Trials@uspto.gov
`$71-272-7822
`
`Paper11
`Entered: May 19, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HULU, LLC,
`Petitioner,
`
`V.
`
`SITO MOBILE R&D IP, LLC, and SITO MOBILE, LTD.,
`Patent Owner.
`
`IPR2021-00298
`Patent 10,171,846 B2
`
`Before THOMASL. GIANNETTI, KEVIN W. CHERRY,and
`MICHAEL T. CYGAN,Administrative Patent Judges.
`
`CHERRY,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 US.C. § 314,37 CER. § 42.4
`
`
`$71-272-7822
`
`Paper11
`Entered: May 19, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HULU, LLC,
`Petitioner,
`
`V.
`
`SITO MOBILE R&D IP, LLC, and SITO MOBILE, LTD.,
`Patent Owner.
`
`IPR2021-00298
`Patent 10,171,846 B2
`
`Before THOMASL. GIANNETTI, KEVIN W. CHERRY,and
`MICHAEL T. CYGAN,Administrative Patent Judges.
`
`CHERRY,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 US.C. § 314,37 CER. § 42.4
`
`
`
`IPR2021-00298
`Patent 10,171,846
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`I.
`
`INTRODUCTION
`
`Hulu, LLC (“Petitioner”) filed a Petition (Paper1, “Pet.”) requesting
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`institution of inter partes review of claims 1-4 and 7—10 of U.S. Patent
`
`No. 10,171,846 B2 (Ex. 1001, “the ’846 patent”). SITO Mobile R&D IP,
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`LLC and SITO Mobile, Ltd. (“Patent Owner”) filed a Preliminary Response.
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`Paper6 (“Prelim. Resp.”). With our permission, Petitioner filed a Reply, to
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`address arguments as to discretionary denial under § 314(a). Paper 7. Patent
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`Ownerfiled a Sur-reply. Paper8.
`
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may be
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`instituted only if “the information presented in the petition .
`
`.
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`. and any
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`[preliminary] response .
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`.
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`. showsthat there is a reasonable likelihood that
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`the petitioner would prevail with respectto at least 1 of the claims
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`challengedin the petition.”
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`For the reasons given below,on this record Petitioner has established
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`a reasonablelikelihood that it would prevail in showing the unpatentability
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`of at least one of claims 14 and 7-10 of the ’846 patent. Accordingly, we
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`institute an inter partes review of the ’846 patent.
`
`Il. BACKGROUND
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`A. Real Parties-in-Interest
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`Petitioner identifies itself, Hulu, LLC, as the sole real party-in-
`
`interest. Pet. 80. Petitioner also indicates The Walt Disney Company and
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`Comcast Corporation each own“ten percent or more ofthe stock”of the
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`Petitioner. Id.
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`Patent Ownerindicates “SITO Mobile R&D IP, LLC and SITO
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`Mobile, Ltd. are the real parties-in-interest.” Paper 5, 1.
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`B. Related Proceedings
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`Theparties identify the following litigation that involves the patentat
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`issue: SITO Mobile R&D IP, LLC and SITO Mobile, Ltd. v. Hulu, LLC,
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`Case No. 6:20-cv-00472-ADA (W.D. Tex.). Pet. 81; Paper 5, 1.
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`C. The ’846 Patent (Ex. 1001)
`
`The ’846 patentis titled “System and Method for Routing Media.”
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`Ex. 1001, (54). The ’846 patent issued from Application Serial No.
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`16/017,435, filed on June 25, 2018, and claims priority to Provisional
`
`application No. 60/263,044, filed on Jan. 19, 2001. Jd. at (21), (22), (30),
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`and (60).
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`The 846 patent relates to the managementand administration of
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`media streaming. Jd. at 1:46-47. The patent describes increased demand for
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`media streaming, anddifficulties in implementing it on diverse networks,
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`such as the Internet. Jd. at 1:59-61, 2:9-15. To addressthis, the patent
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`describes an “integrated and distributed media routing algorithm.” Jd. at
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`5:4-11.
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`Figure 1, reproduced below, showsa block diagram of one system of
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`the °846 patent.
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`
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`Patent 10,171,846
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`
`ROUTING
`PROCESSOR
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`
`
`RTSMS
`
`
`
`RESERVATION
`SYSTEM
`
`108
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`Figure 1 showsstreaming system 102, and comprises an enhanced
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`service routing processor (ESRP) 104, a real time switch management
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`system (RTSMS)106, a reservation system 108, a name routing processor
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`(NRP) 110, and a managed media switch (MMS) 112, each communicating
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`through a packet network 114, portal 116, and packet network 122 with
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`viewers 118 and 120. Jd. at 6:2-14.
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`The RTSMS106receives signaling from a viewer 118 or 120, which
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`typically is a request for a program or programs. Jd. at 11:16-20. The
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`RTSMS106 determinesif the program is available, and “generates a
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`customized play script for the requested program to the viewer.” The play
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`script may include one or more media clips, and one or more advertisements.
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`Id. at 11:23—34. The RTSMS106 reserves resourcescalled by the script,
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`and sendsthe script to the viewer. Jd. at 11:41-47. Theplay script instructs
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`Patent 10,171,846
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`the viewerto issue requests for each media element to view. Jd. at 15:14—
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`16.
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`D.
`
`Illustrative Claim
`
`Claim 1, the only independent claim challenged, is reproduced below
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`(with bracketing added):
`
`1. [Preamble] A method for managing streaming of video
`content to a client device, the method comprising:
`[1.a] providing the video content to a content distribution
`network for storage in a plurality of geographically
`separated resources of the content distribution network;
`[1.b] dynamically selecting one of more advertisement media
`clips based on statistical information associated with a
`user of the client device;
`[1.c] receiving, from the client device via a packet-based
`telecommunication network, signaling to have the stored
`video content streamed to the client device; and
`[1.d] in responseto the received signaling, transmitting to the
`client device, via the packet-based telecommunication
`network and in one or more files having a format
`compatible with a media player on the client device,
`{1.d.1]
`(i) an identification of one or more of the
`resources of the content distribution networkavailable to
`facilitate streaming of one or more segmentsofthe stored
`video content to the client device, the identification being
`dependent at least in part on a relationship between a
`geographic location of the client device and geographic
`locations of the resources of the content distribution
`network,
`and [1.d.2]
`(ii)
`an identification of an
`advertising server, the identification of the advertising
`server being dependentat least in part on a relationship
`between the geographic location ofthe client device and
`a geographic location of the advertising server,
`[1.e] wherein the one or more files, when processed by the
`client device, cause the client device to communicate
`with the identified one or more resources of the content
`distribution network and the advertising server to cause
`the one or more segments of the stored video to be
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`IPR2021-00298
`Patent 10,171,846
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`streamed to the client device by the identified one or
`more resources of the content distribution network and
`cause the one or more selected advertisement mediaclips
`to be streamed from the advertising server to the client
`device.
`
`Ex. 1001, 52:56—-53:27.
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`E. The Asserted Grounds of Unpatentability
`
`Petitioner asserts that claims 1—4 and 7-10 would have been
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`unpatentable on the following grounds:
`
`adison®, Wolfe
`
`Reference(s)/Basis
`cCanne!, AAAF?
`cCanne, AAAF, Wolfe?
`cCanne, AAAF, Goldszmidt*
`
`Pet. 10.
`
`Petitioner supports its Petition with a Declaration by Dr. Henry Houh.
`
`Ex. ‘1003 (“Houh Decl.”).
`
`F. Level of Ordinary Skill
`Petitioner “contends that one ofordinary skill in the art would have
`had at least a bachelor’s degree in computerscience, electrical or computer
`
`'US 6,785,704 B1, issued Aug. 31, 2004 (Ex. 1053).
`2 “<Ajl About ASX Files,” retrieved from
`https://web.archive.org/web/19990.508200218/http:/msdn.microsoft.com/wo
`rkshop/imedia/windowsmedia/crcontent/asx.asp (Ex. 1017).
`3 US 5,931,901, issued Aug. 3, 1999 (Ex. 1044).
`4 US 6,195,680 B1, issued Feb. 27, 2001 (Ex. 1064).
`> The heading for this ground on page 55 ofthe Petitionlists “claims 1-4
`and 7—10”as being challenged, but on page 10 lists only claims1, 2, 7,
`and8. Given the Petition only provides analysis for claims1, 2,7, and 8, we
`interpret the ground as only challenging claims 1, 2, 7, and 8.
`© US 2004/0083273 Al, published Apr. 29, 2004 (Ex. 1051).
`
`6
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`engineering, or equivalent, and at least two years of experiencein distributed
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`systems, multimedia streaming, and various HTTP-related technologies, or
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`an equivalent amountof relevant work or research experience.” Pet. 16
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`(citing Houh Decl. ff] 57-60).
`
`Patent Ownerdoes not addressthe level of skill off the ordinary
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`artisan. See generally Prelim. Resp.
`For purposesofthis Decision, we adopt Petitioner’s proposedlevel of
`ordinary skill, as it appears to be consistent with the level of skill, and choice
`
`of language, reflected by the Specification and in the asserted priorart
`
`references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
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`(the priorart itself can reflect the appropriate level of ordinary skill in the
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`art).
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`G. Claim Construction
`
`Petitioner proposes construction for two terms, “content distribution
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`network,” and “settlement.” Pet. 19-21.
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`Patent Owner doesnot address claim construction.
`
`1.
`
`“content distribution network”
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`Petitioner proposesthat a “content distribution network” be construed
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`as “a distributed network of servers.” Pet. 19. Petitioner asserts that the
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`Specification and prosecution history are silent regarding the term, but that
`the provisional application explains that “type of service architecture
`... called a ‘Content Delivery Network’ (CDN)”is “a distributed network
`
`overthe public Internet on a large commercial scale.” Jd. (citing
`Ex. 1011, 9). Petitioner also contends that this construction is consistent
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`with contemporaneousdictionary definitions. Jd. at 19-20 (citing Exs. 1065,
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`1066, 1063, 1056, 1057; Houh Decl. { 120).
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`Atthis stage of the proceeding, we agree that Petitioner’s construction
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`appears to be reasonable and reasonably consistent with the intrinsic and
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`extrinsic evidence provided and cited above. Accordingly, for purposes of
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`this decision, we construe “content distribution network”as “a distributed
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`networkofservers.”
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`2.
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`“settlement”
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`Petitioner proposes construing the term “settlement”as a “billable
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`event record to be used for revenue settlement purposes.” Pet. 20.
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`Petitioner notes that the language of claim 7 “indicates that the settlementis
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`associated with streaming the ‘one or more selected advertisement media
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`clips’ and is accordingly generated on a per-ad basis.” Jd. (quoting
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`Ex. 1001, 53:50—-53). Petitioner further submits that “the specification
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`equivalentis referred to as a ‘message sequence detail record (MSDR)’
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`which is created for each reservation.” Jd. (citing Ex. 1001, 13:41-47).
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`Petitioner argues that the Specification describes that “[i]n addition to
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`logging information about what was streamed to the viewer, ‘the MSDR
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`represents a billable event record that will be used for revenue settlement
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`purposes.”” Jd. (citing Ex. 1001, 13:49-50, 14:15—-19, 13:51-53, 21:31-36,
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`Houh Decl. J 121).
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`Atthis stage of the proceeding, we agree that Petitioner’s construction
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`appears to be reasonable and reasonably consistent with the claim language
`
`and otherintrinsic evidence cited above. Accordingly, for purposesofthis
`
`decision, we construe “settlement”as a “billable event record to be used for
`
`revenue settlement purposes.”
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`Ill. DISCUSSION
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`A. Discretionary Denial under § 314(a)
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`Institution of an inter partes review is discretionary. Section 314(a)
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`of 35 U.S.C. providesthat “(t]he Director may not authorize an inter partes
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`review to be instituted unless the Director determinesthat the information
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`presentedin the petition .. . and any response .
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`.
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`. showsthat there is a
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`reasonable likelihood that the petitioner would prevail with respect to at least
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`1 of the claims challenged in the petition.” The Supreme Court has
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`explained that because § 314 includes no mandate toinstitute review,“the
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`agency’s decision to deny a petition is a matter committed to the Patent
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`Office’s discretion.” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
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`2140 (2016); see also Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356,
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`1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is
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`permitted, but never compelled, to institute an IPR proceeding”). The
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`Director has delegated this authority under § 314(a) to the Board. 37 C.F.R.
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`§ 42.4(a) (2020) (“The Boardinstitutes the trial on behalf of the Director.”).
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`Patent Ownerargues that we should exercise discretion to deny
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`institution under § 314(a) in this proceeding, “because of the advancedstate
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`of parallel litigation pending in the Western District of Texas.” Prelim.
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`Resp. 1. Patent Ownerrelies on the Board’s precedential order in Apple Inc.
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`v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (“‘Fintiv’),
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`and contendsthat“all of the factors” identified in Fintiv “weigh in favor of
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`denying institution of an IPR.” Prelim. Resp. 2.
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`In Fintiv, the Board ordered supplemental briefing on a nonexclusive
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`list of factors for consideration in analyzing whether the circumstancesof a
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`parallel district court action are a basis for discretionary denialoftrial
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`institution under NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752,
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`Paper 8 (PTAB Sept. 12, 2018) (precedential). Fintiv, Paper 11 at 5-16.
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`Thosefactors include:
`1. whether the court granted a stay or evidence exists that one
`maybegranted if a proceedingis instituted;
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`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
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`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap betweenissuesraisedin the petition and in the parallel
`proceeding;
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`5. whether the petitioner and the defendant
`proceeding are the same party; and
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`in the parallel
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`impact the Board’s exercise of
`6. other circumstances that
`discretion, including the merits.
`Id. at 5—6. Here, we consider these factors to determine whether we should
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`exercise discretion to denyinstitution. In evaluating the factors, we take a
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`holistic view of whetherefficiency and integrity of the system are best
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`served by denyingorinstituting review. Jd. at 6.
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`a) Factor 1: whether the court granted a stay or evidence exists
`that one may be granted ifa proceedingis instituted
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`Petitioner argues that this factor is “neutral given that courts
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`commonlystay cases uponinstitution of IPRs.” Pet. 79; Reply 2-3.
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`Patent Ownerrespondsthatthis factor favors discretionary denial
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`because Petitioner “has not asked for a stay pending inter partes review, and
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`there is no evidence that Judge Albright would grant a stay even if an IPR
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`wereinstituted.” Prelim. Resp. 5-8. Petitioner replies that Patent Owner’s
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`argumentis based on speculation as to what Judge Albright might do.
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`Reply 2. In its Sur-reply, Patent Owner respondsthat “the record evidence
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`10
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`showsthat the Board need not speculate” because “District Judge Alan D.
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`Albright has denied all contested motions to stay pending IPR.” Sur-reply 2.
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`Onthe record before us, neither party has produced evidencethat a
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`stay has been requested or that the district court has considereda stay in the
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`parallel litigation. Patent Owner’s reliance on other cases in which Judge
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`Albright has denied requests for stay (Prelim. Resp. 6—7) is misplaced. As
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`the Board has explained,“[a] judge determines whether to grant a stay based
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`on the facts of each specific case as presented in the briefs by the parties.”
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`See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15, 12 (PTAB May 13,
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`2020) (informative) (“Fintiv IT’). “We decline to infer, based on actions
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`taken in a different case with different facts, how the District Court would
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`rule should a stay be requested bythe parties in the parallel case here.” Jd.
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`Accordingly, we find that this factor does not weigh for or against
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`exercising our discretion to denyinstitution.
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`b) Factor 2: proximity ofthe court’s trial date to the Board’s
`projected statutory deadlinefor a final written decision
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`Patent Ownerarguesthat this factor favors discretionary denial
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`because the district court trial is scheduled to begin on March7, 2022.
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`Prelim. Resp. 8-9. Patent Owner maintainsthat “[a]s such, the District
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`Court Litigation will have already been tried more than three months before
`the Board’s projected statutory deadline for a final written decision.” Jd.
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`at 8. In reply, Petitioner argues that “[t]he Board previously recognized that
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`trial dates are uncertain,” and that “[t]he ongoing COVID-19 pandemic
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`exacerbates that uncertainty.” Reply 3. Patent Owner respondsthat “[t]here
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`is no indication whatsoeverthat the district court trial date will be delayed
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`because of COVID-19.” Sur-reply 2-3.
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`According to the Amended Scheduling Order, the district court trial is
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`scheduled to begin less than three months before a Final Written Decision
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`would be duein this proceeding. Ex. 2002, 4. We generally take courts’
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`trial schedules at face value, absent some strong evidence to the contrary.
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`See Fintiv II, Paper 15 at 13. Because the currently scheduled district court
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`trial is scheduled to begin less than three months before our deadline to
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`reach a final decision, we find that factor 2 weighs marginally in favor of
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`exercising our discretion to deny institution.
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`investment in the parallel proceeding by the court
`c) Factor 3:
`andthe parties
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`Petitioner argues that this factor “weighs heavily in favorof institution
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`because the court has invested very limited resourcesin this case.” Pet. 77.
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`Patent Owner counters that Petitioner waited five monthstofile its
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`Petition after being served with the complaintin the district court action, and
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`that because Petitioner “did not file its Petition expeditiously, the Court and
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`the parties will have reached a verdict well before the time the Board issues
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`’
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`its final written decision.” Prelim. Resp. 9-12.
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`In its Reply, Petitioner argues that “[t]he combination ofthe district
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`court case being in its very early stages and Petitioner’s diligence in filing
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`the petition weighs against denial ofinstitution.” Reply 4—5. Petitioner
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`argues: “By the institution deadline, no major orders will have been issued,
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`fact discovery will have months remaining, and expert reports will not have
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`been served.” Jd. at 4. Petitioner also contendsthatit filed the Petition “less
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`than three months after receiving Patent Owner’s preliminary infringement
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`contentions.” Jd. at 5 (citing Prelim. Resp. 9-10).
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`In its Sur-reply, Patent Ownerasserts that a “Markman hearing was
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`held on March 22, 2021... and the Claim Construction Order issued March
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`25, 2021.” Sur-reply 4. Further, Patent Ownerasserts “the parties are in
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`fact discovery and will have already exchangedtheirfinal infringement and
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`invalid contentions before any institution decision issues.” Id.
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`Based onthe present record, we are persuadedby Petitioner’s
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`showing that the district court and the parties have not invested substantially
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`in the merits of the invalidity positions. There is no indication in the record
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`that the parties have completed significant discovery on the merits. We
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`agree with Petitionerthat the district court proceeding remainsat the early
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`stages, and a significant portion of workstill remains to be donein the
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`district court proceeding—e.g., amending pleadings (May 28, 2021),
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`meeting and conferring to discuss significantly narrowing the numberof
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`claimsasserted andprior art references at issue (September3, 2021, and
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`December3, 2021), the completion of fact discovery (October 1, 2021) and
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`expert discovery (November 23, 2021); and meeting the dispositive motion
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`and Daubert motion deadlines (December 10, 2021). Reply 5.
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`Moreover, the evidence showsthat Petitioner acted diligently, filing
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`its Petition approximately five months after the complaint was filed and
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`around two monthsafter receiving Patent Owner’s preliminary infringement
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`contentions. Patent Ownerasserts it served its preliminary infringement
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`contentions on September 11, 2020. Prelim. Resp. 9. The Petition was filed
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`around two monthslater, on December 7, 2020, prior to the deadline for the
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`parties’ opening claim construction briefs (December 18, 2020). Jd. at 10.
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`Therefore, weighing the facts in this particular case, including the
`time invested by the parties and the district court in the parallel litigation, the
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`extent to which the investmentin the district court proceeding relates to
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`13
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`issues of patent validity, and the timing ofthe filing of the Petition, we find
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`that factor 3 weighs in favorof institutingatrial.
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`d) Factor 4: overlap between issues raised in the petition and in
`the parallel proceeding
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`Patent Owner argues: “The overlap betweenthe issues raised in
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`[Petitioner’s] IPR Petition and in the parallel District Court Litigationis
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`substantial.” Prelim. Resp. 13. Patent Ownercontinues: “Every ground of
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`this Petitioner relies on a reference already cited in the co-pending District
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`Court Litigation.” Jd. (citing Ex. 2005).
`Anticipating Patent Owner’s assertion, the Petition offered the
`following stipulation: Petitioner “will not pursue invalidity against the
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`asserted claims in the District Court ... based on McCanne or Madison,the
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`primary referencesin all groundsofthis petition.” Pet. 78 (citing Ex. 1048
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`(Petitioner’s counsel’s email). Petitioner argues that this factor “weighs
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`heavily in favor of institution.” Jd.
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`Patent Ownerrespondsthat Petitioner’s stipulation “fails to cure any
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`potential overlap.” Prelim. Resp. 14. According to Patent Owner, Petitioner
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`“is free to assert ‘All About ASXFiles,” Wolfe, and Goldszmidt as bases for
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`invalidity before the District Court because it does not identify those
`references as ‘primary references.’” Jd. at 15. Patent Owner arguesalso that
`Petitioner’s stipulation does not prevent Petitioner from challenging validity
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`“based on other references cumulative to the primary references.” Jd.; Sur-
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`reply 5-6. Patent Owneralso arguesthat Petitioner’s stipulation “does not
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`apply to the othersix patents at issue in the District Court.” Sur-reply 6.
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`Weare persuaded by Petitioner’s arguments that the overlap is limited
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`as a result of the stipulation. Notably, Petitioner’s stipulation that it will not
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`pursue in district court “any grounds using the primary references from the
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`14
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`IPR”(Pet. 79; Reply 6) is similar to the stipulation provided in Sand
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`Revolution. Sand Revolution IT, LLC v. Intermodal Group-Trucking LLC,
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`IPR2019-01393, Paper 24, 12 n.5 (PTAB June 16, 2020) (informative). In
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`Sand Revolution, the Petitioner stipulated “only that it will not pursue, in
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`district court, the ‘same grounds’ presented in the Petition.” Jd Consistent
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`with Sand Revolution, we find that Petitioner’s stipulation mitigates to some
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`degree the concernsof duplicative efforts between district court and the
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`Board, as well as concerns of potentially conflicting decisions. See id. at
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`11-12. Therefore, we determine that this factor weighs marginally in favor
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`ofinstituting a trial.
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`e) Factor 5: whether the petitioner and the defendantin the
`parallel proceeding are the same party
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`It is undisputed that Petitioner is a defendantin the parallel litigation.
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`Petitioner argues that this factor should be neutral. Reply 7. Patent Owner
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`counters that “this factor clearly favors denial because it covers the exact
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`sameparties litigating the exact same patents.” Sur-reply 7.
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`Asthe Board explained in Fintiv, “[i]f a petitioner is unrelated to a
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`defendantin an earlier court proceeding, the Board has weighedthis fact
`
`against exercising discretion to deny institution under NHK.” Fintiv,
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`Paper 11 at 13-14 (emphasis added). The Board determined in Sand
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`Revolution that “[a]lthoughit is far from an unusual circumstance that a
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`petitioner in inter partes review and a defendantin a parallel district court
`
`proceeding are the same, or wherea district court is scheduledto goto trial
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`before the Board’s final decision would be due in a related inter partes
`
`review,this factor weighs in favor of discretionary denial.” Sand
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`Revolution, Paper 24 at 12-13. Here,it is undisputed that Petitioneris a
`
`defendantin the parallel litigation scheduled to goto trial before the final
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`IPR2021-00298
`Patent 10,171,846
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`written decision is due in this proceeding. Therefore, we find that factor5
`
`weighs in favor of denyinginstitution.
`f) Factor 6: other circumstances that impact the Board’s exercise
`ofdiscretion, including the merits.
`
`The final Fintiv factor is a catch-all that takes into account any other
`
`relevant circumstances. The decision whether to exercise discretion to deny
`
`institution is based on “a balanced assessmentofall relevant circumstances
`
`in the case, including the merits.” Consolidated Trial Practice Guide 58,
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`available at https://www.uspto.gow/TrialPracticeGuideConsolidated.
`
`“For example,if the merits of a groundraised in the petition seem
`particularly strong on the preliminary record,.. . the institution ofa trial
`mayservetheinterest of overall system efficiency and integrity becauseit
`allows the proceeding to continue in the event that the parallel proceeding
`settles or fails to resolve the patentability question presented in the PTAB
`
`proceeding.” Fintiv, Paper 11 at 14-15.
`Wehavereviewed Petitioner’s unpatentability arguments and
`
`supporting evidence. As discussed below, onthis record, we determine that
`Petitioner has demonstrated sufficiently for purposes of this Decision a
`
`reasonable likelihood that the challenged claims of the ’846 patent are
`unpatentable. Based on this preliminary record, however, we are unable to
`discern whetherthe merits are particularly strong here.
`
`Patent Ownerarguesthat“institution of the present proceeding[] will
`
`also give rise to substantial duplication of efforts.” Prelim. Resp. 17. Patent
`Owner’s arguments regarding duplication of efforts have been considered in
`
`connection with factor 4 above.
`
`Patent Ownerfurther contendsthat “with the United States Supreme
`
`Court taking up the issue of the Appointments Clause set forth in the Arthrex
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`16
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`IPR2021-00298
`Patent 10,171,846
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`cases, institution of further IPRsis ill advised at this time.” Jd. Butinits
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`Sur-reply, Patent Owner “acknowledges that Arthrex does not serve as an
`
`independentbasis for denial.” Sur-reply 7. We therefore do notagree that
`
`this fact favors denial of the Petition. Patent Owner’s argument based on
`
`Arthrex is further addressed below,in the “Constitutional Arguments”
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`section.
`
`In addition, we note that we have recently instituted four separate
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`reviewsinvolving Petitioner and Patent Ownerof patents related to the ’846
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`patent, specifically CBM2020-00028 (instituted March 18, 2021), IPR2021-
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`00158 (instituted April 20, 2021), IPR2021-00209 (instituted May 10,
`2021), and IPR2021-00219 (instituted May 10, 2021).’ In IPR2021-00158,
`
`IPR2021-00209, and IPR2021-00219, we are considering similar references
`
`as here, and the Specification and claims of the challenged patent in that
`
`proceeding are similar to those before us here. This overlap in the
`
`proceedingsis a further factor weighing in favorofinstitution.
`
`g) Conclusion on Discretionary Denial Under $ 314(a)
`
`Asnoted in Fintiv, we consider the above factors when taking “a
`
`holistic view of whetherefficiency and integrity of the system are best
`
`served by denying or instituting review.” Fintiv, Paper 11 at 6. As
`
`discussed above, factor 1 is neutral, factor 2 weighs marginally in favor of
`
`7 See Apple v. Seven Networks, IPR2020-00235, Paper 10 at 17 July 28,
`2020) (taking “into account the Office already has instituted proceedings
`challenging other patents in dispute in the co-pendingparallellitigation.. .
`[and] acknowledg[ing] that it would be inefficient to discretionarily deny
`institution of this Petition, which we find meets the statutory threshold for
`institution, after having instituted petitions challenging other patents in
`dispute in the parallel litigation.”).
`
`17
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`
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`IPR2021-00298
`Patent 10,171,846
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`denyinginstitution, factor 4 weighs marginally in favorof institutinga trial,
`
`factor 3 weighsin favorofinstituting a trial, and factor 5 weighsin favor of
`
`denyinginstitution. Factor 6 also favors institutingtrial.
`
`Onthe present record, Petitioner was diligent in pursuing its Petition,
`
`which weighs against exercising our discretion to deny institution.
`
`Moreover, Petitioner’s stipulation mitigates to some degree the concerns of
`
`duplicative efforts between district court and the Board, as well as concerns
`
`of potentially conflicting decisions. Furthermore, the existence of other
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`proceedings before the Board involving related patents and some of the same
`
`and similar prior art is a further reason not to denyinstitution here.
`
`Accordingly, under the particular circumstancesofthis case, we are
`
`not persuadedthat the interests of efficiency and integrity of the system
`
`would be best served by invoking our authority under § 314(a) to deny
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`institution of a potentially meritorious Petition.
`
`B. Patent Owner’s Constitutional Arguments
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`Patent Ownerarguesthat the Petition should be denied because this
`
`proceeding “is carried out byafinal order issued by Administrative Patent
`
`Judges who have not been nominated by the President and confirmed by the
`
`Senate.” Prelim. Resp. 17-19. According to Patent Owner, the remedy by
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`the Federal Circuit in Arthrex “was ineffective and, in any event,
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`inapplicable to the present panel or proceeding.” Jd. at 18 (citing Arthrex,
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`Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, 1325 (Fed. Cir. 2019)).
`
`Patent Owner’s constitutional challenge has been addressed by the
`
`Federal Circuit’s decision. See Arthrex, 941 F.3d at 1337 (“This as-applied
`
`18
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`IPR2021-00298
`Patent 10,171,846
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`severance ... cures the constitutional violation ....”). Accordingly, we do
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`not considerthis issue any further in our Decision.
`
`C. Overview ofthe Prior Art
`
`1. McCanne (Ex. 1053)
`
`McCanneis entitled “Content Distribution System for Operation over
`
`an Internetwork Including Content Peering Arrangements.” Ex. 1053, (54).
`
`McCanne“relates to movinglive or stored ‘broadcast’ data streams from
`
`content producers to large numbersofrecipients of those data streams.” Id.
`
`at 1:33-36. Broadcasting here refers to transmission of a data stream to a
`
`large numberof devices. Jd. at 1:37-38.
`
`McCannedescribes Content Distribution Service Providers (“CSP”),
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`who“provides Internet ‘content distribution service’ to content providers,”
`
`such as contracting with Yahoo or CNN to replace and serve their web pages
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`and streaming media throughthe Internet,efficiently. Ex. 1053, 11:57-63.
`
`Citing problems with CSP business models, McCannedescribes a “content
`peering” embodiment, which eliminates, or reduces, the role of the CSP and
`allows Internet Service Providers (“ISP”) to becomethe content carriers
`
`themselves. Jd. at 11:41-43. In this way, the ISP invests in its own edge
`
`server infrastructure to effectively provide high performance content
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`delivery to recipients of the content of the content providers. Jd. at 10:43—
`
`47. An edgeserver “captures the user’s request for content and serves the
`
`content locally, thereby improving response time, reducing wide-area
`
`bandwidth consumption, and relaxing load on the production server.” Id. at
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`9:61-64.
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`19
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`IPR2021-00298
`Patent 10,171,846
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`McCannedescribesthatit is important to have an efficient mechanism
`
`to attach a client to the most appropriate server. Id. at 13:4-6. Figure 6,
`
`reproduced below, provides an approachto this.
`
`Figure 6 showsa redirection fabric which “glues” clients to edge
`
`servers to provide the best possible content distribution path. Jd. at 13:6—8.
`
`“The redirection fabric accounts for client proximity, network path
`
`characteristics, server load and utilization, and perhaps most important,
`
`policies based on content-peering service level agreements to best decide
`
`how to attach the client to the service infrastructure.” Jd. at 13:8-13.
`
`2. AAAF (Ex. 1017)
`
`AAAF is a website providing information about ASXfiles, entitled
`
`“All About ASX Files.” Ex. 1017, 1. AAAF explains that “ASX files are
`
`simply text files that act as links from Web pages to ASFfiles on Windows
`
`Media Services or HTTPservers. They transfer control of the data from the
`
`HTTP browserto the Windows Media Playerso that the data can stream.”
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`Id. When a user computer “hits an ASX file it should launch the Windows
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`Media Player. The Windows Media Player launches, looks in the ASX for
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`IPR2021-00298
`Patent 10,171,846
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`instructions on whereto get the ASFfile, and thenstarts the stream playing.”
`
`Id.
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`Using this functionality, a user “can send script events downa live
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`stream .
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`.
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`. that tell the ASX file to insert a specific clip into the stream,”
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`such as to “insert an advertising clip ... into the stream.” Jd. at 4.
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`3. Wolfe (Ex. 1044)
`
`Wolfeis titled “Programmed Music on Demand from the Internet.”
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`Ex. 1044, (54). Wolfe “relates to a method and apparatus for transmitting
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`and receiving programmed music to and from the Internet to subscribers of
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