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`Case IPR2022-01433
`Patent 9,762,636
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________________________________________
`
`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
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`_______________________________________
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`
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`PATENT OWNER’S BRIEF IN SUPPORT OF RELEVANCE OF DECISION
`ON APPEAL IN EX PARTE WAG ACQUISITION, APPEAL 2023-003319
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`Case IPR2022-01433
`Patent 9,762,636
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`LIST OF PATENT OWNER’S EXHIBITS
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`Exhibit
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`Description
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`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 (Ex. 1002 of IPR2022-01228)
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`2009
`
`Redline comparing declaration of Kevin Jeffay (Ex. 2824) with
`Declaration of Henry Houh (Ex. 2008)
`
`2010
`
`May 23, 2023, Deposition of Dr. Kevin Jeffay
`
`2011
`
`May 25, 2023, Deposition of Dr. Nathaniel Polish
`
`2012
`
`2013
`
`2014
`
`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)
`
`In re Certain Fitness Devices, Streaming Components Thereof,
`and System Containing Same, Inv. No. 337-TA-1265, Document
`Filing Report
`
`–i–
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`
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`
`
`Case IPR2022-01433
`Patent 9,762,636
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`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
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`2021
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`April 10, 2023 Deposition of Dr. Henry Houh
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`2022*
`
`Ex parte WAG Acquisition, LLC, Appeal 2023-003319, Reexam
`90/014,834, Decision on Appeal (PTAB November 17, 2023)
`(U.S. Patent No. 8,122,141)
`
`2636
`
`Declaration of Kevin Jeffay (Ex. 1002 of IPR2022-01433)
`
`2824
`
`Declaration of Kevin Jeffay (Ex. 1002 of IPR2022-01430)
`
` Addressed herein.
`
` *
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`–ii–
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`Case IPR2022-01433
`Patent 9,762,636
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`EX2022 is a PTAB appeals decision in a related case, the outcome of which,
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`though it concerned different claim language, turned on the panel’s reading of the
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`same prior art, Carmel (EX1005), with respect to the feature of repeated streaming
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`element requests, which the Petition argues corresponds to the claims herein and is
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`taught by Carmel. The appeals panel read Carmel not to disclose that feature,
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`which reading totally aligns with Patent Owner’s arguments herein, and is
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`inconsistent with Petitioner’s.
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`The Petition (Paper 2) relies on Carmel (EX1005) as alleged evidence for
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`limitations requiring repeated requests made by the client and received by the
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`server, for successive individually identified data elements comprising the desired
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`media stream. See generally Petition at 18-55. The appeals panel rejected the
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`assertion that Carmel disclosed such repeated client requests by serial ID. This
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`Panel should take the other panel’s analysis into account:
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`[W]e are persuaded by Patent Owner's arguments as follows:
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`Carmel actually discloses one circumstance-and one
`circumstance only-in which its player makes a request to its
`server to send an element, specifying to the server the serial
`ID of that element, and that is with regard to the first element
`of a requested stream. There is no evidence that there are any
`requests for any element after the first, separately or
`otherwise, let alone by serial ID. The only scenario disclosed
`in Carmel that would even concern an element requested by
`serial ID is the first element in a requested stream. (Appeal Br.
`13.)
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`1
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`Case IPR2022-01433
`Patent 9,762,636
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`Thus, we do not sustain the rejection of independent claim 1 under
`35U.S.C. § 102(e).
`
`EX2022 at 9.
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`EX2022 confirms Patent Owner’s expert, Mr. Hoarty, that Carmel does not
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`teach repeated client requests for successive individually identified elements. See
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`EX2007 ¶¶ 50-52, 55, 58-65. Mr. Hoarty’s testimony as to Carmel’s failure to
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`disclose the claimed individual request mechanism was already supported by the
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`disclosures of Carmel itself and by Dr. Jeffay’s prior ITC testimony (EX2013) and
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`corresponding ITC decision (EX2014), which Mr. Hoarty cited, that came to the
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`same conclusion. EX2022 reflects a further example of an independent review
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`coming to the same conclusion as Mr. Hoarty.
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`
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`Dated: December 1, 2023
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`
`Respectfully submitted,
`
`/Ronald Abramson/
`Ronald Abramson
`(Attorney for Patent Owner)
`Reg. No. 34,762
`212-257-1630
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`–2–
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`Case IPR2022-01433
`Patent 9,762,636
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.205(b), the undersigned certifies that on December
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`1, 2023, a complete and entire copy of this Patent Owner’s Brief in Support of
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`Relevance Of Decision On Appeal In Ex parte WAG Acquisition, Appeal 2023-
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`003319, and related exhibit thereto, was provided to the Petitioners by filing
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`through the Patent Trial and Appeal Case Tracking System and via email, as
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`authorized in Petitioners’ mandatory notices, by serving the following email
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`address:
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`
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`Dated: December 1, 2023
`
`
`WAG-IPR@fenwick.com
`dhadden@fenwick.com
`sshamilov@fenwick.com
`bhoffman@fenwick.com
`jchai@fenwick.com
`jkuncheria@fenwick.com
`kmcgann@fenwick.com
`
`Respectfully submitted,
`
`/Ronald Abramson/
`Ronald Abramson
`(Attorney for Patent Owner)
`Reg. No. 34,762
`212-257-1630
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