UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`Patent Owner.
`
`Case No. IPR2022-00795
`U.S. Patent No. 8,356,251
`
`PATENT OWNER’S RESPONSE
`PURSUANT TO 37 C.F.R § 42.120
`
`i
`
`Charter Ex. 1165
`
`

`

`U.S. Patent No. 8,356,251
`Case No. IPR2022-00795
`
`I.
`
`TABLE OF CONTENTS
`The ’251 Patent ................................................................................................ 4
`A. Claims .............................................................................................................. 4
`B. Specification .................................................................................................... 6
`C. Prosecution History .......................................................................................11
`Level of Ordinary Skill in the Art ................................................................. 12
`II.
`III. Claim Construction ........................................................................................ 13
`A. “Media Player” ..............................................................................................13
`B. “Programming Code” ....................................................................................16
`IV.
`Petitioner’s Grounds and Cited References ................................................... 20
`A. Muthukumarasamy ........................................................................................20
`1. Muthukumarasamy’s presentation and selection of content ....................22
`2. Muthukumarasamy describes two distinct processes that may be initiated
`by the IED ......................................................................................................24
`B. Hayward .........................................................................................................28
`Legal Standards ............................................................................................. 29
`V.
`The Challenged Claims Would Not Have Been Obvious over
`VI.
`Muthukumarasamy Alone (Ground I) or in View of Hayward (Ground II) ........... 30
`A. Muthukumarasamy Describes Two Distinct Processes, Neither Disclosing
`the Claimed Method, and Petitioner Fails to Show Any Obvious Modification
`Satisfying the Claims ..........................................................................................31
`1. Petitioner Relies on Muthukumarasamy’s Descriptions of Two Separate
`Processes ........................................................................................................32
`2. Neither the RCIBS Process nor the zHub/zNode Process Discloses All
`the Limitations of the Challenged Independent Claims ................................37
`B. Muthukumarasamy Does Not Disclose or Suggest Converting the Universal
`Playback Control Command Includes Selecting from among a Plurality of
`Specific Commands That Correspond to a Respective Media Player ...............54
`C. Petitioner Fails to Prove That an Ordinary Artisan Would Have Considered
`the zHub and zNode Part of a Server System with Muthukumarasamy’s Server
`
`55
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`U.S. Patent No. 8,356,251
`Case No. IPR2022-00795
`D. Claims 2, 5, 6–8, 9 Would Not Have Been Obvious .....................................58
`VII. Conclusion ..................................................................................................... 58
`
`iii
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`2002
`
`2003
`2004
`2005
`
`2006
`
`2007
`
`U.S. Patent No. 8,356,251
`Case No. IPR2022-00795
`PATENT OWNER’S EXHIBIT LIST
`Exhibit No. Description
`2001
`Touchstream Technologies, Inc. v. Google LLC, Case No. 6:21-
`cv-00569-ADA (E.D. Tex.) - Docket
`DocketNavigator Time to Milestones – Waco Division, from
`September 18, 2018 to present
`Email from Google’s Counsel, dated July 7, 2022
`Declaration of Jordan T. Bergsten
`Touchstream’s Preliminary Infringement Contentions, dated
`August 27, 2021
`Google’s Preliminary Invalidity Contentions, dated October 22,
`2021
`Google’s Supplemental Preliminary Invalidity Contentions, dated
`January 3, 2022
`Touchstream’s Amended Preliminary Disclosure of Asserted
`Claims, Infringement Contentions, and Priority Dates, dated
`November 8, 2021
`Google’s Final Invalidity Contentions, dated April 14, 2022
`Google’s Notice of Subpoenas to Boxee, dated April 14, 2022
`Google’s Notice of Subpoenas to Lynx Tech, dated April 14, 2022
`Google’s Notice of Subpoenas to Peel Tech, dated April 14, 2022
`Google’s Notice of Subpoenas to Samsung, dated April 14, 2022
`Touchstream’s First Set of Requests for Production, dated April
`15, 2022
`Touchstream’s First Set of Interrogatories, dated April 19, 2022
`Touchstream’s Second Set of Interrogatories, dated April 25, 2022
`Google’s First Set of Requests for Production to Touchstream,
`dated April 25, 2022
`Google’s First Set of Interrogatories to Touchstream, dated April
`25, 2022
`
`2009
`2010
`2011
`2012
`2013
`2014
`
`2008
`
`2015
`2016
`2017
`
`2018
`
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`U.S. Patent No. 8,356,251
`Case No. IPR2022-00795
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`2019
`
`2020
`
`2021
`
`2022
`2023
`
`Exhibit J to Google’s Final Invalidity Contentions, dated April 14,
`2022
`Order Granting Joint Motion to Amend Scheduling Order (Dkt.
`81), Touchstream Technologies, Inc. v. Google LLC, Case No.
`6:21-cv-00569-ADA (E.D. Tex.)
`Transcript of the Deposition of Benjamin B. Bederson, Ph.D. on
`December 21, 2022
`Declaration of Kevin C. Almeroth, Ph.D.
`Curriculum Vitae of Kevin C. Almeroth, Ph.D.
`
`v
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`

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`U.S. Patent No. 8,356,251
`Case No. IPR2022-00795
`Petitioner Google LLC fails to meet its burden of proof to show any of claims
`
`1, 2, 5, 6, 7, 8, 9 of U.S. Patent No. 8,356,251 (the “’251 patent”) would have been
`
`obvious over Muthukumarasamy (Ex. 1008) alone or in view of Hayward (Ex. 1009)
`
`for at least the reasons set forth herein. Accordingly, Patent Owner Touchstream
`
`Technologies, Inc. respectfully requests that the Board confirm the patentability of
`
`all challenged claims.
`
`First, 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 (Ground I) and fails to show that the
`
`proposed combination with Hayward (Ground II) cures the deficiencies in
`
`Muthukumarasamy. Petitioner therefore fails to prove obviousness.
`
`RCIBS process: For certain limitations, Petitioner relies on a process in
`
`Muthukumarasamy for presenting internet media content using remote-controlled
`
`internet browser software (RCIBS). This process fails to meet all the limitations of
`
`(at least) the step that recites “receiving, in a server system, one or more signals from
`
`the personal computing device.” The claims require signals “specify[] a video file
`
`1
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`U.S. Patent No. 8,356,251
`Case No. IPR2022-00795
`to be acted upon and identify[] a particular media player for playing the video
`
`content.” For these requirements, Petitioner relies on commands that are not received
`
`in the alleged server system. Instead, Muthukumarasamy describes a mobile phone
`
`(the alleged personal computing device) sending the commands to the RCIBS, which
`
`Petitioner identified as part of the display device and not part of the server system.
`
`Moreover, Petitioner does not even contend that the RCIBS process includes
`
`“converting, by the server system, the universal playback control command into
`
`corresponding programming code,” as recited by the claims.
`
`zHub/zNode process: For other
`
`limitations, Petitioner
`
`relies on
`
`Muthukumarasamy’s discussion of a second, different process for presenting content
`
`from non-internet sources (e.g., cable or broadcast channels) using a zHub and
`
`zNode. The description of this process does not disclose using any “media player”
`
`or “programming code,” which (under correct constructions) require a software
`
`application and executable computer program
`
`instructions,
`
`respectively.
`
`Muthukumarasamy discloses a process using hardware media devices (not software)
`
`and analog signals (not executable computer program instructions).
`
`Alleged obviousness: Petitioner offers no evidence or argument that it would
`
`have been obvious to modify Muthukumarasmy by combining these two cited
`
`processes. In addition, Petitioner’s proposed combination with Hayward (Ground
`
`2
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`U.S. Patent No. 8,356,251
`Case No. IPR2022-00795
`II)—implementing the RCIBS using Hayward’s alleged teachings—would not have
`
`resulted in the claimed invention. Even in the combination, the RCIBS (alleged
`
`display device) would still receive signals that, in the claims, must be received in the
`
`server system. Furthermore, Petitioner’s proposed combination does not result in any
`
`changes to the zHub/zNode process.
`
`Second, Grounds I and II both fail because Muthukumarasamy does not
`
`disclose the universal playback control command of the claims, and Hayward does
`
`not cure this deficiency. Muthukumarasamy discloses context-specific commands
`
`that expressly dependent on the type of the content, e.g., live TV or DVD recording.
`
`(According to the Petition, a given content type corresponds to a particular media
`
`player.) The claims also recite the universal playback control command is included
`
`in the signals that must be received in the server system, but the messages in the
`
`combination with Hayward are received by the alleged display device.
`
`Third, Grounds I and II also fail because Petitioner fails to show that all the
`
`steps associated with the server system of the claims are performed by the same
`
`server system. The components Petitioner identifies as the alleged server system are
`
`described in Muthukumarasamy as two different systems: (1) an internet server and
`
`(2) a media control network composed of a zHub and zNodes at a customer premise.
`
`Petitioner points to the internet server for limitations relating to the “synchronization
`
`3
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`U.S. Patent No. 8,356,251
`Case No. IPR2022-00795
`code” and to the media control network for other server system functions.
`
`Petitioner’s combination of these two systems into one server system is based solely
`
`on hindsight.
`
`I.
`
`THE ’251 PATENT
`
`The ’251 patent is titled “Play Control of Content on a Display Device,” issued
`
`on January 15, 2013, from U.S. Patent Application No. 13/245,001. Ex. 1001
`
`(cover). It generally relates to methods for presenting and controlling media content
`
`using a display device, a server system, and a personal computing device. See id. The
`
`application that matured into the ’251 patent was filed September 26, 2011, and
`
`claims priority to an earlier utility application (filed June 10, 2011) that issued as
`
`U.S. Patent No. 8,904,289 (the “’289 patent”), which is the subject of another
`
`petition by Petitioner. See Google LLC v. Touchstream Techs., Inc., IPR2022-00794,
`
`Paper 1 (PTAB Apr. 8, 2022). The ’251 patent also claims priority to an earlier
`
`provisional application (filed April 21, 2011). Ex. 1001 (cover). The ’251 patent
`
`names David Strober as its sole inventor and Patent Owner as the assignee. Id.
`
`A.
`
`Claims
`
`Of the challenged claims, only claim 1is independent. Claim 1 recites:
`
`1. A machine-implemented method of controlling
`presentation of video content on a display device that loads
`
`4
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`U.S. Patent No. 8,356,251
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`any one of a plurality of different media player 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;
`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
`5
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`U.S. Patent No. 8,356,251
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`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.
`
`B.
`
`Ex. 1001, 11:22–60.Specification
`
`The ’251 patent discloses various embodiments to illustrate how the invention
`
`allows a user to locate content (e.g., video content) on a personal computing device,
`
`like a mobile phone, and cause playback of that content on a second device (e.g., a
`
`television set) or other display device. As recited in the claims, a server system
`
`facilitates this process.
`
`6
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`U.S. Patent No. 8,356,251
`Case No. IPR2022-00795
`
`Display
`Device
`
`Ex. 1001 (Fig. 1, annotated)
`
`Figure 1 (reproduced above in annotated form) depicts an overview of the
`
`system according to certain embodiments. Ex. 1001, 2:41–42. As shown, the mobile
`
`device, digital device (e.g., television set with a display), and server system of this
`
`embodiment are connected to the Internet. Id., 2:66–3:1. The personal computing
`
`device (here, mobile device) acts as a controller, locating and selecting content via
`
`the Internet and sending commands that instruct the television set to obtain the
`
`selected content from the Internet and to present the content. See id., 3:1–29. In one
`
`embodiment, a mobile phone sends messages to a server system when a user selects
`
`content and requests that it be displayed on the television set. Id., 3:12–15. The
`
`television set “is operable to link back to a server system 24 from which the
`7
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`U.S. Patent No. 8,356,251
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`television set receives commands.” Id., 3:10–11. The server system may send
`
`commands instructing the television set, in some embodiments, “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.” Id., 3:18–23.
`
`For the television set to present selected content, a user must have already
`
`established a connection between the mobile phone and the television set. See id.,
`
`4:65–5:7. For certain embodiments, establishing that connection involves a
`
`“synchronization code” that uniquely identifies the display device, e.g., television
`
`set. Id., 5:8–10, 5:14–16. For example, the user may run software on the display
`
`device that connects it to the server system. See id., 7:17–23. Upon connection, the
`
`server system may assign the television set a synchronization code (or sync code),
`
`which may then appear on the television set display (e.g., as text or a QR code). See
`
`id., 5:16–21, 5:26–29, 7:24–25. The user enters the sync code (or scans it, if a QR
`
`code is used) using the mobile phone, which then sends the sync code to the server
`
`system in a message. See id., 5:16–21. 5:36–41, 7:25–31. The server then establishes
`
`a connection between the mobile phone and the television set that the sync code
`
`identifies. Id., 5:32–41, 7:32–35.
`
`8
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`U.S. Patent No. 8,356,251
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`When there is an established connection with the television set or other display
`
`device, the mobile phone, display device, server system, and content providers send
`
`and receive messages and information to and from each other. Figure 2 (reproduced
`
`below in annotated form) illustrates how this works in certain embodiments, and the
`
`following description references the annotations.
`
`Ex. 1001 (Fig. 2, annotated)
`
`(1) Using the Internet, the mobile phone 20 can retrieve information (e.g.,
`
`XML data files) about content (e.g., video) from content providers and can display
`
`information to a user. See id., 3:63–4:22. (2) The user may select an action to be
`
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`U.S. Patent No. 8,356,251
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`performed (e.g., play a selected video on a selected display device), which causes
`
`the phone to send a message to the server system. Id., 4:23–29. In embodiments, the
`
`message “contains a transmission code that includes data regarding the user
`
`information . . ., the secondary display it wants to connect to . . ., 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.” Id., 4:29–35; see id., Fig. 3
`
`(depicting a possible transmission code format).
`
`Because different media players may require different programming codes
`
`(e.g., JavaScript commands), the server system 24 loads protocols for the particular
`
`media player identified by mobile phone 20. Id., 5:54–67. (3) Using these protocols,
`
`the server system converts an incoming universal command (e.g., play, pause etc.)
`
`“into the correct JavaScript (or other programming) code used by the target device
`
`22 to control the specific player (block 120).” Id., 5:58–62, 5:65–6:3; see id., 6:7–
`
`18, 6:51–62. The correct programming code replaces the universal command in the
`
`message, which the display device may then retrieve from the server system. See id.,
`
`6:3–6, 6:19–29. (4) The display device executes the message from the server,
`
`retrieving the identified content, retrieving and/or loading the particular media
`
`player identified (if not already stored and loaded on the display device), and
`
`10
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`U.S. Patent No. 8,356,251
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`executing the programming code that corresponds to the universal command. See
`
`id., 3:18–23, 6:30–46, 6:60–62.
`
`C.
`
`Prosecution History
`
`The claims of the ’251 patent issued after rigorous examination during which
`
`application claim 1, corresponding to issued claim 1, was twice rejected as
`
`anticipated by U.S. Published Application No. 2011/00600998 (“Schwartz”). Ex.
`
`1003 at 350–65, 437–42; see id. at 350–81, 437–57 (office actions rejecting claims,
`
`including claim 1); Ex. 1011 (Schwartz). Over the course of prosecution, Applicant
`
`amended claim 1 to distinguish over Schwartz. See Ex. 1003 at 210–11, 422. These
`
`amendments added limitations to recite that the display device “loads any one of a
`
`plurality of media players” and to require several steps pertaining to “the particular
`
`media player” identified in the “one or more signals” received in the server system
`
`from the personal computing device. Id. Applicant also added a limitation to the
`
`“converting” step requiring that “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.” Id. at 422. And the first three claim steps—“assigning,” “receiving,” and
`
`“storing,” which all pertain to a “synchronization code”—were added in their
`
`entirety through an Examiner’s amendment to obtain allowance. Id. at 204, 209–11.
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`U.S. Patent No. 8,356,251
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`Further, the prosecution history of the ’251 patent made remarks about the
`
`meaning of the claim term “media player”:
`
`In the context of the present application, it is clear that a
`“media player” refers to application software for playing
`back the video content.1 Thus, the claims and specification
`refer in some cases, for example, to “loading” or
`“unloading” a media player. A particular display device,
`therefore, may, in some cases, be able to load or store any
`one of different media players.
`
`Ex.1003, 403 n.2 (internal citations omitted) (citing Ex.1003, 485 l.22, 490 ll.18–
`
`27). After a subsequent rejection (id., 349), the ’251 patent claims were allowed with
`
`an examiner’s amendment. See id., 205–21. That amendment added, in part, a
`
`requirement to claim 1 that the recited “display device” “loads any one of plurality
`
`of different media [] players,” and that the “media player” recited in the body of the
`
`claim be a “particular media player.” Id., 210–11 (underlining in original).
`
`II.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`As Dr. Almeroth explains, a person of ordinary skill in the art of the 251 Patent
`
`(also referred to herein as an ordinary artisan) would have had (1) the equivalent of
`
`1 Then-pending claims in what became the ’251 patent recited “specifying a video
`
`file” and “playing the video content.” Ex.1003, 422–28.
`
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`U.S. Patent No. 8,356,251
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`a four-year, B.S. 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. Ex.2022 ¶ 43. See generally id. ¶¶5–28
`
`(Dr. Almeroth summarizing his qualifications in the relevant field), 45–80
`
`(describing the state of the art at the time of the invention); Ex.2023. Additional
`
`graduate education could substitute for professional experience, while significant
`
`experience in the field might substitute for formal education. Id. This level of
`
`ordinary skill in the art is consistent with the level adopted by Petitioner: “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.
`
`III. CLAIM CONSTRUCTION
`
`A.
`
`“Media Player”
`
`Considering the intrinsic record, including the file history, 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. Ex.2022 ¶ 95; see also id. ¶¶81–92 (reviewing the intrinsic record). This
`
`meaning is evident from the claims themselves, which recite actions (like
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`U.S. Patent No. 8,356,251
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`“load[ing]” “media players”) that support a “media player” being application
`
`software. Id.; see Ex.1001, 11:22-60. Furthermore, the written description uses
`
`“media player” in a similar manner, and the Applicant expressly defined “media
`
`player” as software during prosecution of a related application. Thus, in the context
`
`of the ’251 patent, the ordinary meaning of “media player” requires a software
`
`application. Ex.2022 ¶ 94.
`
`First, the claim language supports the understanding that a “media player”
`
`must be application software. See Ex.2022 ¶ 94. For example, the ’251 patent’s
`
`claims recite a “display device that loads any one of a plurality of different media
`
`players.” Ex.1001, 11:22-60. They also recite “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” Id. These are common actions associated with software, which is comprised
`
`of instructions that may be transmitted as data over a network. Ex.2022 ¶ 96. A
`
`software application can also be loaded by a data processing system (e.g., part of a
`
`display device) in order to execute the instructions. Id.
`
`Similarly, the claim language supports that “media player” excludes hardware
`
`devices. For example, the step of “a display device that loads any one of a plurality
`
`of different media players” would be impossible to perform if a “media player” were
`
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`U.S. Patent No. 8,356,251
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`a hardware device; devices are not loaded in other devices. See id. ¶ 97 (calling this
`
`interpretation a “non sequitur”).
`
`The written description of the ’251 patent also uses “media player” in a
`
`manner that indicates application software. Id. ¶ 98. It refers to a “television set . . .
`
`load[ing] a new media player (if needed) over the Internet” and a “display device []
`
`request[ing] and obtain[ing] a copy of the appropriate media player,” if it is not
`
`already “loaded.” Ex.1001, 3:29-33, 6:34-42. The specification also describes using
`
`an application programming interface (“API”) to enable communications with an
`
`online “media player.” Id., 9:15-18; see Ex.2022 ¶ 98. Like the claims’ reference to
`
`“load[ing],” these descriptions indicate that a “media player” is application software
`
`and excludes hardware devices. Ex.2022 ¶ 98.
`
`The prosecution history further supports construing “media player” as
`
`referring to application software. See id. ¶ 99; Ex.1003, 403 n.2; As Petitioner
`
`admits, during prosecution, the Applicant “defined the claimed ‘media player’ as
`
`‘application software’” for performing the function specified in the claim. Pet., 26
`
`(quoting Ex.1003, 403 n.2). The Applicant cited, as support for this definition,
`
`contextual use of “media player” similar to that described above. See Ex.1003, 403
`
`n.2 (“[T]he claims and specification refer in some cases, for example, to ‘loading’
`
`or ‘unloading’ a media player.”).
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`15
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`U.S. Patent No. 8,356,251
`Case No. IPR2022-00795
`The term “media player” in the ’251 patent should be construed consistently
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`across related patents that share a common specification. See Samsung Elecs. Co. v.
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`Elm 3DS Innovations, LLC, 925 F.3d 1373, 1378 (Fed. Cir. 2019) (quoting
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`SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir. 2015))
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`(“Where multiple patents derive from the same parent application and share many
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`common terms, we must interpret the claims consistently across all asserted
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`patents.”).
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`B.
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`“Programming Code”
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`The term “programming code,” which appears in claim 1 of the ’251 patent,
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`should be construed as “computer program instruction(s) encoded for execution by
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`a data processing apparatus (such as a computer processor).” Ex. 2022 ¶¶ 100-105.
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`Patent Owner’s proposed construction gives effect to the ordinary and customary
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`meaning of “programming code,” in view of the intrinsic evidence. An express
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`construction is needed however because Petitioner’s position, in effect, “portray[s]
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`the ordinary and customary meaning as something other than it is.” See Evenflo Co.,
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`Inc. v. Veer Gear LLC, No. 3:20-CV-030, 2022 WL 17252215, at *2, *6 (S.D. Ohio
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`Nov. 28, 2022) (construing “pushing” and “pulling” as “pushing only” and “pulling
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`only”); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379,
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`1383 (Fed. Cir. 2008) (clarifying that the “ordinary meaning attributable to the word
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`‘partially’ . . . does not include ‘totally’”). Indeed, to adopt a broader construction
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`U.S. Patent No. 8,356,251
`Case No. IPR2022-00795
`would be to improperly ignore the context of the patent. See Personalized Media
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`Commc’ns, LLC v. Apple, Inc., No. 215CV01206JRGRSP, 2016 WL 6247054, at
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`*20 (E.D. Tex. Oct. 25, 2016) (construing different types of code to have distinct
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`definitions); see also Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359,
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`1363 (Fed. Cir. 2016) (“The only meaning that matters in claim construction is the
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`meaning in the context of the patent.”).
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`Claim 1 of the ’251 patent recites, in part, “converting, by the server system,
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`the universal playback control command into corresponding programming code to
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`control playing of the video content on the display device by the particular media
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`player”.” Ex. 1001, 11:43-46.
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`This claim language demonstrates that the “programming code” of the claims
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`is for performing an action, specifically “to control playing of the video content on
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`the display device by the particular media player.” Ex. 2022 ¶ 101. The claim
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`language also confirms that “programming code” “represents a corresponding
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`playback control command for a respective media player.” Id. These requirements
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`of “programming code” are reflected in Patent Owner’s proposed construction—it
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`must include “instruction(s)” to perform the recited action, e.g., when executed by a
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`data processing system. Id.
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`U.S. Patent No. 8,356,251
`Case No. IPR2022-00795
`Patent Owner’s construction also reflects the way programming code is
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`discussed in the specification, which provides further support. For example, the
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`specification describes using an adapter (26) to convert incoming commands “into
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`the correct JavaScript (or other programming) code used by the target device 22 to
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`control the specific player (block 120).” Ex. 1001,6:1-3; see id., 5:57-58 (describing
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`video players using “JavaScript commands to control their respective playback”),
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`Fig. 2 (depicting “Universal API Adapter” in block 120). The specification goes on
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`to describe an embodiment in which the adapter is implemented as a look-up table.
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`Id., 6:8-9, Fig. 5. In this description, “for a universal command ‘Pause,’ the universal
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`adapter 26 provides the corresponding command for each of several specific media
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`players (e.g., ‘pauseVideo’ for Ted.com).” Id., 6:12-16.
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`In this description, JavaScript code—i.e., code written in the JavaScript
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`programming language—is an example of “programming code” being used to
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`control a media player, e.g., to present content. Ex.2022 ¶ 102; see Ex.2021, 93:14–
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`19 (“JavaScript is an example of a programming language, and it is described here
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`as an example, a programming code.”). The specification equates “code” written in
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`a “programming language” with a “computer program.” Ex.2022 ¶ 104; see
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`Ex.1001, 10:10-16 (“A computer program (also known as . . . code) can be written
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`in any form of programming language, . . ..”). And the specification defines
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`U.S. Patent No. 8,356,251
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`“computer programs” as “one or more modules of computer program instructions,
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`encoded on computer storage medium for execution by, or to control the operation
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`of data processing apparatus.” Ex.1001, 9:45-50 (underline added); see also id.,
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`10:23-30 (describing “computer programs” being “executed” on computers, using
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`processors). Instructions may also “be encoded on an artificially-generated
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`propagated signal . . . generated to encode information for transmission to suitable
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`receiver apparatus for execution by a data processing apparatus.” Id., 9:50-55.
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`Hence, the “code” written in a “programming language” that comprises a “computer
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`program” would be “computer program instruction(s),” e.g., some portion of a
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`“computer program.” Ex.2022 ¶ 104.
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`The specification, taken as a whole, shows that “programming code” refers
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`generally to the kind of code used in writing computer programs. Id. The
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`specification describes an embodiment using “JavaScript commands,” Ex.1001,
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`5:57-58, which are also described as “programming[] code.” Ex.2022 ¶ 105 (citing
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`Ex.1001, 5:65–6:3). “This ‘programming code’ comprises an instruction, written in
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`a programming language (e.g., JavaScript), that is executed by a ‘target device’ to
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`control the operation of a particular media player running on that device.” Id. (citing
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`Ex.1001, 5:54–6:18, Fig. 5). Thus, the “programming code” controls the operation
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`of a data processing device that executes the instructions, consistent with how the
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`U.S. Patent No. 8,356,251
`Case No. IPR2022-00795
`specification describes “computer programs.” Id. (citing Ex.1001, 9:45-50, 10:10-
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`12). Patent Owner’s proposed construction reflects this understanding, using the
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`same language as the specification. Id.
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`For at least these reasons, the Board should adopt Patent Owner’s proposed
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`construction of “programming code.” See Ex. 2022 ¶¶ 100-105.
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`IV. PETIT