Trials @uspto. gov
`571-272-7822
`
`Paper 15
`Date: July 21, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AKAMAI TECHNOLOGIES,INC.,
`Petitioner,
`
`V.
`
`EQUIL IP HOLDINGS LLC,
`Patent Owner.
`
`IPR2023-00330
`Patent 8,495,242 B2
`
`Before RICHARD M. LEBOVITZ, ROBERT J. WEINSCHENK,and
`SHARONFENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`571-272-7822
`
`Paper 15
`Date: July 21, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AKAMAI TECHNOLOGIES,INC.,
`Petitioner,
`
`V.
`
`EQUIL IP HOLDINGS LLC,
`Patent Owner.
`
`IPR2023-00330
`Patent 8,495,242 B2
`
`Before RICHARD M. LEBOVITZ, ROBERT J. WEINSCHENK,and
`SHARONFENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`IPR2023-00330
`Patent 8,495,242 B2
`
`I.
`
`INTRODUCTION
`
`A.
`
`Background and Summary
`
`Akamai Technologies,Inc. (“Petitioner”) filed a Petition (Paper 2,
`
`“Pet.”) requesting institution of interpartes review of claim 9 (“the
`
`challenged claim”) of U.S. Patent No. 8,495,242 B2 (Ex. 1001, “the ’242
`
`patent”). Equil IP Holdings LLC (“Patent Owner’)filed a Preliminary
`
`Response (Paper8, “Prelim. Resp.”). After authorization (see Ex. 1040) to
`
`file additional briefing relating to 35 U.S.C. § 325(d) arguments and issues
`
`relating to the correction of inventorship in U.S. Patent No. 6,964,009,
`
`Petitionerfiled a Preliminary Reply (Paper 12, “Prelim. Reply”) andPatent
`
`Ownerfiled a Preliminary Sur-reply (Paper 13, “Prelim. Sur-reply”’).
`
`An interpartes review maybe instituted only if “the information
`
`presented in the petition .
`
`.
`
`. and any [preliminary] response. .
`
`. showsthat
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`there is a reasonable likelihoodthat the petitioner would prevail with respect
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`to at least 1 of the claims challengedin the petition.” 35 U.S.C. § 314(a)
`
`(2018). For the reasons below, we decline to exercise our discretion to
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`dismiss under 35 U.S.C. §§ 314(a) or 325(d), and determinethat Petitioner
`
`has established a reasonable likelihood that it would prevail in showing the
`
`unpatentability of the challenged claim. Accordingly, weinstitute an inter
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`partes review of the challenged claim on all groundsraised in the Petition.
`
`B.
`
`Real Parties in Interest
`
`Petitioner and Patent Owneridentify only themselvesasreal parties in
`
`interest. Pet. 3; Paper 4 (Patent Owner’s Mandatory Notices), 1.
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`C.
`
`Related Matters
`
`Petitioner and Patent Ownereachidentify as related Equil IP
`
`Holdings LLC vy. Akamai Technologies, Inc., Case 1-22-cv-00677 (D. Del.)
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`and interpartes review petitions IPR2023-00329 and IPR2023-00332. Pet.
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`
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`IPR2023-00330
`Patent 8,495,242 B2
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`34; Paper 4, 1. Patent Owner additionally notes that the ’242 patentis
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`related to several patent applications. Paper 4, 1—2.
`
`D.
`
`~The ’242 Patent
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`The ’242 patent,titled “Automated Media Delivery System,”
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`describes an automatic graphics delivery system that operates in parallel
`
`with an existng Website infrastructure to provide delivery of media for
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`access by an end user. Ex. 1001, codes (54), (57), 1:18-23. “The system
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`streamlines the post-production process by automating the production of
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`media through content generation procedures controlled by proprietary tags
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`placed within URLs embedded within Web documents. Thesystem
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`automatically processes the URL encodedtags and automatically produces
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`derivative media for the website from the original media.” /d. at 7:8-16.
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`Whena request for the media1s received, the client connection, server
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`traffic, content generation procedures, and proprietary tags within the URL
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`are used to generate a version of the media for the client. Jd. at 7:17—20,
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`17:27—30. The generated mediais cachedso that further requests for the
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`sameversion of the media requires less overhead. Id. at 7:22—24, 18:34—40.
`
`In some embodiments, a primary content generation procedure
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`produces a derivative image based on images from an image repository. Jd.
`
`at 18:41-45. A dynamic image content system then may generate a
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`subsequent derivative media from that intermediate derivative image, which
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`may be modified for a specific user browser and then passedto the user. Id.
`
`at 18:45—51, 18:63—67, 19:48—53. Inputs to the dynamic image content
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`system may bestored in a cacheso the intermediate derivative image need
`
`not be regenerated.
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`/d. at 18:60—63, 19:23—42, 19:66—20:3.
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`
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`IPR2023-00330
`Patent 8,495,242 B2
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`E.
`
`Challenged Claim
`
`The sole challenged claim, claim 9, is reproduced below with
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`bracketed identifiers added as used by the Petitioner.
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`9. Amethodfor accessing dynamically transcoding media
`content, the method comprising:
`
`[9.a] an act of receiving a request for media content to be
`delivered to a client presentation system for media content,
`wherein the requested media content has a limited number of
`base transcoding profiles associated therewith, each base
`transcoding profile corresponding to a cached version of the
`requested media content;
`
`[9.b] at the time of the request, and without input by a
`network administrator, an act of automatically identifying
`transcoding parameters to be applied to the requested media
`content prior to delivery to the client presentation system,
`wherein identification of transcoding parametersis based on one
`or more formats of any client presentation system;
`
`[9.c] an act of determining that the transcoding parameters
`to be applied to the requested media contentprior to delivery to
`the client presentation system are the same as transcoding
`parametersthat are being applied to the requested media content
`prior to delivery to anotherclient presentation system;
`
`[9.d] an act of transcoding the requested media content in
`accordance with the identified transcoding parameters, such that
`the identified transcoding parameters are used to perform
`additional incremental transcoding on top ofthe base transcoding
`profile;
`
`[9.e] wherein the act of act of transcoding the requested
`media content in accordance with the identified transcoding
`parameters comprises:
`
`an act of selecting a pre-existing base transcoded version
`the requested media content comprising intermediate
`of
`derivative media that has been transcoded in accordance with
`only a portion ofthe identified transcoding parameters; and
`
`
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`IPR2023-00330
`Patent 8,495,242 B2
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`[9.f] an act of creating a final version by incrementally
`performing further
`transcoding of
`the pre-existing base
`transcoded version in accordancewith a remaining portion of the
`identified transcoding parameters; and
`
`[9.g] an act of delivering the transcoded media contentto
`both client presentation systems concurrently.
`
`Ex. 1001, 23:45—24:16.
`
`F.
`
`Prior Artand Asserted Grounds
`
`Petitioner raises the following groundsof unpatentability with respect
`
`to the challenged claims:
`
`oo02Ts0*,Hangs
`
`Oo02Samaniego*@
`Oo0BSamaniego
`
`
`Oo103Samaniego,Tso
`
`
`
`Pet. 6.
`
`Il.
`
`ANALYSIS
`
`A.
`
`Legal Standards
`
`“In an [interpartes review], the petitioner has the burden from the
`
`onset to show with particularity why the patent it challengesis
`
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring interpartes review
`
`' The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287-88 (2011), amended 35 U.S.C. §§ 102, 103. Because the
`filmg date for the 242 patent is before the effective date of the applicable
`AIA amendment, werefer to the pre-AIAversion of these statutes. See
`Ex. 1001, code (22). Our institution determination would not change under
`the post-AIA version ofthese statutes.
`> Tsoet al., US 6,421,733 B1 (iss. July 16, 2002) (Ex. 1004).
`> Huanget al., US 6,438,576 B1 (iss. Aug. 20, 2002) (Ex. 1005).
`4 Samaniegoet al., US 2002/0078093 A1 (pub. June 20, 2002) (Ex. 1007).
`
`5
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`IPR2023-00330
`Patent 8,495,242 B2
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`petitions to identify “with particularity .
`
`.
`
`. the evidence that supports the
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`groundsfor the challenge to each claim’’)). This burden nevershifts to
`
`Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc. , 800
`
`F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
`
`Inc. , 545 F.3d 1316, 1326—1327 (Fed. Cir. 2008)) (discussing the burden of
`
`proof in interpartes review). Furthermore, Petitioner must explain with
`
`particularity how the prior art would have rendered the challenged claims
`
`unpatentable. 35 U.S.C. §312(a)(3); 37 C.F.R. § 42.104(b)(4) (“The
`
`petition must specify where each elementof the claim is found in the prior
`
`art patents or printed publications relied upon.”).
`
`To establish anticipation, each and every element in a claim, arranged
`
`as recited in the claim, must be found in a single prior art reference. See Net
`
`MoneyIN, Inc. v. VeriSign, Inc. ,545 F.3d 1359, 1369 (Fed. Cir. 2008);
`
`Karsten Mfg. Corp. v. Cleveland Golf Co. , 242 F.3d 1376, 1383 (Fed. Cir.
`
`2001). Although the elements must be arranged or combined in the same
`
`way as in the claim, “the reference neednotsatisfy an ipsissimis verbis test,”
`
`1.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331,
`
`1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed. Cir.
`
`1990).
`
`A claim is unpatentable under 35 U.S.C. § 103 if the differences
`
`between the subject matter sought to be patented and the prior art are such
`
`that the subject matter as a whole would have been obviousat the time the
`
`mvention was madeto a person having ordinary skill in the art to which said
`
`subject matter pertains. KSR Int’] Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousnessis resolved on the basis of underlying
`
`factual determinations, including (1) the scope and contentofthe priorart;
`
`(2) any differences betweenthe claimed subject matter and the priorart;
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`IPR2023-00330
`Patent 8,495,242 B2
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`(3) the level of skill in the art; and (4) when presented, objective indicia
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`relating to obviousness.° See Graham v. John Deere Co., 383 U.S. 1, 17-18
`
`(1966).
`
`Additionally, the obviousnessinquiry typically requires an analysis of
`
`“whether there was an apparent reason to combine the knownelements in
`
`the fashion claimed bythe patentat issue.” KSR,550 U.S. at 418 (citing
`
`In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
`
`reasoning with somerational underpinning to support the legal conclusion of
`
`obviousness”’)). Petitioner cannotsatisfy its burden of proving obviousness
`
`by employing “mere conclusory statements,” but “must instead articulate
`
`specific reasoning, based on evidenceof record, to supportthe legal
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`conclusion of obviousness.” /nre Magnum Oil Tools Int’l, Lid. , 829 F.3d
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`1364, 1380 (Fed. Cir. 2016).
`
`B.
`
`Level of Ordinary Skillin the Art
`
`Petitioner arguesthat:
`
`A personofordinary skill in the art (“POSITA”) as ofthe
`°242’s claimedpriority date would have had a bachelor’s degree
`im computer systems, computer science, or the equivalent
`thereof, and at least two years of experience with networked
`media delivery or related technologies. More education can
`supplementpractical experience, and vice-versa.
`
`Pet. 10 (internal citations omitted) (citing Ex. 1003 (Declaration of Dr. Viyay
`
`K. Madisetti) J] 44, 45, 47, 48). Patent Ownerapplies Petitioner’s proposed
`
`level of skill for the purposesof its Prelimmary Response. Prelim. Resp. 8.
`
`For purposes ofthis Decision, we apply Petitioner’s definition of the
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`level of ordinary skill in the art whichis consistent with the level of skill
`
`> The recordat this point contains no contentions regarding such objective
`indicia relating to obviousness.
`
`
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`IPR2023-00330
`Patent 8,495,242 B2
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`reflected in the Specification and in the asserted prior art references. See
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`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`C.
`
`Claim Construction
`
`Weconstrue claim terms according to the standard set forth in Phillips
`
`v. AWH Corp., 415 F.3d 1303, 1312-1317 (Fed. Cir. 2005) (en banc), i.e., as
`
`construedin a civil action under 35 U.S.C. § 282(b). See 37C.F.R.
`
`§ 42.100(b). Under Phillips, claim termsare afforded “their ordinary and
`
`customary meaning.” Phillips,415F.3dat 1312. “[T]he ordinary and
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`customary meaningofa claim term is the meaningthat the term would have
`
`to a person of ordinary skill in the art in question at the time of the
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`invention.” /d. at 1313. “Importantly, the person of ordinary skill in the art
`
`is deemedto read the claim term notonly in the context of the particular
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`claim in whichthe disputed term appears, but in the context of the entire
`
`patent, including the specification.” 7d. An inventor mayrebutthat
`
`presumption by providing a definition of the term in the specification “with
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`reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
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`1475, 1480 (Fed. Cir. 1994). In the absenceof such a definition, limitations
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`are not to be read from the specification into the claims. In re Van Geuns,
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`988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`Neither Petitioner nor Patent Ownerproposesany claim constructions,
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`and we do not determinethat any claim constructions are necessary to reach
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`our conclusionsin this Decision. Pet. 10—11; Prelim. Resp. 8; Vivid Techs.,
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`Inc. v. Am. Sci. & Eng’g, Inc. ,200 F.3d 795, 803 (Fed. Cir. 1999) (requiring
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`construction of “only those terms. .
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`. that are in controversy, and only to the
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`extent necessary to resolve the controversy”); see Nidec Motor Corp.v.
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`Zhongshan Broad Ocean MotorCo., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
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`(applying to interpartes reviews).
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`D. Discretion to Deny Institution Under 35 U.S.C. § 325(d)
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`Institution of interpartes review is discretionary. See HarmonicInc.
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`v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is
`
`permitted, but never compelled,to institute an IPR proceeding.”’); 35 U.S.C.
`
`§ 314(a). Pursuant to 35 U.S.C. § 325(d), in determming whetherto institute
`
`interpartes review, “the Director may take into account whether, and reject
`
`the petition or request because, the sameor substantially the samepriorart
`
`or arguments previously were presented to the Office.” In evaluating
`
`arguments under § 325(d), we use
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`[a] two-part framework: (1) whether the sameor substantially the
`same art previously was presented to the Office or whetherthe
`same or substantially the same arguments previously were
`presented to the Office; and (2) if either condition offirst part of
`the
`framework is
`satisfied, whether
`the petitioner has
`demonstrated that the Office erred in a manner material to the
`patentability of challenged claims.
`
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Gerdte GmbH,
`
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).
`
`In applying the two-part framework, we consider several non-exclusive
`
`factors, including:
`
`(a) the similarities and material differences betweenthe asserted
`art and the prior art involved during examination;
`(b) the cumulative nature of the asserted art and the prior art
`evaluated during examination;
`(c) the extent to which the asserted art was evaluated during
`examination, including whetherthe prior art was the basis for
`rejection;
`(d) the extent of the overlap between the arguments made during
`examination and the manner in which petitioner relies on the
`prior art or patent ownerdistinguishesthe priorart;
`(ec) whether petitioner has pointed out sufficiently how the
`examinererred in its evaluation of the asserted prior art; and
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`
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`Patent 8,495,242 B2
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`(f) the extent to which additional evidenceandfacts presented in
`the petition warrant reconsideration ofthe prior art or arguments.
`
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586,
`
`Paper 8 at 17-18 (PTAB Dec. 15, 2017) (precedentialas to Section III.C.5,
`
`first paragraph).
`
`Factors(a), (b), and (d) of the Becton, Dickinson factorsrelate to
`
`whetherthe art or arguments presentedin the petition are the same or
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`substantially the same as those previously presentedto the Office. Advanced
`
`Bionics, 10. Factors(c), (e), and (f) “relate to whetherthe petitioner has
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`demonstrated a material error by the Office”in its prior consideration of that
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`art or arguments. Jd. Only if the same or substantially the sameart or
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`arguments were previously presentedto the Office do we then consider
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`whetherthe petitioner has demonstrated a material error by the Office.
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`Id.
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`“At bottom,this frameworkreflects a commitmentto defer to previous
`
`Office evaluations of the evidence of record unless material error is shown.”
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`Id. at 9.
`
`Aspart of our analysis underthefirst prong of the Advanced Bionics
`
`framework, we evaluate Becton, Dickinsonfactors(a), (b), and (d) with
`
`respectto the facts of the present proceeding. Advanced Bionics, 9-10 n.10
`
`(citing Becton, Dickinson, Paper8 at 17—18).
`
`Patent Ownercontendsthat Tso was the sameorsubstantially the
`
`sameasart that was before the Examiner during the prosecution of the
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`application that issued as the ’242 patent. Prelim. Resp. 23—26; Prelim. Sur-
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`reply 5—6. Patent Ownerarguesthat, while Tso wasnotcited during
`
`prosecution, a substantially identical reference, WO 98/43177 (Ex. 2007,
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`“Tso PCT”), was cited. Prelim. Resp. 24—25; Ex. 2007; Ex. 1002, 176
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`(information disclosure statementciting Tso PCT (line 58)), 780 (version
`
`10
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`Patent 8,495,242 B2
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`with Examiner’s initials); Ex. 2008 (redline comparison of Tso and Tso
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`PCT). Petitioner concedes that Tso PCT “has substantially the same
`
`disclosures” as Tso. Prelim. Reply 6.
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`Patent Owneradditionally contendsthat, while Huang was notbefore
`
`the Examiner during prosecution, Huang’s teachings are substantially similar
`
`to those described in U.S. Patent No. 6,483,851B1 (Ex. 2011, “Neogv’).
`
`Prelim. Resp. 26. Patent Owner argues that Neogi describes “partitioning a
`
`multimedia transcoding process into distributed intermediate stages and
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`caching the results of each stage in a buffer pool of memory forretrieval by
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`a Subsequent processing stage.” /d. (citing Ex. 2011, 1:14-16, 1:53-60,
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`2:16—26, 2:52—67, 3:2—4, 3:8—30, 3:60—-65). Patent Ownerasserts that these
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`disclosures of Neogi are similar to the teachings relied upon in the Petition
`
`from Huang.
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`/d. (citing Pet. 15—21); Prelim. Sur-reply 7 (equating Huang’s
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`storage of a partially rendered object in a cache to Neogi’s data pools during
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`stages of the adaptive pipelining). Petitioner contends that Huang’s
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`teachings were not considered, as Neogi does not “‘further transcoding’ a
`
`cached ‘base transcoded version’ of content,” but rather teaches
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`“transcoding content in stages” without any discussion of “caching,storing,
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`or incrementally transcodingpartially transcoded content.” Prelim. Reply 6
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`(citing Ex. 2011, 1:56—60; 3:18—39). Petitioner arguesthat the “buffer
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`pooling” described by Neog1 is part of a single “adaptive pipeline” and nota
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`cache. Id.
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`As further discussed below in Section II.E, Petitioner uses the
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`disclosures in Huang regarding avoiding re-rendering andre-retrieving
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`contentby storing partially-rendered content in a local cache in its
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`arguments regarding obviousness over Tso and Huang. See Pet. 16—17, 18—
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`19, 33, 34-35, 37- 38 (citing Ex. 1005, 2:9-13 (“any subsequent requests for
`
`11
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`the same object. .
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`. can be served directly from the stored copy in proxy
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`server cache’”’), 6:63—67 (cache manager“maintains a local copy of the
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`partially rendered. .
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`. object in order to avoid repeating someobject
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`rendering operations”), 7:23-8:11; Ex. 1003 §[ 67-68, 71, 89-91, 98). But
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`Neogi does not describe caching an object in order to avoid repeating
`
`rendering operations upon subsequent requests for the same object. Rather,
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`portions of Neogi cited by Patent Ownerdescribe a pipeline constructed
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`according to control parametersfor the user’s request for transcoding, which
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`mayinclude intermediatefiltering stages. Ex. 2011, 1:53-60. Neogi’s
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`buffer pools “fulfill the memory requirements of the particular stages of the
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`adaptive pipeline.” Jd. at 3:2-4. We agree with Petitioner that Patent
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`Owner’s citations to Neogi do not show the description of a cache that stores
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`partially-rendered contentin a local cacheto allow subsequentrequests to
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`avoid re-rendering or re-retrieving content. See Prelim. Reply 6.
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`Thus, we determine that there were material differences between
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`Huang and Neogi, that Huang is not cumulative of Neogi, and that there is a
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`significant difference between Neogi and Huang, considering the mannerin
`
`whichPetitioner uses Huangin its unpatentability arguments. Having thus
`
`evaluated Becton, Dickinsonfactors(a), (b), and (d) with respectto the facts
`
`of the present proceeding, we determinethat the same or substantially the
`
`sameart or arguments were notpresented to the Office previously. Thus, we
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`do not proceedto the second prongof the Advanced Bionics framework, and
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`we will not discretionarily deny the Petition under § 325(d).
`
`Forthe foregoing reasons, we are not persuaded to exercise our
`
`discretion to denyinstitution under 35 U.S.C. § 325(d).
`
`12
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`E.
`
`Claims 9— Obviousness over Tso and Huang
`
`Petitioner argues that claim 9 is unpatentable as obviousover a
`
`combination of Tso and Huang. Pet. 11-41. Patent Ownerpresents
`
`argumentsrelating to Petitioner’s showing with respect to claim limitations
`
`9.b and 9.c, that Tso does not teach or suggest these limitations. Prelim.
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`Resp. 29-30, 32-38.
`
`1,
`
`Tso
`
`Tso is titled “System for Dynamically Transcoding Data Transmitted
`
`Between Computers,” and describes transcoding data exchanged between
`
`two computers according to predeterminedselection criteria. Ex. 1004,
`
`codes(54), (57), 2:3-17. Tso describes that a transcoder, which may bepart
`
`of a server, is arranged between a networkclient and the Internet.
`
`/d. at 3:8—
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`30. Figure 3, reproducedbelow,is a block diagram depicting an
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`embodimentincluding networkclient 12 connectedto Internet 18 through an
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`interposed transcoding server 34.
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`/d. at 3:21—23.
`
`FIG.3
`
`Asseen in Figure 3, transcoding server 34 includes a remote proxy 36.
`
`/d. at
`
`3:31—33. This proxy can accessInternet 18 to make requests and receive
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`13
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`replies from external Internet resources, and also to examine and act on the
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`requests and replies, for example by determining whetheror not to transcode
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`content.
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`/d. at3:34—40. The transcoding of content received from Internet
`
`18 beforeit is returned to requesting network client 12 is done by transcoder
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`20, which includes parser 22 and plurality of transcode service providers 24.
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`Id. at 3:8—11, 3:40-43. Parser 22 managesthe transcodingofdata to be
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`transmitted from transcoding server 34 to network client 12.
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`Id. at 3:45—48.
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`Transcode service providers may provide the capability to compress or scale
`
`data content.
`
`/d. at 3:51—55. Server-side cache memory 30 managed by
`
`server-side cache interface 28 1s provided to store original and transcoded
`
`versions of content.
`
`/d. at 3:66—4:5. “Server-side cacheinterface 28 and
`
`server-side cache memory 30 enable maintenance of multiple
`
`representations of a given cached object, with descriptive information about
`
`each representation included in server-side cache memory 30.” Id. at 4:62—
`
`66. These multiple representations support clients with different
`
`communicationsand/or presentation capabilities.
`
`Jd. at 6:13—17. In this
`
`way, a parameter maybe used to select a version of the cached object for
`
`return transmission to requesting network client 12. Jd. at 6:17—23.
`
`Information may be stored and retrieved about cached objects, “including
`
`information maintained by transcode service provider 24 used to determine
`
`transcoding properties and transcoding status of a cached object. Transcode
`
`service provider 24 may use such information, for example, to determine
`
`current compression progressfor scaled data access and staged refinements.”
`
`Id. at 5:35-42.
`
`Whena requestis received from a client, user preferencesare
`
`examined, and the cache is checked to determine whether a copyof the
`
`required version of the media already resides in cache memory.
`
`/d.at
`
`14
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`
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`IPR2023-00330
`Patent 8,495,242 B2
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`14:21—30, Fig. 8. If not, it is requested from the Internet, butif so it is
`
`retrieved from the cache.
`
`/d. at 14:30—46, Fig. 8. The data stream received
`
`is then transcodedforthe user.
`
`/d. at 14:47—55, Fig. 9. The transcoded
`
`object is cached. Jd. at 14:57—59.
`
`2.
`
`Huang
`
`Huangrelates to a “Collaborative Proxy System For Distributed
`
`Deployment Of Object Rendering” in which object requestor nodes request
`
`objects from object source nodes, with intermediate nodes performing staged
`
`object rendering. Ex. 1005, codes (54), (57), 3:19-49. Included with object
`
`requests are meta-information describing the capabilities of the object
`
`requesting node, termedreceiverhint information (RHI).
`
`/d. at 3:52—57.
`
`During the staged object renderingafirst intermediate node may perform a
`
`subset of the required rendering and passa partially rendered objectto
`
`another intermediate node to perform someorall of the remaining required
`
`rendering.
`
`Id. at 3:50—4:7.
`
`Figure 4, reproduced below,is a flow chartillustrating the operations
`
`of a request object handler in an intermediate node. Jd. at 6:52—56, 7:23—
`
`8:11.
`
`~
`
`wooryY RHI ang
`RETURN OBJECT
`
`|
`|
`
`f
`
`406-~)
`
`t
` wopiry RHE ano
`RETURN OBJECT
`
`Le 401
`ceAOE
`
`
`
`"REQUESTED OBJECT~~~ YES
`oo” EURTHER
`RENDERING?
`IN THE BUFFER?
`
`
`
`et 08
`
`
`wooly RHE ano
`AGRENDERING“~~_yes
`REQUEST QRJECT
`uo LOCALLY?7
`wl 407
`ee
`YES eeCOMPLETE ENTIRE
`<
`REMAINING
`2
`
`RENDERING?
`i
`
`i
`poo
`DIMDE REMAINING
`i
`| RENDERING INTC STEPS
`: AND DETERMINE WHICH
`|
`
`7408
`
`STEPS TO PERFORM
`
`FIG.4
`
`15
`
`
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`IPR2023-00330
`Patent 8,495,242 B2
`
`Figure 4 describes a process for handling a request for an object, including
`
`(decision diamond 401) determining whether a useful version of the
`
`requested objectis in a buffer or must be requested and (decision diamond
`
`402 and “YES”branch) performing further rendering on the objectif
`
`necessary.
`
`/d. at 7:23-8:11. As described in Figure 4, if a version of the
`
`object satisfying certain requirementsis available in the cache,it is retrieved
`
`from the cache, but if not a request for the object is sent out to a content
`
`server or another proxy server.
`
`/d. at 7:23—42, Fig. 4 (elements 401, 404). If
`
`the requested object is found in the cache, the RHI is checked to determine
`
`whetherfurther rendering is necessary,if not the RHI is modified and the
`
`object returned.
`
`/d. at 7:43—53, Fig. 4 (elements 402, 403). If additional
`
`rendering is necessary, complete or partial additional rendering may be
`
`performedlocally.
`
`/d. at 7:61—8:5, Fig. 4 (elements 405, 407-409). After
`
`local rendering, the cache manager then determines whetherto store a local
`
`copy of the completely or partially rendered object. Jd. at 8:5—7, Fig. 4
`
`(element 410). The object (whetheror not local rendering has been
`
`performed)is returned along with modified RHIreflecting the condition of
`
`the object. Id. at 7:57—-61, 8:7—11, Fig. 4 (element 406).
`
`3.
`
`Combination ofTso and Huang
`
`Petitioner argues that Tso and Huang are analogousprior art to the
`
`*242 patent, as each is directed to networked media delivery, and pertinent to
`
`the problemsidentified in the ‘242 patent. Pet. 17 (citing, inter alia, Ex.
`
`1001, 1:20—23; Ex. 1004, 1:10—-31; Ex. 1005, 1:20—26; Ex. 1003 J 70).
`
`Petitioner argues that Tso discloses receiving partially-transcoded
`
`content from a cache, andthat one of ordinaryskill in the art would have
`
`modified these teachings by implementing Huang’s “detailed teachings”
`
`regarding retrieving and further processing cachedpartially transcoded
`
`16
`
`
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`IPR2023-00330
`Patent 8,495,242 B2
`
`content, and tracking cached versionsavailable via Huang’s RHI
`
`information.
`
`/d. at 18 (citmg Ex. 1004, 5:39-41, 14:64—15:6; Ex. 1005, 6:9—
`
`23, 6:23-67; Ex. 1003] 71). Petitioner argues that the mechanismsin the
`
`two references are complementary and that Huang teaches “how to further
`
`improve speed and efficiency”in staged transcoding by utilizing local
`
`cached content to avoid repeating operationsandto track transcoding status
`
`of content.
`
`/d. at 18—31 (citing inter alia Ex. 1003 [J 72—73). Petitioner
`
`asserts that one of ordinary skill in the art would have had a reasonable
`
`expectation of success,as a straightforward application of the teachings of
`
`Huang in Tso’s similar staged transcoding system.
`
`/d. at 21 (citing, inter
`
`alia, Ex. 1003] 74).
`
`At this time, Patent Owner does not commenton Petitioner’s
`
`proposed reasons for combining Tso and Huang.
`
`With respect to the Petitioner’s proposed combination of Tso and
`
`Huang by one of ordinary skill in the art, we find Petitioner has sufficiently
`
`shown, on the present record and for the purposesofinstitution, that a
`
`person of ordinary skill in the art would have had reason to combine the
`
`teachings of Tso and Huang.
`
`4,
`
`Claim 9
`
`a)
`
`Preamble and Limitation 9.a
`
`Withoutasserting a position regarding whether the preamble is
`
`limiting, Petitioner argues that Tso discloses a method for dynamically
`
`transcoding media content, for example in its description ofa client
`
`computerreceiving dynamically transcoded information from a network
`
`server computer. Pet.21—22 (citing, inter alia, Ex. 1004, 2:44—49, 3:45—54;
`
`Ex. 1003 (75-77).
`
`17
`
`
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`IPR2023-00330
`Patent 8,495,242 B2
`
`Limitation 9.a recites “an act of receiving a request for media content
`
`to be delivered to a client presentation system for media content, wherein the
`
`requested media contenthas a limited numberof base transcoding profiles
`
`associated therewith, each base transcoding profile correspondingto a
`
`cachedversion of the requested media content.” Forthe first portion of this
`
`limitation (“an act of recerving a request for media content to be delivered to
`
`a client presentation system for media content”), Petitioner cites Tso’s
`
`receipt of requests from a networkclient by a networkserver for media
`
`content.
`
`/d. at22—26 (citing Ex. 1004, 2:56—65, Fig. 5; Ex. 1003 J 78-80).
`
`For the second portion, requiring that the “requested media content has a
`
`limited numberof base transcoding profiles associated therewith, each base
`
`transcoding profile correspondingto a cached version of the requested media
`
`content,” Petitioner arguesthis is taught by Tso’s storage of requested
`
`contented items in a cachestoring “multiple representations of a given cache
`
`object” and “descriptive information”regarding “transcoding properties and
`
`... Status” of cached versions of content. Jd. at 22—25 (citing Ex. 1004, 4:1—
`
`5, 4:62—5:7, 5:35—42, 6:17—23; Ex. 1003 J 78-80). Petitioner additionally
`
`cites the portion of Tso that describes a network proxy “determin[ing]|
`
`whether a non-transcodedversion ofthe requested hypertext object”is
`
`present in the cache memory,andretrieves information regarding the
`
`transcoding properties and status of the cached object.
`
`/d. at 26 (citing
`
`Ex. 1004, 14:21—55) (emphasis omitted).
`
`At this time, Patent Ownerdoesnotpresent any arguments or
`
`comments regarding theseassertions.
`
`18
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`
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`IPR2023-00330
`Patent 8,495,242 B2
`
`Wedetermine, on the present record and for the purposes of
`
`mstitution, that Petitioner sufficiently showsthat Tso teachesor suggests the
`
`preamble of claim 9° andlimitation 9.a.
`
`b)
`
`Limitation 9.b
`
`Limitation 9.b recites that the method of claim 9 comprises “at the
`
`time of the request, and without input by a network administrator, an act of
`
`automatically identifying transcoding parametersto be applied to the
`
`requested media contentprior to delivery to the client presentation system,
`
`wherein identification of transcoding parameters is based on one or more
`
`formats of any client presentation system.”
`
`Petitioner arguesthat this limitation is taught or suggested in Tso’s
`
`parser, which managesthe transcoding of data to be transmitted by invoking
`
`transcode service providers based on predeterminedselection criterion
`
`including characteristics of the Tso network client.
`
`/d. at 26-27. Petitioner
`
`cites T'so’s disclosure that, upon receipt of a request, the parserselectively
`
`invokes transcodeservice providers 24 based on the selection criteria.
`
`Id. at
`
`28-29 (citing Ex. 1004, 6:64-7:14). Petitioner additionally cites Tso’s
`
`teaching that the predeterminedselection criterion mayrelate to the
`
`condition of the transcoding device or connection, or information regarding
`
`the network client.
`
`/d. at 27, 28—29 (citing Ex. 1004, 6:64—7:29; Ex. 1003
`
`{ 83).
`
`Patent Ownerarguesthat Petitioner’s argument is flawed becauseit
`
`“maps Tso’s transcode service providers 24 to the claimed ‘transcoding
`
`parameters’” but “Tso discloses that the transcode service providers 24 are
`
`© Because we determinethat Petitioner showsthat Tso teachesor suggests
`the preamble of claim 9, we do not make a determination regarding whether
`it is lnmiting.
`
`19
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`
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`IPR2023-00330
`Patent 8,495,242 B2
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`software modules within the transcoding server 34 that perform various
`
`functions or operations; they are not “parameters.” Prelim. Resp. 33-35.
`
`However, we do not understandthe Petition to be mapping the transcode
`
`se
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