Trials@uspto.gov
`571-272-7822
`
`Paper 35
`Date: September 27, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`Patent Owner.
`
`IPR2022-00795
`Patent 8,356,251 B2
`
`Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`1
`
`Comcast, Ex. 1164
`
`
`571-272-7822
`
`Paper 35
`Date: September 27, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`Patent Owner.
`
`IPR2022-00795
`Patent 8,356,251 B2
`
`Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`1
`
`Comcast, Ex. 1164
`
`
`
`IPR2022-00795
`Patent 8,356,251 B2
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`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`In this inter partes review, Google LLC (“Petitioner”) challenges
`
`claims 1, 2, and 5–9 of U.S. Patent 8,356,251 B2 (Ex. 1001 (“ʼ251 Patent”)),
`
`assigned to Touchstream Technologies, Inc. (“Patent Owner”).
`
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`
`Decision, issued pursuant to 35 U.S.C. § 318(a), addresses issues and
`
`arguments raised during the trial in this inter partes review. For the reasons
`
`discussed below, we determine that Petitioner has failed to prove by a
`
`preponderance of the evidence that claims 1, 2, and 5–9 of the ’251 Patent
`
`are unpatentable (see 35 U.S.C. § 316(e) (2018) (“In an inter partes review
`
`instituted under this chapter, the petitioner shall have the burden of proving a
`
`proposition of unpatentability by a preponderance of the evidence.”)).
`
`
`
`B. Procedural History
`
`Petitioner filed a petition for inter partes review (Paper 1 (“Pet.” or
`
`“Petition”)) challenging claims 1–5, 8, 11, 12, 14, 15, 27, and 28 of the ʼ251
`
`Patent.
`
`Petitioner relies upon the following prior art references:
`
`Reference
`
`Exhibit No.
`
`Muthukumarasamy et al., US 2010/0241699 A1, published
`Sept. 23, 2010 (“Muthukumarasamy”)
`
`Hayward, US 8,918,812 B2, issued Dec. 23, 2014
`(“Hayward”)
`
`1008
`
`1009
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`2
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`(Pet. 2). Petitioner challenges the claims on the following grounds:
`
`Claim(s) Challenged
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`1, 2, 5–9
`
`1, 2, 5–9
`
`103
`
`103
`
`Muthukumarasamy
`
`Muthukumarasamy, Hayward
`
`(Pet. 2–3). Patent Owner timely filed a Preliminary Response (Paper 6
`
`(“Prelim. Resp.”)). With our authorization, Petitioner filed a Reply to Patent
`
`Owner’s Preliminary Response (Paper 7 (“Pet. Reply to POPR”)), and
`
`Patent Owner filed a Sur-reply to Petitioner’s Preliminary Reply (Paper 9
`
`(“PO Sur-reply to Pet. Reply”)). We instituted trial on the asserted grounds
`
`of unpatentability (Paper 10 (“Inst. Dec.” or “Institution Decision”)).
`
`
`
`After institution, Patent Owner filed a Request for Rehearing and
`
`review by the Precedential Opinion Panel (Paper 12). The Precedential
`
`Opinion Panel denied review (Paper 19, 2). We denied rehearing (Paper 20,
`
`3).
`
` During the trial, Patent Owner filed a Response (Paper 18 (“PO
`
`Resp.”)), Petitioner filed a Reply (Paper 22 (“Pet. Reply” or “Petitioner
`
`Reply”)), and Patent Owner filed a Sur-reply (Paper 25 (“PO Sur-reply” or
`
`“Patent Owner Sur-reply”). An oral hearing was held on June 13, 2023, a
`
`transcript of which appears in the record (Paper 34 (“Tr.”)).
`
`
`
`Petitioner relies on testimony from Dr. Benjamin B. Bederson
`
`(Ex. 1005). Patent Owner relies on testimony from Dr. Kevin C. Almeroth
`
`(Ex. 2022). Patent Owner entered into the record a transcript of the
`
`deposition of Dr. Bederson (Ex. 2021). No deposition of Dr. Almeroth was
`
`entered into the record (see Tr. 103:22–24 (Patent Owner’s counsel noting
`
`that “Petitioner did not cross-examine Dr. Almeroth”)).
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`C. Real Parties in Interest
`
`Patent Owner identifies itself as the real-party-in-interest (Paper 5, 1).
`
`Petitioner identifies itself as the real-party-in-interest (Pet. 79).1
`
`
`
`D. Related Matters
`
`Petitioner and Patent Owner indicate the ʼ251 Patent was asserted in
`
`the following district court proceeding: Touchstream Techs, Inc. v. Google,
`
`LLC, No. 6-21-cv-00569 (W.D. Tex.) (Pet. 79; Paper 5, 1). Petitioner
`
`further indicates that the ʼ251 Patent was asserted in the following district
`
`court proceeding: Touchstream Techs., Inc v. Vizbee, Inc., No. 1-17-cv-
`
`06247 (S.D.N.Y.) (Pet. 79; Paper 30, 1). Patent Owner additionally
`
`identifies the following cases:
`
`Touchstream Technologies, Inc. v. Altice USA, Inc., No. 2:23-cv-
`00060-JRG (E.D. Tex., Marshall Division);
`
`Touchstream Technologies, Inc. v. Comcast Cable Commc’ns,
`LLC, No. 2:23-cv-00062 (E.D. Tex., Marshall Division); and
`
` Touchstream Technologies, Inc. v. Charter Commc’ns, Inc., No.
`2:23-cv-00059 (E.D. Tex., Marshall Division)
`
`(Paper 30,1).
`
`We are concurrently issuing final written decisions in IPR2022-
`
`00793, involving related U.S. Patent 8,782,528 B2, and IPR2022-00794,
`
`involving related U.S. Patent 8,904,289 B2.
`
`
`1 Petitioner states that Google LLC is a subsidiary of XXVI Holdings Inc.,
`which is a subsidiary of Alphabet Inc., and that XXVI Holdings Inc. and
`Alphabet Inc. are not real parties-in-interest to this proceeding (Pet. 79 n.4).
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`E. The ’251 Patent (Ex. 1001)
`
`The ʼ251 Patent, titled “Play Control of Content on a Display
`
`Device,” issued January 15, 2013 (Ex. 1001, codes (45), (54)). The
`
`ʼ251 Patent describes a system that “allow[s] a personal computing device,”
`
`e.g., a mobile phone, “to be used to select different content to be played on a
`
`remote display,” e.g., a television set, and “allow[s] the user to control how
`
`the content is displayed on the display device using the personal computing
`
`device” (Ex. 1001, 2:11–15, 2:27–33). Figure 1, reproduced below, is a
`
`block diagram illustrating an exemplary system (Ex. 1001, 2:41–42).
`
`
`As shown in the block diagram of Figure 1, “a first device (e.g., a personal
`
`computing device) 20” connects to and “acts as a controller” for “a second
`
`device (e.g., a television set 22 with a display 23) [and the second device]
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`acts as a receiver to play content selected by a user of the first device and
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`[the second device] to respond to commands that originate at the personal
`
`computing device” (Ex. 1001, 3:1–7). For example, television set 22 can be
`
`commanded “to access a content provider 30 through the Internet 21, load a
`
`specific media player, load the media player-specific content (e.g., a video)
`
`and play the content on the television display 23” (Ex. 1001, 3:18–23).
`
`Furthermore, personal computing device 20 controls the selection of
`
`and playback of content on television set 22 through server system 24, rather
`
`than through directly controlling television set 22 (Ex. 1001, 3:10–18). In
`
`particular,
`
`[w]hen a user makes a selection using the personal computing
`device 20 for particular content to be displayed on the television
`display 23, a signal is sent through the Internet (or other network)
`21 to the server system 24. A corresponding command signal
`then is passed along [from server system 24] to the connected
`television set 22 which acts on a transmission code contained
`within the signal and performs specified commands
`
`(Ex. 1001; see Ex. 1001, 3:36–41 (“user-initiated play commands,” e.g., play
`
`pause, stop, rewind, fast forward, “are passed from the user's personal
`
`computing device 20 through the server system 24, to the television set
`
`22”)). More specifically, personal computing device 20 sends a signal for
`
`controlling media playback to server system 24; server system 24, in turn,
`
`sends a signal to television set 22, which correspondingly displays the
`
`controlled media (Ex. 1001, 3:18–36).
`
`The signal from personal computing device 20 (which selects content
`
`or controls playback) is formatted and transmitted by personal computing
`
`device 20 in a message sent to server system 24 (Ex. 1001, 4:27–29). That
`
`The message from the mobile phone 20 contains a transmission
`code that includes data regarding . . . the secondary display it
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`wants to connect to (e.g., television set 22 with display 23), the
`location and name of the media player for the selected video the
`command (e.g., play, pause, rewind, etc.), and the video file to
`be acted upon
`
`(Ex. 1001, 4:29–35, Fig. 3). That message “is transmitted over the Internet
`
`21 and is received by the server system 24” (Ex. 1001, 4:40–42). Server
`
`system 24 then “converts the incoming commands from the mobile device
`
`20 into the correct JavaScript (or other programming) code used by the
`
`[television set] 22 to control the specific player (block 120)” (Ex. 1001,
`
`5:67–6:3). That is, the server “interpret[s] and convert[s] a standard or
`
`universal command (e.g., play, pause, etc.) into the specific command
`
`recognized by the media player” playing content on the television set 22 (Ex.
`
`1001, 5:58–62). Then, server system 24 “copies the converted version of the
`
`message to the database 34 associated with the [television set] 22” (Ex.
`
`1001, 6:3–6). Television set 22 then receives the server’s converter m essage
`
`(Ex. 1001, 6:23–29) and then “executes the message” (Ex. 1001, 6:30–33),
`
`e.g., “load[s] and unload[s] different video players” (Ex. 1001, 6:34–48).
`
`1. Illustrative Claim
`
`Challenged claim 1, the sole challenged independent claim, is
`
`reproduced below.
`
`1. A machine-implemented method of controlling presentation
`of video content on a display device that loads any one of a
`plurality of different media players, the method comprising:
`
`assigning, by a server system, a synchronization code to the
`display device;
`
`receiving, in the server system, a message from a personal
`computing device that is separate from the server system and
`separate from the display device, wherein the message
`includes the synchronization code;
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`storing, by the server system, a record establishing an
`association between the personal computing device and the
`display device based on the synchronization code;
`
`receiving, in the server system, one or more signals from the
`personal computing device, the one or more signals
`specifying a video file to be acted upon and identifying a
`particular media player for playing the video content, the one
`or more signals further including a universal playback
`control command for controlling playing of the video content
`on the display device by the particular media player,
`
`converting, by the server system, the universal playback
`control command into corresponding programming code to
`control playing of the video content on the display device by
`the particular media player, wherein converting the universal
`playback control command includes selecting from among a
`plurality of specific commands, each of which represents a
`corresponding playback control command for a respective
`media player; and
`
`storing, in a database associated with the server system,
`information for transmission to or retrieval by the display
`device, wherein the information specifies the video file to be
`acted upon, identifies the particular media player for playing
`the video content, and
`includes the corresponding
`programming code to control playing of the video content on
`the display device by the particular media player in
`accordance with the universal playback control command
`
`(Ex. 1001, 11:22–60 (as corrected by the Certificate of Correction)).
`
`
`
`II. ANALYSIS
`
`A. Principles of Law
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter 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
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`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;
`
`(3) the level of ordinary skill in the art; and (4) any secondary
`
`considerations, if in evidence2 (Graham v. John Deere Co. of Kan. City, 383
`
`U.S. 1, 17–18 (1966)).
`
`
`
`B. Level of Ordinary Skill in the Art
`
`The level of skill in the art is a factual determination that provides a
`
`primary guarantee of objectivity in an obviousness analysis (Al-Site Corp. v.
`
`VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John
`
`Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950
`
`F.2d 714, 718 (Fed. Cir. 1991)).
`
`Petitioner asserts a “person of skill in the art (‘POSA’) would have
`
`had at least a bachelor’s degree in electrical engineering or computer science
`
`(or equivalent experience) and two years of experience designing or
`
`implementing interactive systems with networked media or media playback
`
`systems” (Pet. 13 (citing Ex. 1005 ¶ 47)). Petitioner further asserts “[w]ith
`
`more education, for example, postgraduate degrees and/or study, less
`
`experience is needed to attain an ordinary level of skill in the art. Similarly,
`
`more experience can substitute for formal education” (Pet. 13 (citing Ex.
`
`1005 ¶¶ 45–49)).
`
`
`2 The parties do not present arguments related to objective evidence of
`nonobviousness (i.e., secondary considerations) as to any of the challenged
`claims.
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`At institution, we found this definition to be consistent with the scope
`
`and content of the ’251 Patent and the asserted prior art, with a modification
`
`of omitting “at least” to avoid vagueness as to the amount of educational
`
`experience–– “a bachelor’s degree in electrical engineering or computer
`
`science (or equivalent experience) and two years of experience designing or
`
`implementing interactive systems with networked media or media playback
`
`systems” (Inst. Dec. 10).
`
`In its Response, Patent Owner contends an ordinarily skilled artisan
`
`would have had
`
` (1) the equivalent of a four-year, B.S. [(Bachelor of Science)]
`degree from an accredited institution in computer science,
`computer engineering or an equivalent field; (2) approximately
`two years of professional experience with Internet-based video
`delivery systems; and (3) working proficiency with network
`architecture, including Internet-hosted server-client systems, and
`with computer programming
`
`(PO Resp. 12–13 (citing Ex. 2022 ¶¶ 43, 45–80)). Patent Owner further
`
`contends, “[a]dditional graduate education could substitute for professional
`
`experience, while significant experience in the field might substitute for
`
`formal education,” which “is consistent with the level adopted by Petitioner”
`
`(PO Resp. 13 (citing Ex. 2023; Pet. 13)).
`
`Petitioner does not address Patent Owner’s definition in its Petitioner
`
`Reply (see Paper 22). Given the differences in the assertions, in the Oral
`
`Hearing, we asked Patent Owner about its concerns with the definition set
`
`forth in the Decision to Institute:
`
`In our Decision to Institute we had set forth a level of skill per
`person of ordinary skill.
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`In your response, you came back with something different. And
`I’m wondering, what, specifically, you have concern about with
`the definition set forth in the Decision to Institute?
`
`(Tr. 78:6–10). Patent Owner responded: “I don’t think it makes any
`
`difference for this panel’s determination” (Tr. 78:13–14). We agree and
`
`determine that the differences in the level of skill offered by the Parties are
`
`not so significant as to warrant any changes to the definition set forth in the
`
`Decision to Institute. Therefore, we maintain our determination that an
`
`ordinarily skilled artisan would have had “a bachelor’s degree in electrical
`
`engineering or computer science (or equivalent experience) and two years of
`
`experience designing or implementing interactive systems with networked
`
`media or media playback systems” (see Inst. Dec. 10).
`
`We determine this level of skill comports with the qualifications a
`
`person would have needed to understand and implement the teachings of the
`
`ʼ251 Patent and the prior art of record (cf. Okajima v. Bourdeau, 261 F.3d
`
`1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an
`
`appropriate level of skill in the art)).
`
`
`
`C. Claim Construction
`
`We construe claim terms according to the standard set forth in Phillips
`
`v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc)
`
`(37 C.F.R. § 42.100(b) (2021)). 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” (Phillips, 415 F.3d at 1313). “Importantly, the person
`
`of ordinary skill in the art is deemed to read the claim term not only in the
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`context of the particular claim in which the disputed term appears, but in the
`
`context of the entire patent, including the specification” (Phillips, 415 F.3d
`
`at 1313). 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)).
`
`Petitioner asserts that we “need not construe any claims” to resolve
`
`this controversy and that it “adopts” Patent Owner’s “proposed plain and
`
`ordinary meaning for all terms [from] the parallel district court action”
`
`(Pet. 12–13 (citing Ex. 1005 ¶ 50; Ex. 1014)). Patent Owner proposes
`
`constructions for the terms “media player” and “programming code” (PO
`
`Resp. 13–20). We address the term “media player” below.
`
`
`
`1. Media player
`
`Patent Owner contends, based on the “intrinsic record . . . an ordinary
`
`artisan would have understood the ordinary and customary meaning of
`
`‘media player’ in the ’251 Patent refers to application software and does not
`
`encompass hardware devices” (PO Resp. 13 (citing Ex. 2022 ¶¶ 81–92, 95)).
`
`Petitioner asserts that it “has not alleged any hardware device is a
`
`‘media player’” and thus, “the Board need not resolve whether ‘hardware
`
`devices’ are encompassed by ‘media player’” (Pet. Reply 1). Rather,
`
`Petitioner states the media players relied upon in the Petition are all software
`
`(Pet. Reply 1–2). Petitioner specifically states, “Petitioner has identified
`
`three ‘media players’ in the prior art. Two of these—Muthukumarasamy’s
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`‘Video Player[s]’ and Hayward’s ‘media players’ (Petition, 23–26)—are
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`application software. The third ‘media player’ is likewise not a hardware
`
`device” (Pet. Reply 1–2). Thus, the parties agree that the term “media
`
`player” refers to software and not to a hardware device, and we apply this
`
`interpretation in our patentability analysis.
`
`
`
`2. Additional Terms
`
`In light of the record and our findings, reasonings, and conclusions
`
`discussed below, we determine that no other terms or phrases in the claims
`
`require express construction (see Realtime Data, LLC v. Iancu, 912 F.3d
`
`1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those
`
`terms . . . that are in controversy, and only to the extent necessary to resolve
`
`the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`
`F.3d 795, 803 (Fed. Cir. 1999)))).
`
`
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`D. Asserted Obviousness over Muthukumarasamy
`
`Petitioner contends claims 1, 2, and 5–9 would have been obvious
`
`over Muthukumarasamy (Pet. 14–15, 20–74 (citing Ex. 1005 ¶¶ 65–72, 86–
`
`93, 95–99, 104–110, 113–119, 122–125, 130–134, 137–144, 147–150, 153–
`
`162; Ex. 1008 ¶¶ 20, 25–27, 31, 36, 38, 44–45, 47–51, 56–58, 64, 68–70, 77,
`
`83–85, 88, 114, 116–117, 134, 149, Figs. 1, 2, 5, 6, 12, 14–15, 18–19)).
`
`
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`1. Muthukumarasamy (Ex. 1008)
`
`Muthukumarasamy is a U.S. patent application publication titled
`
`“Device-Based Control System,” and published September 23, 2010
`
`(Ex. 1008, codes (43), (54)). Muthukumarasamy describes a “Device-Based
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`Control System (DBCS) . . . that enables consumers, through the use of an
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`internet-enabled device (IED),” e.g., a smartphone, “to navigate through
`
`media or entertainment content, control media components or equipment to
`
`watch and/or listen to media content” (Ex. 1008 ¶ 26). Figure 1, reproduced
`
`below, is “a block diagram of the Device-Based Control System (DBCS)”
`
`(Ex. 1008 ¶ 44).
`
`
`
`As shown in the block diagram of the DBCS of Figure 1, DBCS includes
`
`IED 4, zHub 2, zNode 3, and entertainment systems such as a television set
`
`(Ex. 1008 ¶ 44). A user interacts with IED 4 to select or control content
`
`playback hosted on internet server 1 (Ex. 1008 ¶¶ 44–45). For example, IED
`
`4 executes a media management application that presents media choices
`
`from “plurality of disparate media sources” for the user to select (Ex. 1008
`
`¶ 48).
`
`“When the IED sends a [content selecting or controlling] command,
`
`the zHub receives the command from the IED and resolves the command
`
`into a specific instruction directed at a specific zNode in the house” (Ex.
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`1008 ¶ 57). For example, “when a user selects content that is on channel
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`324 to be displayed on the living room TV, the zHub translates the
`
`command into a specific RF signal directed at the zNode in the living room”
`
`(Ex. 1008 ¶ 57). In particular, zHub 2 “receives signals or commands from
`
`the IED 4 via a local or premise network (e.g., router, WiFi, etc.) and
`
`translates [those] received commands to RF signals;” zNode 3 in turn
`
`receives the translated RF signals and translates those RF signals “to a
`
`protocol (e.g., Infrared) interpretable by the media components” (Ex. 1008
`
`¶ 44). For example, “the infrared codes needed to control the media
`
`components” are referenced for such translation (Ex. 1008 ¶ 66). Then,
`
`those translated signals are received by media components, e.g., a television
`
`set, to control the media component, “e.g., volume selection, channel
`
`selection, pause/play, etc.” (Ex. 1008 ¶ 50).
`
`Additionally, in one DBCS embodiment, a remote-controlled internet
`
`browser software (RCIBS or ZRCIBS) provides “a remote controllable
`
`internet browser optimized for internet-media consumption” (Ex. 1008
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`¶ 83). Figure 18, reproduced below, is a “block diagram . . . of a home
`
`network” (Ex. 1008 ¶ 83).
`
`
`As shown in the block diagram of Figure 18, the home network comprises a
`
`computer hosting the RCIBS and the IED (Ex. 1008 ¶ 83, Fig. 18). The
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`RCIBS sends and receives commands and responses, respectively, to a Zelfy
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`application running on a user’s phone, and transmits audio and video to a
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`TV and speakers (Ex. 1008 ¶ 83, Fig. 18). In particular, Figure 18 further
`
`shows “RCIBS is deployed on a computer that has video, audio and internet
`
`capabilities and is connected to the home network of the user” (Ex. 1008
`
`¶ 83, Fig. 18). Additionally, the “IED transmits commands to the RCIBS
`
`and receives responses from the RCIBS: the commands are received and
`
`executed by RCIBS” (Ex. 1008 ¶ 83, Fig. 18). For example, RCIBS
`
`provides video output to a television (see Ex. 1008, Fig. 18). Other
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`commands from the IED include: “Play video at given URL,” causing the
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`RCIBS to “play the video present at [a] given URL” and “Play video with
`
`given video-id (as specified by 3rd party using 3rd party APIs and Video
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`Players,” causing the RCIBS to “load[] the 3rd Party Video Player specified
`
`and plays the video with given video[-]id)” (Ex. 1008, Fig. 19).
`
`
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`2. Independent Claim 1
`
`Petitioner contends independent claim 1 would have been obvious
`
`over Muthukumarasamy (Pet. 14–15, 20–63). Patent Owner argues that
`
`Petitioner’s contentions fail for the following limitation of claim 1:
`
`receiving, in the server system, one or more signals from the
`personal computing device, the one or more signals specifying a
`video file to be acted upon and identifying a particular media
`player for playing the video content
`
`(PO Resp. 1–2). In particular, Patent Owner contends,
`
`Petitioner relies on Muthukumarasamy’s descriptions of two
`distinct processes, which use different components of
`Muthukumarasamy’s system to present different types of
`content: the “RCIBS” for internet content and the “zHub and
`zNode” for non-internet content. Neither of these processes
`satisfies all the limitations of the challenged claims, and
`Petitioner fails to offer any rationale for combining features of
`these two processes . . .
`
`(PO Resp. 1). For the reasons explained below, we agree with Patent
`
`Owner.
`
`Petitioner relies on Muthukumarasamy to teach this limitation
`
`(Pet. 34–38 (citing Ex. 1005 ¶¶ 92–99; Ex. 1008 ¶¶ 44–45, 47–48, 50, 57,
`
`64, 70, 77, 84–85, 88, 116–117, 134, 149, Figs. 2, 19)). Petitioner offers an
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`17
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`annotated version of Muthukumarasamy’s Figure 1, reproduced below, to
`
`show the alleged components of claim 1:
`
`
`
`(Pet. 22). Muthukumarasamy’s Figure 1 is “a block diagram of the Device-
`
`Based Control System (DBCS)” (Ex. 1008 ¶ 44), and in the annotated
`
`version above, Petitioner identifies the internet-enabled device (IED) in
`
`green as the claimed “personal computing device,” the internet server, zHub,
`
`and zNode in orange as the claimed “server system,” and the devices in red
`
`labeled “Entertainment Systems” as the claimed “display device” (Pet. 21
`
`(citing Ex. 1005 ¶ 68)).
`
`Petitioner asserts the internet server, a zHub, and a zNode “work
`
`together as a server system to receive messages and commands from an
`
`internet-enabled device, such as a smartphone,” and relay corresponding
`
`commands to control a media device (display device), such as a TV” (Pet.
`
`27). In particular, Petitioner asserts, “Muthukumarasamy’s internet server
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`receives a message from the IED, which is separate from both the internet
`
`server and the media device (playback device)” (Pet. 31; see also Pet. 27
`
`(asserting that “the ‘zHub receives the command from the IED’”)(quoting
`
`Ex. 1008 ¶ 57)). Petitioner contends, “Muthukumarasamy discloses signals
`
`specifying media content to be acted on by a particular video player”
`
`(Pet. 35). More specifically, Petitioner argues that “Muthukumarasamy
`
`teaches that the signals identify[] a particular media player for playing the
`
`video content for two reasons” (Pet. 37 (alteration in original; emphasis
`
`omitted)).
`
`First, Petitioner argues, “Muthukumarasamy discloses a source-
`
`agnostic system that aggregates content choices from a multitude of
`
`disparate media sources, including ‘subscription media, broadcast media,
`
`cable, DVR, VOD and internet media’” (Pet. 37 (quoting Ex. 1008 ¶ 47);
`
`see also Pet. 21 (identifying Netflix and Amazon Video On Demand as
`
`examples of streamed internet content)). Based on that disclosure, Petitioner
`
`argues a person having ordinary skill in the art “would have understood each
`
`request for particular content to identify a media player associated with the
`
`particular source of the content” (Pet. 37 (citing Ex. 1005 ¶ 98)).
`
`Second, Petitioner contends, Muthukumarasamy’s “IED sends
`
`commands to play, through [its] RCIBS, media content ‘as specified by 3rd
`
`party using 3rd party APIs and Video Players,’” which cause the RCIBS to
`
`“load[] the 3rd Party Video Player specified and play[] the video with given
`
`video[-]id” (Pet. 38 (citing Ex. 1008 ¶ 45, Fig. 19) (fourth alteration in
`
`original)). As such, Petitioner argues a person having ordinary skill in the
`
`art “would have understood Muthukumarasamy to teach that the command
`
`sent from the IED specifies both the video (a video file to be acted upon)
`
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`and the Video Player to be loaded to play the video (a particular media
`
`player for playing the content)” (Pet. 38 (citing Ex. 1005 ¶ 99)).
`
`Patent Owner argues Petitioner fails to demonstrate obviousness
`
`because of its reliance on two separate processes described in
`
`Muthukumarasamy, neither of which teaches the limitation identified above,
`
`without explanation as to why an ordinarily skilled artisan would have found
`
`it obvious to combine the processes (PO Resp. 31). In particular, Patent
`
`Owner argues Petitioner relies on Muthukumarasamy’s ZHub/zNode process
`
`and RCIBS process, “using parts of each process for different limitations of
`
`the claimed methods” (PO Resp. 32 (citing Pet. 23, 51)). But, Patent Owner
`
`argues, neither process discloses all the limitations of the independent claims
`
`(PO Resp. 32).
`
`More specifically, Patent Owner contends Muthukumarasamy
`
`describes two cases: the IED sending commands to (1) “the RCIBS over a
`
`local WiFi network . . . to access and present online media content” and
`
`(2) “the zHub . . . to control media devices that require infrared signals of
`
`the type used in conventional remote controls for TV sets” (PO Resp. 34
`
`(citing Ex. 1008 ¶¶ 45, 56–60, 66–67, 83, Fig. 1; Ex. 2022 ¶¶ 127–128)).
`
`According to Patent Owner, only one of the RCIBS process and the
`
`zHub/zNode process “would be used in presenting any particular content”
`
`(PO Resp. 34 (citing Ex. 2022 ¶ 127)). However, according to Patent
`
`Owner, these two cases do not overlap because Muthukumarasamy does not
`
`disclose that the IED sends commands to the RCIBS using the zHub and/or
`
`zNode or that the zHub/zNode process is used to access or present online
`
`media content or any internet content (PO Resp. 35 (citing Ex. 2022 ¶ 127)).
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`According to Patent Owner, “Petitioner identifies
`
`Muthukumarasamy’s internet server (1), zHub (2), and zNode (3),
`
`collectively, as the server system”; “IED (4), which includes a ‘DBCS
`
`application or software’ as the personal computing device”; “the
`
`‘Entertainment Systems’ and ‘Zelfy WiFi to HDMI Plug’ (5) as part of the
`
`recited display device”; and “‘remote-controlled internet browser software
`
`(RCIBS)’ as part of the recited display device” (PO Resp. 33–34 (citing Ex.
`
`1008 ¶¶ 44–45, 83; Pet. 20–24, 27; Ex. 1005 ¶¶ 68–69, 71, 86–88; Ex. 2021,
`
`121:20–122:8; Ex. 2022 ¶¶ 116–118)). Patent Owner argues Petitioner’s
`
`contention that “Muthukumarasamy discloses that its display device loads
`
`any one of a plurality of different media players using the RCIBS because it
`
`discloses loading one of a plurality of video players” (PO Resp. 35
`
`(emphasis added by Patent Owner; quoting Pet. 23)) shows that Petitioner
`
`“relies on a particular media player allegedly loaded in the RCIBS during
`
`the RCIBS process” (PO Resp. 35–36). Patent Owner argues, however, that
`
`Petitioner “does not contend that any particular media player is loaded
`
`during the zHub/zNode process” (PO Resp. 36). Rather, according to Patent
`
`Owner, Petitioner relies on “the zHub/zNode process for receiving, in the
`
`server system, one or more signals from the personal computing device”
`
`while relying on the RCIBS process for “messages identify a particular
`
`media player”, without asserting Muthukumarasamy’s system would have
`
`been modified or why an ordinarily skilled artisan would have made such a
`
`modification (PO Resp. 36–37 (citing Pet. 34–35, 37–38))).
`
`Patent Owner additionally argues the RCIBS process does not
`
`“receiv[e] one or more signals from the personal computing device in the
`
`components identified by Petitioner as the server system” (PO Resp. 38
`
`21
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`(citing Ex. 1022 ¶¶ 135–138)). In particular, Patent Owner contends
`
`Petitioner sets out that Muthukumarasamy’s RCIBS is part of the display
`
`device (PO Resp. 38 (citing Pet. 21–23; Ex. 1005 ¶ 71)). Patent Owner
`
`further contends “Petitioner identifies Muthukumarasamy’s IED as the
`
`personal computing device of the claims and Muthukumarasamy’s internet
`
`server, zHub, and zNodes, collectively, as the server system” (PO Resp. 38
`
`(citing Pet. 27
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