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39 Other other court decision: Other other court decision

Document IPR2021-00158, No. 39 Other other court decision - Other other court decision (P.T.A.B. May. 22, 2024)
NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2021-
Also represented by BRADLEY M.
THIS CAUSE having been heard and considered, it is ORDERED and ADJUDGED: PER CURIAM (DYK, BRYSON, and STOLL, Circuit Judges).
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38 Other Fed Circuit mandate: Other Fed Circuit mandate

Document IPR2021-00158, No. 38 Other Fed Circuit mandate - Other Fed Circuit mandate (P.T.A.B. May. 22, 2024)
United States Court of Appeals for the Federal Circuit
Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2021-
In accordance with the judgment of this Court, entered April 5, 2024, and pursuant to Rule 41 of the Federal Rules of Appellate Procedure, the formal mandate is hereby issued.
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33 Other Fed Circuit mandate: Other Fed Circuit mandate

Document IPR2021-00265, No. 33 Other Fed Circuit mandate - Other Fed Circuit mandate (P.T.A.B. May. 22, 2024)
United States Court of Appeals for the Federal Circuit
Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2021-
In accordance with the judgment of this Court, entered April 5, 2024, and pursuant to Rule 41 of the Federal Rules of Appellate Procedure, the formal mandate is hereby issued.
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34 Other other court decision: Other other court decision

Document IPR2021-00265, No. 34 Other other court decision - Other other court decision (P.T.A.B. May. 22, 2024)
NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2021-
Also represented by BRADLEY M.
THIS CAUSE having been heard and considered, it is ORDERED and ADJUDGED: PER CURIAM (DYK, BRYSON, and STOLL, Circuit Judges).
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36 Order Other: Order Denying Request for Director Review

Document IPR2021-00158, No. 36 Order Other - Order Denying Request for Director Review (P.T.A.B. Jul. 20, 2022)
SITO MOBILE R&D IP, LLC and SITO MOBILE, LTD., Patent Owner.
Before KATHERINE K. VIDAL, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
The Office has received a request for Director review of the Final Written Decision in this case.
I have considered the request, and I deny Director review.
Accordingly, It is ORDERED that the request for Director review is denied; and FURTHER ORDERED that the Patent Trial and Appeal Board’s Final Written Decision in this case is the final decision of the agency.
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35 Order Other: Order Denying Request for Director Review

Document CBM2020-00028, No. 35 Order Other - Order Denying Request for Director Review (P.T.A.B. Jun. 10, 2022)
SITO MOBILE R&D IP, LLC and SITO MOBILE, LTD., Patent Owner.
Before KATHERINE K. VIDAL, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
The Office has received a request for Director review of the Final Written Decision in this case.
I have considered the request, and I deny Director review.
Accordingly, It is ORDERED that the request for Director review is denied; and FURTHER ORDERED that the Patent Trial and Appeal Board’s Final Written Decision in this case is the final decision of the agency.
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31 Final Written Decision original: Final Written Decision original

Document IPR2021-00265, No. 31 Final Written Decision original - Final Written Decision original (P.T.A.B. May. 4, 2022)
The Federal Circuit has recognized that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” and “[i]n such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
Patent Owner’s declarant, Mr. Michael Adams, provides similar assessment, but also testifies that such an artisan, alternatively, would have had “at least five years of work experience and training in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2012 ¶ 28.
The Federal Circuit has repeatedly held that “[a] reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898 (Fed. Cir. 1985); In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012); see also Merck & Co., Inc. v. Biocraft Labs.
We agree with and credit Dr. Houh’s testimony, and we find that such an artisan of ordinary skill would have understood that, in Eyal in combination with Wiser, the voucher ID provided in the play-list is uniquely associated with the client device and a viewing session of the media.
Dr. Houh testifies that a relevant artisan would have been motivated to modify Madison’s play-list redirector file to provide a voucher ID, as taught by Wiser, because “utilizing reservations for streaming media was already well-known and desirable to address finite memory and bandwidth for the delivery server.” Ex. 1003 ¶¶ 106, 188−189.
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33 Final Written Decision original: Final Written Decision original

Document IPR2021-00308, No. 33 Final Written Decision original - Final Written Decision original (P.T.A.B. Apr. 25, 2022)
For the foregoing reasons, we find that none of the three applications provides adequate written description for the claimed “instructions.” c.
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34 Final Written Decision original: JUDGMENT Final Written Decision Determining All Challenged Claims Unpatentable 35 USC sec 318 a

Document IPR2021-00158, No. 34 Final Written Decision original - JUDGMENT Final Written Decision Determining All Challenged Claims Unpatentable 35 USC sec 318 a (P.T.A.B. Apr. 15, 2022)
Petitioner asserts that the term “reservation” should be construed as “a set of instructions uniquely identifying the communication device and the play script, and reserving system resources for streaming the requested media.” Pet. 23−24.
Patent Owner’s declarant, Mr. Michael Adam, provides a similar assessment, but also testifies that such an artisan, alternatively, would have had “at least five years of work experience and training in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2012 ¶ 28.
Patent Owner also argues that Eyal and Wiser do not disclose generating a play script based (1) an attribute of the communication device and (2) a rule identifying how to select at least one other media, as recited in claim 19.
As discussed above, we agree with Petitioner that, in view of Holtz’s teachings, a relevant artisan would have implemented the functionality of selecting advertisements based on the subject matter of the requested media in Madison’s playlist server.
Patent 9,026,673 B2 Petitioner has articulated a sufficient reason to add the functionality of selecting advertisements to be included in an ASX redirector file based on the subject matter of the requested media or the interests of the user, as taught by Holtz, in Madison’s playlist server.
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33 Final Written Decision original: Final Written Decision original

Document CBM2020-00028, No. 33 Final Written Decision original - Final Written Decision original (P.T.A.B. Mar. 11, 2022)
However, none of the claims recites a reservation process or a reservation system, much less a Media Routing Algorithm or a Real Time Stream Management System as disclosed in the ’887 patent or in the ’044 provisional application.
However, none of the challenged claims recites a reservation process or a reservation system, much less a Media Routing Algorithm or a Real Time Stream Management System as disclosed in the ’887 patent or the ’044 provisional ...
However, none of the challenged claims recites a reservation process or a reservation system, much less a Media Routing Algorithm or a Real Time Stream Management System as disclosed in the ’887 patent and the ’044 provisional ...
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30 Other Hearing transcript: Other Hearing transcript

Document IPR2021-00265, No. 30 Other Hearing transcript - Other Hearing transcript (P.T.A.B. Feb. 25, 2022)
Turning to slide 15, the Petition describes in detail why a person skilled in the art would have been motivated to combine Eyal's streaming media system, with Angles's more explicit disclosure of targeted advertising.
As shown here, quoted on slide 33 from Madison ’273, the playlist meta file is generated dynamically, and its format can be specified, depending on the end users media player.
Turning to Petitioner's slide 38, a person of ordinary skill in the art would have been motivated to combine Madison system with Wolfe's teachings of a program that determines billing data for advertisers.
Turning to Petitioner's slide 48, SITO also argues that Eyal does not disclose that the one or more files transmitted to the media player include an indication of the one or more segments of that video content.
Still on slide 25, Hulu has a fifth argument which is that the intermediary web server module in Eyal that its replacement of HTTP by another prefix like PNM in the URLS returned to the client device meets the claim instructions.
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32 Other Hearing transcript: Other Hearing transcript

Document IPR2021-00308, No. 32 Other Hearing transcript - Other Hearing transcript (P.T.A.B. Feb. 25, 2022)
Turning to slide 15, the Petition describes in detail why a person skilled in the art would have been motivated to combine Eyal's streaming media system, with Angles's more explicit disclosure of targeted advertising.
Turning to Petitioner's slide 38, a person of ordinary skill in the art would have been motivated to combine Madison system with Wolfe's teachings of a program that determines billing data for advertisers.
Turning to Petitioner's slide 48, SITO also argues that Eyal does not disclose that the one or more files transmitted to the media player include an indication of the one or more segments of that video content.
Slide 22 involves the limitation of transmitting information instructing the client device how to communicate with resources of the content distribute network to cause a plurality of segments to be streamed.
Still on slide 25, Hulu has a fifth argument which is that the intermediary web server module in Eyal that its replacement of HTTP by another prefix like PNM in the URLS returned to the client device meets the claim instructions.
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33 Other Hearing transcript: Other Hearing transcript

Document IPR2021-00158, No. 33 Other Hearing transcript - Other Hearing transcript (P.T.A.B. Feb. 15, 2022)
At least because none of the priority applications before 2002 contain sufficient written description or play scripts in, for its claimed elements.
None of the prior art discloses reserving a resource.
YANG: And none of the pieces -- JUDGE CHANG: Now I am looking at one skilled in the art and at the time of the invention.
So the prior art here is Madison, Holtz, Eyal, and Wiser, and none of these reference -- JUDGE CHANG: You're not -- Well, go back and read the background of your patent and also provisional application that you quoted us in your brief ...
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28 Order on Motion: ORDER Setting Oral Argument 37 CFR sec 4270

Document IPR2021-00308, No. 28 Order on Motion - ORDER Setting Oral Argument 37 CFR sec 4270 (P.T.A.B. Jan. 11, 2022)
If at any time during the proceeding, a party encounters technical or other difficulties that fundamentally undermine the party’s ability to adequately represent their client, please let the panel know immediately, and adjustments will be made.
In addition to the service requirement of 37 C.F.R. § 42.70(b), each party also shall file its demonstrative exhibits with the Board as a separate paper at least five business days prior to the hearing.
The parties are directed to St. Jude Medical, Cardiology Division, Inc. v. The Board of Regents of the University of Michigan, IPR2013-00041 (PTAB January 27, 2015) (Paper 65), for guidance regarding the appropriate content of demonstrative exhibits.
Finally, the parties are reminded that the presenter must identify clearly and specifically each demonstrative exhibit (e.g., by slide or screen number) referenced during the hearing to ensure the clarity and accuracy of the reporter’s transcript.
The Board defines a LEAP practitioner as a patent agent or attorney having three or fewer substantive oral arguments in any federal tribunal, including PTAB.
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27 Order on Motion: ORDER Setting Oral Argument 37 CFR sec 4270

Document IPR2021-00265, No. 27 Order on Motion - ORDER Setting Oral Argument 37 CFR sec 4270 (P.T.A.B. Jan. 11, 2022)
If at any time during the proceeding, a party encounters technical or other difficulties that fundamentally undermine the party’s ability to adequately represent their client, please let the panel know immediately, and adjustments will be made.
In addition to the service requirement of 37 C.F.R. § 42.70(b), each party also shall file its demonstrative exhibits with the Board as a separate paper at least five business days prior to the hearing.
The parties are directed to St. Jude Medical, Cardiology Division, Inc. v. The Board of Regents of the University of Michigan, IPR2013-00041 (PTAB January 27, 2015) (Paper 65), for guidance regarding the appropriate content of demonstrative exhibits.
Finally, the parties are reminded that the presenter must identify clearly and specifically each demonstrative exhibit (e.g., by slide or screen number) referenced during the hearing to ensure the clarity and accuracy of the reporter’s transcript.
The Board defines a LEAP practitioner as a patent agent or attorney having three or fewer substantive oral arguments in any federal tribunal, including PTAB.
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