Trials@uspto.gov
`571-272-7822
`
`Paper 15
`Date: July 21, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AKAMAI TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`EQUIL IP HOLDINGS LLC,
`Patent Owner.
`
`IPR2023-00330
`Patent 8,495,242 B2
`
`
`
`
`
`
`
`
`
`
`Before RICHARD M. LEBOVITZ, ROBERT J. WEINSCHENK, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 15
`Date: July 21, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AKAMAI TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`EQUIL IP HOLDINGS LLC,
`Patent Owner.
`
`IPR2023-00330
`Patent 8,495,242 B2
`
`
`
`
`
`
`
`
`
`
`Before RICHARD M. LEBOVITZ, ROBERT J. WEINSCHENK, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2023-00330
`Patent 8,495,242 B2
`
`I.
`
`INTRODUCTION
`
`A.
`
`Background and Summary
`
`Akamai Technologies, Inc. (“Petitioner”) filed a Petition (Paper 2,
`
`“Pet.”) requesting institution of inter partes review of claim 9 (“the
`
`challenged claim”) of U.S. Patent No. 8,495,242 B2 (Ex. 1001, “the ’242
`
`patent”). Equil IP Holdings LLC (“Patent Owner”) filed a Preliminary
`
`Response (Paper 8, “Prelim. Resp.”). After authorization (see Ex. 1040) to
`
`file additional briefing relating to 35 U.S.C. § 325(d) arguments and issues
`
`relating to the correction of inventorship in U.S. Patent No. 6,964,009,
`
`Petitioner filed a Preliminary Reply (Paper 12, “Prelim. Reply”) and Patent
`
`Owner filed a Preliminary Sur-reply (Paper 13, “Prelim. Sur-reply”).
`
`An inter partes review may be instituted only if “the information
`
`presented in the petition . . . and any [preliminary] response . . . shows that
`
`there is a reasonable likelihood that the petitioner would prevail with respect
`
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a)
`
`(2018). For the reasons below, we decline to exercise our discretion to
`
`dismiss under 35 U.S.C. §§ 314(a) or 325(d), and determine that Petitioner
`
`has established a reasonable likelihood that it would prevail in showing the
`
`unpatentability of the challenged claim. Accordingly, we institute an inter
`
`partes review of the challenged claim on all grounds raised in the Petition.
`
`B.
`
`Real Parties in Interest
`
`Petitioner and Patent Owner identify only themselves as real parties in
`
`interest. Pet. 3; Paper 4 (Patent Owner’s Mandatory Notices), 1.
`
`C.
`
`Related Matters
`
`Petitioner and Patent Owner each identify as related Equil IP
`
`Holdings LLC v. Akamai Technologies, Inc., Case 1-22-cv-00677 (D. Del.)
`
`and inter partes review petitions IPR2023-00329 and IPR2023-00332. Pet.
`
`2
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`
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`IPR2023-00330
`Patent 8,495,242 B2
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`3–4; Paper 4, 1. Patent Owner additionally notes that the ’242 patent is
`
`related to several patent applications. Paper 4, 1–2.
`
`D.
`
`The ’242 Patent
`
`The ’242 patent, titled “Automated Media Delivery System,”
`
`describes an automatic graphics delivery system that operates in parallel
`
`with an existing Web site infrastructure to provide delivery of media for
`
`access by an end user. Ex. 1001, codes (54), (57), 1:18–23. “The system
`
`streamlines the post-production process by automating the production of
`
`media through content generation procedures controlled by proprietary tags
`
`placed within URLs embedded within Web documents. The system
`
`automatically processes the URL encoded tags and automatically produces
`
`derivative media for the web site from the original media.” Id. at 7:8–16.
`
`When a request for the media is received, the client connection, server
`
`traffic, content generation procedures, and proprietary tags within the URL
`
`are used to generate a version of the media for the client. Id. at 7:17–20,
`
`17:27–30. The generated media is cached so that further requests for the
`
`same version of the media requires less overhead. Id. at 7:22–24, 18:34–40.
`
`In some embodiments, a primary content generation procedure
`
`produces a derivative image based on images from an image repository. Id.
`
`at 18:41–45. A dynamic image content system then may generate a
`
`subsequent derivative media from that intermediate derivative image, which
`
`may be modified for a specific user browser and then passed to the user. Id.
`
`at 18:45–51, 18:63–67, 19:48–53. Inputs to the dynamic image content
`
`system may be stored in a cache so the intermediate derivative image need
`
`not be regenerated. Id. at 18:60–63, 19:23–42, 19:66–20:3.
`
`3
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`
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`IPR2023-00330
`Patent 8,495,242 B2
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`E.
`
`Challenged Claim
`
`The sole challenged claim, claim 9, is reproduced below with
`
`bracketed identifiers added as used by the Petitioner.
`
`9. A method for accessing dynamically transcoding media
`content, the method comprising:
`
`[9.a] an act of receiving a request for media content to be
`delivered to a client presentation system for media content,
`wherein the requested media content has a limited number of
`base transcoding profiles associated therewith, each base
`transcoding profile corresponding to a cached version of the
`requested media content;
`
`[9.b] at the time of the request, and without input by a
`network administrator, an act of automatically identifying
`transcoding parameters to be applied to the requested media
`content prior to delivery to the client presentation system,
`wherein identification of transcoding parameters is based on one
`or more formats of any client presentation system;
`
`[9.c] an act of determining that the transcoding parameters
`to be applied to the requested media content prior to delivery to
`the client presentation system are the same as transcoding
`parameters that are being applied to the requested media content
`prior to delivery to another client presentation system;
`
`[9.d] an act of transcoding the requested media content in
`accordance with the identified transcoding parameters, such that
`the identified transcoding parameters are used to perform
`additional incremental transcoding on top of the base transcoding
`profile;
`
`[9.e] wherein the act of act of transcoding the requested
`media content in accordance with the identified transcoding
`parameters comprises:
`
`an act of selecting a pre-existing base transcoded version
`of the requested media content comprising
`intermediate
`derivative media that has been transcoded in accordance with
`only a portion of the identified transcoding parameters; and
`
`4
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`IPR2023-00330
`Patent 8,495,242 B2
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`[9.f] an act of creating a final version by incrementally
`performing further transcoding of the pre-existing base
`transcoded version in accordance with a remaining portion of the
`identified transcoding parameters; and
`
`[9.g] an act of delivering the transcoded media content to
`both client presentation systems concurrently.
`
`Ex. 1001, 23:45–24:16.
`
`F.
`
`Prior Art and Asserted Grounds
`
`Petitioner raises the following grounds of unpatentability with respect
`
`to the challenged claims:
`
`Claim(s) Challenged 35 U.S.C. §1
`9
`102
`9
`102
`9
`103
`9
`103
`
`Reference(s)/Basis
`Tso2, Huang3
`Samaniego4
`Samaniego
`Samaniego, Tso
`
`Pet. 6.
`
`II. ANALYSIS
`
`A.
`
`Legal Standards
`
`“In an [inter partes review], the petitioner has the burden from the
`
`onset to show with particularity why the patent it challenges is
`
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102, 103. Because the
`filing date for the ’242 patent is before the effective date of the applicable
`AIA amendment, we refer to the pre-AIA version of these statutes. See
`Ex. 1001, code (22). Our institution determination would not change under
`the post-AIA version of these statutes.
`2 Tso et al., US 6,421,733 B1 (iss. July 16, 2002) (Ex. 1004).
`3 Huang et al., US 6,438,576 B1 (iss. Aug. 20, 2002) (Ex. 1005).
`4 Samaniego et al., US 2002/0078093 A1 (pub. June 20, 2002) (Ex. 1007).
`
`5
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`Patent 8,495,242 B2
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`petitions to identify “with particularity . . . the evidence that supports the
`
`grounds for the challenge to each claim”)). This burden never shifts to
`
`Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`
`F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
`
`Inc., 545 F.3d 1316, 1326–1327 (Fed. Cir. 2008)) (discussing the burden of
`
`proof in inter partes review). Furthermore, Petitioner must explain with
`
`particularity how the prior art would have rendered the challenged claims
`
`unpatentable. 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4) (“The
`
`petition must specify where each element of the claim is found in the prior
`
`art patents or printed publications relied upon.”).
`
`To establish anticipation, each and every element in a claim, arranged
`
`as recited in the claim, must be found in a single prior art reference. See Net
`
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
`
`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
`
`2001). Although the elements must be arranged or combined in the same
`
`way as in the claim, “the reference need not satisfy an ipsissimis verbis test,”
`
`i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331,
`
`1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed. Cir.
`
`1990).
`
`A claim is unpatentable under 35 U.S.C. § 103 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. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations, including (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
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`Patent 8,495,242 B2
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`(3) the level of skill in the art; and (4) when presented, objective indicia
`
`relating to obviousness.5 See Graham v. John Deere Co., 383 U.S. 1, 17–18
`
`(1966).
`
`Additionally, the obviousness inquiry typically requires an analysis of
`
`“whether there was an apparent reason to combine the known elements in
`
`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing
`
`In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
`
`reasoning with some rational underpinning to support the legal conclusion of
`
`obviousness”)). Petitioner cannot satisfy its burden of proving obviousness
`
`by employing “mere conclusory statements,” but “must instead articulate
`
`specific reasoning, based on evidence of record, to support the legal
`
`conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`
`1364, 1380 (Fed. Cir. 2016).
`
`B.
`
`Level of Ordinary Skill in the Art
`
`Petitioner argues that:
`
`A person of ordinary skill in the art (“POSITA”) as of the
`’242’s claimed priority date would have had a bachelor’s degree
`in computer systems, computer science, or the equivalent
`thereof, and at least two years of experience with networked
`media delivery or related technologies. More education can
`supplement practical experience, and vice-versa.
`
`Pet. 10 (internal citations omitted) (citing Ex. 1003 (Declaration of Dr. Vijay
`
`K. Madisetti) ¶¶ 44, 45, 47, 48). Patent Owner applies Petitioner’s proposed
`
`level of skill for the purposes of its Preliminary Response. Prelim. Resp. 8.
`
`For purposes of this Decision, we apply Petitioner’s definition of the
`
`level of ordinary skill in the art which is consistent with the level of skill
`
`
`5 The record at this point contains no contentions regarding such objective
`indicia relating to obviousness.
`
`7
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`reflected in the Specification and in the asserted prior art references. See
`
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`C. Claim Construction
`
`We construe claim terms according to the standard set forth in Phillips
`
`v. AWH Corp., 415 F.3d 1303, 1312–1317 (Fed. Cir. 2005) (en banc), i.e., as
`
`construed in a civil action under 35 U.S.C. § 282(b). See 37 C.F.R.
`
`§ 42.100(b). Under Phillips, claim terms are afforded “their ordinary and
`
`customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and
`
`customary meaning of a claim term 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.” Id. at 1313. “Importantly, the person of ordinary skill in the art
`
`is deemed to read the claim term not only in the context of the particular
`
`claim in which the disputed term appears, but in the context of the entire
`
`patent, including the specification.” Id. An inventor may rebut that
`
`presumption by providing a definition of the term in the specification “with
`
`reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
`
`1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations
`
`are not to be read from the specification into the claims. In re Van Geuns,
`
`988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`Neither Petitioner nor Patent Owner proposes any claim constructions,
`
`and we do not determine that any claim constructions are necessary to reach
`
`our conclusions in this Decision. Pet. 10–11; Prelim. Resp. 8; Vivid Techs.,
`
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (requiring
`
`construction of “only those terms . . . that are in controversy, and only to the
`
`extent necessary to resolve the controversy”); see Nidec Motor Corp. v.
`
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`
`(applying to inter partes reviews).
`
`8
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`D. Discretion to Deny Institution Under 35 U.S.C. § 325(d)
`
`Institution of inter partes review is discretionary. See Harmonic Inc.
`
`v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is
`
`permitted, but never compelled, to institute an IPR proceeding.”); 35 U.S.C.
`
`§ 314(a). Pursuant to 35 U.S.C. § 325(d), in determining whether to institute
`
`inter partes review, “the Director may take into account whether, and reject
`
`the petition or request because, the same or substantially the same prior art
`
`or arguments previously were presented to the Office.” In evaluating
`
`arguments under § 325(d), we use
`
`[a] two-part framework: (1) whether the same or substantially the
`same art previously was presented to the Office or whether the
`same or substantially the same arguments previously were
`presented to the Office; and (2) if either condition of first part of
`the framework is satisfied, whether the petitioner has
`demonstrated that the Office erred in a manner material to the
`patentability of challenged claims.
`
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).
`
`In applying the two-part framework, we consider several non-exclusive
`
`factors, including:
`
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination;
`(b) the cumulative nature of the asserted art and the prior art
`evaluated during examination;
`(c) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for
`rejection;
`(d) the extent of the overlap between the arguments made during
`examination and the manner in which petitioner relies on the
`prior art or patent owner distinguishes the prior art;
`(e) whether petitioner has pointed out sufficiently how the
`examiner erred in its evaluation of the asserted prior art; and
`
`9
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`(f) the extent to which additional evidence and facts presented in
`the petition warrant reconsideration of the prior art or arguments.
`
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586,
`
`Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5,
`
`first paragraph).
`
`Factors (a), (b), and (d) of the Becton, Dickinson factors relate to
`
`whether the art or arguments presented in the petition are the same or
`
`substantially the same as those previously presented to the Office. Advanced
`
`Bionics, 10. Factors (c), (e), and (f) “relate to whether the petitioner has
`
`demonstrated a material error by the Office” in its prior consideration of that
`
`art or arguments. Id. Only if the same or substantially the same art or
`
`arguments were previously presented to the Office do we then consider
`
`whether the petitioner has demonstrated a material error by the Office. Id.
`
`“At bottom, this framework reflects a commitment to defer to previous
`
`Office evaluations of the evidence of record unless material error is shown.”
`
`Id. at 9.
`
`As part of our analysis under the first prong of the Advanced Bionics
`
`framework, we evaluate Becton, Dickinson factors (a), (b), and (d) with
`
`respect to the facts of the present proceeding. Advanced Bionics, 9–10 n.10
`
`(citing Becton, Dickinson, Paper 8 at 17–18).
`
`Patent Owner contends that Tso was the same or substantially the
`
`same as art that was before the Examiner during the prosecution of the
`
`application that issued as the ’242 patent. Prelim. Resp. 23–26; Prelim. Sur-
`
`reply 5–6. Patent Owner argues that, while Tso was not cited during
`
`prosecution, a substantially identical reference, WO 98/43177 (Ex. 2007,
`
`“Tso PCT”), was cited. Prelim. Resp. 24–25; Ex. 2007; Ex. 1002, 176
`
`(information disclosure statement citing Tso PCT (line 58)), 780 (version
`
`10
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`with Examiner’s initials); Ex. 2008 (redline comparison of Tso and Tso
`
`PCT). Petitioner concedes that Tso PCT “has substantially the same
`
`disclosures” as Tso. Prelim. Reply 6.
`
`Patent Owner additionally contends that, while Huang was not before
`
`the Examiner during prosecution, Huang’s teachings are substantially similar
`
`to those described in U.S. Patent No. 6,483,851B1 (Ex. 2011, “Neogi”).
`
`Prelim. Resp. 26. Patent Owner argues that Neogi describes “partitioning a
`
`multimedia transcoding process into distributed intermediate stages and
`
`caching the results of each stage in a buffer pool of memory for retrieval by
`
`a subsequent processing stage.” Id. (citing Ex. 2011, 1:14–16, 1:53–60,
`
`2:16–26, 2:52–67, 3:2–4, 3:8–30, 3:60–65). Patent Owner asserts that these
`
`disclosures of Neogi are similar to the teachings relied upon in the Petition
`
`from Huang. Id. (citing Pet. 15–21); Prelim. Sur-reply 7 (equating Huang’s
`
`storage of a partially rendered object in a cache to Neogi’s data pools during
`
`stages of the adaptive pipelining). Petitioner contends that Huang’s
`
`teachings were not considered, as Neogi does not “‘further transcoding’ a
`
`cached ‘base transcoded version’ of content,” but rather teaches
`
`“transcoding content in stages” without any discussion of “caching, storing,
`
`or incrementally transcoding partially transcoded content.” Prelim. Reply 6
`
`(citing Ex. 2011, 1:56–60; 3:18–39). Petitioner argues that the “buffer
`
`pooling” described by Neogi is part of a single “adaptive pipeline” and not a
`
`cache. Id.
`
`As further discussed below in Section II.E, Petitioner uses the
`
`disclosures in Huang regarding avoiding re-rendering and re-retrieving
`
`content by storing partially-rendered content in a local cache in its
`
`arguments regarding obviousness over Tso and Huang. See Pet. 16–17, 18–
`
`19, 33, 34–35, 37– 38 (citing Ex. 1005, 2:9–13 (“any subsequent requests for
`
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`the same object . . . can be served directly from the stored copy in proxy
`
`server cache”), 6:63–67 (cache manager “maintains a local copy of the
`
`partially rendered . . . object in order to avoid repeating some object
`
`rendering operations”), 7:23–8:11; Ex. 1003 ¶¶ 67–68, 71, 89–91, 98). But
`
`Neogi does not describe caching an object in order to avoid repeating
`
`rendering operations upon subsequent requests for the same object. Rather,
`
`portions of Neogi cited by Patent Owner describe a pipeline constructed
`
`according to control parameters for the user’s request for transcoding, which
`
`may include intermediate filtering stages. Ex. 2011, 1:53–60. Neogi’s
`
`buffer pools “fulfill the memory requirements of the particular stages of the
`
`adaptive pipeline.” Id. at 3:2–4. We agree with Petitioner that Patent
`
`Owner’s citations to Neogi do not show the description of a cache that stores
`
`partially-rendered content in a local cache to allow subsequent requests to
`
`avoid re-rendering or re-retrieving content. See Prelim. Reply 6.
`
`Thus, we determine that there were material differences between
`
`Huang and Neogi, that Huang is not cumulative of Neogi, and that there is a
`
`significant difference between Neogi and Huang, considering the manner in
`
`which Petitioner uses Huang in its unpatentability arguments. Having thus
`
`evaluated Becton, Dickinson factors (a), (b), and (d) with respect to the facts
`
`of the present proceeding, we determine that the same or substantially the
`
`same art or arguments were not presented to the Office previously. Thus, we
`
`do not proceed to the second prong of the Advanced Bionics framework, and
`
`we will not discretionarily deny the Petition under § 325(d).
`
`
`
`For the foregoing reasons, we are not persuaded to exercise our
`
`discretion to deny institution under 35 U.S.C. § 325(d).
`
`12
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`E.
`
`Claims 9 – Obviousness over Tso and Huang
`
`Petitioner argues that claim 9 is unpatentable as obvious over a
`
`combination of Tso and Huang. Pet. 11–41. Patent Owner presents
`
`arguments relating to Petitioner’s showing with respect to claim limitations
`
`9.b and 9.c, that Tso does not teach or suggest these limitations. Prelim.
`
`Resp. 29–30, 32–38.
`
`1.
`
`Tso
`
`Tso is titled “System for Dynamically Transcoding Data Transmitted
`
`Between Computers,” and describes transcoding data exchanged between
`
`two computers according to predetermined selection criteria. Ex. 1004,
`
`codes (54), (57), 2:8–17. Tso describes that a transcoder, which may be part
`
`of a server, is arranged between a network client and the Internet. Id. at 3:8–
`
`30. Figure 3, reproduced below, is a block diagram depicting an
`
`embodiment including network client 12 connected to Internet 18 through an
`
`interposed transcoding server 34. Id. at 3:21–23.
`
`As seen in Figure 3, transcoding server 34 includes a remote proxy 36. Id. at
`
`3:31–33. This proxy can access Internet 18 to make requests and receive
`
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`replies from external Internet resources, and also to examine and act on the
`
`requests and replies, for example by determining whether or not to transcode
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`content. Id. at 3:34–40. The transcoding of content received from Internet
`
`18 before it is returned to requesting network client 12 is done by transcoder
`
`20, which includes parser 22 and plurality of transcode service providers 24.
`
`Id. at 3:8–11, 3:40–43. Parser 22 manages the transcoding of data to be
`
`transmitted from transcoding server 34 to network client 12. Id. at 3:45–48.
`
`Transcode service providers may provide the capability to compress or scale
`
`data content. Id. at 3:51–55. Server-side cache memory 30 managed by
`
`server-side cache interface 28 is provided to store original and transcoded
`
`versions of content. Id. at 3:66–4:5. “Server-side cache interface 28 and
`
`server-side cache memory 30 enable maintenance of multiple
`
`representations of a given cached object, with descriptive information about
`
`each representation included in server-side cache memory 30.” Id. at 4:62–
`
`66. These multiple representations support clients with different
`
`communications and/or presentation capabilities. Id. at 6:13–17. In this
`
`way, a parameter may be used to select a version of the cached object for
`
`return transmission to requesting network client 12. Id. at 6:17–23.
`
`Information may be stored and retrieved about cached objects, “including
`
`information maintained by transcode service provider 24 used to determine
`
`transcoding properties and transcoding status of a cached object. Transcode
`
`service provider 24 may use such information, for example, to determine
`
`current compression progress for scaled data access and staged refinements.”
`
`Id. at 5:35–42.
`
`When a request is received from a client, user preferences are
`
`examined, and the cache is checked to determine whether a copy of the
`
`required version of the media already resides in cache memory. Id. at
`
`14
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`IPR2023-00330
`Patent 8,495,242 B2
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`14:21–30, Fig. 8. If not, it is requested from the Internet, but if so it is
`
`retrieved from the cache. Id. at 14:30–46, Fig. 8. The data stream received
`
`is then transcoded for the user. Id. at 14:47–55, Fig. 9. The transcoded
`
`object is cached. Id. at 14:57–59.
`
`2.
`
`Huang
`
`Huang relates to a “Collaborative Proxy System For Distributed
`
`Deployment Of Object Rendering” in which object requestor nodes request
`
`objects from object source nodes, with intermediate nodes performing staged
`
`object rendering. Ex. 1005, codes (54), (57), 3:19–49. Included with object
`
`requests are meta-information describing the capabilities of the object
`
`requesting node, termed receiver hint information (RHI). Id. at 3:52–57.
`
`During the staged object rendering a first intermediate node may perform a
`
`subset of the required rendering and pass a partially rendered object to
`
`another intermediate node to perform some or all of the remaining required
`
`rendering. Id. at 3:50–4:7.
`
`Figure 4, reproduced below, is a flow chart illustrating the operations
`
`of a request object handler in an intermediate node. Id. at 6:52–56, 7:23–
`
`8:11.
`
`
`
`15
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`IPR2023-00330
`Patent 8,495,242 B2
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`Figure 4 describes a process for handling a request for an object, including
`
`(decision diamond 401) determining whether a useful version of the
`
`requested object is in a buffer or must be requested and (decision diamond
`
`402 and “YES” branch) performing further rendering on the object if
`
`necessary. Id. at 7:23–8:11. As described in Figure 4, if a version of the
`
`object satisfying certain requirements is available in the cache, it is retrieved
`
`from the cache, but if not a request for the object is sent out to a content
`
`server or another proxy server. Id. at 7:23–42, Fig. 4 (elements 401, 404). If
`
`the requested object is found in the cache, the RHI is checked to determine
`
`whether further rendering is necessary, if not the RHI is modified and the
`
`object returned. Id. at 7:43–53, Fig. 4 (elements 402, 403). If additional
`
`rendering is necessary, complete or partial additional rendering may be
`
`performed locally. Id. at 7:61–8:5, Fig. 4 (elements 405, 407–409). After
`
`local rendering, the cache manager then determines whether to store a local
`
`copy of the completely or partially rendered object. Id. at 8:5–7, Fig. 4
`
`(element 410). The object (whether or not local rendering has been
`
`performed) is returned along with modified RHI reflecting the condition of
`
`the object. Id. at 7:57–61, 8:7–11, Fig. 4 (element 406).
`
`3.
`
`Combination of Tso and Huang
`
`Petitioner argues that Tso and Huang are analogous prior art to the
`
`’242 patent, as each is directed to networked media delivery, and pertinent to
`
`the problems identified in the ‘242 patent. Pet. 17 (citing, inter alia, Ex.
`
`1001, 1:20–23; Ex. 1004, 1:10–31; Ex. 1005, 1:20–26; Ex. 1003 ¶ 70).
`
`Petitioner argues that Tso discloses receiving partially-transcoded
`
`content from a cache, and that one of ordinary skill in the art would have
`
`modified these teachings by implementing Huang’s “detailed teachings”
`
`regarding retrieving and further processing cached partially transcoded
`
`16
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`
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`IPR2023-00330
`Patent 8,495,242 B2
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`content, and tracking cached versions available via Huang’s RHI
`
`information. Id. at 18 (citing Ex. 1004, 5:39–41, 14:64–15:6; Ex. 1005, 6:9–
`
`23, 6:23–67; Ex. 1003 ¶ 71). Petitioner argues that the mechanisms in the
`
`two references are complementary and that Huang teaches “how to further
`
`improve speed and efficiency” in staged transcoding by utilizing local
`
`cached content to avoid repeating operations and to track transcoding status
`
`of content. Id. at 18–31 (citing inter alia Ex. 1003 ¶¶ 72–73). Petitioner
`
`asserts that one of ordinary skill in the art would have had a reasonable
`
`expectation of success, as a straightforward application of the teachings of
`
`Huang in Tso’s similar staged transcoding system. Id. at 21 (citing, inter
`
`alia, Ex. 1003 ¶ 74).
`
`At this time, Patent Owner does not comment on Petitioner’s
`
`proposed reasons for combining Tso and Huang.
`
`With respect to the Petitioner’s proposed combination of Tso and
`
`Huang by one of ordinary skill in the art, we find Petitioner has sufficiently
`
`shown, on the present record and for the purposes of institution, that a
`
`person of ordinary skill in the art would have had reason to combine the
`
`teachings of Tso and Huang.
`
`4.
`
`Claim 9
`
`a)
`
`Preamble and Limitation 9.a
`
`Without asserting a position regarding whether the preamble is
`
`limiting, Petitioner argues that Tso discloses a method for dynamically
`
`transcoding media content, for example in its description of a client
`
`computer receiving dynamically transcoded information from a network
`
`server computer. Pet. 21–22 (citing, inter alia, Ex. 1004, 2:44–49, 3:45–54;
`
`Ex. 1003 ¶¶ 75–77).
`
`17
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`
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`IPR2023-00330
`Patent 8,495,242 B2
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`Limitation 9.a recites “an act of receiving a request for media content
`
`to be delivered to a client presentation system for media content, wherein the
`
`requested media content has a limited number of base transcoding profiles
`
`associated therewith, each base transcoding profile corresponding to a
`
`cached version of the requested media content.” For the first portion of this
`
`limitation (“an act of receiving a request for media content to be delivered to
`
`a client presentation system for media content”), Petitioner cites Tso’s
`
`receipt of requests from a network client by a network server for media
`
`content. Id. at 22–26 (citing Ex. 1004, 2:56–65, Fig. 5; Ex. 1003 ¶¶ 78–80).
`
`For the second portion, requiring that the “requested media content has a
`
`limited number of base transcoding profiles associated therewith, each base
`
`transcoding profile corresponding to a cached version of the requested media
`
`content,” Petitioner argues this is taught by Tso’s storage of requested
`
`contented items in a cache storing “multiple representations of a given cache
`
`object” and “descriptive information” regarding “transcoding properties and
`
`. . . status” of cached versions of content. Id. at 22–25 (citing Ex. 1004, 4:1–
`
`5, 4:62–5:7, 5:35–42, 6:17–23; Ex. 1003 ¶¶ 78–80). Petitioner additionally
`
`cites the portion of Tso that describes a network proxy “determin[ing]
`
`whether a non-transcoded version of the requested hypertext object” is
`
`present in the cache memory, and retrieves information regarding the
`
`transcoding properties and status of the cached object. Id. at 26 (citing
`
`Ex. 1004, 14:21–55) (emphasis omitted).
`
`At this time, Patent Owner does not present any arguments or
`
`comments regarding these assertions.
`
`18
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`
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`IPR2023-00330
`Patent 8,495,242 B2
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`We determine, on the present record and for the purposes of
`
`institution, that Petitioner sufficiently shows that Tso teaches or suggests the
`
`preamble of claim 96 and limitation 9.a.
`
`b)
`
`Limitation 9.b
`
`Limitation 9.b recites that the method of claim 9 comprises “at the
`
`time of the request, and without input by a network administrator, an act of
`
`automatically identifying transcoding parameters to be applied to the
`
`requested media content prior to delivery to the client presentation system,
`
`wherein identification of transcoding parameters is based on one or more
`
`formats of any client presentation system.”
`
`Petitioner argues that this limitation is taught or suggested in Tso’s
`
`parser, which manages the transcoding of data to be transmitted by invoking
`
`transcode service providers based on predetermined selection criterion
`
`including characteristics of the Tso network client. Id. at 26–27. Petitioner
`
`cites Tso’s disclosure that, upon receipt of a request, the parser selectively
`
`invokes transcode service providers 24 based on the selection criteria. Id. at
`
`28–29 (citing Ex. 1004, 6:64–7:14). Petitioner additionally cites Tso’s
`
`teaching that the predetermined selection criterion may
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