
`
`25. Because the pull requests are based on observed conditions, there is no set
`
`schedule for the requests, and the system must be able to service a request for an
`
`element that is made at a point closer in time to when needed than the time it will
`
`–10–
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`WAG, Exhibit 2007
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 12 of 61
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`Ex. 2007 for IPR2022-01430 and IPR2022-01433, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`take to play back the element (e.g., the client may determine it needs elements
`
`totaling five seconds of playback, with only four seconds to retrieve them). Hence,
`
`the system will rely on having a connection with a data rate faster than the
`
`playback rate, in order to maintain a steady buffer.
`
`26. The timing of retrieval by repeatedly pulling sequential elements (as
`
`disclosed) is further impacted by the latency of the request/response cycle for each
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`requested element, which adds more time for each request and response, on top of
`
`the time required to transfer the responsive element itself. A connection whose data
`
`rate is equal to the playback rate will not do, as the data rate of the connection must
`
`be faster than the playback rate, to accommodate the requests and server responses,
`
`as well as the time needed to transmit the actual elements. In practice, however,
`
`though a suitable connection rate will be specified, contracted for, etc. (and the
`
`claims so recite), the internet cannot guarantee timely delivery, and there will be
`
`recurring delays and interruptions, no matter what level of connection is specified.
`
`This problem is at the root of the motivations for the subject patent. The problem is
`
`addressed, in the push embodiment, by providing, in a server buffer, an initial
`
`buffer load comprising an “amount [of data] preferably adequate to bridge gaps
`
`typical of Internet and modem delays to the user.” EX1001-8:3-8. This initial
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`tranche of buffered data is rapidly transferred to the client (more rapidly than the
`
`playback rate) (EX1001-8:14-24), thereby providing the client with a buffer of the
`
`–11–
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`WAG, Exhibit 2007
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 13 of 61
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`Ex. 2007 for IPR2022-01430 and IPR2022-01433, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`“predetermined” number of elements, which, as stated, was chosen to be “adequate
`
`to bridge gaps typical of [internet delivery].” The disclosure also describes how to
`
`keep supplying stream data to this process (EX1001-8:25-28), and use the server’s
`
`underlying transport mechanism to maintain this buffer during playback (EX1001-
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`10:43-11:3).
`
`27. In the pull embodiment (claimed here), the description of which begins at
`
`14:48, the irregularity of the internet connection is likewise addressed by the
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`“predetermined number” of media data elements originating on the server
`
`(EX1001-15:8-9) and to established in the player buffer (EX1001-15:16-20),
`
`which, as in the pull embodiment, serves to protect the playback process against
`
`gaps in internet delivery. The disclosure further describes the client request
`
`mechanism for establishing and maintaining approximately the predetermined
`
`number of data elements in the player buffer (EX1001-14:38-47, 15:23-25). In
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`each case, the predetermined amount of data buffered on the client, and kept
`
`buffered by the disclosed mechanisms, is sufficient to insulate playback from
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`interruptions of less duration than the playback duration of the amount of media
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`buffered. EX1001-12:19-22.
`
`Prior PTAB History
`28. The Petition seeks to make arguments about how this case should be
`
`decided based on a prior PTAB decision, the Final Written Decision after remand
`
`–12–
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`WAG, Exhibit 2007
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 14 of 61
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`
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`Ex. 2007 for IPR2022-01430 and IPR2022-01433, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`in WebPower v. WAG Acquisition, LLC, IPR2016-01238, Paper No. 28 (EX2017),
`
`which concerned a related patent (U.S. Patent No. 8,122,141 (the “’141 patent”)
`
`(EX1015).
`
`29. I am not offering opinions about the prior IPR rulings per se. I am only
`
`commenting to the extent of providing the context of those rulings and the present
`
`case, and to compare and contrast, technically, the patent claims at issue in the two
`
`cases, and to point out how those claims differ.
`
`30. The ’824 and ’636 patents are in a family of continuing patents based on
`
`common underlying disclosures. The family includes the ’141 patent, the claims of
`
`which were also based on the disclosed pull embodiment. However, the particular
`
`claims of the ’824 and ’636 patents, differ materially from those of the ’141 patent.
`
`31. I understand that the prior IPR involving the ’141 patent (IPR2016-01238)
`
`was instituted, went to a final written decision, was reversed on appeal (on claim
`
`construction) and remanded for reconsideration in view of the appeals court’s
`
`claim construction, and ruled on again, on remand, applying the construction
`
`specified by the appeals court. Though the claims at issue in the prior IPR of the
`
`’141 patent differed from the ’824 and ’636 patent claims challenged herein,
`
`Petitioners now rely on the same principal reference (Carmel et al., U.S. Pat. No.
`
`6,389,473) (EX1005) that was cited in the earlier IPR proceedings.
`
`–13–
`
`WAG, Exhibit 2007
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 15 of 61
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`
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`Ex. 2007 for IPR2022-01430 and IPR2022-01433, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`32. The prior IPR litigated issues concerning claim 10 of the ’141 patent.
`
`Claim 10 of the ’141 patent reads as follows:
`
`[PRIOR CLAIM FROM OLDER PATENT] 10. A server
`for distributing streaming media via a 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, said user system being assumed to have a
`media player for receiving and playing the streaming media on
`said user system, which is operable to obtain media data
`elements from said server by transmitting requests to said
`server to send one or more specified media data elements, said
`server comprising
`
`at least one data storage device, memory for storing machine-
`readable executable routines and for providing a working
`memory area for routines executing on the server, a central
`processing unit for executing the machine-readable executable
`routines, an operating system, at least one connection to the
`communications medium, and a communications system
`providing a set of communications protocols for
`communicating through said at least one connection;
`
`a machine-readable, executable routine containing instructions
`to cause the server to assign serial identifiers to the sequential
`media data elements comprising the program;
`
`a machine-readable, executable routine containing instructions
`to cause the server to receive requests from the user system for
`one or more media data elements specifying the identifiers of
`the requested data elements; and
`
`a machine-readable, executable routine containing instructions
`to cause the server to send media data elements to the user
`system responsive to said requests, at a rate more rapid
`
`–14–
`
`WAG, Exhibit 2007
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 16 of 61
`
`
`
`Ex. 2007 for IPR2022-01430 and IPR2022-01433, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`than the rate at which said streaming media is played back
`by a user.
`
`EX1015-13:63-14:28.
`
`33. The Patent Owner argued in the prior referenced IPR that claim 10 of the
`
`’141 patent, in particular, the words “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,” required that all requested media data
`
`elements be sent faster than the playback rate. The Board concluded that claim 10
`
`of the ’141 patent did not so require (1st Final Written Decision, EX2016). For
`
`example, the limitation could be satisfied by providing an option during operation
`
`of opening multiple parallel channels that in combination could transfer data faster
`
`than the playback rate. EX2016 at 18.
`
`34. Patent Owner appealed to the United States Court of Appeals for the
`
`Federal Circuit (the court to which appeals from the PTAB are taken), on issues
`
`that included the interpretation of claim 10. The Federal Circuit reversed the Board
`
`(EX2001), holding that “In our view, the ‘rate’ in claim 10 [of the ’141 patent]
`
`refers to the rate at which each requested media data element is transmitted from
`
`the server to the user computer.” EX2001 at 10. The Federal Circuit remanded, for
`
`the PTAB to reconsider anticipation of claim 10 by Carmel under the proper claim
`
`construction, which the Federal Circuit had determined.
`
`–15–
`
`WAG, Exhibit 2007
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 17 of 61
`
`
`
`Ex. 2007 for IPR2022-01430 and IPR2022-01433, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`35. On remand, the PTAB had another opportunity to consider anticipation of
`
`claim 10 of the ’141 patent by Carmel, this time on the basis of the more narrow
`
`claim interpretation reached by the Federal Circuit. The PTAB, on remand, again
`
`found anticipation of claim 10 by Carmel. EX2017 at 23 (“disagree[ing]” that,
`
`even though the Federal Circuit had said “each” element must be sent in
`
`accordance with claim 10’s “rate” limitation, that this required “that every media
`
`data element be transmitted faster than the playback rate”). The Federal Circuit’s
`
`conclusion that the claim required “each” element to be sent faster than the
`
`playback rate did not, according to the Board, require that the requirement had to
`
`be met for “every” element. The Board cited Carmel’s disclosure of “generally
`
`equal to or faster than” the playback rate (EX1005-2:56-59), plus evidence that
`
`equal to or faster than suggested to a POSITA sometimes sending slower and
`
`sometimes sending faster than the playback rate, and that sometimes sending faster
`
`than the playback rate, during the course of transmitting the program, was
`
`sufficient to meet claim 10’s requirement. Despite the Federal Circuit’s use of the
`
`words “each requested element,” claim 10 was read by the prior PTAB panel, on
`
`remand in that case, to be met where the prior art only reflected sending some of
`
`the media data elements faster than the playback rate. EX2017 at 23.
`
`36. I am informed that Patent Owner did not appeal the IPR remand decision,
`
`and it became final.
`
`–16–
`
`WAG, Exhibit 2007
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 18 of 61
`
`
`
`Ex. 2007 for IPR2022-01430 and IPR2022-01433, Declaration of W. Leo Hoarty
`U.S. Patent Nos. 9,742,824 and 9,762,636
`37. However, the prior IPR specifically concerned claim 10 of the ’141 patent,
`
`and here, different claims are involved. I offer no opinion on the legal implications
`
`of this difference, merely pointing out as a factual and technical matter that the
`
`patent claims in the prior case and in this case differ. (I also understand that the
`
`claim construction standard differs between this IPR and the prior one, but I offer
`
`no opinions as to those standards either.)
`
`