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.
`____________
`
`IPR2023-00332
`Patent 9,158,745 B2
`_______________
`
`Before RICHARD M. LEBOVITZ, ROBERT J. WEINSCHENK, and
`SHARON FENICK, Administrative Patent Judges.
`
`LEBOVITZ, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying 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.
`____________
`
`IPR2023-00332
`Patent 9,158,745 B2
`_______________
`
`Before RICHARD M. LEBOVITZ, ROBERT J. WEINSCHENK, and
`SHARON FENICK, Administrative Patent Judges.
`
`LEBOVITZ, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`IPR2023-00332
`Patent 9,158,745 B2
`
`
`INTRODUCTION
`I.
`A. Background and Summary
`Akamai Technologies, Inc. (“Petitioner”) filed a Petition (Paper 2,
`“Pet.”) requesting an inter partes review of claims 1–7 (“the challenged
`claims”) of U.S. Patent No. 9,158,745 B2 (Ex. 1001, “the ’745 patent”).
`Equil IP Holdings LLC (“Patent Owner”) filed a Preliminary Response
`(Paper 8, “Prelim. Resp.”) to the Petition.
`Subsequent to the filing of the Petition and Preliminary Response, we
`authorized Petitioner (Ex. 1040 (PTAB email dated May 18, 2023))
`to file a Preliminary Reply Brief (Paper 12, “Prelim. Reply Br.”) limited to
`addressing (1) Patent Owner’s arguments under 35 U.S.C. § 325(d); and (2)
`Patent Owner’s arguments relating to the correction of inventorship in U.S.
`Patent No. 6,964,009 (“the ’009 patent”) and its effect on the prior art status
`of a piece of art included in several of the asserted grounds. We also
`authorized Patent Owner to file a responsive Preliminary Sur-reply (Paper
`13, “Prelim. Sur-reply”).
`An inter partes review may not be instituted unless “the information
`presented in the petition . . . and any 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).
`After considering the Petition, the Preliminary Response, the
`Preliminary Reply Brief, the Preliminary Sur-reply, and the evidence of
`record, for the reasons explained below, we determine that Petitioner has not
`demonstrated a reasonable likelihood that it would prevail in establishing the
`unpatentability of at least one claim challenged in the Petition. Hence, we
`deny the Petition and do not institute an inter partes review.
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`B. Real Parties in Interest
`The parties identify themselves as the only real parties in interest.
`Pet. 3; Paper 4, 1.
`
`C. Related Matters
`Petitioner and Patent Owner identify the following proceeding as a
`related matter involving the ’745 patent: Equil IP Holdings LLC v. Akamai
`Technologies, Inc., No. 1:22-cv-00677 (D. Del.). Pet. 3; Paper 4, 1.
`
`D. The ’745 Patent (Exhibit 1001)
`The ’745 patent, titled “Optimization of Media Content Using
`Generated Intermediate Content,” issued on October 13, 2015, from
`Application No. 13/752,110 (“the ’110 application”) filed January 28, 2013.
`Ex. 1001, codes (45), (21), (22).
`The ’745 patent claims priority to a chain of ancestor patent
`applications, including Application No. 09/929,904 (“the ’904 application”),
`filed on August 14, 2001, which issued as the ’009 patent. Ex. 1001, code
`(60). The published version of the ’904 application, US Pub. No.
`2002/0078093 A1 (Ex. 1007 (“Samaniego”)), is cited by Petitioner as prior
`art in three of the patentability challenges to the ’745 patent claims. Pet. 6.
`We address the status of Samaniego as a printed publication in more detail
`below.
`The ’745 patent discloses an “automatic graphics delivery system that
`operates in parallel with an existing Web site infrastructure.” Ex. 1001, 7:6–
`7. The system is described as “streamlin[ing] the post-production process by
`automating the production of media,” requested by a user from a browser,
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`“through content generation procedures controlled by proprietary tags placed
`within URLs embedded within Web documents.” Ex. 1001, 7:8–11. The
`disclosed system “automatically processes the URL encoded tags and
`automatically produces derivative media for the web site from the original
`media” which is available for viewing by a user. Ex. 1001, 7:13–16.
`The ’745 patent explains that the proprietary tags are used “to
`generate optimized media” by automated processing of the tags upon request
`of the media by a client. Ex. 1001, 5:65–6:1. This process, according to the
`’745 patent, reduces the “need for the Web author to create different
`versions of a Web site” for clients. Ex. 1001, 6:1–6:3. The ’745 patent also
`discloses that “generated media is cached such that further requests for the
`same media require little overhead.” Ex. 1001, 6:3–5.
`An embodiment of the process described in the ’745 patent is
`illustrated in Figure 21, reproduced below:
`
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`Figure 21, reproduced above, shows a flow chart of a process including
`delivery of an HTML web page with proprietary tags to browser 120,
`followed by the transfer of the delivered HTML web page from browser 120
`to server 2000. Server 2000 is shown as being part of system 100. System
`100 comprises URL tag parser 2100 for processing the proprietary tags.
`System 100 also comprises content generation procedures 2140 and dynamic
`media procedures 2150 that are performed on the media. Media cache 2120
`is also part of system 100.
`
`More specifically, with reference to Figure 21, a user through browser
`120 makes a request to web server 110 for web page 301. Ex. 1001, 19:12–
`14. Web page 301 is labeled in Figure 21 as an “HTML Page with
`Proprietary URL Tags.” The proprietary URL tags contain the information
`that direct browser 120 “to request the specified content generation
`procedure 2140 from the system 100 using input parameters specified with
`proprietary tags encoded within the URL.” Ex. 1001, 19:9–12. The content
`generation procedures are performed on the media. Ex. 1001, 19:5–7.
`Browser 120 receives web page 301 with the proprietary tags and provides
`them to server 2000; the server is part of system 100. Ex. 1001, 19:14–15;
`Fig. 21. Thus, system 100 receives the proprietary tags specifying content
`generation procedure 2140 from a user.
`
`System 100 comprises URL tag parser 2100 which parses the
`proprietary URL tags embedded in web page 301 that are sent to server 2000
`“to determine the content generation procedure 2140 to execute, any
`corresponding input parameters to be used by such procedure, [and] any
`dynamic content processing 2150 to be performed by dynamic media
`procedures” on the media. Ex. 1001, 19:15–20. The ’745 patent discloses
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`examples of the proprietary tags and commands used in these procedures,
`e.g., tags listed in Tables A and D (Ex. 1001, 10:27–46; 20:52–21:15),
`media processing script commands in Table B (id. at 10:51–15:20), and
`content creation commands in Table E (id. at 21:15–22:38).
`The ’745 patent further discloses that system 100 generates lookup
`key 2110 for the requested media. Ex. 1001, 19:23–24. When “intermediate
`content” is found in media cache 2120, “such media is passed directly to the
`dynamic media content system 2150 having dynamic media procedures,
`wherein appropriate action is taken to generate the required derivative from
`the intermediate media data.” Ex. 1001, 19:30–35. However, when the
`intermediate content is not found, the ’745 patent discloses that “such
`intermediate image is generated according to instructions specified by the
`content generation procedure, . . . and passed to the dynamic media system
`2150,” where “appropriate action is taken to generate the required derivative
`from the intermediate image data.” Ex. 1001, 19:36–43.
`The resulting media, after the dynamic processing is completed, is
`passed to a user profile system, appropriate modifications are made, and the
`media is cached and returned to the browser 120 for viewing by the user. Ex.
`1001, 19:44–20:2.
`
`E. Illustrative Claim
`Claim 1 is only the only independent challenged claim. Claims 2–7
`
`depend from claim 1. Claim 1 is reproduced below (bracketed numbering
`added from the Petition (Pet. vii–viii) and additional numbering added
`herein for clarity and reference to the specific limitations in the claim):
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`[1.pre] A method in a host computer for developing
`
`transformation processing operations to optimize media content
`playback to a plurality of playback devices connected with the
`host computer in a network, the method comprising:
`[1.a] receiving a first request from a first playback device
`for media content;
`[1.b] wherein the first request contains information, the
`information indicating a [1.b.i] first original media content,
`[1.b.ii] first content generation operations, and [1.b.iii] first
`transformation operations;
`[1.c] determining whether a previously-generated first
`intermediate media content is available for reuse, the
`previously-generated first intermediate media content having
`been created using the first original media content and the first
`set of content generation operations; and
`[1.d] responsive to determining that a previously-
`generated first intermediate media content is available, creating
`a first optimized media content for the first playback device by
`performing the first set of transformation operations on the
`previously-generated first intermediate media content; and
`[1.e] responsive to determining
`that a previously-
`generated first intermediate media content is not available,
`creating a first optimized media content for the first playback
`device by creating a first intermediate content using the first
`original media content and the first set of content generation
`operations, and performing the first set of transformation
`operations on the first intermediate media content; and
`[1.f] sending the first optimized media content to the first
`playback device.
`
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`F. Evidence
`The following evidence of unpatentability submitted by Petitioner is
`relied on in this decision:
`
`Evidence
`Barger et al., US 9,158,745 B2, issued Oct. 13, 2015 (“the
`’745 patent”)
`Declaration of Vijay K. Madisetti (“Madisetti Declaration”)
`Tso et al., US 6,421,733 B1, issued July 16, 2002 (“Tso”)
`Huang et al., US 6,438,576 B1, issued Aug. 20, 2002
`(“Huang”)
`Lawler, US 5,905,522, issued May 18, 1999 (“Lawler”)
`Samaniego et al., US 2002/0078093 A1, published Jun. 20,
`2002 (“Samaniego”)
`
`
`Exhibit
`No.
`1001
`1003
`1004
`1005
`1006
`1007
`
`G. Asserted Grounds
`Petitioner asserts that the challenged claims are unpatentable based on
`the following grounds (Pet. 6):
`Claim(s) Challenged
`35 U.S.C. §1
`1–5
`103
`6, 7
`103
`1–7
`102/103
`2–4
`103
`6, 7
`103
`
`Reference(s)/Basis
`Tso in view of Huang
`Tso in view of Huang, Lawler
`Samaniego
`Samaniego in view of Tso
`Samaniego in view of Lawler
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’745
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA version of § 103.
`
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`II. ANALYSIS
`Level of Ordinary Skill in the Art
`A.
`Citing the testimony of Petitioner’s declarant, Dr. Vijay Madisetti,
`Petitioner argues that a person of ordinary skill in the art (“POSITA”) 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.” Pet. 10 (citing Ex. 1003 ¶¶ 45–46,
`48–49). Patent Owner does not dispute Petitioner’s statement of the level of
`ordinary skill in the art. Prelim. Resp. 8.
`Petitioner’s definition of a POSITA is consistent with the level of skill
`disclosed in the prior art of record. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001). We therefore adopt Petitioner’s definition for
`the purpose of this Decision.
`
`Claim Construction
`B.
`In an inter partes review proceeding, a patent claim is construed using
`the same standard applied in a civil action under 35 U.S.C. § 282(b),
`including construing the claim in accordance with the ordinary and
`customary meaning of the claim as understood by one of ordinary skill in the
`art and the prosecution history pertaining to the patent. 37 C.F.R.
`§ 42.100(b).
` Petitioner requests that we construe the “content generation
`operations” recited in limitations [1.b], [1.c], and [1.e] of claim 1 to
`encompass the “content creation commands” disclosed in the ’745 patent,
`e.g., “converting media to a specified type/bit-depth, scaling to a specified
`size, and saving to a specified file.” Pet. 11 (citing Ex. 1001, 21:16–22:39).
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`Petitioner also requests we construe the “transformation operations” recited
`in claim limitations [1.b], [1.d], and [1.e] to encompass the disclosed “media
`processing script commands,” for example, “SetResolution” and “Colorize.”
`Pet. 11–12 (citing Ex. 1001, 10:27–15:20). Petitioner cites the Madisetti
`Declaration to support its claim construction. Ex. 1003 ¶¶ 55–59.
`Petitioner’s construction of “content generation operations” and
`“transformation operations” are not disputed by Patent Owner. Prelim. Resp.
`9.
`
`As held in Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999), only those terms that are “in controversy, and only to
`the extent necessary to resolve the controversy,” need to be construed. See
`also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (applying Vivid to inter partes reviews). Here, a
`construction of “content generation operations” and “transformation
`operations” is not necessary to resolve the unpatentability issues before us.
`Consequently, we do not address Petitioner’s proffered claim constructions.
`
`
`C. Ground 1 based on Tso and Huang; Ground 2 based on Tso,
`Huang, and Lawler
`Petitioner argues that claims 1–5 would have been obvious to one of
`ordinary skill in the art based on Tso and Huang (Ground 1) and claims 6
`and 7 would have been obvious based on Tso, Huang, and Lawler (Ground
`2). Pet. 6. Patent Owner disputes Petitioner’s arguments. Prelim. Resp. 32–
`40.
`
`Tso (Ex. 1004)
`1.
`We begin the analysis with a discussion of Tso.
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`A network client in Tso makes a request for a hypertext object.
`Ex. 1004, 9:56–58. Tso describes a network client comprising a browser that
`communicates with a transcoding server comprising transcoding software.
`This configuration is illustrated in Figure 3 of Tso, reproduced below:
`
`
`Figure 3 of Tso is reproduced above. Figure 3 is a block diagram showing
`the network client, transcoding server, and internet. Each element is labeled
`with a number, 12 is the network client, 34 is the transcoding server, 20 is
`the transcoder, 22 is the parser, 24 is the transcode server providers, and 16
`is the server/network communications link from transcoding server 34 to
`internet 18. Figure 3 shows network client 12 communicating with
`transcoding server 34, and transcoding server 34 communicating with
`internet 18. The discussion below references Figure 3.
`The transcoding software in Tso’s system comprises transcoder 20
`which includes parser 22 and transcode service providers 24. Ex. 1004, 3:7–
`11.
`
`Parser 22 of transcoder 20 “is configured to act upon data received by
`transcoder 20, such as a request for a network object generated by a client
`device [12] or a reply to such a request provided by a content server device.”
`
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`Ex. 1004, 3:11–14. Parser 22 “is responsible for selectively invoking one or
`more of transcode service providers 24 based upon a predetermined
`selection criterion.” 2 Ex. 1004, 3:14–16. The transcode service provider 24
`“selectively transcode[s] content based on a predetermined selection
`criterion.” Ex. 1004, 3:48–51. Transcode service provider 24 can compress
`and scale different types of content, and “provide a wide variety of
`transcoding functions.” Ex. 1004, 3:51–65.
`The system further comprises HTTP proxy server 36 which accesses
`the internet through communication link 16. Ex. 1004, 3:31–33. When
`network client 12 requests a hypertext object, HTTP proxy server 36 first
`attempts to retrieve the object from parser 22. Ex. 1004, 6:24–28. If the
`object is not found by parser 22, parser 22 creates an entry which is returned
`to HTTP proxy server 36. Ex. 1004, 6:28–31. HTTP proxy server 36
`requests the object from internet 18. Ex. 1004, 6:31–33. “As a data stream
`for the hypertext object is returned, HTTP remote proxy 36 calls parser 22”
`and passes the data stream to the parser. Ex. 1004, 6:33–37. “Parser 22
`selects an appropriate transcode service provider 24 based, for example, on
`the content type of the data stream.” Ex. 1004, 6:37–39. Transcode service
`provider 24 subsequently provides the transcoding functions to the incoming
`data stream. Ex. 1004, 3:42–44, 63–65.
`“The parser [22] is configured to selectively invoke the transcode
`service provider in response to a predetermined selection criterion.” Ex.
`
`
`2 Tso uses the singular form “criterion” throughout its disclosure, despite
`grammatically treating it in some instances as the plural form of the word.
`We use the term “criterion” as the singular form and “criteria” as the plural
`form.
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`1004, 2:16–18; see also Ex. 1004, 3:14–16, 6:64–66 (“parser 22 may
`selectively invoke one of transcode service providers 24 based upon
`satisfaction of a predetermined selection criterion.”). The selection criteria
`may comprise information “contained in a header portion of a data packet
`received by transcoding server 34.” Ex. 1004, 6:67–7:2. The “predetermined
`selection criterion” may alternatively “comprise information contained in a
`data portion of such a data packet.” Ex. 1004, 7:4–6. The “predetermined
`selection criterion may comprise a condition of the device on which
`transcoding server 34 is installed.” Ex. 1004, 7:8–9. Tso lists nine examples
`of predetermined selection criteria. Ex. 1004, 7:20–8:9.
`
`
`Petitioner’s proposed ground
`2.
`We now turn to Petitioner’s proposed ground of unpatentability based
`on Tso and Huang.
`The first step [1.a] of claim 1 recites “receiving a first request from a
`first playback device for media content.” Petitioner asserts that the “Network
`client” 12 of Tso teaches the claimed “playback device.” Pet. 24 (emphases
`omitted) (Petitioner-annotated version of Fig. 3 of Ex. 1004). Petitioner
`identifies the disclosure in Tso of a “Network client 12, via browser 32” that
`“transmits an HTTP request for the hypertext object to transcoding server 34
`over client/server communications link 14” (Ex. 1004, 9:45–65) as teaching
`the claim limitation. Pet. 23–24; see also id. at 24 (citing Ex. 1004, 3:12–13
`(“request for a network object generated by a client device”), Fig. 5
`(showing “Network Client” 12 comprising “Browser” which sends HTTP
`requests to the internet via a transcoding server)).
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`Step [1.b] of the claim recites “wherein the first request contains
`information, the information indicating a [1.bi] first original media content,
`[1.bii] first content generation operations, and [1.biii] first transformation
`operations.” Thus, the information in the request from the playback device
`must indicate these three different items. Petitioner contends that a request
`“packet” from the network client in Tso contains information indicating all
`three pieces of information. Pet. 24 (citing Ex. 1004, 6:64–7:14).
`Petitioner identifies the following disclosures from Tso as meeting the
`claimed “information” requirements of the claim (Pet. 24–25):
`[1.b.i] the “media content,” which is Tso’s “requested hypertext
`object” (Ex. 1004, 10:25–27);
`[1.b.ii] the “first content generation operations,” which are Tso’s
`“content characteristics,” specifying “data type, type of
`encoding/compression” or “size” (Ex. 1004, 7:31–33); and
`[1.b.iii] the “first transformation operations,” which are Tso’s
`“network client” properties, “content characteristics” specifying “number of
`colors,” “resolution,” and “content provider preferences” including “degree
`of alteration desired for its content” (Ex. 1004, 7:21–22, 60–62).
`The Madisetti Declaration is cited by Petitioner to support the
`correspondence between Tso’s disclosure of predetermined selection criteria
`and content generation operations. See Ex. 1003 ¶¶ 90–94. Dr. Madisetti
`testified that a person of ordinary skill in the art “would have understood”
`Tso’s “content characteristics” to include “for example, ‘data type, type of
`encoding/compression,’ and ‘size.’” Ex. 1003 ¶ 93 (citing Ex. 1004, 7:15–
`8:9). Dr. Madisetti testified “that these types of characteristics specify
`content generation operations that are consistent with, for example, the
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`‘save’ and ‘scale’ content generation operations described in Table E of the
`’745 patent” and that the operations “allow saving media to a ‘specified file’
`and scaling media to a ‘specified size.’” Ex. 1003 ¶ 93 (citing Ex. 1001,
`21:20–22:38.
`Dr. Madisetti testified that a person of ordinary skill in the art would
`have understood Tso’s “‘client’ characteristics such as a ‘number of colors,’
`additional ‘content characteristics’ such as ‘encoding/compression’ or
`‘resolution,’ and ‘content provider preferences’ including, for example, ‘the
`degree of alteration desired for its content’” to serve as the claimed
`transformation operations, such as the media processing script commands
`disclosed in the ’745 patent. Ex. 1003 ¶ 94 (citing Ex. 1004, 7:20–8:4; Ex.
`1001, 7:20–8.4); see also Pet. 25 n.5.
`To address the requirement in the claim that the “information” in [1.b]
`is received from the playback device, Petitioner relies on the disclosure in
`Tso that the predetermined selection criteria are stored in a “request packet.”
`Pet. 24–25 (citing Ex. 1004, 6:64–7:14; 7:15–8:9). Dr. Madisetti specifically
`testified, also citing Ex. 1004, 6:64–8:9, that “[t]he ‘request packet’ sent by
`the client carries ‘information’ in both its ‘header’ and ‘data portion[s]’ that
`includes ‘selection criterion,’ which is used to specify what transcoding
`should be applied to the content.” Ex. 1003 ¶ 66 (emphasis added); see also
`Ex. 1003 ¶ 36.
`Step [1.c] of claim 1 recites “determining whether a previously-
`generated first intermediate media content is available for reuse, the
`previously-generated first intermediate media content having been created
`using the first original media content and the first set of content generation
`operations.” For this limitation, Petitioner cites Tso’s disclosure of a
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`“GetScaledObject()” call by a server to determine “if the requested version
`of the content is cached. Tso, 14:25-30.”3 Pet. 15. “If so,” Petitioner
`explains, Tso teaches that “the content is retrieved and returned to the client.
`Tso 14:30-32.” Pet. 15. “The GetScaledObject () call is . . . used to request
`an object from server-side cache memory 30.” Ex. 1004, 6:9–13. Petitioner
`cites Tso’s teaching that the server-side cache stores “both original and
`transcoded versions of content for later transmission to network client 12
`without the need to re-retrieve the content from Internet 18 or to re-
`transcode the content.” Ex. 1004, 4:1–5 (as cited in Pet. 27). Thus, Petitioner
`asserts that the availability of media for “reuse” in step [1.c] corresponds to
`the use of media cached in the server-side cache of Tso.
`To meet limitation [1.c] of claim 1 that “the previously-generated first
`intermediate media content having been created using the first original
`media content and the first set of content generation operations,” Petitioner
`argues that Tso teaches “each server creates and receives partially-
`transcoded content, and caches transcoded versions of content.” Pet. 27
`(citing Ex. 1004, 4:1–5, 5:36–41, 14:47–15:6, 15:66–16:14). Petitioner
`contends that “a POSITA would have understood that a server responsible
`for performing only a partial transcoding caches that partially-transcoded
`version of content.” Pet. 27 (citing Ex. 1003 ¶ 99). Petitioner also contends
`that Tso is “agnostic” about the order in which transcoding steps are
`performed, making it obvious to perform content generation operations
`
`
`3 Ex. 1004, 14:26–30: “GetScaledObject [[00bf] [00a8] call to server-side
`cache interface 28 to determine whether a non-transcoded version of the
`requested hypertext object already exists in the server-side cache memory 30
`(Step 170).”
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`before additional transcoding operations are performed on the media
`content. Pet. 27 (citing Ex. 1003 ¶ 100).
`Petitioner further cites disclosure in Huang for [1.c] of “determining
`whether a previously-generated first intermediate media content is available
`for reuse.” Pet. 29–30 (emphasis omitted). Specifically, Petitioner argues
`that after a request for an object is made, the proxy server in Huang searches
`for a sufficiently “detailed” cached version of the content for the request.
`Pet. 17 (citing Ex. 1005, 7:23–36). If one is found, Petitioner argues that
`Huang discloses that the server performs any additional needed rendering,
`and then caches and returns the rendered content. Pet. 17 (citing Ex. 1005,
`7:53–8:11; Ex. 1003 ¶ 76). Again, Petitioner analogizes the “reuse” in the
`claim with searching for cache versions of the media content.
`Petitioner also asserts that Huang discloses the second part of [1.c]
`that “the previously-generated first intermediate media content having been
`created using the first original media content and the first set of content
`generation operations.” Pet. 29–30 (emphasis omitted). Petitioner relies on
`Huang’s disclosure of a “partially-rendered” object in cache (Ex. 1005,
`6:63–67) which Huang teaches can be further processed by completing “the
`entire rendering process” based on “RHI” (receiver hint information) (Ex.
`1005, 6:12) stored with the content. Pet. 17, 29–30 (further citing Ex. 1005,
`7:42–8:11). Petitioner’s position is apparently that the partial-rendering of an
`object using only one of two sets of rendering operations indicates that the
`partial rendered copy was made using only the first set of content generation
`operations as required by [1.c] of the claim.
`Petitioner asserts that it would have been obvious to apply Huang’s
`teaching about caching partially-coded content to Tso “to advantageously
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`IPR2023-00332
`Patent 9,158,745 B2
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`avoid re-retrieval and re-transcoding as previously performed on partially-
`transcoded content, and perform transcoding steps in an order that improves
`the efficiency of the system, advantageously streamlining content
`generation.” Pet. 30. Petitioner argues that it would have been obvious “to
`use Tso’s GetScaledObject() and GetProperties() calls to retrieve and check
`the transcoding status of a cached copy of content, including determining
`previously-performed transcoding/rendering steps, before further
`transcoding content using that partially-transcoded version instead of re-
`retrieving and re-transcoding original content” as described in Huang. Pet.
`30.
`
`In step [1.d] of claim 1, “responsive to determining that a previously-
`generated first intermediate media content is available,” “a first optimized
`media content for the first playback device” is created “by performing the
`first set of transformation operations on the previously-generated first
`intermediate media content.” Huang is argued by Petitioner to describe this
`limitation of the claim. Pet. 32–33 (citing Ex. 1005, 6:9–23).
`Petitioner asserts that Huang’s teaching of completing rendering on a
`partially rendered object makes limitation [1.d] obvious to one of ordinary
`skill in the art when applied to Tso’s disclosure of performing
`transformation operations. Pet. 33 (citing Ex. 1003 ¶¶ 104–107).
`Claim 1 additionally recites [1.e] “creating a first optimized media
`content for the first playback device by creating a first intermediate content
`using the first original media content and the first set of content generation
`operations” “responsive to determining that a previously-generated first
`intermediate media content is not available.” (Emphasis added.)
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`IPR2023-00332
`Patent 9,158,745 B2
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`
`Petitioner identifies Figure 8 of Tso as disclosing “responsive to
`determining that a previously-generated first intermediate media content is
`not available.” Pet. 34 (emphasis added) (reproducing Figure 8 of Tso
`showing “OBJECT IN CACHE” with a choice of “Y” or “NO,” i.e., “not
`available.”). Petitioner asserts that Tso, after finding that the intermediate
`content is not available, creates “a first intermediate content using the first
`original media content and the first set of content generation operations.”
`Pet. 34 (citing Ex. 1004, 10:24–49).
`Petitioner also argues that Huang describes limitation [1.e]. Pet. 35.
`Petitioner points to the disclosure in Huang that “[i]f the requested object
`cannot be found in the cache, . . . the proxy server . . . modifies the
`associated RHI to indicate its ability for providing rendering services and
`then sends the request and the modified RHI to another proxy server or to
`the content server.” Pet. 35–36 (citing Ex. 1005, 7:36–41; Ex. 1003 ¶¶ 110–
`112) (emphases omitted). Petitioner asserts it would have been obvious to
`modify Tso with Huang’s teaching “to advantageously cache the ‘partial’
`transcoding output from each of the transcode service providers . . . in order
`to ‘avoid repeating’ transcoding steps.” Pet. 35 (citing Ex, 1005, 6:63–67).
`The last step of claim 1 is “[1.f] sending the first optimized media
`content to the first playback device.” Petitioner cites Tso as disclosing this
`limitation (“HTTP remote proxy 36 transmits a data stream for the
`transcoded hypertext object to network client 12 (Step 260).” Pet. 36 (citing
`Ex. 1004, 6:55–57).
`
`
`Patent Owner’s arguments
`3.
`Patent Owner asserts that Petitioner fails to demonstrate a reasonable
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`IPR2023-00332
`Patent 9,158,745 B2
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`likelihood that Tso discloses limitation [1.b] of independent claim 1 of
`“wherein the first request,” which is [1.a] received from “a first playback
`device,” “contains information, the information indicating . . . [1.bii] first
`content generation operations.” Prelim. Resp. 35. Generally, Patent Owner
`does not dispute Petitioner’s mapping of the claim limitations to Tso and
`Huang nor the reason to combine the references. However, while Patent
`Owner does not disagree with Petitioner’s mapping of the claimed [1.b.ii]
`“content generation operations” to certain of Tso’s “content characteristics,”
`Patent Owner argues that Petitioner “fails to show that Tso’s transcoding
`server 34 receives Tso’s content characteristics from Tso’s network client
`12,” where network client 12 serves as the claimed playback device. Prelim.
`Resp. 36 (emphasis omitted).
`Patent Owner argues that “neither Petitioner nor Dr. Madisetti
`provides any explanation or support for their position that Tso’s transcoding
`server 34” receives a “request packet” from the network client 12. Prelim.
`Resp. 39 (citing Pet. 24–25; Ex. 1003 ¶¶ 91–92). Patent Owner asserts that
`neither Petitioner nor Dr. Madisetti explain “why a POSITA would have
`understood that the content characteristics are received from the network
`client 12 despite Tso’s express and contrary teachings that such information
`is received from the internet 18.” Prelim. Resp. 39 (citing Ex. 1004, 10:32–
`44). Because Petitioner contends that the network server 12 corresponds to
`the claimed playback device and the playback device is required by the
`claim to originate the first request and the information [1.b] in it (“a first
`request from a first playback device”), Patent Owner asserts that because
`network server 12 in Tso does not originate the content characteristics (the
`claimed “content generation operations”), Petitioner has not established a
`
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`IPR2023-00332
`Patent 9,158,745 B2
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