`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`VIDEOLABS, INC.,
`Patent Owner
`____________________
`
`Case: IPR2023-00630
`Patent No. 7,440,559 B2
`____________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,440,559 B2
`
`Petition Filing Date: February 23, 2023
`
`
`
`
`
`
`
`
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`
`
`

`

`7596348.2
`
`
`
`
`
`
`I. 
`II. 
`
`III. 
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1 
`DISCRETIONARY ANALYSIS FOR REVIEW ........................................... 2 
`A. 
`Fintiv Factors ......................................................................................... 2 
`B. 
`Becton Dickinson/Advanced Bionics/General Plastics Factors ............ 4 
`PATENT OVERVIEW .................................................................................... 5 
`A. 
`Background of Delivery and Downloading of Multimedia Content
`from Remote Devices ............................................................................ 5 
`Summary of the Alleged Invention of the ’559 Patent ......................... 6 
`B. 
`The Prosecution History ........................................................................ 8 
`C. 
`Level of Ordinary Skill in the Art ....................................................... 10 
`D. 
`IDENTIFICATION OF PRIOR ART ........................................................... 10 
`A.  U.S. Patent Application Publication No. 2003/0023427 to Cassin
`(“Cassin”) (Ex. 1004) .......................................................................... 10 
`U.S. Patent No. 7,243,136 to Huston (“Huston”) (Ex. 1005) ............. 12 
`B. 
`Other Evidence Regarding the State of the Art ................................... 14 
`C. 
`IDENTIFICATION OF CHALLENGES AND RELIEF REQUESTED ..... 14 
`V. 
`VI.  CLAIM CONSTRUCTION .......................................................................... 15 
`VII.  GROUNDS OF UNPATENTABILITY ........................................................ 18 
`A.  Ground 1: Cassin Anticipates Claims 1, 2, 4, 7, 8, 10, 13, 14, 16, 19,
`20, and 22 ............................................................................................ 18 
`Ground 2: Cassin and Huston Render Obvious Claims 1-24 ............. 31 
`B. 
`Ground 3: Huston Renders Obvious Claims 1-24 .............................. 51 
`C. 
`VIII.  SECONDARY CONSIDERATIONS ........................................................... 58 
`
`IV. 
`
`i
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`

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`7596348.2
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`IX.  MANDATORY NOTICES ........................................................................... 58 
`A. 
`Real Parties-in-Interest ........................................................................ 58 
`B. 
`Related Matters .................................................................................... 58 
`C. 
`Lead/Back-up Counsel ........................................................................ 58 
`D. 
`Service Information ............................................................................. 59 
`X.  GROUNDS FOR STANDING ...................................................................... 59 
`XI.  CONCLUSION .............................................................................................. 59 
`
`
`
`
`ii
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`

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`7596348.2
`
`
`Exhibit
`Number
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`
`
`
`
`EXHIBIT LIST
`
`Description
`
`U.S. Patent No. 7,440,559 to Muhonen, et al., “System and
`Associated Terminal, Method and Computer Program Product for
`Controlling the Flow of Content,” filed on October 22, 2003 (“the
`’559 patent”).
`
`File History of the ’559 patent (Application No. 10/690,692 (“’559
`patent FH”)).
`Expert Declaration of Anthony Wechselberger.
`
`U.S. Patent Application Publication No. 2003/0023427 to Cassin
`filed on July 26, 2001 (“Cassin”).
`
`U.S. Patent No. 7,243,136 to Huston filed on January 17, 2001
`(“Huston”).
`
`U.S. Patent No. 7,447,486 to Tamura filed on March 25, 2003
`(“Tamura”).
`
`U.S. Patent No. 6,996,627 to Carden filed on May 25, 1999
`(“Carden”).
`
`U.S. Patent No. 7,721,337 to Syed filed on October 26, 2001
`(“Syed”).
`
`U.S. Patent No. 6,669,564 to Young filed on June 27, 2000
`(“Young”).
`
`U.S. Patent No. 6,732,183 to Graham filed on May 4, 2000
`(“Graham”).
`
`U.S. Patent Application Publication No. 2002/0023264 to Aaltonen
`filed on June 29, 2001 (“Aaltonen”).
`
`U.S. Patent Application Publication No. 2002/0087997 to Dahlstrom
`filed on December 27, 2001 (“Dahlstrom”).
`
`iii
`
`

`

`7596348.2
`
`
`Exhibit
`Number
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`
`
`
`
`Description
`
`U.S. Patent No. 6,507,727 to Henrick filed on October 13, 2000
`(“Henrick”).
`
`U.S. Patent No. 6,112,226 to Weaver filed on October 22, 1997
`(“Weaver”).
`
`U.S. Patent Application Publication No. 2002/0059624 to Machida
`filed on August 1, 2001 (“Machida”).
`
`Starz Entm’t, LLC v. VL Collective IP, LLC, Amended Joint Claim
`Construction Chart, pages 1-14 (Dkt. 80).
`
`VideoLabs, Inc. v. Amazon.com, Inc., Opening Claim Construction
`Brief filed by Defendants, pages 1-32 (Dkt. 48), C.A. 6-22-cv-00079
`(W.D. Tex.).
`
`VideoLabs, Inc. v. Amazon.com, Inc., Patent Owner’s Responsive
`Claim Construction Brief, pages 1-32 (Dkt. 63), C.A. 6-22-cv-00079
`(W.D. Tex.).
`
`VideoLabs, Inc. v. Netflix Inc., Motion to Dismiss for Failure to State
`a Claim filed by Petitioner, pages 1-5 (Dkt. 15).
`
`VideoLabs, Inc. v. Netflix Inc., Opening Brief in Support re Motion to
`Dismiss for Failure to State a Claim filed by Petitioner, pages 1-31
`(Dkt. 16).
`
`VideoLabs, Inc. v. Netflix Inc., Answering Brief in Opposition re
`Motion to Dismiss for Failure to State a Claim filed by Patent
`Owner, pages 1-32 (Dkt. 18).
`
`VideoLabs, Inc. v. Netflix Inc., Reply Brief re Motion to Dismiss for
`Failure to State a Claim filed by Petitioner, pages 1-18 (Dkt. 19).
`
`Starz Entm’t, LLC v. VL Collective IP, LLC, Claim Construction
`Order, pages 1-4 (Dkt. 88).
`
`iv
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`

`

`7596348.2
`
`I.
`
`
`
`
`
`INTRODUCTION
`Netflix, Inc. (“Petitioner”) respectfully requests Inter Partes Review of
`
`claims 1-24 of U.S. Patent No. 7,440,559 (Ex. 1001), filed on October 22, 2003
`
`and assigned to VideoLabs, Inc. (“Patent Owner”).
`
`At its core, the ’559 patent purports to cover the basic idea of controlling the
`
`flow of content to a terminal from a server. The server controls the terminal with
`
`basic status information, such as a list of content stored in the terminal, or a list of
`
`content available from the server. Based on the status information, the content flow
`
`manager can instruct the terminal to delete content from the memory of the
`
`terminal and/or download content from the source of content (e.g., an origin server
`
`or digital broadcast receiver).
`
`Unsurprisingly, this simple concept was well-known before the 2003 filing
`
`date of the ’559 patent. For example, independent claims 1, 7, 13 and 19, and
`
`dependent claims 2, 4, 8, 10, 14, 16, 20 and 22 are anticipated by Cassin, which
`
`predates the ’559 patent by two years but was never considered by the Patent
`
`Office. The remaining claims contain minor variations, all of which were well-
`
`known in the art at the time of the purported invention. In addition, claims 1-24 are
`
`rendered obvious by the combination of Cassin and Huston and by Huston alone.
`
`Huston also predates the ’559 patent and was never considered by the Patent
`
`
`
`1
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`

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`7596348.2
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`Office. Thus, as described further in this Petition, the prior art renders every claim
`
`
`
`
`
`of the ’559 patent anticipated or obvious and therefore unpatentable.
`
`As demonstrated below, there is a high likelihood that Petitioner will prevail
`
`with respect to each of the challenged claims and, therefore, Petitioner respectfully
`
`requests that the Board institute trial.
`
`II. DISCRETIONARY ANALYSIS FOR REVIEW
`There is no reason for the Board to discretionarily deny this petition.
`
`Petitioner hereby stipulates that, if the Board grants institution, it will not assert in
`
`a parallel district court proceeding a ground that was raised in this proceeding.
`
`When a petitioner presents such a stipulation, “the PTAB will not discretionarily
`
`deny institution in view of parallel district court litigation.” USPTO Director’s
`
`Memorandum: Interim Procedure For Discretionary Denials In AIA Post-Grant
`
`Proceedings With Parallel District Court Litigation, 3, 7 (June 21, 2022); Sand
`
`Revolution II, LLC v. Cont’l Intermodal Grp. – Trucking LLC, IPR2019-01393,
`
`Paper 24, 11-12 (PTAB June 16, 2020).
`
`A. Fintiv Factors
`On balance, the Fintiv factors weigh against denying institution of trial in
`
`this matter. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20,
`
`2020) (precedential).
`
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`2
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`7596348.2
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`
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`For example, while no motion to stay pending IPR has yet been filed in the
`
`Delaware district court case,1 Fintiv factor one is neutral given that courts
`
`commonly stay cases upon IPR institution. VMWare, Inc. v. Intell. Ventures II
`
`LLC, IPR2020-00859, Paper 13 at 12 (PTAB Nov. 5, 2020) (finding factor one
`
`neutral, even though Petitioner had not previously sought a stay, and despite Patent
`
`Owner’s argument that the district court judge was “unlikely” to issue a stay
`
`pending IPR institution).
`
`Fintiv factors two (trial date), three (investment in proceedings), and four
`
`(overlap of issues) all weigh against the Board’s exercising its discretion to deny
`
`institution. The Delaware district court case is in its infancy: there have been no
`
`infringement or invalidity contentions, or claim construction exchanges or briefing;
`
`the initial case management conference has yet to be held; a claim construction
`
`hearing has not been calendared; and the trial date has yet to be set. Petitioner filed
`
`a partial motion to dismiss, including for lack of patentable subject matter under 35
`
`U.S.C. § 101, on June 10, 2022. Exs. 1019-1022. A hearing on that motion was
`
`held on February 9, 2023, and a decision is pending.
`
` Fintiv factor five is neutral because Petitioner and Patent Owner are the
`
`same parties as in the district court. Weatherford U.S. v. Enventure Global Tech.,
`
`
`1 See VideoLabs, Inc. v. Netflix Inc., Case 1:22-cv-00229 (D. Del.).
`
`
`
`3
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`

`

`7596348.2
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`Inc., IPR2020-01684, Paper 16 at 11‒13 (PTAB Apr. 14, 2021). Fintiv explained
`
`
`
`
`
`that “it is often reasonable for a petitioner to wait to file its petition until it learns
`
`which claims are being asserted against it in the parallel proceeding.” Fintiv,
`
`IPR2020-00019, Paper 11 at 11. Here, Petitioner filed this Petition even before
`
`that, as Patent Owner has yet to serve contentions fully identifying the purportedly
`
`infringed claims. Accordingly, Petitioner has been diligent in pursuing its Petition;
`
`this too weighs against the Board’s exercising its discretion to deny institution.
`
`Finally, Fintiv factor six (other circumstances) weighs against denying
`
`institution. This Petition is strong on the merits and demonstrates that all claims of
`
`the ’559 patent are rendered anticipated or obvious.
`
`Considering the Fintiv factors overall, institution would best serve the
`
`efficiency and integrity of the system.
`
`B.
`Becton Dickinson/Advanced Bionics/General Plastics Factors
`Denying institution under 35 U.S.C. § 325(d) would not be appropriate here,
`
`because the grounds and arguments relied on by this Petition were not previously
`
`presented to the Patent Office. None of the relied-upon art was considered during
`
`prosecution. This is the only IPR that has ever been filed against the challenged
`
`claims.
`
`Because this is Petitioner’s first petition against the ’559 patent, the General
`
`Plastic factors do not weigh against institution. See General Plastic Indus. Co. v.
`
`
`
`4
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`

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`7596348.2
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`Canon Kabushiki Kaisha, IPR2016-01357, Paper 19, 16 (PTAB Sept. 6, 2016)
`
`
`
`
`
`(precedential).
`
`III. PATENT OVERVIEW2
`A. Background of Delivery and Downloading of Multimedia Content
`from Remote Devices
`Downloading content from a remote device through a network was well-
`
`known before 2003. By 2000, following the dot-com boom of the late 1990s, the
`
`popularity of the Internet increased, and users were turning from traditional media
`
`sources, such as television and newspaper, to the Internet to receive media content.
`
`Ex. 1007, 1:12-16. A user may go to media servers containing information from
`
`various content providers. Id., 1:16-19. For example, techniques for
`
`transmitting/receiving data via a cellular phone were developed well before 2003,
`
`so that users can experience content with a large amount of data, such as video and
`
`music, on their cellular phones. Ex. 1006, 1:17-20.
`
`Those in the art recognized that, by 2003, servers could provide to a remote
`
`client, automatic delivery of multimedia content, such as entertainment content.
`
`2 This background, and the Grounds of Unpatentability herein, are further
`
`supported by the Declaration of Petitioner’s expert, Anthony Wechselberger, who
`
`has over twenty-five years of experience related to video transmission and
`
`reception. (Ex. 1003.)
`
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`7596348.2
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`Ex. 1007, 1:29-34; Ex. 1009, Abstract; see also Ex. 1010, Abstract. Prior to the
`
`
`
`
`
`’559 patent, it was a known problem that transmission of content was limited by
`
`bandwidth and connection rates of mobile devices. Ex. 1013, 1:42-57. A common
`
`goal was to improve network efficiency from a transmitter to a terminal. Id.
`
`Further, deleting content from a device that was expired was well-known and
`
`common sense. See, e.g., Ex. 1015, [0024, 259]; Ex. 1003, ¶¶12-14,33-34.
`
`B.
`Summary of the Alleged Invention of the ’559 Patent
`The ’559 patent, filed on October 22, 2003, claims no other priority. Ex.
`
`1001.
`
`The ’559 patent is purportedly directed to an improved system and
`
`associated terminal, method and computer program product for controlling the
`
`flow of content. Id., 2:57-62. As the ’559 patent acknowledges, “[d]igital
`
`broadband data broadcast networks [were] known,” including the goal to achieve
`
`“efficient delivery of digital services.” Id., 1:58-67, 2:8-11. The specification of the
`
`’559 patent admits that the concept of downloading content to mobile terminals
`
`was well-known in the art, including when to deliver new pieces of content to the
`
`mobile terminal and what new pieces of content to deliver. Id., 2:25-39. The ’559
`
`patent alleges that “current techniques for downloading content can suffer from
`
`inefficient content flow control between the mobile terminal and the server or
`
`content provider.” Id., 2:47-49.
`
`
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`7596348.2
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`
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`The ’559 patent purports to solve this alleged problem using “a terminal
`
`capable of sending a content status including terminal status information” to a
`
`content flow manager, which can control the flow of content to the terminal. Id.,
`
`3:10-20. The “content status” includes status information regarding the terminal.
`
`Id., 10:60-67. The “terminal status information” includes information that accounts
`
`for user preferences, capabilities of the terminal and/or previous content stored by
`
`the terminal, and remaining storage capacity of the memory of the terminal. See
`
`id., 3:1-4, 12:18-30.
`
`In addition, the ’559 patent discloses that “the control flow manager can be
`
`capable of controlling the terminal to download one or more pieces of content from
`
`the source of content based upon server status information including a listing of
`
`available piece(s) of content from the source.” Id., 3:31-36. For example, the
`
`source of content (such as origin server 24 or digital broadcast receiver 28) is
`
`associated with the network entity operating the content flow manager. Id., 12:37-
`
`43.
`
`
`
`Based upon the terminal status information and/or the server status
`
`information, the content flow manager can control the flow of content to the
`
`terminal, such as by instructing the terminal to delete at least one piece of content
`
`from the memory of the terminal and/or download at least one piece of content
`
`from the source of content. Id., 3:18-36. For example, the content flow manager
`
`
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`7596348.2
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`can “designate the expired piece(s) of content as the piece(s) of content to delete
`
`
`
`
`
`from memory of the terminal.” Id., 13:4-10.
`
`C. The Prosecution History
`The ’559 patent issued from U.S. Patent Appl. No. 10/690,692 (“the ’692
`
`application”), which was filed on October 22, 2003. Ex. 1001.
`
`During prosecution of the ’692 application, the Examiner rejected claims 1-
`
`24 as being anticipated by U.S. Patent No. 5,450,482 to Chen et al. (“Chen”) in a
`
`Non-final Office Action. Ex. 1002, 90. In response, the applicant amended
`
`independent claim 1, adding the limitation “wherein the at least one piece of
`
`content available from the source, and the content for which the processor is
`
`configured to control the flow, comprise multimedia content consumable by the
`
`terminal” Id., 71 (emphasis added). Similarly, the applicant amended independent
`
`claims 7, 13, and 19 to recite “wherein the at least one piece of content stored in
`
`the memory, and the content for which the network entity is configured to control
`
`the flow, comprise multimedia content consumable by the terminal.” Id., 72-75
`
`(emphasis added).
`
`The applicant asserted that “Chen discloses a network automatic call
`
`distribution system (ACD) for a network including a number of switches
`
`interconnecting a number of telephones and operator switches.” Id., 78. In
`
`distinguishing the prior art, the applicant contended that “Chen discloses switch
`
`
`
`8
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`7596348.2
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`status including a listing of switches and services available from those switches[,]”
`
`
`
`
`
`not “a server status including a listing of content available from the source, similar
`
`to the claimed invention.” Id., 79-80 (emphasis in original). Therefore, the
`
`applicant contended, Chen purportedly did not “teach or suggest a network entity
`
`controlling the flow of content to a terminal based on terminal status information,
`
`as well as server status information for a source of content, the server status
`
`information including a listing of one or more pieces of content available from the
`
`source” as recited in claim 1. Id., 78 (emphasis added). The applicant also argued
`
`that Chen purportedly did not disclose a terminal status including a listing of
`
`content stored in memory of the terminal as recited in claims 7, 13 and 19. Id., 79-
`
`80 (emphasis added).
`
`In a Final Office Action, the Examiner maintained the rejection that claims
`
`1-24 are anticipated by Chen. Id., 64-65. To overcome the prior art rejection, the
`
`applicant amended claims 1, 7, 13 and 19 to recite a terminal that is remote, and
`
`argued that the cited prior art purportedly did not disclose “multimedia content.”
`
`Id., 42-47, 51-53 (emphasis added).
`
`In response to the prior art rejection in the second Non-final Official Action,
`
`the applicant argued, without any amendment, that the cited reference, Aubault
`
`(U.S. Patent Application Publication No. 2005/0086318), did not qualify as prior
`
`art. Id., 22-23.
`
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`7596348.2
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`
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`Instead of searching for or considering any other references that would
`
`qualify as prior art, the Examiner decided to allow the claims even though only a
`
`mere twenty references were identified and, of that list, only five references were
`
`cited. Id., 13. The ’559 patent issued on October 21, 2008. Ex. 1001.
`
`D. Level of Ordinary Skill in the Art
`A person of ordinary skill in the art at the time of the earliest available
`
`priority date (October 22, 2003) for the ’559 patent (“POSITA”) would have had a
`
`bachelor’s degree in electrical or computer engineering, or a closely related
`
`scientific field such as computer science, and two years of work experience with
`
`multimedia content transmission and management. Alternatively, any lack of
`
`experience could be remedied with additional education (e.g., a master’s degree),
`
`and likewise, a lack of education can be remedied with additional work experience
`
`(e.g., 4-5 years). Ex. 1003, ¶26.
`
`IV.
`
`IDENTIFICATION OF PRIOR ART
`A. U.S. Patent Application Publication No. 2003/0023427 to Cassin
`(“Cassin”) (Ex. 1004)
`Cassin is prior art under pre-AIA § 102(a) and (e) because it was filed on
`
`July 26, 2001 and published on January 30, 2003. Cassin was not disclosed to or
`
`considered by the Patent Office during prosecution of the ’559 patent.
`
`Cassin is directed to delivery of media content (including audio and video)
`
`via a network to a remote device. Ex. 1004, [0099]; Fig. 1. As shown in Fig. 6
`
`
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`10
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`

`7596348.2
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`below, the system for implementing media content delivery includes a server and a
`
`
`
`
`
`client, which may be implemented as a portable device, a wireless device, or a
`
`portable wireless device. Id., [0141]. The server and client each include software
`
`modules. Id., [0143-144]. The database 640 stores metadata, which is information
`
`relating to the media content available to the system. Id., [0146]. Cassin teaches
`
`that the media files may be stored in the content repository 645. Id.
`
`CLIENT 
`
`SERVER 
`
`
`
`Ex. 1004, Fig. 6 (annotated).
`
`In one preferred embodiment, the remote client and server may interact in
`
`accordance with two protocols. Id., [0164]. The first protocol, illustrated in Fig. 8,
`
`the client sends user information to the server. Id. The server then uses the user
`
`information to query the database 640, which responds with a list of all content to
`
`which that user is entitled. Id. The server sends the list to the client, and
`
`
`
`11
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`

`7596348.2
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`subsequently makes a first attempt to send a first media content item to the client.
`
`
`
`
`
`Id. If the client already has the media content item in its local content repository
`
`685, the client provides an indication to the server that it already has the media
`
`content item such that the server will offer the next media item on the list. Id.; see
`
`also id., Fig. 8.
`
`According to the second protocol, as illustrated in Fig. 9, the client sends
`
`user information to the server. Ex. 1004, [0166]. In response to the client’s request,
`
`the server uses the user information to query the database 640, to which the
`
`database 640 responds with a first list of all content to which the user is entitled.
`
`Id. The client identifies the media content items on the first list that it does not
`
`already have in its local content repository 685, and returns a second list including
`
`only those media content items. Id. The server then delivers those media content
`
`items included in the second list to the client. Id. Ex. 1003, ¶¶35-39.
`
`B. U.S. Patent No. 7,243,136 to Huston (“Huston”) (Ex. 1005)
`Huston is prior art under pre-AIA § 102(a) and 102(e) because it was filed
`
`on January 17, 2001, published on January 17, 2002, and issued on July 10, 2007.
`
`Huston was not disclosed to or considered by the Patent Office during prosecution
`
`of the ’559 patent.
`
`Huston is directed to managing content over a communications link. Ex.
`
`1005, Abstract. As shown in Fig. 2A (reproduced below), the system includes a
`
`
`
`12
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`

`7596348.2
`
`differencing engine 240 (blue) that is communicatively coupled to traffic servers
`
`
`
`
`
`216, 218 (red) via communications links 242, 244, respectively, and to Internet 208
`
`via a communications link 246. Id., 6:15-18. The origin servers 202, 204, 206
`
`(green) host content from one or more content providers. Id., 5:44-46. The
`
`differencing engine 240 may be co-located with the origin servers 202, 204, 206.
`
`Id., 7:38-49.
`
`
`
`Ex. 1005, Fig. 2A (annotated).
`
`The differencing engine 240 is configured to selectively cause content on the
`
`traffic servers 216, 218 to be refreshed, e.g., to be deleted from the traffic servers
`
`216, 218 and/or replaced with newer versions of the deleted content from the
`
`
`
`13
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`7596348.2
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`origin servers 202, 204, 206. Id., 6:18-26. To delete content from the traffic servers
`
`
`
`
`
`216, 218, the differencing engine 240 can issue one or more “delete” commands to
`
`the traffic servers 216, 218. Id., 6:33-41. The selection of content to be deleted
`
`from the traffic servers 216, 218 may be determined by comparing the versions of
`
`content stored on caches 236, 238 with the versions of the corresponding content
`
`stored on the origin servers 202, 204, 206. Id., 6:42-48. To determine differences
`
`between content stored on the traffic servers 216, 218 and the origin servers 202,
`
`204, 206, Huston discloses that the differencing engine 240 may request from the
`
`origin servers 202, 204, 206 information about the versions of data stored on the
`
`origin servers 202, 204, 206 that are also stored on the traffic servers 216, 218. Id.,
`
`6:66-7:5. Ex. 1003, ¶¶40-42.
`
`C. Other Evidence Regarding the State of the Art
`The prior art in Exhibits 1006-1015 further reflects the state of the art, level
`
`of ordinary skill in the art, common knowledge in the art, and/or common sense in
`
`the art, and is therefore also relevant to the background of the ’559 patent and the
`
`invalidity analysis herein. Ex. 1003, ¶43.
`
`V.
`
`IDENTIFICATION OF CHALLENGES AND RELIEF REQUESTED
`Petitioner requests cancellation of all claims of the ’559 patent based on the
`
`following grounds:
`
`
`
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`14
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`

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`7596348.2
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`
`
`
`
`
`Ground
`
`Challenged Claims
`
`Basis
`
`References
`
`1, 2, 4, 7, 8, 10, 13, 14, 16,
`
`§102
`
`Cassin
`
`19, 20, 22
`
`1-24
`
`1-24
`
`§103
`
`Cassin, Huston
`
`§103
`
`Huston
`
`1
`
`2
`
`3
`
`
`
`VI. CLAIM CONSTRUCTION
`The Board construes claims “using the same claim construction standard that
`
`would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37
`
`C.F.R. § 42.100(b). Under this standard, the words of a claim generally are given
`
`their “ordinary and customary meaning,” which is the meaning the term would
`
`have to a person of ordinary skill at the time of the invention, in the context of the
`
`entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303,
`
`1312–13 (Fed. Cir. 2005) (en banc).
`
`For this IPR, Petitioner applies the plain and ordinary meaning of all claim
`
`terms and contends that no claim terms require specific construction to resolve the
`
`
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`15
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`7596348.2
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`unpatentability issues presented herein.3 See, e.g., Aurobindo Pharma USA, Inc. v.
`
`
`
`
`
`Andrx Corp., IPR2017-01648, Paper 34, 11 (PTAB Dec. 28, 2018) (citing Nidec
`
`Motor Corp. v. Zhongshan Borad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`
`Cir. 2017)). Ex. 1003, ¶¶55-56.
`
`Patent Owner apparently agrees with this approach. In a related district court
`
`proceeding, Patent Owner applied the plain and ordinary meaning of all claim
`
`terms without requiring specific construction while the opposing party proposed a
`
`construction for one term, “download.” There, the parties fully briefed the
`
`construction of the disputed term. Starz Entm’t, LLC v. VL Collective IP, LLC,
`
`Amended Joint Claim Construction Chart, page 7 (Dkt. 80), Case No. 1:21-cv-
`
`01448 (D. Del.)(Ex. 1016)(hereinafter “Starz”). A claim construction order has
`
`issued, as summarized in the table below. Starz, Claim Construction Order, page 3
`
`(Dkt. 88), Case No. 1:21-cv-01448 (D. Del.)(Ex. 1023).
`
`
`3 Petitioner does not, however, waive any argument in any litigation. The parallel
`
`Delaware district court case is in its infancy, and there have been no claim
`
`construction exchanges or briefing. Petitioner does not set forth here arguments
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`regarding claim construction disputes not properly addressed in this forum, such as
`
`those related solely to non-infringement, indefiniteness, lack of written description,
`
`and inoperability. 35 U.S.C. §§101 and 112.
`
`
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`16
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`7596348.2
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`
`Claim Term
`
`“download”
`
`[Claims 2, 4]
`
`
`
`Patent Owner’s
`Proposed
`Construction
`No construction
`necessary
`
`Alternatively, if
`the Court decides
`to construe the
`term, “transfer to
`the terminal”
`
`
`
`
`
`Opposing Party’s
`Proposed
`Construction
`Plain and ordinary
`meaning, i.e.,
`“Copy and store in
`memory of the
`terminal for
`subsequent use”
`
`Claim
`Construction
`Order
`“copy and store
`in memory of the
`terminal for
`subsequent use”
`
`Similarly, in another related district court proceeding involving the ’559
`
`patent, neither Patent Owner nor the opposing party offered a specific construction
`
`for any claim term from the patent. VideoLabs, Inc. v. Amazon.com, Inc., Opening
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`Claim Construction Brief filed by Defendants, page 1 (Dkt. 48), Case No. 6:22-cv-
`
`00079 (W.D. Tex.)(Ex. 1017)(hereinafter “Amazon.com”) ; Amazon.com, Patent
`
`Owner’s Response Claim Construction Brief, pages 2-30 (Dkt. 63), Case No. 6:22-
`
`cv-00079 (W.D. Tex.)(Ex. 1018).
`
`Nevertheless, the asserted prior art references teach all of the elements of the
`
`challenged claims under any of the above-discussed constructions, as set forth
`
`infra in Section VII. Ex. 1003, ¶¶57-58.
`
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`17
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`7596348.2
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`VII. GROUNDS OF UNPATENTABILITY
`A. Ground 1: Cassin Anticipates Claims 1, 2, 4, 7, 8, 10, 13, 14, 16,
`19, 20, and 22
`Cassin anticipates claims 1, 2, 4, 7, 8, 10, 13, 14, 16, 19, 20, and 22. Similar
`
`
`
`limitations of the claims will be grouped together for purposes of this and other
`
`grounds in this petition. Ex. 1003, ¶48.
`
`1.
`
`1[pre]: “An apparatus comprising:”
`7[pre]: “An apparatus comprising:”
`13[pre]: “A method for controlling a flow of content, the
`method comprising:”
`19[pre]: “A computer-readable storage medium having
`computer-readable program code portions stored therein,
`the computer-readable program code portions comprising:”
`To the extent the preambles are limiting, Cassin discloses the subject matter
`
`of each preamble for independent claims 1, 7, 13, 19. Ex. 1003, ¶¶62,85-
`
`86,104,122-123.
`
`For example, Cassin discloses a system and method for implementing a
`
`media content delivery and playback scheme that controls the flow of content
`
`(which satisfies claim 13[pre]) for the reasons described below. Ex. 1004, [0140].
`
`System 600 includes a server computer system 610 that has a server
`
`computer with a first processor, as shown in yellow in Fig. 6 below, which is the
`
`claimed apparatus in claim 1. Ex. 1004 [0140], Fig. 6. The processor of the server
`
`computer executes instructions including a first software module 632, which may
`
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`18
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`7596348.2
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`be stored in a storage device associated with the server computer, which is the
`
`
`
`
`
`claimed computer-readable storage medium in claim 19. Id., [0142]. The system
`
`also includes a client computer system 620 that has a client computer with a
`
`processor, as shown in green in Fig. 6 below, which is the claimed apparatus in
`
`claim 7. Id., [0140], Fig. 6 (green); Ex. 1003, ¶63.
`
`Ex. 1004, Fig. 6 (annotated).
`
`
`
`2.
`
`1[a][1]: “a processor configured to receive, from a terminal
`located remote from the apparatus, a content status
`including terminal status information, and”
`7[a][1]: “a controller operable with a terminal including a
`memory configured to store at least one piece of content,
`wherein the controller is configured to send a content status
`
`
`
`19
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`

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`7596348.2
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`
`
`
`
`
`including terminal status information comprising a listing
`of at least one piece of content stored in the memory,
`wherein the controller is configured to send the content
`status to a remote network entity,”
`13[a]: “receiving, at a network entity from a terminal
`located remote therefrom, a content status including
`terminal status information comprising a listing of at least
`one piece of content stored in a memory of the terminal;
`and”
`19[a]: “a first executable portion configured to receive, at a
`network entity from a terminal located remote therefrom, a
`content status including terminal status information
`comprising; and”
`Cassin discloses the subject matter for these limitations. Ex. 1003, ¶¶64-
`
`70,87-95,105-111,125-127.
`
`As depicted in Fig. 6, Cassin discloses that the client computer (the
`
`“terminal”) has a second software module that includes a first software
`
`coordination module 665 (“a controller”) that coordinates the exchange of
`
`information with the server computer. Ex. 1004, [0151], Fig. 6. The second
`
`software module also has a local content repository 685, or “a memory,” to store
`
`media “content” in the form of media files. Id., [0156], Fig. 6. The local content
`
`repository 685 may be a stor