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.
`
`IPR2023-00332
`Patent 9,158,745 B2
`
`Before RICHARD M. LEBOVITZ, ROBERT J. WEINSCHENK,and
`SHARONFENICK,Administrative Patent Judges.
`
`LEBOVITZ, Administrative Patent Judge.
`
`DECISION
`Denying Institution of/nter Partes Review
`35 US.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.
`
`IPR2023-00332
`Patent 9,158,745 B2
`
`Before RICHARD M. LEBOVITZ, ROBERT J. WEINSCHENK,and
`SHARONFENICK,Administrative Patent Judges.
`
`LEBOVITZ, Administrative Patent Judge.
`
`DECISION
`Denying Institution of/nter Partes Review
`35 US.C. $314
`
`
`
`IPR2023-00332
`Patent 9,158,745 B2
`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`Akamai Technologies,Inc. (“Petitioner”) filed a Petition (Paper 2,
`
`“Pet.”) requesting an interpartes review of claims 1—7 (“the challenged
`
`claims”) of U.S. Patent No. 9,158,745 B2 (Ex. 1001, “the ’745 patent”).
`
`Equil IP Holdings LLC (“Patent Owner’) filed a Preliminary Response
`
`(Paper8, “Prelim. Resp.”) to the Petition.
`
`Subsequentto the filing of the Petition and Preliminary Response, we
`
`authorized Petitioner (Ex. 1040 (PTAB email dated May 18, 2023))
`
`to file a Preliminary Reply Brief (Paper 12, “Prelim. Reply Br.”) limited to
`
`addressing (1) Patent Owner’s arguments under 35 U.S.C. § 325(d); and (2)
`
`Patent Owner’s argumentsrelating to the correction of inventorship in U.S.
`
`Patent No. 6,964,009 (“the ’009 patent’’) and its effect on the priorart status
`
`of a piece of art included in several of the asserted grounds. Wealso
`
`authorized Patent Ownerto file a responsive Preliminary Sur-reply (Paper
`
`13, “Prelim. Sur-reply”).
`
`An interpartes review may notbe instituted unless “the information
`
`presentedin the petition .
`
`.
`
`. and any response. .
`
`. showsthat there 1s a
`
`reasonable likelihood that the petitioner would prevail with respectto at least
`
`1 of the claims challenged in the petition.” 35 U.S.C. §314(a).
`
`After considering the Petition, the Preliminary Response, the
`
`Preliminary Reply Brief, the Prelimmary Sur-reply, and the evidence of
`
`record, for the reasons explained below, we determinethat Petitioner has not
`
`demonstrated a reasonable likelihood that it would prevail in establishing the
`
`unpatentability of at least one claim challenged in the Petition. Hence, we
`
`deny the Petition and do not institute an interpartes review.
`
`
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`IPR2023-00332
`Patent 9,158,745 B2
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`B. Real Parties in Interest
`
`Theparties identify themselvesas the only real parties in interest.
`
`Pet. 3; Paper 4, 1.
`
`C. RelatedMatters
`
`Petitioner and Patent Owneridentify the following proceeding as a
`
`related matter involving the ’745 patent: Equil /P Holdings LLC v. Akamai
`
`Technologies, Inc., No. 1:22-cv-00677 (D. Del.). Pet. 3; Paper 4, 1.
`
`D. The ’745 Patent (Exhibit 1001)
`
`The ’745 patent, titled “Optimization of Media Content Using
`
`Generated Intermediate Content,” issued on October 13, 2015, from
`
`Application No. 13/752,110 (“the ’110 application”) filed January 28, 2013.
`
`Ex. 1001, codes (45), (21), (22).
`
`The ’745 patent claims priority to a chain of ancestor patent
`
`applications, including Application No. 09/929,904 (“the ’904 application”),
`
`filed on August 14, 2001, which issued as the ’009 patent. Ex. 1001, code
`
`(60). The published version of the ’904 application, US Pub. No.
`
`2002/0078093 Al (Ex. 1007 (“Samaniego”’)), is cited by Petitioner as prior
`
`art in three of the patentability challenges to the ’745 patent claims. Pet. 6.
`
`Weaddressthe status of Samaniego as a printed publication in moredetail
`
`below.
`
`The ’745 patent discloses an “automatic graphics delivery system that
`
`operates in parallel with an existing Website infrastructure.” Ex. 1001, 7:6—
`
`7. The system is described as “streamlin[ing] the post-production process by
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`automating the production of media,” requested by a user from a browser,
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`
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`IPR2023-00332
`Patent 9,158,745 B2
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`“through content generation procedures controlled by proprietary tags placed
`
`within URLs embedded within Web documents.” Ex. 1001, 7:8-11. The
`
`disclosed system “automatically processes the URL encodedtags and
`
`automatically produces derivative media for the website from the original
`
`media” whichis available for viewing by a user. Ex. 1001, 7:13-16.
`
`The ’745 patent explains that the proprietary tags are used “to
`
`generate optimized media” by automated processing of the tags upon request
`
`of the media by a client. Ex. 1001, 5:65—6:1. This process, according to the
`
`°745 patent, reduces the “need for the Web authorto create different
`
`versions of a Website” for clients. Ex. 1001, 6:1—6:3. The ’745 patentalso
`
`discloses that “generated media is cached suchthat further requests for the
`
`same media require little overhead.” Ex. 1001, 6:3-S.
`
`An embodimentofthe process described in the ’745 patentis
`
`illustrated in Figure 21, reproduced below:
`
`
`
`IPR2023-00332
`Patent 9,158,745 B2
`
`Figure 21, reproduced above, showsa flow chart of a process including
`
`delivery of an HTML webpage with proprietary tags to browser 120,
`
`followed bythe transfer of the delivered HTML webpage from browser 120
`
`to server 2000. Server 2000 is shownasbeing part of system 100. System
`
`100 comprises URL tag parser 2100 for processing the proprietary tags.
`
`System 100 also comprises content generation procedures 2140 and dynamic
`
`media procedures 2150 that are performed on the media. Media cache 2120
`
`is also part of system 100.
`
`Morespecifically, with reference to Figure 21, a user through browser
`
`120 makesa request to web server 110 for web page 301. Ex. 1001, 19:12—
`
`14. Web page 301 is labeled in Figure 21 as an“HTML Page with
`
`Proprietary URL Tags.” The proprietary URL tags contain the information
`
`that direct browser 120 “to request the specified content generation
`
`procedure 2140 from the system 100 using input parameters specified with
`
`proprietary tags encoded within the URL.” Ex. 1001, 19:9-12. The content
`
`generation procedures are performed on the media. Ex. 1001, 19:5—7.
`
`Browser 120 receives web page 301 with the proprietary tags and provides
`
`them to server 2000; the serveris part of system 100. Ex. 1001, 19:14—15;
`
`Fig. 21. Thus, system 100 receivesthe proprietary tags specifying content
`
`generation procedure 2140 fromauser.
`
`System 100 comprises URL tag parser 2100 which parses the
`
`proprietary URL tags embeddedin web page 301 that are sent to server 2000
`
`“to determine the content generation procedure 2140 to execute, any
`
`corresponding input parametersto be used by such procedure, [and] any
`
`dynamic content processing 2150 to be performed by dynamic media
`
`procedures”on the media. Ex. 1001, 19:15—20. The ’745 patent discloses
`
`
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`IPR2023-00332
`Patent 9,158,745 B2
`
`examples of the proprietary tags and commandsusedin these procedures,
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`e.g., tags listed in Tables A and D (Ex. 1001, 10:27—46; 20:52—21:15),
`
`media processing script commandsin Table B (7d. at 10:51—15:20), and
`
`content creation commandsin Table E (id. at 21:15—22:38).
`
`The ’745 patent further discloses that system 100 generates lookup
`
`key 2110 for the requested media. Ex. 1001, 19:23-24. When “intermediate
`
`content” is found in media cache 2120, “such media is passeddirectly to the
`
`dynamic media content system 2150 having dynamic media procedures,
`
`wherein appropriate action is taken to generate the required derivative from
`
`the intermediate media data.” Ex. 1001, 19:30—-35. However, when the
`
`intermediate content is not found, the ’745 patent discloses that “such
`
`intermediate image 1s generated according to instructions specified by the
`
`content generation procedure, ... and passed to the dynamic media system
`
`2150,” where “appropriate action is taken to generate the required derivative
`
`from the intermediate image data.” Ex. 1001, 19:36—43.
`
`The resulting media, after the dynamic processing is completed,is
`
`passedto a user profile system, appropriate modifications are made, and the
`
`media is cached and returnedto the browser 120 for viewing by the user. Ex.
`
`1001, 19:44—20:2.
`
`E.
`
`Illustrative Claim
`
`Claim 1 is only the only independent challenged claim. Claims 2—7
`
`depend from claim 1. Claim 1 is reproduced below (bracketed numbering
`
`addedfrom the Petition (Pet. vit-vin) and additional numbering added
`
`herein for clarity and reference to the specific limitations in the claim):
`
`
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`IPR2023-00332
`Patent 9,158,745 B2
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`[1.pre] A method in a host computer for developing
`transformation processing operations to optimize media content
`playback to a plurality of playback devices connected with the
`host computerin a network, the method comprising:
`[1.a] receiving a first request from a first playback device
`for media content;
`[1.b] wherein thefirst request contains information, the
`information indicating a [1.b.1] first original media content,
`[1.b.u] first content generation operations, and [1.b. 11] first
`transformation operations;
`[1.c] determining whethera previously-generatedfirst
`intermediate media content is available for reuse, the
`previously-generatedfirst intermediate media content having
`been created using thefirst original media content andthe first
`set of content generation operations; and
`[1.d] responsive to determining that a previously-
`generatedfirst intermediate media contentis available, creating
`a first optimized media content for the first playback device by
`performingthefirst set of transformation operations on the
`previously-generatedfirst intermediate media content; and
`[l.e]
`responsive to determiming that a_previously-
`generated first itermediate media content is not available,
`creating a first optimized media contentfor the first playback
`device by creating a first intermediate content using the first
`original media content and the first set of content generation
`operations, and performing the first set of transformation
`operationson thefirst intermediate media content; and
`[1.f] sending the first optimized media contentto thefirst
`playback device.
`
`
`
`IPR2023-00332
`Patent 9,158,745 B2
`
`I. Evidence
`
`The following evidence of unpatentability submitted by Petitioneris
`
`relied on in this decision:
`
`Bargeret al., US 9,158,745 B2, issued Oct. 13, 2015 (“the
`°745 patent”
`Declaration of Vijay K. Madisetti (“Madisetti Declaration”
`Tso et al, US 6,421,733 B1, issued July 16, 2002 (“Tso”
`Huanget al., US 6,438,576 B1, issued Aug. 20, 2002
`“Huang”
`Lawler, US 5,905,522, issued May 18, 1999 (“Lawler”
`Samaniegoet al., US 2002/0078093 A1, published Jun. 20,
`66
`.
`99
`2002
`
`1001
`1003
`1004
`1005
`
`1006
`
`1007
`
`G. Asserted Grounds
`
`Petitionerasserts that the challenged claims are unpatentable based on
`
`the following grounds(Pet. 6):
`
`(“Samaniego
`Samaniegoin view ofLawler
`
`7
`
`102/103
`
`Tsoin view of Huang, Lawler
`
`' The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“ATA”), amended 35 U.S.C. §§ 102 and 103. Because the ’745
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, werefer to the pre-AIA version of § 103.
`
`8
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`
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`IPR2023-00332
`Patent 9,158,745 B2
`
`I.
`
`ANALYSIS
`
`A.
`
`Level ofOrdinary Skill in the Art
`
`Citing the testimonyofPetitioner’s declarant, Dr. Vay Madisettt,
`
`Petitioner argues that a person of ordinary skill in the art (““POSITA”) would
`
`have had “a bachelor’s degree in computer systems, computerscience, or the
`
`equivalent thereof, and at least two years of experience with networked
`
`media delivery or related technologies.” Pet. 10 (citing Ex. 1003 4 45—46,
`
`48-49). Patent Ownerdoesnotdispute Petitioner’s statementofthe level of
`
`ordinary skill in the art. Prelim. Resp.8.
`
`Petitioner’s definition of a POSITAis consistent with the level of skill
`
`disclosed in the prior art of record. See Okajima v. Bourdeau, 261 F.3d
`
`1350, 1355 (Fed. Cir. 2001). We therefore adopt Petitioner’s definition for
`
`the purpose ofthis Decision.
`
`B.
`
`Claim Construction
`
`In an interpartes review proceeding, a patent claim is construed using
`
`the samestandard applied in a civil action under 35 U.S.C. § 282(b),
`
`including construing the claim tn accordance with the ordinary and
`
`customary meaningof the claim as understood by oneof ordinary skill in the
`
`art and the prosecution history pertaining to the patent. 37 C.F.R.
`
`§ 42.100(b).
`
`Petitioner requests that we construe the “content generation
`
`operations”recited in limitations [1.b], [1.c], and[1.e] of claim 1 to
`
`encompass the “content creation commands”disclosed in the *745 patent,
`
`e.g., “converting media to a specified type/bit-depth, scaling to a specified
`
`size, and saving to a specifiedfile.” Pet. 11 (citing Ex. 1001, 21:16—22:39).
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`
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`IPR2023-00332
`Patent 9,158,745 B2
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`Petitioner also requests we construe the “transformation operations”recited
`
`in claim limitations [1.b], [1.d], and [1.e] to encompass the disclosed “media
`
`processing script commands,”for example, “SetResolution” and “Colorize.”
`
`Pet. 11—12 (citing Ex. 1001, 10:27—15:20). Petitioner cites the Madisetti
`
`Declaration to support its claim construction. Ex. 1003 4 55-59.
`
`Petitioner’s construction of “content generation operations” and
`
`“transformation operations”are not disputed by Patent Owner. Prelim. Resp.
`
`9.
`
`As held in Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,200 F.3d 795,
`
`803 (Fed. Cir. 1999), only those termsthat are “in controversy, and only to
`
`the extent necessary to resolve the controversy,” need to be construed. See
`
`also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. , 868 F.3d
`
`1013, 1017 (Fed. Cir. 2017) (applying Vivid to interpartes reviews). Here, a
`
`construction of “content generation operations”and “transformation
`
`operations”is not necessary to resolve the unpatentability issues beforeus.
`
`Consequently, we do not address Petitioner’s proffered claim constructions.
`
`C. Ground I based on Tso andHuang; Ground 2 based on Tso,
`Huang, andLawler
`Petitioner argues that claims 1—5 would have been obviousto one of
`
`ordinary skill in the art based on Tso and Huang (Ground 1) and claims 6
`
`and 7 would have been obvious based on Tso, Huang, and Lawler (Ground
`
`2). Pet. 6. Patent Ownerdisputes Petitioner’s arguments. Prelim. Resp. 32—
`
`40,
`
`1.
`
`Tso (Ex. 1004)
`
`Webegin the analysis with a discussion of Tso.
`
`10
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`
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`IPR2023-00332
`Patent 9,158,745 B2
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`A network client in Tso makesa request for a hypertext object.
`
`Ex. 1004, 9:56—58. Tso describes a network client comprising a browserthat
`
`communicates with a transcoding server comprising transcoding software.
`
`This configuration is illustrated in Figure 3 of Tso, reproduced below:
`
`Figure 3 of Tso is reproduced above. Figure 3 1s a block diagram showing
`
`the networkclient, transcoding server, and internet. Each elementis labeled
`
`with a number, 12 is the networkclient, 34 is the transcoding server, 20is
`
`the transcoder, 22 is the parser, 24 is the transcodeserver providers, and 16
`
`is the server/network communicationslink from transcoding server 34 to
`
`internet 18. Figure 3 showsnetwork client 12 communicating with
`
`transcodingserver 34, and transcoding server 34 communicating with
`
`internet 18. The discussion below referencesFigure 3.
`
`The transcoding software in Tso’s system comprises transcoder 20
`
`which includes parser 22 and transcode service providers 24. Ex. 1004, 3:7—
`
`11.
`
`Parser 22 of transcoder 20 “is configured to act upon data received by
`
`transcoder 20, such as a request for a network object generated by a client
`
`device [12] or a reply to sucha request provided by a content server device.”
`
`11
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`
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`IPR2023-00332
`Patent 9,158,745 B2
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`Ex. 1004, 3:11—14. Parser 22 “is responsible for selectively invoking one or
`
`more of transcode service providers 24 based upon a predetermined
`
`selection criterion.” ” Ex. 1004, 3:14-16. The transcodeservice provider 24
`
`“selectively transcode[s] content based ona predeterminedselection
`
`criterion.” Ex. 1004, 3:48—51. Transcode service provider 24 can compress
`
`and scale different types of content, and “provide a wide variety of
`
`transcoding functions.” Ex. 1004, 3:51—-65.
`
`The system further comprises HT TP proxy server 36 which accesses
`
`the internet through communication link 16. Ex. 1004, 3:31-33. When
`
`network client 12 requests a hypertext object, HTTP proxy server36 first
`
`attemptsto retrieve the object from parser 22. Ex. 1004, 6:24—28. If the
`
`object is not found by parser 22, parser 22 creates an entry whichis returned
`
`to HTTP proxy server 36. Ex. 1004, 6:28-31. HTTP proxy server 36
`
`requests the object from internet 18. Ex. 1004, 6:31—33. “As a data stream
`
`for the hypertext object is returned, HTTP remote proxy 36 calls parser 22”
`
`and passesthe data stream to the parser. Ex. 1004, 6:33—37. “Parser 22
`
`selects an appropriate transcodeservice provider 24 based, for example, on
`
`the content type of the data stream.” Ex. 1004, 6:37—39. Transcode service
`
`provider 24 subsequently provides the transcoding functionsto the incoming
`
`data stream. Ex. 1004, 3:42—-44, 63-65.
`
`“The parser [22] 1s configured to selectively invoke the transcode
`
`service provider in response to a predeterminedselection criterion.” Ex.
`
`? Tso uses the singular form “criterion” throughout its disclosure, despite
`grammatically treating it in some instancesas the plural form of the word.
`Weuse the term “criterion” as the singular form and “criteria” as the plural
`form.
`
`12
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`Patent 9,158,745 B2
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`1004, 2:16—-18; see also Ex. 1004, 3:14—16, 6:64—66 (“parser 22 may
`
`selectively invoke one of transcodeservice providers 24 based upon
`
`satisfaction of a predeterminedselection criterion.”). The selection criteria
`
`may comprise information “contained in a headerportion of a data packet
`
`received by transcoding server 34.” Ex. 1004, 6:67—7:2. The “predetermined
`
`selection criterion” mayalternatively “comprise information contained in a
`
`data portion of such a data packet.” Ex. 1004, 7:4—6. The “predetermined
`
`selection criterion may comprise a condition of the device on which
`
`transcoding server34 is installed.” Ex. 1004, 7:8—9. Tso lists nine examples
`
`of predeterminedselection criteria. Ex. 1004, 7:20-8:9.
`
`2.
`
`Petitioner’sproposedground
`
`Wenow turn to Petitioner’s proposed ground of unpatentability based
`
`on Tso and Huang.
`
`Thefirst step [1.a] of claim 1 recites “receivingafirst request from a
`
`first playback device for media content.”Petitioner asserts that the “Network
`
`client” 12 of Tso teaches the claimed “playback device.” Pet. 24 (emphases
`
`omitted) (Petitioner-annotated version of Fig. 3 of Ex. 1004). Petitioner
`
`identifies the disclosure in Tso of a “Networkclient 12, via browser 32”that
`
`“transmits an HTTP request for the hypertext object to transcoding server 34
`
`overclient/server communicationslink 14” (Ex. 1004, 9:45—65) as teaching
`
`the claim limitation. Pet. 23-24; see also id. at 24 (citing Ex. 1004, 3:12—13
`
`(“request for a network object generated by a client device”’), Fig. 5
`
`(showing “Network Client” 12 comprising “Browser” which sends HT TP
`
`requests to the internet via a transcoding server)).
`
`13
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`IPR2023-00332
`Patent 9,158,745 B2
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`Step [1.b] of the claim recites “wherein the first request contains
`
`information, the information indicating a [1.bi] first original media content,
`
`[1.bu] first content generation operations, and [1.bini] first transformation
`
`operations.” Thus, the information in the request from the playback device
`
`must indicate these three different items. Petitioner contendsthat a request
`
`“packet” from the networkclient in Tso contains information indicatingall
`
`three pieces of information. Pet. 24 (citing Ex. 1004, 6:64—7:14).
`
`Petitioner identifies the following disclosures from Tso as meeting the
`
`claimed “information” requirements of the claim (Pet. 24—25):
`
`[1.b.i] the “media content,” which is T'so’s “requested hypertext
`
`object” (Ex. 1004, 10:25—27);
`
`[1.b.u] the “first content generation operations,” which are Tso’s
`
`“content characteristics,” specifying “data type, type of
`
`encoding/compression”or“size” (Ex. 1004, 7:31—33); and
`
`[1.b. i] the “first transformation operations,” which are Tso’s
`
`“network client” properties, “content characteristics” specifying “number of
`
`colors,” “
`
`resolution,” and “content provider preferences” including “degree
`
`of alteration desired for its content” (Ex. 1004, 7:21—22, 60-62).
`
`The Madisetti Declaration is cited by Petitioner to support the
`
`correspondence between T'so’s disclosure ofpredeterminedselection criteria
`
`and content generation operations. See Ex. 1003 {| 90-94. Dr. Madisetti
`
`testified that a person of ordinary skill in the art “would have understood”
`
`Tso’s “content characteristics” to include “for example, ‘data type, type of
`
`encoding/compression,’ and‘size.’” Ex. 1003
`
`93 (citing Ex. 1004, 7:15—
`
`8:9). Dr. Madisetti testified “that these types of characteristics specify
`
`content generation operations that are consistent with, for example, the
`
`14
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`Patent 9,158,745 B2
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`‘save’ and‘scale’ content generation operations described in Table E ofthe
`
`°745 patent” and that the operations “allow saving media to a ‘specified file’
`
`and scaling media to a ‘specified size.” Ex. 1003 4 93 (citing Ex. 1001,
`
`21:20-22:38.
`
`Dr. Madisetti testified that a person of ordinary skill in the art would
`
`have understood Tso’s ““‘client’ characteristics such as a ‘numberofcolors,’
`
`additional ‘content characteristics’ such as “encoding/compression’ or
`
`‘resolution,’ and “content provider preferences’ including, for example, ‘the
`299
`
`degree ofalteration desired for its content’”
`
`to serve as the claimed
`
`transformation operations, such as the media processing script commands
`
`disclosed in the *745 patent. Ex. 1003 ¢ 94 (citing Ex. 1004, 7:20-8:4; Ex.
`
`1001, 7:20-8.4); see also Pet. 25 n.5.
`
`To address the requirementin the claim that the “information”in [1.b]
`
`is received from the playbackdevice, Petitioner relies on the disclosure in
`
`Tso that the predetermined selection criteria are stored in a “request packet.”
`
`Pet. 24—25 (citing Ex. 1004, 6:64-7:14; 7:15—8:9). Dr. Madisetti specifically
`
`testified, also citing Ex. 1004, 6:64—8:9, that “[t]he ‘request packet’ sent by
`
`the client carries ‘information’ in both its ‘header’ and ‘data portion[s]’ that
`
`includes ‘selection criterion,’ which is used to specify what transcoding
`
`should be applied to the content.” Ex. 1003 §] 66 (emphasis added); see also
`
`Ex. 1003 { 36.
`
`Step [1.c] of claim 1 recites “determining whethera previously-
`
`generatedfirst intermediate media contentis available for reuse, the
`
`previously-generatedfirst intermediate media content having been created
`
`using the first original media content andthefirst set of content generation
`
`operations.” Forthis limitation, Petitioner cites Tso’s disclosure of a
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`15
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`IPR2023-00332
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`“GetScaledObject()”call by a server to determine “if the requested version
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`of the content is cached. Tso, 14:25-30.’? Pet. 15. “Ifso,” Petitioner
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`explains, Tso teachesthat “the content is retrieved and returnedto the client.
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`Tso 14:30-32.” Pet. 15. “The GetScaledObject () call is .. . used to request
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`an object from server-side cache memory 30.” Ex. 1004, 6:9--13. Petitioner
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`cites T'so’s teaching that the server-side cachestores “both original and
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`transcodedversions of contentfor later transmission to networkclient 12
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`without the need to re-retrieve the content from Internet 18 orto re-
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`transcode the content.” Ex. 1004, 4:1—5 (as cited in Pet. 27). Thus, Petitioner
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`asserts that the availability ofmedia for “reuse”in step [1.c] correspondsto
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`the use of media cachedin the server-side cache of Tso.
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`To meetlimitation [1.c] of claim 1 that “the previously-generatedfirst
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`intermediate media content having been created usingthefirst original
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`media content andthe first set of content generation operations,” Petitioner
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`argues that Tso teaches “each servercreates and receivespartially-
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`transcoded content, and caches transcoded versionsof content.” Pet. 27
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`(citing Ex. 1004, 4:1—5, 5:36—-41, 14:47—-15:6, 15:66—16:14). Petitioner
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`contendsthat “a POSITA would have understood that a server responsible
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`for performingonly a partial transcoding cachesthatpartially-transcoded
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`version of content.” Pet. 27 (citing Ex. 1003 ¢ 99). Petitioner also contends
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`that Tso is “agnostic” about the order in which transcodingsteps are
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`performed, making it obvious to perform content generation operations
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`3 Ex. 1004, 14:26-30: “GetScaledObject [[O0bf] [00a8] call to server-side
`cache interface 28 to determine whether a non-transcodedversion ofthe
`requested hypertext object already exists in the server-side cache memory 30
`(Step 170).”
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`16
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`before additional transcoding operations are performed on the media
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`content. Pet. 27 (citing Ex. 1003 4 100).
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`Petitioner further cites disclosure in Huangfor [1.c] of “determining
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`whethera previously-generated first intermediate media contentis available
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`for reuse.” Pet. 29-30 (emphasis omitted). Specifically, Petitioner argues
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`that after a request for an object is made, the proxy server in Huang searches
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`for a sufficiently “detailed” cached version of the content for the request.
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`Pet. 17 (citing Ex. 1005, 7:23—36). If one is found, Petitioner argues that
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`Huangdiscloses that the server performs any additional needed rendering,
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`and then cachesandreturns the rendered content. Pet. 17 (citing Ex. 1005,
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`7:53-8:11; Ex. 1003 § 76). Again, Petitioner analogizes the “reuse” in the
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`claim with searching for cache versionsof the media content.
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`Petitioner also asserts that Huangdiscloses the secondpart of [1.c]
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`that “the previously-generatedfirst intermediate media content having been
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`created using the first original media content andthefirst set of content
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`generation operations.” Pet. 29-30 (emphasis omitted). Petitioner relies on
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`Huang’s disclosure of a “partially-rendered” object in cache (Ex. 1005,
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`6:63—67) which Huangteaches can be further processed by completing “the
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`entire rendering process” based on “RHI”(receiver hint information) (Ex.
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`1005, 6:12) stored with the content. Pet. 17, 29-30 (furtherciting Ex. 1005,
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`7:42-8:11). Petitioner’s position is apparently that the partial-rendering of an
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`object using only one of twosets of rendering operationsindicates that the
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`partial rendered copy was madeusing only thefirst set of content generation
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`operations as required by [1.c] of the claim.
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`Petitionerasserts that it would have been obviousto apply Huang’s
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`teaching about caching partially-coded content to Tso “to advantageously
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`17
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`avoid re-retrieval and re-transcoding as previously performedonpartially-
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`transcoded content, and perform transcoding steps in an order that improves
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`the efficiency of the system, advantageously streamlining content
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`generation.” Pet. 30. Petitioner argues that it would have been obvious“to
`
`use Tso’s GetScaledObject() and GetProperties() calls to retrieve and check
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`the transcoding status of a cached copy of content, including determining
`
`previously-performedtranscoding/renderingsteps, before further
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`transcoding content using that partially-transcoded version instead ofre-
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`retrieving and re-transcoding original content” as described in Huang.Pet.
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`30.
`
`In step [1.d] of claim 1, “responsive to determining that a previously-
`99 66
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`generatedfirst intermediate media content ts available,”
`
`“a first optimized
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`media contentfor the first playback device”is created “by performing the
`
`first set of transformation operations on the previously-generated first
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`intermediate media content.” Huangis argued by Petitioner to describe this
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`limitation of the claim. Pet. 32—33 (citing Ex. 1005, 6:9—23).
`
`Petitioner asserts that Huang’s teaching of completing rendering on a
`
`partially rendered object makeslimitation [1.d] obvious to one of ordinary
`
`skill in the art when applied to Tso’s disclosure of performing
`
`transformation operations. Pet. 33 (citing Ex. 1003 4] 104—107).
`
`Claim 1 additionally recites [1.e] “creating a first optimized media
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`content for the first playback device by creatingafirst intermediate content
`
`using the first original media content andthefirst set of content generation
`99: ¢¢
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`operations”
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`“responsive to determining that a previously-generatedfirst
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`intermediate media content is not available.” (Emphasis added.)
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`Petitioner identifies Figure 8 of Tso as disclosing “responsive to
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`determining that a previously-generatedfirst intermediate media contentis
`
`not available.” Pet. 34 (emphasis added) (reproducing Figure 8 of Tso
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`showing “OBJECT IN CACHE”with a choice of “Y” or “NO,” e., “not
`
`available.”’). Petitioner asserts that Tso, after finding that the intermediate
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`contentis not available, creates “a first intermediate content using the first
`
`original media content andthefirst set of content generation operations.”
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`Pet. 34 (citing Ex. 1004, 10:24-49).
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`Petitioner also argues that Huangdescribeslimitation [1.e]. Pet. 35.
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`Petitioner points to the disclosure in Huangthat “[i]f the requested object
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`cannot be found in the cache, .. . the proxy server... modifies the
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`associated RHIto indicate its ability for providing rendering services and
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`then sends the request and the modified RHI to another proxy serveror to
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`the content server.” Pet. 35—36 (citing Ex. 1005, 7:36-41; Ex. 1003 74 110-
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`112) (emphases omitted). Petitioner asserts it would have been obvious to
`
`modify Tso with Huang’s teaching “to advantageously cachethe‘partial’
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`transcoding output from each of the transcodeservice providers. .
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`. in order
`
`to ‘avoid repeating’ transcodingsteps.” Pet. 35 (citing Ex, 1005, 6:63—67).
`
`Thelast step of claim 1 is “[1.f] sending the first optimized media
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`contentto the first playback device.”Petitioner cites Tso as disclosing this
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`limitation (“HTTP remote proxy 36 transmits a data stream for the
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`transcoded hypertext object to network client 12 (Step 260).” Pet. 36 (citing
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`Ex. 1004, 6:55—57).
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`Patent Owner ’s arguments
`3.
`Patent Ownerasserts that Petitioner fails to demonstrate a reasonable
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`19
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`likelihood that Tso discloses limitation [1.b] of independent claim 1 of
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`“wherein thefirst request,” which is [1.a] recerved from “a first playback
`99 6¢
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`“contains information, the information indicating .
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`.
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`device,”
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`. [1.bi] first
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`content generation operations.” Prelim. Resp. 35. Generally, Patent Owner
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`does not dispute Petitioner’s mapping of the claim limitations to Tso and
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`Huangnor the reason to combine the references. However, while Patent
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`Ownerdoesnot disagree with Petitioner’s mapping of the claimed [1.b.1i]
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`“content generation operations”to certain of Tso’s “content characteristics,”
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`Patent Ownerarguesthat Petitioner“fails to show that Tso’s transcoding
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`server 34 receives Tso’s content characteristics from Tso’s networkclient
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`12,” where network client 12 serves as the claimed playback device. Prelim.
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`Resp. 36 (emphasis omitted).
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`Patent Ownerarguesthat “neither Petitioner nor Dr. Madisetti
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`provides any explanation or support for their position that Tso’s transcoding
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`server 34” receives a “request packet” from the network client 12. Prelim.
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`Resp.39 (citing Pet. 24—25; Ex. 1003 4] 91-92). Patent Ownerasserts that
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`neither Petitioner nor Dr. Madisetti explain “why a POSITA would have
`
`understood that the content characteristics are received from the network
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`client 12 despite Tso’s express and contrary teachings that such information
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`is received from the internet 18.” Prelim. Resp. 39 (citing Ex. 1004, 10:32—
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`44). Because Petitioner contendsthat the network server 12 correspondsto
`
`the claimed playback device and the playback device is required by the
`
`claim to originate the first request and the information [1.b] in it (“a first
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`request fromafirst playback device’), Patent Ownerasserts that because
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`networkserver 12 in Tso doesnot originate the content characteristics (the
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`claimed “content generation operations”), Petitioner has not established a
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`reasonable likelihood that it will prevail in the challenge based on Grounds1
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`and 2.
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`4.
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`Discussion
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`Patent Ownerargues, as indicated above,that the patentability
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`challenge should be denied because Tso doesnot describe the “information”
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`[1.b.1] containedin the “first request” as being from the “first playback
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`device” as required by claim 1, but instead discloses that the information
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`[1.b.u1] is received from the “Internet 18.” Prelim. Resp. 36—37. Petitioner
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`mapsthe “information”in [1.b] of claim 1 to the “predetermined selection
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`criterion” disclosed by Tso. Pet. 24-25. Consequently, we must turn to the
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`discussion of the “predeterminedselection criterion” by Tso.
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`It is correct, as testified by Dr. Madisetti (Ex. 1003 4] 66, 91, 92), that
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`Tso discloses predetermined “selection criterion may comprise, for example
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`information contained in .
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`.
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`. a data packet receive
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