`
`
`
`
`
`Case IPR2022-01433
`Patent 9,762,636
`
`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, LLC
`
`Patent Owner
`
`U.S. Pat. No. 9,762,636
`
`
`
`_______________________________________
`
`Inter Partes Review Case No. IPR2022-01433
`
`_______________________________________
`
`
`
`PATENT OWNER RESPONSE
`
`

`

`
`
`
`
`
`
`Case IPR2022-01433
`Patent 9,762,636
`
`TABLE OF CONTENTS
`
`
`
`I.
`
`INTRODUCTION ............................................................................................. 1
`
`II. DESCRIPTION OF THE DISCLOSURE AND CLAIMS ............................... 2
`
`III. LEVEL OF SKILL ............................................................................................. 5
`
`IV. CLAIM CONSTRUCTION ............................................................................... 6
`
`A. Construction: Preambles (a) .......................................................................... 7
`
`B. Construction: Limitation f. “each received request specifying one or more
`serial identifiers of the requested one or more media data elements.” EX1001-
`16:48-50. ................................................................................................................. 9
`
`C. Construction: Limitation 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.” EX1001-
`16:57-60. ...............................................................................................................10
`
`D. Construction: Limitation j. “the one or more media data element sent are
`selected without depending on the server system maintaining a record of the last
`media data element sent to the requesting user systems.” EX1001-16:64-67. ....14
`
`E. Construction: Limitation k. “all of the media data elements that are sent by
`the server system to the one or more user systems are sent in response to the
`requests.” EX1001-17:1-3. ...................................................................................16
`
`V. ARGUMENT ...................................................................................................18
`
`A.
`
`Issues in Dispute ..........................................................................................18
`
`B. Response to Ground 1: Asserted obviousness over Carmel in view of Feig
`and Willebeek .......................................................................................................19
`
`1. Overview of Carmel .................................................................................19
`
`a) Background and Disclosure .................................................................19
`
`b) Opposing reads of Carmel ...................................................................29
`
`c) Conflicting testimony by Petitioner’s expert .......................................29
`
`2. The Petition fails to show that limitation h is rendered obvious by Carmel
`alone or in view of Feig and Willebeek ...........................................................36
`
`–ii–
`
`

`

`
`
`
`
`
`
`Case IPR2022-01433
`Patent 9,762,636
`
`a) Carmel fails to disclose limitation h (the data connection has a data
`rate more rapid than the playback rate) .......................................................37
`
`b) The Petition fails to show either obviousness or a reasonable
`expectation of success in modifying Carmel to provide a faster data
`connection ....................................................................................................41
`
`(1) Carmel teaches away ......................................................................44
`
`(2) No reasonable expectation of success ............................................47
`
`(a) No reasonable expectation that the proposed modification is even
`possible .................................................................................................47
`
`(b) Proposed modification compromises reliability ..........................49
`
`(c) Even the faster proposed modification will still experience lag
`and the modified system will compromise quality ..............................50
`
`3. The Petition fails to show that limitation j is disclosed by Carmel alone
`or in view of Feig (Push vs. Pull) ....................................................................51
`
`a) Carmel does not disclose limitation j ...................................................51
`
`b) The Petition fails to provide a sufficient rationale for incorporating the
`teachings of Feig concerning limitation j into Carmel ................................53
`
`4. The Petition fails to show that limitation k is disclosed by Carmel (Push
`vs. Pull, again) ..................................................................................................55
`
`a) Carmel does not disclose limitation k ..................................................55
`
`b) The Petition fails to show that limitation k would have been an
`obvious modification of Carmel in view of Feig .........................................58
`
`VI. CONCLUSION ................................................................................................61
`
`
`
`
`
`
`
`
`
`
`
`–iii–
`
`

`

`
`
`
`
`
`
`
`
`Case IPR2022-01433
`Patent 9,762,636
`
`LIST OF PATENT OWNER’S EXHIBITS
`
`Exhibit
`
`Description
`
`2001
`
`WAG Acquisition, LLC v. WebPower, Inc., 781 F. App’x 1007
`(Fed. Cir. 2019)
`
`2002
`
`IETF RFC 1945
`
`2003
`
`CV of Kevin Jeffay, Ph.D.
`
`2004
`
`2005
`
`2006
`
`Longhorn HD LLC v. Netscout Systems, Inc., Case No. 2:20-CV-
`00349, Memorandum Opinion (E.D. Tex., March 31, 2022)
`
`3G Licensing, S.A. v. HTC Corp., Case No. 17-83, Memorandum
`Order (D. Del. March 30, 2022)
`
`SEVEN Networks, LLC v. Google LLC, Case No. 2:17-cv-442,
`Pretrial Conference (E.D. Tex., Dec. 12, 2018)
`
`2007
`
`Declaration of W. Leo Hoarty
`
`2008
`
`Declaration of Henry Houh (EX1002 of IPR2022-01228)
`
`2009
`
`Redline comparing declaration of Kevin Jeffay (EX2824) with
`Declaration of Henry Houh (EX2008)
`
`2010
`
`May 23, 2023, Deposition of Dr. Kevin Jeffay
`
`2011
`
`May 25, 2023, Deposition of Dr. Nathaniel Polish
`
`2012
`
`2013
`
`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)
`
`–iv–
`
`

`

`
`
`
`Case IPR2022-01433
`Patent 9,762,636
`
`2014
`
`In re Certain Fitness Devices, Streaming Components Thereof,
`and System Containing Same, Inv. No. 337-TA-1265, Document
`Filing Report
`
`2015
`
`Redline comparison of claims of ’824 and ’636 patents
`
`2016
`
`2017
`
`Final Written Decision, WebPower v. WAG Acquisition, LLC,
`IPR2016-01238, Paper No. 22 (Dec. 26, 2017)
`
`Final Written Decision on Remand, WebPower v. WAG
`Acquisition, LLC, IPR2016-01238, Paper No. 28 (July 16, 2020)
`
`2018
`
`IETF RFC 2068
`
`2019
`
`Microsoft Computer Dictionary, Fifth ed. (excerpts)
`
`2020
`
`Avi Networks, Inc. v. Citrix Systems, Inc., IPR2019-00845, Ex.
`1007
`
`2021
`
`Deposition of Dr. Henry Houh in IPR2022-01227 and -01228
`
`2636
`
`Declaration of Kevin Jeffay (Ex. 1002 of IPR2022-01433)
`
`2824
`
`Declaration of Kevin Jeffay (Ex. 1002 of IPR2022-01430)
`
`
`
`
`
`
`
`
`–v–
`
`

`

`
`
`
`I.
`
`INTRODUCTION
`
`
`
`
`Case IPR2022-01433
`Patent 9,762,636
`
`Pursuant to 37 CFR § 42.120, WAG Acquisition LLC (“WAG” or “Patent
`
`Owner”) files this response to the Petition and the Institution Decision.
`
`U.S. Patent No. 9,762,636 (the “’636 patent” or the “patent,” EX1001) claims a
`
`method of distributing a live audio or video program over the internet based on
`
`individual requests for sequential, serially identified media elements comprising a
`
`program stream, which overcomes the startup delays and interruptions in delivery
`
`that resulted in user frustration under the prior art.
`
`This case seeks to invalidate the ’636 patent, with positions based on a principal
`
`reference, Carmel et al., U.S. Pat. No. 6,389,473, EX1005. Petitioners represented
`
`Carmel to this tribunal as disclosing the type of individual requests for successive
`
`media elements by serial ID, as claimed. There was never substantial evidence for
`
`this within the four corners of the reference. However, Petitioners’ expert, Dr.
`
`Kevin Jeffay, states that, nevertheless, a person of ordinary skill in the art would
`
`have recognized such teachings from the reference, because the reference discloses
`
`retrieval using the HTTP protocol. Yet, this same expert of Petitioners previously
`
`gave sworn testimony on Carmel in another matter, before the International Trade
`
`Commission, stating repeatedly and unequivocally that Carmel does not disclose
`
`such requests. As Dr. Jeffay stated there: “there’s no disclosures [sic] of requesting
`
`separate files by any protocol, let alone by HTTP.”EX2013-637:5-7. Dr. Jeffay
`
`

`

`
`
`
`
`
`
`Case IPR2022-01433
`Patent 9,762,636
`
`gave the foregoing and other testimony about Carmel while already engaged by
`
`Amazon herein, and then Dr. Jeffay submitted evidence under penalty of perjury to
`
`this tribunal to the contrary of what he had just testified in the ITC. The credibility
`
`of this expert is nonexistent.
`
` Carmel completely misses on several limitations for which it has been put
`
`forth. The Petition asserts secondary references, including Feig (EX1031) and
`
`Willebeek (EX1006), that it would combine with its failed view of Carmel.
`
`However, over-relying on nonexistent disclosures of Carmel, the Petition provides
`
`only perfunctory support for the asserted combinations. Already thin on their face,
`
`Patent Owner’s expert demonstrates that the alleged motivations to combine
`
`merely seek to do what Dr. Jeffay concedes Carmel already does, or in other cases
`
`are inconsistent with the Petition’s own assumptions.
`
`The challenged claims must accordingly be found not unpatentable.
`
`II. DESCRIPTION OF THE DISCLOSURE AND CLAIMS
`
`The challenged patent describes several embodiments. All but one of them are
`
`“push” embodiments, in which a server serves media to one or more users from a
`
`–2–
`
`

`

`Case IPR2022-01433
`
`
`Patent 9,762,636
`
`
`buffer on the server.1 The media may come from a live source, or from a stored file
`
`on the server or other storage device. EX1001-6:42-44. The claims of the ’636
`
`patent are all drawn to embodiments in which the media is from a live source.
`
`The push embodiments involve sending to the client an initial buffer load
`
`comprising a predetermined number of streaming media data elements, more
`
`rapidly than the playback rate, and continuing thereafter to send the following
`
`stream elements at about the playback rate. It maintains a pointer into the server
`
`buffer to mark the current position of each user in the stream and uses that pointer
`
`to determine what element to send to the respective users next. In a prerecorded
`
`embodiment, the server buffer is initially filled by reading the recorded file, while
`
`in a live embodiment the server buffer is continuously filled by the incoming live
`
`
`1 Though not claim terms, the terms “push” and “pull” reflect how engineers
`
`think about systems that involve the transfer of data sequences from a device
`
`regarded as a server to a device regarded as a client. Push is understood to mean
`
`the server instigates delivery to the client and thus controls the pacing of such
`
`delivery. EX2007 ¶ 19. Pull is understood to mean that the client actively retrieves
`
`data from the server and thus itself paces delivery. Id.
`
`
`
`–3–
`
`

`

`
`
`
`
`
`
`Case IPR2022-01433
`Patent 9,762,636
`
`stream, and a buffer load will be sent to the user faster than the playback rate when
`
`the user connects. EX1001-8:1-22.
`
`The lone embodiment that does not follow a push pattern is the embodiment
`
`described at EX1001-14:42-15:18. This lone embodiment is a “pull” embodiment.
`
`It is the pull embodiment (of a live program) that corresponds to the claims herein.
`
`The specification distinguishes the pull embodiment from the others on the
`
`basis that, in the disclosed pull embodiment: “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.” EX1001-14:45-49 (emphasis added).
`
`In the disclosed pull embodiment, streaming data elements are accumulated on
`
`the server and each is associated with a respective serial identifier (EX1001-14:44-
`
`45). The player monitors the state of its own buffer, including without limitation
`
`the level of the buffer and what elements it needs for continuous playback
`
`(EX1001-15:6-18), and requests media data elements from the server by their
`
`serial identifiers (EX1001-14:51-53), so as to maintain contents in the client buffer
`
`to provide uninterrupted playback. The player keeps doing this for the duration of
`
`the program. EX1001-14:56-58. The elements are transmitted as fast as the data
`
`connection will allow. EX1001-14:60-62. So long as the connection allows the
`
`needed elements to be sent in less time than it takes to play them back (and per the
`
`–4–
`
`

`

`
`
`
`
`
`
`Case IPR2022-01433
`Patent 9,762,636
`
`disclosure, the connection itself is expected to have this capability, see, e.g.,
`
`EX1001-9:62-10:4), this technique, allowing the player to determine when it needs
`
`data elements, can also serve as an effective stream control mechanism, making
`
`sure that the player has enough, but not too much, data to continue uninterrupted
`
`playback for the duration of the program, notwithstanding transient changes in
`
`connection quality.
`
`Also of note is what the push and pull embodiments have in common, which
`
`means that some of the advantages provided by the respective embodiments are
`
`shared. While the request/response mechanism differs, in both cases (push and
`
`pull), an initial “predetermined number” of media data elements are transferred
`
`from the server to the client more rapidly than the playback rate. EX1001-8:1-22
`
`(push embodiment); EX1001-15:1-3, 15:6-18 (pull embodiment). As a result of
`
`this initial rapid transfer, the client-side buffer then holds the specified amount of
`
`audio/video data and can play continuously despite data reception interruptions of
`
`less than the duration of that amount of media, and as soon as the interruption
`
`ceases, the user buffer (or other player memory that stores streaming data awaiting
`
`playback) can begin to rebuild. See EX1001-12:14-18.
`
`III. LEVEL OF SKILL
`
`Petitioners and Patent Owner provide descriptions as to the level of skill in the
`
`art at the time of the claimed invention that differ as to the requisite skills of such a
`
`–5–
`
`

`

`
`
`
`
`
`
`Case IPR2022-01433
`Patent 9,762,636
`
`person. See EX1002 ¶ 51; EX2007 ¶ 13. Patent Owner largely agrees with
`
`Petitioners’ formulation. One clarification Patent Owner would add is that the level
`
`of skill thus specified would include some theoretical understanding as well as
`
`some familiarity with basic internet protocols and tools for working with dynamic
`
`content and creating interactive web sites to handle such content. EX2007 ¶ 13.
`
`IV. CLAIM CONSTRUCTION
`
`Inter partes review now proceeds under the claim construction standard
`
`outlined in Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc).
`
`37 C.F.R. § 42.100. In addition, the subject patent has expired, and a Phillips
`
`construction applies for that reason as well. See In re CSB Sys. Int’l, Inc., 832 F. 3d
`
`1335, 1342 (Fed. Cir. 2016). According to Phillips, when construing a term, the
`
`“objective baseline” is the “ordinary and customary meaning,” which is “the
`
`meaning that the term would have to a person of ordinary skill in the art in
`
`question at the time of the invention.” 415 F.3d at 1303, 1312-13. “[T]he best
`
`source for understanding a technical term” is a patent’s intrinsic evidence, which
`
`includes the patent and its prosecution history. Id. at 1315 (internal quotations
`
`omitted). However, because the prosecution history represents an “ongoing
`
`negotiation … rather than the final product of that negotiation, it often lacks the
`
`clarity of the specification and thus is less useful for claim construction purposes.”
`
`Id. at 1317. Additionally, if a term is fairly susceptible of two constructions, the
`
`–6–
`
`

`

`
`
`
`
`
`
`Case IPR2022-01433
`Patent 9,762,636
`
`construction that conforms to the actual invention should prevail. See id. at 1322
`
`(citing Smith v. Snow, 294 U.S. 1, 14 (1935)).
`
`A. Construction: Preambles (a)
`
`Each of the preambles of claims 1 (method), 5 (server), and 9 (computer
`
`program product) recite distributing “a live audio or video program over the
`
`Internet.” The plain meaning of the claims is thus that the related method, server,
`
`and program are for distributing an entire program over the internet, and not
`
`merely some portion of a program. This understanding is reflected in the body of
`
`each claim, which repeatedly refers to “the program” recited in the preamble.
`
`Using claim 1 as an example, the body of claim 1 makes clear that the recited
`
`method is applicable to the entire program, and not merely some portion thereof.
`
`Limitation “b” of the body recites “receiving at the server system a continuous
`
`digitally encoded stream for the audio or video program [and not just some part of
`
`it] from a live source.”
`
`Limitation c recites, “upon receipt of the stream [not some portion of the
`
`stream] by the server system,” “supplying, at the server system, media data
`
`elements representing the program,” which clearly contemplates that this will be
`
`done continuously as the stream comes in from the live source.
`
`–7–
`
`

`

`
`
`
`
`
`
`Case IPR2022-01433
`Patent 9,762,636
`
`Limitations “d” and “e” recite “serially identifying” and “storing” “the media
`
`data elements,” for which the antecedent is the media data elements representing
`
`the entire program, as they continuously are being received.
`
`Limitation “f” recites “receiving requests … for one or more of the media data
`
`elements … each received request specifying one or more serial identifiers of the
`
`requested one or more media data elements,” while limitation “g” recites
`
`“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.” It is through these steps, b-g, that the
`
`entire program is delivered to the client computer.
`
`The “wherein” clauses specify (h) a data connection having a specified data
`
`rate, for the elements “sent via that connection,” which would clearly be in place
`
`for the entire reception, and specify further limitations (j) and (k) that specify
`
`aspects of the requests and transmission that only make sense as applied to the
`
`entire stream.
`
`The foregoing is in accord with the written description of the disclosed process
`
`in the specification:
`
`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 … The user computer then continues with additional data
`requests for the duration of playing the audio/video material … As
`
`–8–
`
`

`

`
`
`
`
`
`
`Case IPR2022-01433
`Patent 9,762,636
`
`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.
`
`EX1001-14:51-15:18.
`
`The claims thus address a continuous, time-sensitive process, whose continuity
`
`is critical to the user, as also made clear by the specification, and applies to an
`
`entire streaming program.
`
`B. Construction: Limitation f. “each received request specifying one
`or more serial identifiers of the requested one or more media data
`elements.” EX1001-16:48-50.
`
`The plain and literal meaning of limitation f is that, even if the “received
`
`request” is for more than one element, each such requested element is identified in
`
`the request by the respective serial identifier of that media data element. This
`
`understanding is confirmed by the specification, which explains that “the user
`
`computer transmits a request to the server to send one or more data elements,
`
`specifying the serial numbers of the data elements,” to which the server responds
`
`in kind. EX1001-14:51-56. The “one” term in the claim language is simply
`
`directed to the case of a request for a single element, while the “or more” term
`
`contemplates that a request may identify more than one element, by the elements’
`
`respective serial identifiers.
`
`–9–
`
`

`

`
`
`
`
`
`
`Case IPR2022-01433
`Patent 9,762,636
`
`C. Construction: Limitation 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.” EX1001-16:57-60.
`
`The Petition appears to address alternative constructions of limitation h. See
`
`Pet. at 42-44. Patent Owner interprets limitation h to mean that the referenced data
`
`connection must have a data rate that can transfer the elements sent via the
`
`connection in less time than required to play back those elements at a normal
`
`rendition, where the elements “sent via that connection” include all media data
`
`elements comprising the requested program.
`
`Patent Owner does not construe limitation h to require that the instantaneous
`
`transfer rate of the connection be faster than the playback rate at all times during
`
`transmission of the requested program, as the specification makes clear that there
`
`will be reception interruptions with an internet connection. E.g., EX1001-12:14-18.
`
`A Phillips construction requires claim terms to be interpreted in light of the
`
`literal language at issue itself, as well as the surrounding claim language.
`
`Per limitation h itself, the data connection must have the specified data rate in
`
`excess of the playback rate, for “the one or more media data elements sent via that
`
`connection.” This is not satisfied if, for example, in the course of streaming a
`
`program, the limitation is met for only one of the many requests/responses
`
`involved in streaming the program over the specified connection. When limitation
`
`h is read together with the other limitations of the claim, limitation h recites a data
`
`–10–
`
`

`

`
`
`
`
`
`
`Case IPR2022-01433
`Patent 9,762,636
`
`rate requirement for the specified connection, which applies over the entire
`
`streaming of the program referenced in the claim.
`
`The claims are directed to streaming “a program.” The preamble of claim 1, for
`
`example, recites “[a] method for distributing over the Internet … [an] audio or
`
`video program.”
`
`As discussed earlier, limitations “b” through “g” recite steps used to deliver the
`
`entire program to a client computer, by way of request and response interactions
`
`between client and server, with limitation g reciting “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.”
`
`Thus, the words in limitation h, “the one or more media data elements sent via
`
`that connection” refers to those elements sent responsive to the plurality of
`
`“requests” recited in limitation g, that is, to all responsive media data elements.
`
`Moreover, as addressed separately below, limitation k provides that all such
`
`elements that are sent, are sent per the recited requests.
`
`Consequently, limitation h must be read as applying the data rate requirement to
`
`the entire program stream, not just some arbitrary portion of it.
`
`The foregoing interpretation also follows from the specification. A stated object
`
`of the invention was to “facilitate continuous content transmission on demand”
`
`–11–
`
`

`

`
`
`
`
`
`
`Case IPR2022-01433
`Patent 9,762,636
`
`(EX1001-3:55-56 (emphasis added)), “maintaining protection against playback
`
`interruption” (EX1001-3:57-58), “as [the] media player requires for continuous
`
`and uninterrupted playback” (EX1001-4:11-12 (emphasis added)). The server’s
`
`connection to the media player is presumed to be faster than the playback rate (see,
`
`e.g., EX1001-9:62-10:4), and “[t]he media data will be transmitted to the user
`
`computer as fast as the data connection between the user computer and the server
`
`will allow.” EX1001-14:60-62. “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.” EX1001-14:45-49 (emphasis added). The
`
`media data is sent piecewise, responsive to requests by serial identifier. EX1001-
`
`14:50-56. The FIFO buffer on the client is “arranged to maintain the pre-
`
`determined number of data elements in the FIFO buffer.” EX1001-15:6-18. “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.” EX1001-15:15-18.
`
`Furthermore, “The user computer … continues with additional data requests for
`
`the duration of playing the audio/video material.” EX1001-14:56-58 (emphasis
`
`added).
`
`–12–
`
`

`

`
`
`
`
`
`
`Case IPR2022-01433
`Patent 9,762,636
`
`To send an entire program stream for rendition in real time, in the form of
`
`individually requested chunks or elements, imposes timing constraints. This is
`
`evident in itself, and in any case is corroborated by expert testimony. See EX2007
`
`¶ 46. In order for such a process to keep up with playback, the data connection that
`
`it uses must accommodate not only transmission within the time allowed by the
`
`aggregate element playback duration times, but must also accommodate the time
`
`required for the individual requests to the server and for the server to respond and
`
`begin transmitting the sending responsive to each request, as well as the
`
`irregularity of when the requests will be made. See EX2007 ¶ 47. Hence, the
`
`specification contemplates and discloses, and the corresponding claims recite, a
`
`data connection more rapid than the playback rate, which is in effect during the
`
`entire program transmission, from beginning to end. This is what allows the
`
`claimed subject matter to meet the objects of the invention.
`
`Limitation h is phrased as a “wherein” limitation, and as such the context of the
`
`preceding claimed method must be understood to be performed over a data
`
`connection used to transmit each of the media data elements comprising the
`
`program.
`
`As the Petition points out at pages 11-12, the Federal Circuit previously
`
`addressed a similar “rate” limitation in claim of a parent patent (EX1015, claim
`
`10), finding that, per that claim, “each” requested element must be sent faster than
`
`–13–
`
`

`

`
`
`
`
`
`
`Case IPR2022-01433
`Patent 9,762,636
`
`the playback rate. See EX2001 at 10-11. This could not be met, for example, by
`
`aggregating multiple links to add together their transfer rates. Id. Here, the claim
`
`specifies that the rate of the data connection itself must be greater than the
`
`playback rate, for the elements sent via the connection. (A separate limitation
`
`(limitation i, not here at issue) further requires that “each sending is at a
`
`transmission rate as fast as the data connection between the server system and each
`
`requesting user system allow.”)
`
`In the remand decision, the PTAB, applying BRI, found that, for claim 10 of the
`
`’141 patent, “each” did not require “all,” and thus that “each” could be satisfied
`
`where each element of some arbitrarily small segment of the program stream was
`
`sent faster than the playback rate. See EX2017 at 19-20.
`
`The instant claim language rules out such a piecemeal approach. The claim here
`
`extends to the elements “sent via that connection,” and the correct interpretation of
`
`limitation h is that the data rate criterion for the data connection applies with
`
`respect to the elements sent via the connection, which is the elements that
`
`constitute the requested program.
`
`D. Construction: Limitation j. “the one or more media data element
`sent are selected without depending on the server system maintaining a
`record of the last media data element sent to the requesting user
`systems.” EX1001-16:64-67.
`
`The Petition does not argue any particular construction for this term, but as
`
`further addressed herein makes arguments that may be understood at least in part to
`
`–14–
`
`

`

`
`
`
`
`
`
`Case IPR2022-01433
`Patent 9,762,636
`
`address alternative constructions. See Pet. at 50-51. Patent Owner interprets “the
`
`one or more media data element sent” to refer to however many (whether “one or
`
`more”) elements are sent in response to any of the requests within the scope of the
`
`claim. Where more than one element is sent in response to a single request, the
`
`“without depending” condition of the limitation applies to all elements thus sent.
`
`The language of limitation j on its face means that whatever elements the server
`
`sends in response to a received request, and thus regardless of whether what is
`
`being sent is one element or more than one element that was specified in the
`
`request by its ID, those one or more elements (whichever the case may be) “are
`
`selected without depending on the server system maintaining a record of the last
`
`media data element sent to the requesting user systems.” This is so because each
`
`request tells the server specifically which respective elements to send. The server
`
`does not need to know or have any record of what it sent previously, to the same or
`
`other user system, in order to select each element in its response. See EX1001-
`
`14:45-49 (“The server buffer manager does not maintain a pointer into the server
`
`buffer….”).
`
`Patent Owner further contends that limitation j applies to the entire program and
`
`is not satisfied by simply identifying a single element that starts a stream.
`
`Reference in limitation j to “the one or more media data elements sent” refers to
`
`what is sent “responsive to the requests” referenced in limitation g, which by its
`
`–15–
`
`

`

`
`
`
`
`
`
`Case IPR2022-01433
`Patent 9,762,636
`
`terms includes all of the elements responsive to “the requests,” which in turn refers
`
`back to all requests made per limitation f – in other words, all of the elements that
`
`make up the program stream.
`
`As discussed above, and as described in the specification, the claimed method
`
`applies to the entire program, and limitation j applies to every element in the
`
`delivery of the program. Since a stream starts, by definition, when no prior element
`
`in the sequence would have been sent, any interpretation suggesting that limitation
`
`j can be satisfied by a single element at the start of the stream would render
`
`limitation j meaningless.
`
`E. Construction: Limitation k. “all of the media data elements that
`are sent by the server system to the one or more user systems are sent in
`response to the requests.” EX1001-17:1-3.
`
`Patent Owner requests construction of limitation k. The Petition does not argue
`
`any particular construction for this term.2
`
`
`2 Patent Owner notes that in the Institution Decision for a pending related case, the
`
`Board adopted an implicit claim construction for limitation k, stating that
`
`“[a]lthough the limitation calls for ‘all’ of the media data elements to be sent in
`
`response to requests, it does not require every slice to be requested by slice
`
`number.” Google LLC v. WAG Acquisition, L.L.C., IPR2022-01412 (Paper 8 at 38).
`
`Patent Owner disputes this conclusion.
`
`–16–
`
`

`

`
`
`
`
`
`
`Case IPR2022-01433
`Patent 9,762,636
`
`Patent Owner’s construction is that limitation k applies to each element of the
`
`stream. By reason of the claim language read as a whole, each and every element
`
`sent must be responsive to a request for that element by its serial ID.3
`
`All elements are sent in response to “the requests,” and the antecedent for “the
`
`requests”