throbber

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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ROKU INC.,
`Petitioner,
`
`v.
`
`VIDEOLABS, INC.,
`Patent Owner.
`_____________
`
`Case No. IPR2025-00071
`Patent No. 7,440,559
`_____________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.1 et seq.
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`TABLE OF CONTENTS
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`
`
`TABLE OF CONTENTS ........................................................................................... i
`TABLE OF AUTHORITIES ................................................................................... iii
`TABLE OF EXHIBITS ........................................................................................... iv
`TABLE OF CHALLENGED CLAIMS .................................................................. vi
`I.
`INTRODUCTION ........................................................................................... 1
`II. MANDATORY NOTICES UNDER 37 C.F.R. §42.8 .................................... 2
`A.
`Real Party-In-Interest ............................................................................ 2
`B.
`Related Matters ...................................................................................... 3
`C.
`Lead and Back-up Counsel, and Service Information .......................... 3
`III. REQUIREMENTS FOR IPR .......................................................................... 4
`A. Grounds for Standing (37 C.F.R. §42.104(a)) ...................................... 4
`B.
`Identification of Challenge (37 C.F.R. §42.104(b)) .............................. 4
`1.
`Specific Art on Which the Challenge is Based ........................... 4
`2.
`Statutory Grounds on Which the Challenge is Based ................. 5
`IV. BACKGROUND ............................................................................................. 5
`A.
`’559 Patent ............................................................................................. 5
`B.
`Prosecution History of the ’559 ............................................................ 7
`LEVEL OF ORDINARY SKILL IN THE ART ............................................. 9
`V.
`VI. CLAIM INTERPRETATION ......................................................................... 9
`VII. GROUNDS OF UNPATENTABILITY ........................................................10
`A. Ground 1: Claims 1, 7, 13, 19 are Rendered Obvious by Kloba ........10
`1.
`Overview: Kloba .......................................................................10
`2.
`Claim Charts (1, 7, 13, 19) ........................................................15
`B. Ground 2: Claims 2-6, 8-12, 14-18, 20-24 are Obvious Over
`Kloba in view of Robbin .....................................................................35
`1.
`Overview: Robbin .....................................................................35
`2. Motivation: Kloba in view of Robbin .......................................36
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`- i -
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`3.
`Claim Charts (2-6, 8-12, 14-18, 20-24) ....................................40
`VIII. NO BASIS FOR DISCRETIONARY DENIAL ...........................................58
`A.
`Fintiv....................................................................................................58
`B.
`§325(d) ................................................................................................59
`1.
`’559 Prosecution .......................................................................59
`2.
`Netflix IPR ................................................................................60
`IX. CONCLUSION ..............................................................................................63
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (e)(4) ...........................64
`CERTIFICATE OF WORD COUNT ......................................................................65
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`- ii -
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`TABLE OF AUTHORITIES
`
`CASES
`American Honda Motor Co., Inc. v. Neo Wireless LLC,
`IPR2023-00797, Paper 27 (PTAB Mar. 22, 2024) ..................................................61
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) ..................................................58
`Aviagames, Inc. v. Skillz Platform, Inc.,
`IPR2022-00530, Paper 14 (PTAB Mar. 2, 2023) ....................................................62
`Boston Scientific Scimed, Inc. v. Cordis Corp.,
`554 F.3d 982 (Fed. Cir. 2009) ..................................................................................15
`Ford Motor Company v. Neo Wireless LLC,
`IPR2023-00763, Paper 28 (PTAB Mar. 22, 2024) ..................................................61
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (PTAB Sep. 6, 2017) .....................................................61
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .................................................................................................40
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017) ....................................................................... 9
`Nokia of Am. Corp. v. TQ Delta, LLC,
`IPR2022-00471, Paper 11 (PTAB Aug. 18, 2022) ..................................................58
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`TABLE OF EXHIBITS
`
`Exhibit Description
`1001 U.S. Patent No. 7,440,559 (“’559”)
`1002
`File History of U.S. Patent Application No. 10/690,692 (“’559FH”)
`1003 Declaration of Bruce McNair (“McNair”)
`1004 CV of Bruce McNair
`1005 U.S. Patent No. 6,341,316 (“Kloba”)
`1006 U.S. Patent Application Publication No. 2003/0079038 (“Robbin”)
`1007
`Starz Entm’t, LLC v. VL Collective IP, LLC, 1:21-cv-01448, Dkt. 88,
`pages 1-4 (Claim Construction Order) (D. Del. Jan. 10, 2023)
`1008 Netflix, Inc. v. VideoLabs, Inc, IPR2023-00630, Paper 2 (Petition)
`(P.T.A.B. Feb. 23, 2023)
`1009 Netflix, Inc. v. VideoLabs, Inc, IPR2023-00630, Paper 10 (Institution
`Decision) (P.T.A.B. Oct. 3, 2023)
`Federal Judicial Caseload Statistics (June 30, 2024)
`VideoLabs, Inc. v. Roku, Inc., 1:23-cv-01136, Dkt. 36 (Defendant
`Roku Inc.’s Motion to Stay) (D. Del. July 18, 2024)
`VideoLabs, Inc. v. Roku, Inc., 1:23-cv-01136, Dkt. 37 (Defendant
`Roku, Inc.’s Opening Brief in Support of Its Motion to Stay Pending
`Inter Partes Review) (D. Del. July 18, 2024)
`VideoLabs, Inc. v. Roku, Inc., 1:23-cv-01136, Dkt. 41 (Order) (D. Del.
`July 26, 2024)
`1014 Reserved
`1015 Netflix, Inc. v. VideoLabs, Inc, IPR2023-00630, Paper 31 (Final
`Written Decision) (P.T.A.B. Oct. 2, 2024)
`VideoLabs, Inc. v. Roku, Inc., 1:23-cv-01136, Dkt. 6 (Summons) (D.
`Del. Dec. 22, 2023)
`AviaGames, Inc. v. Skillz Platform, Inc., IPR2022-00530, Paper 14
`(Decision on Director Review) (P.T.A.B. Mar. 2, 2023)
`1018 U.S. Patent Application Publication No. 2003/0163431 (“Ginter”)
`
`1010
`1011
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`1012
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`1013
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`1016
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`1017
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`Exhibit Description
`1019 U.S. Patent No. 5,943,422 (“Van Wie”)
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`TABLE OF CHALLENGED CLAIMS
`
`U.S. 7,440,559
`
`# Sub-
`part Text
`1
`[pre] An apparatus comprising:
`[a]
`a processor configured to
`[b.i]
`receive, from a terminal located remote from the apparatus, a content
`status including terminal status information, and
`[b.ii] configured to receive server status information regarding a source of
`content, wherein the server status information comprises a listing of
`at least one piece of content available from the source,
`[c] wherein the processor is configured to send, to the terminal, a
`response to the content status that instructs the terminal to perform
`one or more actions to thereby control the flow of content to the
`terminal based upon the terminal status information and the server
`status information, and
`[d] 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.
`[pre] An apparatus according to claim 1,
`[a] wherein the terminal comprises a memory, and
`[b] wherein the processor is configured to send, to the terminal, a
`response to the content status that instructs the terminal to at least
`one of delete at least one piece of content from the memory of the
`terminal, or
`[c]
`download at least one piece of content from the source.
`[pre] An apparatus according to claim 2,
`[a] wherein the terminal status information comprises a listing of at least
`one piece of content stored in the memory of the terminal, and
`[b] wherein the processor is configured to send, to the terminal, a
`response to the content status that instructs the terminal to delete at
`least one piece of content from the memory of the terminal based
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`3
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`2
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`4
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`5
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`6
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`7
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`upon the listing of at least one piece of content stored in the memory
`of the terminal.
`[pre] An apparatus according to claim 2,
`[a] wherein the server status information comprises a listing of at least
`one piece of available content from the source, and
`[b] wherein the processor is configured to send, to the terminal, a
`response to the content status that instructs the terminal to download
`at least one piece of content from the source based upon the listing of
`at least one available piece of content from the source.
`[pre] An apparatus according to claim 2,
`[a] wherein the processor is configured to determine if the memory of
`the terminal includes at least one piece of content to delete, and
`[b] wherein the processor is configured to send, to the terminal, a
`response to the content status that instructs the terminal to delete at
`least one piece of content when the processor determines that the
`memory of the terminal includes at least one piece of content to
`delete.
`[pre] An apparatus according to claim 5,
`[a] wherein the processor is further configured to determine if source
`includes at least one available piece of content for the terminal to
`download, and
`[b] wherein the processor is configured to send, to the terminal, a
`response to the content status that instructs the terminal to download
`at least one available piece of content when the processor determines
`that the source includes at least one available piece of content for the
`terminal to download.
`[pre] An apparatus comprising:
`[a]
`a controller operable with a terminal including a memory configured
`to store at least one piece of content,
`[b] wherein the controller is configured to send a content status including
`terminal status information comprising a listing of at least one piece
`of content stored in the memory,
`[c] wherein the controller is configured to send the content status to a
`remote network entity, and
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`8
`
`9
`
`[d]
`
`receive a response to the content status from the network entity that
`instructs the controller to perform one or more actions to thereby
`control a flow of content to the terminal based upon the terminal
`status information, and
`[e] 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.
`[pre] An apparatus according to claim 7,
`[a] wherein the controller is configured to receive a response that
`instructs the controller to at least one of delete at least one piece of
`content from the memory of the terminal, or
`[b] download at least one piece of content from a source of content.
`[pre] An apparatus according to claim 8, and
`[a] wherein the controller is configured to receive a response that
`instructs the controller to delete at least one piece of content from the
`memory of the terminal based upon the listing of at least one piece of
`content stored in the memory of the terminal.
`10 [pre] An apparatus according to claim 8,
`[a] wherein the controller is configured to receive a response that
`instructs the controller to download at least one piece of content from
`the source based upon server status information comprising a listing
`of at least one available piece of content from the source.
`11 [pre] An apparatus according to claim 8,
`[a] wherein the controller is configured to send the content status such
`that the network entity determines if the memory of the terminal
`includes at least one piece of content to delete, and
`[a] wherein the controller is configured to receive a response that
`instructs the controller to delete at least one piece of content when
`the network entity determines that the memory of the terminal
`includes at least one piece of content to delete.
`12 [pre] An apparatus according to claim 11,
`[a] wherein the controller is configured to send the content status such
`that the network entity further determines if the source includes at
`least one available piece of content for the terminal to download,
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`[b]
`
`[b] wherein the controller is configured to receive a response that further
`indicates if the source includes at least one available piece of content,
`and
`[c] wherein the controller is further configured to download the at least
`one available piece of content when the network entity determines
`that the source includes at least one available piece of content.
`13 [pre] A method for controlling a flow of content, the method comprising:
`[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
`sending, from the network entity to the terminal, a response to the
`content status that instructs the terminal to perform one or more
`actions to thereby control the flow of content to the terminal based
`upon the terminal status information,
`[c] wherein the at least one piece of content stored in the memory of the
`terminal, and the content for which the flow is controlled, comprise
`multimedia content.
`14 [pre] A method according to claim 13,
`[a] wherein sending a response comprises sending a response that
`instructs the terminal to at least one of delete at least one piece of
`content from the memory of the terminal, or
`[b] download at least one piece of content from a source of content.
`15 [pre] A method according to claim 14, and
`[a] wherein sending a response comprises sending a response that
`instructs the terminal to delete at least one piece of content from the
`memory of the terminal based upon the listing of at least one piece of
`content stored in the memory of the terminal.
`16 [pre] A method according to claim 14,
`[a] wherein sending a response comprises sending a response that
`instructs the terminal to download at least one piece of content from
`the source based upon server status information comprising a listing
`of at least one available piece of content from the source.
`17 [pre] 17. A method according to claim 14 further comprising:
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`[a]
`
`[a] determining if the memory of the terminal includes at least one piece
`of content to delete,
`[b] wherein sending a response comprises sending a response that
`instructs the terminal to delete at least one piece of content when the
`memory of the terminal is determined to include at least one piece of
`content to delete.
`18 [pre] A method according to claim 17 further comprising:
`[a] determining if the source includes at least one available piece of
`content for the terminal to download,
`[b] wherein sending a response comprises sending a response that further
`instructs the terminal to download at least one available piece of
`content when the source is determined to include at least one
`available piece of content.
`19 [pre] A computer-readable storage medium having computer-readable
`program code portions stored therein, the computer-readable program
`code portions comprising:
`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 a listing of at least one piece
`of content stored in a memory of the terminal; and
`a second executable portion configured to send, from the network
`entity to the terminal, a response to the content status that instructs
`the terminal to perform one or more actions to thereby control the
`flow of content to the terminal based upon the terminal status
`information,
`[c] wherein the at least one piece of content stored in the memory of the
`terminal, and the content for which the flow is controlled, comprise
`multimedia content.
`20 [pre] A computer-readable storage medium according to claim 19,
`[a] wherein the second executable portion is configured to send a
`response that instructs the terminal to at least one of delete at least
`one piece of content from the memory of the terminal, or
`[b] download at least one piece of content from a source of content.
`21 [pre] A computer-readable storage medium according to claim 20,
`
`[b]
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`[a]
`
`[a] wherein the second executable portion is configured to send a
`response that instructs the terminal to delete at least one piece of
`content from the memory of the terminal based upon the listing of at
`least one piece of content stored in the memory of the terminal.
`22 [pre] A computer-readable storage medium according to claim 20,
`[a] wherein the second executable portion is configured to send a
`response that instructs the terminal to download at least one piece of
`content from the source based upon server status information
`comprising a listing of at least one available piece of content from
`the source.
`23 [pre] A computer-readable storage medium according to claim 20 further
`comprising:
`a third executable portion configured to determine if the memory of
`the terminal includes at least one piece of content to delete,
`[b] wherein the second executable portion is configured send a response
`that instructs the terminal to delete at least one piece of content when
`the second executable portion determines the memory of the terminal
`includes at least one piece of content to delete.
`24 [pre] A computer-readable storage medium according to claim 23,
`[a] wherein the third executable portion is further configured to
`determine if the source includes at least one available piece of
`content for the terminal to download, and
`[b] wherein the second executable portion is configured to send a
`response that further instructs the terminal to download at least one
`available piece of content when the second executable portion
`determines the source includes at least one available piece of content.
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`I.
`
`INTRODUCTION
`Petitioner Roku, Inc. (“Petitioner”) respectfully requests inter partes review
`
`(“IPR”) of claims 1-24 (“Claims”) of U.S. Patent No. 7,440,559 (EX1001; “’559”)
`
`assigned to VideoLabs, Inc. (“PO”) in accordance with §§311-319 and §42.100 et
`
`seq. There is a reasonable likelihood that at least one challenged claim is
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`unpatentable as explained herein. Petitioner requests review of the Claims and
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`judgment finding them unpatentable under 35 U.S.C. §103.
`
`The ’559 explains that technological advancements have allowed client
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`devices to be used for a variety of functions, for example video calls and the
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`playback of multimedia applications that are comprised of audio and video clips.
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`’559, 1:22-25. The ’559 explains that the standard techniques employed by client
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`devices to retrieve such content may not provide network administrators sufficient
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`control over the flow of content to the client devices. ’559, 2:25-35. The ’559 thus
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`describes techniques for controlling the flow content to client devices that take into
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`account “user preferences, capabilities of the” client device “and/or previous
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`contents stored or otherwise received by the” client device. ’559, 2:40-44.
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`But controlling content flow based on these types of client characteristics was
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`well-known in the art. For example, Kloba describes techniques for synchronizing
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`content between a client device and a remote server or content provider based on
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`“state information” sent by the client to the remote server to begin the
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`synchronization process. Kloba, FIG. 63B, 21:19-20, 23:40-45. The remote server
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`responds to the client with “instructions” generated based on the state information
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`to synchronize the content stored on the client with the content stored either on the
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`remote server itself or on a separate content provider. Kloba, FIG. 63B, 19:1-24,
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`19:64-20:11. Kloba’s server system therefore controls the flow of content to client
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`devices, like the ’559, and renders obvious the independent claims of the ’559.
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`Additional features claimed in dependent claims include, e.g., particular
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`instructions in the server response to instruct the client to delete content items. To
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`the extent these additional features are not present in Kloba, they are taught by
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`Robbin and a POSITA would have found it obvious to incorporate them into Kloba’s
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`system. See, e.g., Robbin, Abstract, [0057], [0066]; see §VII.B.2.
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`The USPTO did not consider Kloba, alone or in combination with Robbin
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`during the ’559’s prosecution or in any subsequent proceeding.
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`Accordingly, Petitioner respectfully requests that the Board institute trial and
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`cancel the Claims.
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`II. MANDATORY NOTICES UNDER 37 C.F.R. §42.8
`A. Real Party-In-Interest
`
`Petitioner identifies Roku, Inc. as real party-in-interest. No other party had
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`access to or control over the present Petition, and no other party funded or
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`participated in preparation of the present Petition.
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`B. Related Matters
`The ’559 is currently asserted in the following district court proceedings:
`
`Title
`VideoLabs, Inc. v. Roku, Inc.
`VideoLabs, Inc. v. Netflix Inc.
`Starz Entertainment, LLC v. VL
`Collective IP, LLC
`
`No.
`1:23-cv-01136
`1:22-cv-00229
`1:21-cv-01448
`
`Court
`D. Del.
`D. Del.
`D. Del.
`
`Filing Date
`2023-10-11
`2022-02-23
`2021-10-13
`
`
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`The ’559 is also the subject of Netflix, Inc. v. VideoLabs, Inc.,
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`IPR2023-00630, which was filed 2023-02-23 and reached a final written decision
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`2024-10-02.
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`C. Lead and Back-up Counsel, and Service Information
`
`Service
`Information
`
`Lead Counsel
`Scott A. McKeown, Reg. No. 42,866
`Backup Counsel Libbie A. DiMarco (pro hac vice forthcoming)
`Victor Cheung, Reg. No. 66,229
`Daniel D. Smith, Reg. No. 71,278
`E-Mail
`SMcKeown-PTAB@WolfGreenfield.com
`Elizabeth.DiMarco@WolfGreenfield.com
`VCheung-PTAB@WolfGreenfield.com
`DSmith-PTAB@WolfGreenfield.com
`Wolf, Greenfield & Sacks, P.C.
`600 Atlantic Avenue
`Boston, MA 02210-2206
`(617) 646-8000
`(617) 646-8646
`
`Post &
`Hand-
`Delivery
`Telephone
`Facsimile
`
`
`
`Petitioner consents to electronic service of documents to the email addresses
`
`of the counsel identified above.
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`III. REQUIREMENTS FOR IPR
`A. Grounds for Standing (37 C.F.R. §42.104(a))
`Petitioner certifies the ’559 is available for IPR and Petitioner is not barred or
`
`estopped from requesting IPR on the following grounds. See EX1016 (complaint in
`
`the related litigation was served on 2023-12-22, less than one year prior to filing this
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`Petition).
`
`Identification of Challenge (37 C.F.R. §42.104(b))
`B.
`Petitioner requests IPR of the Claims and that the Board cancel the same as
`
`unpatentable.
`
`1.
`
`Specific Art on Which the Challenge is Based
`
`Petitioner relies upon the following prior art:1
`
`Name
`
`Ex.
`
`Patent / Publication
`
`Filed
`
`Published
`
`Kloba
`Robbin
`
`
`2000-04-28 2002-01-22
`U.S. 6,341,316
`1005
`1006 U.S. 2003/0079038 2002-10-21 2003-04-24
`
`Prior
`Art
`Under
`§1022
`(e), (b)
`(e), (a)
`
`
`1 The ’559 was filed 2003-10-22 and does not claim any earlier priority date. See
`
`’559, Face.
`
`2 Listed references qualify as prior art under, at least, the listed sections of pre-AIA
`
`35 U.S.C. § 102.
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`2.
`
`Statutory Grounds on Which the Challenge is Based
`
`Petitioner respectfully requests cancellation of the Claims on the following
`
`grounds:
`
`Ground
`1
`
`Basis
`§103
`
`Reference(s)
`
`Claims
`1, 7, 13, 19 Kloba
`2-6, 8-12,
`14-18, 20-24 Kloba in view of Robbin
`
`§103
`
`2
`
`IV. BACKGROUND
`A.
`’559 Patent
`The ’559 patent is purportedly directed to an improved system and
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`associated terminal, method and computer program product for controlling the
`
`flow of content. ’559, 2:57-62. As the ’559 patent acknowledges, “[d]igital
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`broadband data broadcast networks [were] known,” including the goal to achieve
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`“efficient delivery of digital services.” ’559, 1:58-67, 2:8-11. The specification of
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`the ’559 patent admits that the concept of downloading content to client devices
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`was well-known in the art, including when to deliver new pieces of content to the
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`client device and what new pieces of content to deliver. ’559, 2:25-39. The ’559
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`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.” ’559, 2:47-49.
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`The ’559 patent purports to solve this alleged problem using “a terminal
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`capable of sending a content status including terminal status information” to a
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`content flow manager, which can control the flow of content to the terminal. Id.,
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`3:10-20. The “content status” includes status information regarding the terminal.
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`Id., 10:60-67. The “terminal status information” includes information that accounts
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`for user preferences, capabilities of the terminal and/or previous content stored by
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`the terminal. See ’559, 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.” ’559, 3:31-36. For example, the
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`source of content (such as origin server 24 or digital broadcast receiver 28) is
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`associated with the network entity operating the content flow manager. ’559,
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`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
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`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
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`from the source of content. ’559, 3:18-36.
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`Prosecution History of the ’559
`B.
`The ’559 patent issued from U.S. Patent Appl. No. 10/690,692 (“the ’692
`
`application”), which was filed on October 22, 2003. ’559, Face.
`
`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. ’559FH, 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.” ’559FH, 71.3 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.” ’559FH, 72-75.
`
`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.” ’559FH, 78. In
`
`distinguishing the prior art, the applicant contended that “Chen discloses switch
`
`status including a listing of switches and services available from those switches[,]”
`
`
`3 All emphasis added unless indicated otherwise.
`
`- 7 -
`
`

`

`not “a server status including a listing of content available from the source, similar
`
`to the claimed invention.” ’559FH, 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. ’559FH, 78. 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. ’559FH, 79-80.
`
`In a Final Office Action, the Examiner maintained the rejection that claims
`
`1-24 are anticipated by Chen. ’559FH, 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.” ’559FH, 42-47, 51-53. 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. ’559FH, 22-23.
`
`The Examiner subsequently allowed the ’690 application, and the ’559
`
`patent issued on October 21, 2008. ’559, Face.
`
`- 8 -
`
`

`

`V. LEVEL OF ORDINARY SKILL IN THE ART
`On or before the earliest effective filing date of the ’559 (2002-10-22,
`
`hereinafter the “Critical Date”), a person of ordinary skill in the art (“POSITA”)
`
`would have had a bachelor’s degree in computer science, computer or electrical
`
`engineering, or a related field, and approximately two or more years of experience
`
`with digital multi-media content distribution and management and associated system
`
`infrastructures. Additional education could substitute for professional experience,
`
`and vice versa. McNair, [24]-[25].
`
`VI. CLAIM INTERPRETATION
`Claim terms subject to IPR are to be construed in accordance with their
`
`ordinary and customary meaning as understood by a POSITA in light of the
`
`specification and prosecution history. 37 C.F.R. §42.100(b). Only terms necessary
`
`to resolve the controversy need to be construed. Nidec Motor Corp. v. Zhongshan
`
`Broad Ocean Motor Co., 868 F.3d 1013 (Fed. Cir. 2017).
`
`No constructions are necessary in this proceeding at this time, as the prior art
`
`discloses the claimed limitations under any interpretation.
`
`Petitioner notes that a claim construction order involving the ’559 issued in
`
`litigation not involving Petitioner. See EX1007. The order construed the following:
`
`- 9 -
`
`

`

`Term
`
`“download”
`[Claims 2, 4]
`
`Court’s Construction
`“copy and store in memory of the
`terminal for subsequent use”
`
`
`VII. GROUNDS OF UNPATENTABILITY
`This Petition is supported by the Declaration of Bruce McNair, which
`
`describes the prior art’s scope and content at the time of the ’559. McNair, [46]-
`
`[184]. The prior art renders the Claims unpatentable for reasons discussed below.
`
`A. Ground 1: Claims 1, 7, 13, 19 are Rendered Obvious by Kloba
`1. Overview: Kloba
`
`Kloba describes a system and method for “synchronizing content between a
`
`server and a client based on state information,” in which transfers of content (e.g.,
`
`music, movies, books, photos, etc.) are based on the current state of content stored
`
`on a client device. EX1005 (“Kloba”), Title, Abstract, 25:30-32. Kloba seeks to
`
`“enabl[e] web content … to be loaded on mobile devices, and for users of mobile
`
`devices to operate with Such web content on their mobile devices in an interactive
`
`manner while
`
`in an off-line mode.” Kloba, 1:54-57. Kloba describes
`
`“synchronization processes that can collect information from the Internet to a server,
`
`and to the client.” Kloba, 5:30-31.
`
`For example, Kloba discloses the synchronization process shown in FIG. 63B,
`
`annotated below:
`
`- 10 -
`
`

`

`Kloba, Detail of FIG. 63B (annotated)
`As shown, the client 108 sends request 6320 to the server 104 to begin the
`
`
`
`synchronization process (annotated in red above). Kloba, 21:19-20, 23:40-45. The
`
`request 6320 contains “state information” regarding the state of the client 108,
`
`including a “data marker” indicating the state of content stored by the client 108.
`
`Kloba, 18:28-33, 19:18-21, 21:19-20, 23:40-45. The server 104 receives the
`
`request 6320 and determines a set of “differences” (or “deltas”) between the
`
`version of content stored by the server 104 and that stored by the client 108 by
`
`comparing the received “data marker” to one representing the server’s version of
`
`the content. Kloba, 19:1-15, 19:37-45

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