Trials@uspto. gov
`Tel: 571-272-7822
`
`Paper 31
`Entered: May 17, 2022
`
`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.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. $ 318(a)
`
`A. BACKGROUND
`
`I. INTRODUCTION
`
`Hulu, LLC (“Petitioner”) filed a Petition for interpartes review of
`
`claims 1-4 and 7-10 of U.S. Patent No. 10,171,846 B2 (Ex. 1001, “the
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`°846 patent”). Paper 1 (“Pet.”). SITO Mobile R&DIP, LLC and SITO
`
`Mobile, Ltd. (“Patent Owner’’) filed a Preliminary Response. Paper 6. With
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`Patent 10,171,846 B2
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`our permission, Petitionerfiled a Reply, to address argumentsas to
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`discretionary denial under § 314(a). Paper 7. Patent Ownerfiled a Sur-
`
`reply. Paper8.
`
`On May 19, 2021, based on the record beforeusat the time, we
`
`instituted an interpartes review (Paper11, “Dec.”) ofclaims 14 and 7—10
`
`of the ’846 patent on the following grounds(Pet. 2-3):
`
`
`Claim(s) ©
`35 U.S.C. §
`Challenged
`
`
`a9| 1030
`
`McCanne, AAAF, Wolfe’
`103(a)
`
`
`
`f10s] «103¢a) McCanne, AAAF, Goldszmidt®
`
`
`1, 2,7, 8°
`103(a)
`Madison’, Wolfe
`
`
`
`Reference(s)
`
`10
`
`Petitioner supports its Petition with aDeclaration by Dr. Henry Houh.
`
`Ex. 1003 (“Houh Decl.”).
`
`' The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’846 patent has an
`effective filing date prior to the effective date of the applicable AIA
`amendments, werefer to the pre-AIA version of § 103.
`? US 6,785,704 B1, issued Aug. 31, 2004 (Ex. 1053).
`3 “All 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).
`4 US 5,931,901, issued Aug. 3, 1999 (Ex. 1044).
`5 US 6,195,680 B1, issued Feb. 27, 2001 (Ex. 1064).
`6 The heading for this ground on page 55 ofthe Petition lists “claims 14
`and 7-10”as being challenged, but on page 10 lists only claims1, 2, 7,
`and 8. Given the Petition only provides analysis for claims 1, 2, 7, and 8, we
`interpret the ground as only challenging claims1, 2, 7, and8.
`7 US 2004/0083273 Al, published Apr. 29, 2004 (Ex. 1051).
`
`2
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`Patent Ownerfiled a Responsein opposition to the Petition (Paper 17,
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`“POResp.”). Patent Owner supportedits Patent Owner Responsewiththe
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`Declaration of Michael Adams(“AdamsDecl.,” Ex. 2012), the Declaration
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`of Donald H. Bate (Ex. 2013), the Declaration of Bryce Welke (Ex. 2014),
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`and the Declaration of Gene Bowen (Ex. 2015). Petitioner filed a Reply in
`
`support ofthe Petition (Paper 22, “Reply”’). Patent Ownerfiled a Sur-reply
`responding to the Reply (Paper 25, “Sur-Reply”).
`.
`
`Both parties requested an oral hearing. See Paper 27. A transcript of
`
`the oral hearing is entered in the record. Paper 30 (“Tr.”).
`
`Wehavejurisdiction under 35 U.S.C. § 6. The evidentiary standard is
`
`a preponderance ofthe evidence. See 35 U.S.C. §316(e) (2018); 37 C.F.R.
`
`§ 42.1(d) (2020). This Final Written Decision is issued pursuantto
`
`35 U.S.C. §318(a) and 37 C.F.R. § 42.73.
`
`B. REAL PARTIESIN INTEREST
`
`Petitioner identifies itself, Hulu, LLC,as the sole real party-in-
`
`interest. Pet. 80. Petitioner also indicates The Walt Disney Company and
`
`Comcast Corporation each own “ten percent or moreof the stock”ofthe
`
`Petitioner. Jd.
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`Patent Ownerindicates “SITO Mobile R&DIP, LLC and SITO
`
`Mobile, Ltd. are the real parties-in-interest.” Paper 5, 1.
`
`C. RELATED PROCEEDINGS
`
`Theparties identify the followinglitigation that involvesthe patentat
`
`issue: SITO Mobile R&DIP, LLC and SITO Mobile, Ltd. v. Hulu, LLC,
`
`Case No. 6:20-cv-00472-ADA (W.D. Tex.). Pet. 81; Paper 5, 1. Petitioner
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`also identifies SITO Mobile R& DIP, LLC and SITO Mobile, Ltd. v. Hulu,
`
`LLC, Case No. 2:21-cv-06322-CAS-Ex (C.D. Cal). Paper 23, 1.
`
`D. THE ’846 PATENT
`
`The ’846 patentis titled “System and Method for Routing Media.”
`
`Ex. 1001, (54). The 846 patent issued from Application Serial No.
`
`16/017,435, filed on June 25, 2018, and claimspriority to Provisional
`
`Application No. 60/263,044,filed on Jan. 19, 2001 (“the Provisional
`
`Application,” Ex. 1011). Jd. at (21), (22), (30), and (60).
`
`The °846 patent relates to the management and administration of
`
`media streaming. Jd. at 1:46-47. The patent describes increased demandfor
`
`media streaming anddifficulties in implementing it on diverse networks,
`
`suchasthe Internet. Jd. at 1:59-61, 2:9-15. To addressthis, the patent
`
`describes an “integrated and distributed media routing algorithm.” Jd. at
`
`5:4-11.
`
`Figure 1, reproduced below, shows a block diagram of one system of
`
`the 846 patent.
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`Patent 10,171,846 B2
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`
`ROUTING
`
`PROCESSOR
`
`
`
`WED”
`anon
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`NETWORK
`
`
`
`PACKET
`NETWORK
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`114
`
`PACKET
`
`
`
`
` 116
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`Figure | 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, areservation system 108, a name routing processor
`(NRP) 110, and a managed media switch (MMS) 112, each communicating
`
`through a packet network 114, portal 116, and packet network 122 with
`
`.
`viewers 118 and 120. Jd. at 6:2-14.
`The RTSMS106receivessignaling from a viewer 118 or 120, which
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`typically is a request fora program or programs. /d. at 11:16-20. The
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`RTSMS106 determinesif the program is available, and “generates a
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`customizedplay script for the requested program to the viewer.” Jd. at
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`11:29-30. The play script may include one or more mediaclips, and one or
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`more advertisements. /d. at 11:23-34. The RTSMS106 reserves resources
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`called by the script, and sendsthescript to the viewer. Jd. at 11:41-47. The
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`play script instructs the viewer to issue requests for each media elementto
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`view. Jd. at 15:14-16.
`
`Claim 1 is the only independent claim challenged. Claims 24 and 7—
`10 all depend directly from claim 1. Claim1is illustrative and is reproduced
`
`below (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 resourcesofthe contentdistribution network;
`[1.b] dynamically selecting one or more advertisement media
`clips based onstatistical information associated with a
`user ofthe 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
`resourcesofthe contentdistribution networkavailable to
`facilitate streaming ofone or more segments ofthe stored
`video contentto theclient device, the identification being
`dependentat 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]
`(i)
`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 ofthe advertising server,
`[1.e] wherein the one or morefiles, when processed by the
`client device, cause the client device to communicate
`with the identified one or more resourcesofthe content
`distribution network and the advertising server to cause
`the one or more segments of the stored video to be
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`streamed to the client device by the identified one or
`more resources of the contentdistribution network and
`cause the one or more selected advertisement media clips
`to be streamed from the advertising serverto the client
`device.
`
`Ex. 1001, 52:56—-53:27.
`
`A. CLAIM INTERPRETATION
`
`II. ANALYSIS
`
`Weinterpret claims in the same mannerused inacivil action under
`
`35 U.S.C. § 282(b), “including construing the claim in accordancewith the
`
`ordinary and customary meaning of such claim as understood by one of
`
`ordinary skill in the art and the prosecution history pertaining to the patent.”
`
`37 C.F.R. § 42.100(b). When applying that standard, weinterpret the clam
`
`language as it would be understood by oneofordinary skill in the art in light
`
`ofthe specification. Inre Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed.
`
`Cir. 2010). Thus, we give claim termstheir ordinary and customary
`
`meaning as they would be understoodby an ordinarily skilled artisan. See Jn
`
`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The
`
`ordinary and customary meaning‘is the meaningthat the term would have to
`
`a person ofordinary skill in the art in question.’” (quoting Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005))). Only termsthat are in
`
`controversy need to be construed, and then only to the extent necessary to
`
`resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean
`
`MotorCo., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`
`Petitioner proposes construction for two terms,“content distribution
`
`network,” and “settlement.” Pet. 19-21. In its Preliminary Response, Patent
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`Patent 10,171,846 B2
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`Ownerdid not address claim construction. In our Decision on Institution,
`we adopted Petitioner’s proposed constructionsfor“content distribution
`network”and “settlement.” See Dec. 7-8. In its Patent Owner Response,
`
`Patent Ownerstatesthat it does not agree with Petitioner’s constructionsfor
`
`“contentdistribution network”and “settlement,”but that the invalidity
`challenges do not turn on these constructions. POResp. 12. Thus, Patent
`
`Ownerdoes not propose any termsfor express construction. Seeid.
`
`In our Decision on Institution, we adopted Petitioner’s constructions
`
`for “content distribution network” and “settlement.” Dec. 7-8. We maintan
`
`those constructionsfor the reasonsstated in our Decision onInstitution. Id.
`
`Weset forth our analysis, whichis similar to our analysis in our Decision on
`
`Institution, below for completeness. Although Patent Ownerdoesnot
`
`propose an expressconstruction,it is clear that the parties’ dispute turns,in
`part, on the construction ofthe terms“segment” and “dynamically selecting
`... advertisements. ...” So, we also construe those terms below.
`
`1. “content distributionnetwork”
`
`Petitioner proposesthat a “contentdistribution network”be construed
`
`as “a distributed networkof servers.” Pet. 19. Petitioner asserts that the
`Specification and prosecutionhistory 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. (citng
`
`Ex. 1011, 9). Petitioner also contendsthat this construction is consistent
`
`with contemporaneousdictionary definitions.
`
`/d. at 19-20 (citing Exs. 1056,
`
`1057, 1063, 1065, 1066; Houh Decl. J 120).
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`Weagree that Petitioner’s construction is consistent with the intrinsic
`and extrinsic evidence provided and cited above. Accordingly, we construe
`
`“contentdistribution network” as “a distributed networkofservers.”
`
`2. “settlement”
`
`Petitioner proposes construing the term “settlement”as a “billable
`
`event record to be used for revenue settlement purposes.” Pet. 20.
`
`Petitioner notes that the language of claim 7 “indicates that the settlementis
`
`associated with streamingthe ‘one or more selected advertisement media
`
`clips’ and is accordingly generated on a per-ad basis.”” /d. (quoting
`
`Ex. 1001, 53:50-53). Petitioner further submits that “the specification
`
`equivalentis referred to as a ‘message sequencedetail record (MSDR)’
`
`whichis created for each reservation.” /d. (citing Ex. 1001, 13:41-47).
`
`Petitioner argues that the Specification describesthat “[i]n addition to
`
`logging information about what was streamed to the viewer, ‘the MSDR
`
`represents a billable event record that will be used for revenue settlement
`
`purposes.’” Jd. (citng Ex. 1001, 13:49-50, 14:15-19, 13:51-53, 21:31-36,
`
`HouhDecl. ¥ 121).°
`
`Weagree that Petitioner’s constructionis consistent with the claim
`
`language andotherintrinsic evidence cited above. Accordingly, we construe
`“settlement” as a “billable event record to be used for revenuesettlement
`
`purposes.”®
`
`8 We notethat our construction of “settlement” is consistent with our
`construction of“settlement record”in the related matter CBM2020-00028.
`See CBM2020-00028, Paper 33 (Final Written Decision), 13-14 (PTAB
`Mar. 11, 2022).
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`3. “one or more segments”
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`Patent Owner submitsthat the claim term “one or more segments”
`
`requires streaming a single video in segments(i.e., segment-by-segment/one
`
`or more segmentsat a time), not the entire video all together. PO Resp. 25.
`
`Petitioner asserts that no construction is necessary. Claim 1 recites
`
`transmitting to the client
`in responseto the received signaling,
`device, via the packet-based telecommunication network and in
`one or morefiles having a format compatible with a media player
`on the client device, (i) an identification of one or more of the
`resources of the content distribution network available to
`facilitate streaming of one or more segments ofthe stored video
`contentto the client device[. |
`Ex. 1001, 53:1-8 (emphasis added).
`Patent Ownerarguesthat claim 1 of the ’846 patentis “directed to a
`
`methodof streaming a single video in segments(1.e., segment-by-
`
`segment/one or more segmentsat a time), not the entire videoall together.”
`PO Resp. 25. Patent Ownerasserts that the claims andspecification ofthe
`’846 patent “distinguish between video(e.g., an entire movie) and
`
`‘segments’of the video (e.g., a segment of a movie).” Jd. at 25-26. Patent
`
`Ownercontendsthat claim 1 “recites providing ‘video content’ (thefull
`
`video) for storage in resources ofa contentdistribution network, and
`
`subsequently, the system ‘receiv[es] .
`
`.
`
`. signaling’ to have “the stored video
`
`content’ streamedto the client device.” Jd. at 26. Patent Ownerarguesthat
`
`“{t]o capture that the methodinvolves streaming the video in one or more
`
`segmentsat a time (not the entire videoall together), the claims reference
`
`‘one or more segments ofthe stored video.”” Jd. Patent Owneralso submits |
`
`that “the ’044 provisional application, which is incorporated by reference
`
`into the ’846 patent, states that the mediafile name(i.e., ‘mediaid’) in a
`
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`URL ‘represents the uniqueidentifier for an individualpiece ofcontentthat
`
`is part ofthepresentation.” Id. (citing Ex. 1011, 19).
`
`Wedisagree with Patent Ownerthat a segment cannotbethe full
`
`video. Patent Owner’s implicit claim construction improperly imports
`
`extraneouslimitations into the claims—namely, excluding the entirety of the
`
`“streamed video”or requiring thatthe “streamed video” be broken upinto
`
`multiple segments. It is well-settled that if a feature is not necessary to give
`
`meaning to what the inventor meansbya claim term,it would be
`
`“extraneous” and should not be read into the claim. Renishaw PLC v.
`
`Marposs Societa’per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.L. du
`
`Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433
`
`(Fed. Cir. 1988).
`
`Beginning with the claim language, we note that the disputed claim
`
`term recites “one or more segmentsof the stored video.” The plain meaning
`
`of “one or more segments of the stored video”as used in the 846 patent
`
`does not support Patent Owner’s construction. Although Patent Owneris
`
`correctthat the claim can includethe situation with multiple segments of a
`stored video, it also contemplates a situation with one “segment.”? In
`
`° In several of the related cases, we have rejected a similar construction
`Patent Ownerproposedfor the term “at least one portion of the requested.”
`See, e.g., CBM2020-00028, Paper 33 (Final Written Decision), at 9-13
`(PTAB Mar. 11, 2022). Patent Ownerand Petitioner agree that the
`“portions”and “segments” have the same meaningin the context of the 846
`patent. See Sur-Reply 2 n.1 (‘For purposesofthis discussion, SITO views
`‘portions’ as encompassing ‘segments’ as disclosed and claimed in the 846
`Patent.”), 2 n.2 (“At the deposition of [Mr. Adams] fora related patent, even
`Hulu’s counselagreed that the plain and ordinary meaning of‘portion’
`applies. Ex. 1081, 153:3-8.”).
`
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`addition, claim 1 merely requires the segmentsto be part of“stored video.”
`
`Claim 1 does not require the segments to pertain to the same subject, and
`
`does not exclude a stored video thatis a playlist havingtitles (e.g., “title1,”
`
`“title2,” “title3”) ofvideofiles to be streamed, as taught by AAAF. For
`example, a stored video maybe a collection of movie trailers, in which each
`individual movie trailer is a segmentofthe stored video, but are not part ofa
`
`single video in the sense that they are part of the same movie. These aspects
`of claim 1 suggest the claim includesthe situation where the “segment” and
`the video content or videofile are coextensive.'° This understandingis
`
`supported by the specification.
`The embodimentrelied upon by Patent Owner (PO Resp. 11 (“The
`
`viewer requests the program segment-by-segment.”) is reproduced below.
`
`In one embodiment, a request is sent from the viewer 118
`or 120 to the NRP 110 for each media clip on the play script.
`Thus, the NRP 110 must determine a switch that can stream the
`particular media clip of the play script to the viewer 118 or 120
`separately for each media clip on the play script. Each time the
`NRP 110 determinesthe switch that can provide the media clip,
`the NRP transmits an IP address of the switch or a
`communication device, such as a stream caster on the switch, to
`the viewer 118 or 120.
`For example,if a play script identifies two mediaclips,the
`viewer 118 or 120 transmits a media locator request to the NRP
`110 for the first media clip. The NRP 110 determines a switch
`that can provide the first media clip and transmits an IP address
`of that switch to the viewer 118 or 120. After the viewer 118 or
`
`10 We note that, in its Sur-Reply, Patent Ownercontendsthattheinstituted
`claims “unambiguously recite ‘one or more segments of the video content’
`and ‘streamingthe plurality of segments’ of the stored video content to the
`client device.” Sur-Reply 2-3. However, the challenged claims do not
`recite “streaming a plurality of segments.” Patent Owner’s contentionis
`simply incorrect, and misrepresents the contentofthe claims.
`
`12
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`120 receives thefirst media clip in a session with that switch,the
`viewercould send another media locator request to the NRP 110
`for the second media clip. The NRP 110 determinesa switch that
`can provide the second media clip and transmits an IP addressof
`that switch to the viewer 118 or 120. The viewer 118 or 120 then
`receives the second media clip ina session with that switch.
`Ex. 1001, 15:5-25 (emphasesadded).
`In this embodiment, the viewer sends a request for each media clip
`
`(the “stored video content’’) to NRP 110 (the “computing device”) and each
`
`media clip is streamedin its entirety, not broken upor streamed one segment
`
`atatime. Thus, itis clear that Patent Owner’s construction would exclude
`
`multiple preferred embodiments ofthe invention. Patent Ownerdoesnot
`
`explain why weshould adoptits construction that would exclude a preferred
`
`embodiment disclosed in the specification. Adams Respiratory
`
`Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010) (“A
`
`claim construction that excludes the preferred embodimentis rarely,if ever,
`
`correct and would require highly persuasive evidentiary support.”(citation
`
`and quotation marks omitted)).
`
`The only specification support identified by the Patent Owneris a
`
`passage in the Provisional Application stating “the mediaid represents a
`
`unique identifier for an individual piece of content thatis part of the
`presentation.” Ex. 1011, 19 (cited in PO Resp. 42). However,this
`disclosureis no different than the specification portionsrelated to the
`
`“presentation” consisting of one or more media items we discussed above.
`See Ex. 1001, 5:25—-28. Thus, wefindthis citation does not support Patent
`
`Owner’s construction.
`
`Finally, in its Sur-Reply, Patent Ownerpoints to the prosecution
`history of a related patent, U.S. Patent No. 9,026,673 (whichis not in the
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`record in this case, but is Exhibit 1002 in IPR2020-00158), where Patent
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`Owneramendedthe claimsat issue in that application to insert “at least one
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`portion”before “requested media.” Sur-Reply 3-4 (citing IPR2020-00158,
`Ex. 1002, 340, 447-448, 459-460). However, Patent Ownerpoints to no
`statements during the prosecution that would support its narrow construction
`requiring breaking up the media into segments,so wefind the prosecution
`history does not support Patent Owner’s construction.
`
`In sum, wedecline to adopt Patent Owner’s implicit claim.
`
`construction forthis term in this proceeding.
`
`4, “dynamically selecting... advertisements...”
`Although Patent Ownerdoesnotlabel it as a claim construction,
`Patent Owneroffers a construction ofthe term “dynamically” in the
`
`limitation of claim 1 of “dynamically selecting one or more advertisement
`
`mediaclips basedonstatistical information associated with a user ofthe
`client device.” PO Resp. 45. Patent Ownerarguesthat “dynamically
`selecting ... advertisements .. .” refers to “making a determination of an
`advertisementto insert into a videoat the time the video is being played.”
`
`Id. Patent Ownerasserts that “the ’846 patent specification discusses
`
`dynamic selection being performed by the RTSMSafter the RTSMS
`receives a request from media from a user device.” Jd. (citing Ex. 1001,
`
`11:16—-12:59).
`Petitioner responds that Mr. Adamsexplained that he understoodthis
`to refer to advertisements being inserted after the user requested the media.
`
`.
`
`Reply 24 (citing Ex. 1083, 156:6—-157:3).
`
`Wedecline to impose Patent Owner’s temporallimitation on
`“dynamically”that requiresthe selection occur at the time the mediais
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`played. In our review ofthe portion of the specification cited by Patent
`Owner, wedo not discern any description of specifically when the
`advertisementis selected, besides that it appears to occur sometimeafter the
`
`user requests the media. See Ex. 1001, 11:16—12:59. For example, the
`specification describes the operation ofthe RTMS without ever mentioning
`that the advertising is selected at the time the videois played:
`
`The RTSMS 106 can be configured to dynamically select
`advertising or other content. For example, the RTSMS 106 may
`be configured for use by an investment management company
`that manages several different funds and has several different
`analysts associated with each fund. For example, a person using
`a viewer may have moneyin funds A and B butnotC orD....
`The RTSMS 106 may use the rule set in the monthly fund
`program to dynamically place media clips that contain the A and
`B fund managers .. . in the presentation. Whereas,if the person _
`using the viewer has $50,000 in an IRA in fund C, the RTSMS
`106 may usethe rule set in the same monthly fund program to
`dynamically place media clips showing the C fund managers
`. ..in the presentation.
`Theability to dynamically select content can result in a different
`cost basis for different presentations. For example, in the above
`examples, expenses of three dollars may be incurred for the A
`and B analysts’ media clips, and revenue oftwo dollars may be
`incurred for the C analyst’s media clip.
`
`Ex. 1001, 12:39-1 3:2 (emphasis added). Nothing in this description
`indicates that the selection occursonly at the time the mediais played.
`Instead, this description in the specification indicates that the most important
`aspect of “dynamically select’is the ability to offer different changeable
`presentations customizedfor different users that might have different
`
`revenueor cost amounts and showdifferent amounts ofadvertising. At
`
`most, the description is broad enough to encompassan understandingthat
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`dynamically includesa selection madebythe system at the time the mediais
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`requested by the user. Accordingly, we decline to import Patent Owner’s
`
`timing limitation into the term “dynamically,” and simply giveits plain and
`
`ordinary meaning. See Mayne Pharm. Int’! Pty. Ltd. v. Merck Sharp &
`
`DohmeCorp., 927 F.3d 1232, 1241 (Fed. Cir. 2019) (“Because the
`specification is silent as to whetherthe claimed pharmaceutical composition
`is limited to being nontoxic, there is no basis to import suchalimitation into
`
`the claim.”’).
`
`5. Remaining Terms
`
`Wediscern no other termsin need of express interpretation.
`
`Accordingly, we apply the legal standardsset forth above when reading the
`
`claims.
`
`B. THE PARTIES’ POST-INSTITUTION ARGUMENTS
`
`In ourInstitution Decision, we concludedthat the argument and
`
`evidence adducedby Petitioner demonstrated a reasonablelikelihood thatat
`
`least one challenged claim was unpatentable. Dec. 41. We must now
`
`determine whetherPetitioner has established by a preponderanceofthe
`evidencethat the challenged claims are unpatentable overthe cited priorart.
`
`35 U.S.C. § 316(e). “In an[interpartes review], the petitioner has the
`
`burden from the onset to show with particularity why the patent it challenges
`
`is 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
`petitions to identify “with particularity .. . the evidence that supports the
`
`groundsfor the challenge to each claim”)). This burden nevershifts to
`Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc. , 800
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`F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
`
`Inc. , 545 F.3d 1316, 1326-27 (Fed. Cir. 2008)) (discussing the burdensof
`
`proofin interpartes review).
`
`|
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`C. LEGAL STANDARDS
`The Supreme Court in KSR International Co. v. TeleflexInc., 550
`U.S. 398 (2007), reaffirmed the frameworkfor determining obviousness as
`
`set forth in Graham v. John Deere Co., 383 U.S. 1 (1966). The KSR Court
`
`summarizedthe four factual inquiries set forth in Graham that we apply in
`
`determining whethera claim is unpatentable as obvious under 35 U.S.C.
`
`§ 103(a) as follows: (1) determining the scope and contentofthepriorart,
`
`(2) ascertaining the differences betweenthe priorart and the claimsat issue,
`
`(3) resolving the level of ordinary skill in the pertinentart, and (4) whenin
`
`evidence, considering objective evidence indicating obviousness or
`
`nonobviousness.!'! KSR,550 U.S. at 406 (citing Graham, 383 U.S.
`
`at 17-18). In an interpartes review, Petitioner cannotsatisfy its burden of
`
`proving obviousness by employing “mere conclusory statements.” Jn re
`
`Magnum Oil Tools Int'l, Ltd. , 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`
`Petitioner must explain how the proposed combinationsofpriorart
`
`would have rendered the challenged claims unpatentable. An obviousness
`analysis “need not seek out precise teachings directed to the specific subject
`
`matter of the challenged claim, for a court can take accountof the inferences
`
`and creative steps that a person of ordinary skill in the art would employ.”
`
`KSR, 550 U.S. at 418; accord Translogic, 504 F.3d at 1259. Petitioner also
`
`1! Patent Ownerprovides no objective evidence indicating nonobviousness.
`See PO Resp.
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`mustarticulate a reason whya personofordinary skill in the art would have
`combinedtheprior artreferences. In re NuVasive, Inc. , 842 F.3d 1376, 1382
`
`(Fed. Cir. 2016).
`
`D. LEVEL OF ORDINARY SKILL
`
`Petitioner
`
`contendsthat one of ordinary skill in the art would have hadat
`least a bachelor’s degree in computer science, electrical or
`computer engineering, or equivalent, and at least two years of
`experience in distributed systems, multimedia streaming, and
`various HTTP-related technologies, or an equivalent amount of
`relevant workor research experience.
`Pet. 16 (citng Houh Decl. {| 57-60).
`
`Patent Ownercontendsthat
`
`a person ofordinary skill in the art “POSITA”) at the time ofthe
`invention of the ’846 patent would have: (a) a Bachelor of
`Science degree in computerscience, electrical engineering, or
`computer engineering (or a related academicfield), and at least
`two additional years of work experience in the design and
`development of distributed network systems and/or media
`streaming, or (b) at least five years of work experience and
`training in the design and developmentofdistributed network
`systems and/or media streaming.
`PO Resp. 2-3 (citing AdamsDecl. 4 28).
`
`Theparties’ definitions are substantially similar, and neither party
`
`arguesthat any issue ofpatentability turns on the subtle differences between
`
`the two definitions. Having reviewedthe full record, we adopt Patent
`
`Owner’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 assertedprior art references. See Okajima v. Bourdeau, 261 F.3d
`
`1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate
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`level of ordinary skill in the art). We note, however, that our decision would
`
`be the same undereither definition of the level of ordinary skill.
`
`E. OVERVIEW OF THE 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 producersto 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 ContentDistribution Service Providers (“CSP”),
`who“provides Internet “content distribution service’ to content providers,”
`such as contracting with Yahoo or CNN to replace and serve their web pages
`
`and streaming media through the Internet,efficiently. Ex. 1053, 11:57-63.
`Citing problems with CSP business models, McCanne describes a “content
`peering” embodiment, which eluninates, or reduces,the role ofthe CSP and
`allows Internet Service Providers (“ISP’”’) to becomethe content carriers
`
`themselves. Jd. at 11:41-43. Inthis way, the ISP investsin its own edge
`
`serverinfrastructure to effectively provide high performance content
`
`delivery to recipients of the content of the content providers. Jd. at 10:43-
`
`47. An edge server“capturesthe user’s request for content and servesthe
`
`contentlocally, thereby improving responsetime, reducing wide-area
`
`bandwidth consumption, and relaxing load on the production server.” Jd. at
`
`9:61-64.
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`McCannedescribesthatit is important to have an efficient mechanism
`
`to attach a client to the most appropriate server. Jd. at 13:4—6. Figure 6,
`
`reproduced below,provides an approachtothis.
`
`Redirection
`Fabric
`
`“ee ae¢
`
`Distribution
`Network
`
` Content ——
`
`
`Figure 6 showsa redirection fabric which “glues”clients to edge
`
`FIG. 6
`
`14
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`servers to provide the best possible contentdistribution path. Jd. at 13:6—8.
`
`“Theredirection fabric accounts for client proximity, network path
`
`characteristics, server load andutilization, and perhaps most important,
`
`policies based on content-peering service level agreements to best decide
`
`howtoattach 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. 101712, 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 ofthe data from the
`
`HTTPbrowserto the Windows Media Playerso that the data can stream.”
`
`Id. Whena user computer “hits an ASX file it should launch the Windows
`
`12 Exhibit 1017 is a printout ofthis website. See Ex 1017.
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`Media Player. The Windows Media Playerlaunches,looks in the ASX for
`
`instructions o