Trials@uspto.gov
`571-272-7822
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`
`
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`Paper No. 23
`Filed: March 29, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`CONVERGENT MEDIA SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00047
`Patent 8,640,183 B2
`____________
`
`
`
`Before JAMESON LEE, LYNNE E. PETTIGREW, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 23
`Filed: March 29, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`CONVERGENT MEDIA SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00047
`Patent 8,640,183 B2
`____________
`
`
`
`Before JAMESON LEE, LYNNE E. PETTIGREW, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
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`IPR2016-00047
`Patent 8,640,183 B2
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`I. INTRODUCTION
`
`A. Background
`Unified Patents Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to
`institute inter partes review of claims 1–5, 16, 18, 24–26, 32–38, 40–42, 49,
`51–53, 55, and 58–61 (“the challenged claims”) of U.S. Patent
`No. 8,640,183 B2 (Ex. 1001, “the ’183 patent”). Convergent Media
`Solutions, LLC, (“Patent Owner”) filed a Preliminary Response (Paper 9,
`“Prelim. Resp.”). Upon consideration of the Petition and Preliminary
`Response, we instituted an inter partes review to determine the patentability
`of the challenged claims. Paper 13 (“Dec. Inst.”).
`Subsequent to institution, Patent Owner filed a Response (Paper 16,
`“PO Resp.”), and Petitioner filed a Reply (Paper 20, “Pet. Reply”). Neither
`Petitioner nor Patent Owner requested oral argument, and we determined
`oral argument was not necessary to resolve this proceeding. Paper 22.
`We have jurisdiction under 35 U.S.C. § 6(b). This is a Final Written
`Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons
`set forth below, we enter adverse judgment against claims 60 and 61, and
`find Petitioner has shown by a preponderance of the evidence that claims 1–
`5, 16, 18, 24–26, 32–38, 40–42, 49, 51–53, 55, 58, and 59 of the ’183 patent
`are unpatentable.
`B. Related Matters
`Petitioner identifies the following as matters that could affect, or be
`affected by, a decision in this proceeding: Convergent Media Solutions LLC
`v. AT&T Inc., Case No. 3-15-cv-02156 (N.D. Tex.); Convergent Media
`Solutions LLC v. Hulu, Inc., Case No. 3-15-cv-02158 (N.D. Tex.);
`Convergent Media Solutions LLC v. Netflix Inc., Case No. 3-15-cv-02160
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`(N.D. Tex.). Pet. 2. Patent Owner identifies each of the preceding matters
`as well as the following as a matter that could affect, or be affected by, a
`decision in this proceeding: Convergent Media Solutions LLC v. Roku, Inc.,
`Case No. 3-15-cv-02163 (N.D. Tex.). Paper 4, 2.
`
`C. Evidence Relied Upon
`
`Reference
`
`Chen
`
`US 8,479,238 B2
`
`Elabbady
`
`US 7,483,958 B1
`
`Effective Date
`
`Exhibit
`
`May 14, 20011
`
`Mar. 26, 20022
`
`Ex. 1003
`
`Ex. 1004
`
`
`Petitioner also relies upon the Declaration of Jon Weissman. Ex. 1002.
`
`
`D. The Instituted Ground of Unpatentability
`We instituted inter partes review of the ’183 patent on the following
`ground of unpatentability (Dec. Inst. 27):
`
`References
`Chen and Elabbady
`
`Basis
`§ 103(a)
`
`Claims Challenged
`1–5, 16, 18, 24–26, 32–38, 40–
`42, 49, 51–53, 55, and 58–61
`
`II. ANALYSIS
`
`A. The ’183 Patent
`The ’183 patent relates to systems and methods for navigating
`hypermedia using multiple coordinated input/output device sets. Ex. 1001,
`3:13–15. The method allows “a user and/or an author to control what
`
`
`1 Chen was filed on May 14, 2002, but is entitled to claim priority to a
`provisional application filed on May 14, 2001. See § II.C infra.
`2 Elabbady was filed on March 26, 2002 and issued on January 27, 2009. It
`is prior art under 35 U.S.C. § 102(e) based on its March 26, 2002 filing date.
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`resources are presented on which device sets.” Id. at 3:15–17. The device
`sets may include laptops, desktops, tablets, personal digital assistants
`(PDAs), televisions (TVs), set-top boxes, video cassette recorders (VCRs)
`and digital video recorders (DVRs). Id. at 16:28–43, 18:32–59, 19:32–47.
`The term hypermedia refers to “any kind of media that may have the effect
`of a non-linear structure of associated elements,” and includes “graphics,
`video, and sound.” Id. at 7:13–22. The ’183 patent characterizes video and
`sound as examples of “continuous media,” or a “representation of ‘content’
`elements that have an intrinsic duration, that continue (or extend) and may
`change over time.” Id. at 20:5–9.
`The multiple input/output device sets described in the ’183 patent may
`be coordinated using “a device set management process that performs basic
`setup and update functions . . . to pre-identify and dynamically discover
`device sets.” Ex. 1001 37:36–43. This management process can “be based
`on and compatible with related lower-level processes and standards defined
`for linking such existing devices and systems . . . based on UPnP, HAVi,
`OSGi, Rendezvous and/or the like.” Id. at 37:46–50. The process enables
`basic communications among the devices in the device set, and “provide[s]
`discovery, presence, registration, and naming services to recognize and
`identify devices as they become available to participate in a network, and to
`characterize their capabilities.” Id. at 37:50–55.
`Claims 1 and 58–60 of the ’183 patent are independent. Claim 1,
`reproduced below, is illustrative of the claims of the ’183 patent. Each of
`the other challenged claims depends from claim 1 or claim 60.
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`A method for use in a second computerized
`1.
`device set which
`is configured for wireless
`communication using a wireless communications
`protocol that enables wireless communication with
`a first computerized device set, wherein the first and
`second computerized device sets include respective
`first and second continuous media players, the
`method comprising:
`
`making available to a user a first user interface that
`allows the user to select a continuous media content
`to be presented to the user, wherein the continuous
`media content includes a set of encoded video data;
`
`making available to the user a second user interface
`that allows the user to select to have the continuous
`media content presented on either one of the first
`computerized device
`set
`and
`the
`second
`computerized device set;
`
`receiving discovery information at the second
`computerized device set in accordance with a
`device management discovery protocol that is
`implemented at a communication layer above an
`internet protocol layer, and
`
`wherein the discovery information allows the
`second computerized device set to determine that
`the first computerized device set is capable of
`receiving the continuous media content and playing
`the continuous media content;
`
`wherein, in the event the user selects, via the second
`user interface, to have the continuous media content
`presented on the second computerized device set,
`the second media player decoding the continuous
`media content for presentation on the second
`computerized device set;
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`wherein, in the event the user selects, via the second
`user interface, to have the continuous media content
`presented on the first computerized device set,
`wirelessly transmitting, in accordance with a
`wireless local area network protocol, at least a
`resource indicator, wherein the resource indicator
`comprises at least one of a URL, URI, and URN,
`from the second computerized device set to the first
`computerized device set, wherein the resource
`indicator facilitates obtaining the continuous media
`content for presentation to the user on the first
`computerized device set; and
`
`wherein the continuous media content is not
`presented on the second computerized device set
`during presentation on the first computerized device
`set, and the first user interface and the second user
`interface
`together comprise a unified media
`selection and presentation user interface, wherein
`the unified media selection and presentation user
`interface presents user input controls for selection
`of the continuous media content and for selection of
`either one of the first computerized device set and
`the second computerized device set for presentation
`of the continuous media content.
`
`Ex. 1001, 164:22–165:6.
`B. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S.Ct. 2131, 2144–46 (2016). Even under the rule of broadest reasonable
`interpretation, claim terms are generally given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
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`1249, 1257 (Fed. Cir. 2007). Only those terms which are in controversy
`need to be construed and only to the extent necessary to resolve the
`controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999).
`Petitioner proposes we construe the term “unified media selection and
`presentation user interface.” Pet. 7–8. The term appears in each of
`independent claims 1 and 58–60 in the phrase:
`the first user interface and the second user interface
`together comprise a unified media selection and
`presentation user interface, wherein the unified
`media selection and presentation user interface
`presents user input controls for selection of the
`continuous media content and for selection of either
`one of the first computerized device set and the
`second computerized device set for presentation of
`the continuous media content.
`
`E.g., Ex. 1001, 164:65–165:6 (emphasis added).
`Petitioner contends the term “unified” is not defined in the
`Specification, and does not appear in the Specification other than in the
`claims, and in the context of the ’183 patent’s disclosure of unrelated
`“unified messaging services.” Pet. 8; see also Ex. 1001, 103:35–42.
`Relying on a dictionary definition of “unify,” Petitioner contends the term
`“unified media selection and presentation user interface” should be
`construed to mean “a coherent set of user interfaces for selecting media and
`selecting a presentation device.” Id.; see also Ex. 1006, 1287 (defining
`“unify” to mean “to make into a unit or a coherent whole : UNITE”).
`In our Decision to Institute, we agreed with Petitioner that the term
`“unified media selection and presentation user interface” does not appear in
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`the Specification, other than in the claims. As Petitioner noted, the term
`“unify” means “to make into a unit or a coherent whole : UNITE.” Ex.
`1006, 1287. The term “unite” means “to become one or as if one,” and “to
`act in concert.” Ex. 3001, 1291 (emphasis added). Accordingly, in our
`Decision to Institute, we construed the term “unified media selection and
`presentation user interface” to mean “one or more user interfaces that,
`together, present controls for selecting continuous media content and a
`continuous media content presentation device.” Dec. Inst. 8.
`The parties do not challenge this construction. See PO Resp.; see also
`Pet. Reply. On the complete record before us, we maintain this construction
`of the term “unified media selection and presentation user interface.”
`C. Whether Chen Is Prior Art to the ’183 Patent
`Chen was filed on May 14, 2002, and claims priority to U.S.
`Provisional Application No. 60/290,788 (“the ’788 provisional”) filed on
`May 14, 2001. See Ex. 1003. The ’183 patent was filed on October 26,
`2012, and claims priority, through a chain of continuations, to three
`provisional applications, including U.S. Provisional Application No.
`60/379,635 (“the ’635 provisional”) filed on May 10, 2002. Id.
`Patent Owner argues Chen, based on its May 14, 2002 filing date, is
`not prior art to the challenged claims of the ’183 patent because the
`challenged claims are entitled to claim priority to the May 10, 2002 filing
`date of the ’635 provisional. PO Resp. 2–3. Patent Owner provides a
`detailed claim chart mapping the disclosure in the ’635 provisional to the
`subject matter recited in the challenged claims. Id. at App’x, 1–31.
`Petitioner argues Patent Owner has failed to show the challenged
`claims are entitled to claim priority to May 10, 2002 because the ’635
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`provisional does not support the following negative limitation recited in all
`of the independent claims: “the continuous media content is not presented
`on the second computerized device set during presentation on the first
`computerized device set.” Pet. Reply 19; see also Ex. 1001, 164:63–65.
`Patent Owner argues this limitation is supported by a table in the
`appendix of the’635 provisional that discloses using a TV (first device) as a
`main video screen, and using a PC/PDA (second device) to either duplicate
`the TV screen or display a different screen. See PO Resp., App’x, 16–17;
`Ex. 2002, 157. Patent Owner further argues this limitation is supported by
`disclosure in the ’635 provisional that “a primary video program be viewed
`on the TV . . . [and] interactive text such as [a] browser screen (or secondary
`video elements) be viewed on the PC/PDA for ease of reading and
`interaction, and to avoid disturbing viewing of the ongoing TV program by
`the interactor or others.” Id. at 156:5–8.
`We find the disclosure in the ’635 provisional cited by Patent Owner
`adequately supports the negative limitation of not presenting media content
`on the second device when the media content is presented on the first device
`because it can be reasonably interpreted to mean displaying a movie on the
`TV, and displaying something else, e.g., a web page reviewing the movie on
`the PDA, in order to avoid disturbing a viewer watching the movie on the
`TV. See Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351
`(Fed. Cir. 2012) (“Negative claim limitations are adequately supported when
`the specification describes a reason to exclude the relevant limitation. Such
`written description support need not rise to the level of disclaimer.”).
`Upon reviewing the evidence cited by Patent Owner, and the
`arguments advanced by Patent Owner and Petitioner, we find, for the
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`reasons stated in the Patent Owner’s Response, that Patent Owner has shown
`the challenged claims of the ’183 patent are supported by the disclosure in
`the ’635 provisional, and are entitled to claim priority to May 10, 2002. See
`P.O. Resp., App’x, 1–31.
`Petitioner argues that Chen is nonetheless prior art to the challenged
`claims of the ’183 patent because Chen is entitled to claim priority to the
`May 14, 2001 filing date of the ’788 provisional, and because the material
`from Chen relied upon to challenge the claims of the ’183 patent is also
`supported by the ’788 provisional. Pet. Reply 1–19. Petitioner provides
`detailed claim charts mapping disclosures in the ’788 provisional to the
`subject matter recited in Chen’s claims, and to the material from Chen relied
`upon to challenge the claims of the ’183 patent. Id. at 1–7, 9–19. Patent
`Owner, who did not request permission to file a sur-reply, has not
`challenged the evidence in Petitioner’s Reply proffered to show that the ’788
`provisional supports Chen’s claims and the material from Chen relied upon
`to challenge the claims of the ’183 patent.
`Upon reviewing the evidence cited by Petitioner, we find, for the
`reasons stated in Petitioner’s Reply, that Petitioner has shown that Chen is
`prior art to the challenged claims of the ’183 patent under 35 U.S.C.
`§ 102(e), and that the ’788 provisional supports the material from Chen
`Petitioner relied upon to challenge the claims of the ’183 patent. See Pet.
`Reply, 1–7, 9–19 (citing Ex. 1010, 4, 7–11, Figs. 1, 2b, 4–11).
`D. Unpatentability of claims 60 and 61
`Petitioner argues claims 60 and 61 of the ’183 patent would have been
`obvious over Chen and Elabbady. See Pet. 18, 20–21, 33–37. Patent Owner
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`does not contest Petitioner’s challenge to the patentability of these claims,
`but instead “requests the cancellation of claims 60-61.” See PO Resp. 1.
`The Board’s rules permit a party to “request judgment against itself at
`any time during a proceeding.” 37 C.F.R § 42.73(b). The Board construes a
`party’s “[a]bandonment of the contest,” as a request for adverse judgment.
`37 C.F.R § 42.73(b)(4). Accordingly, we construe Patent Owner’s lack of
`response to Petitioner’s challenge to claims 60 and 61, and Patent Owner’s
`request to cancel claims 60 and 61 to be an “abandonment of the contest,”
`and a request for adverse judgment as to those claims. We, therefore, enter
`adverse judgment against claims 60 and 61.
`E. Alleged Obviousness of Claims 1–5, 16, 18, 24–26, 32–38, 40–42,
`49, 51–53, 55, 58, and 59 over Chen and Elabbady
`Petitioner argues claims 1–5, 16, 18, 24–26, 32–38, 40–42, 49, 51–53,
`55, 58, and 59 of the ’183 patent would have been obvious under 35 U.S.C.
`§ 103(a) in view of the combination of Chen and Elabbady. Pet. 4.
`1. Overview of Chen (Ex. 1003)
`Chen discloses a system and method “for content-based non-linear
`control of video data playback.” Ex. 1003, 1:64–65. Figure 3 of Chen is
`reproduced below.
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`Figure 3 of Chen is a schematic illustration of the topology of Chen’s
`networked system for non-linear control of video playback.
`
`Control device 212, multimedia server 222, video server 220, and
`video device 218 are interconnected via network 216. Ex. 1003, 4:44–5:67,
`Fig. 2. Control device 212 can be a personal digital assistant (PDA), tablet,
`palmtop, laptop, or desktop computer. Id. at 4:47–60. Control device 212
`“acts as a dynamic control pad for initiating video playback of content
`specific information,” and is “capable of inputting control command,
`communicating data, and playing multimedia data such as . . . still images,
`text, preview videos, or the like.” Id. at 4:47–53. Control device 212
`connects to network 216 using a wireless communications protocol such as
`Bluetooth or IEEE 802.11b. Id. at 4:55–57.
`Video device 218 includes a video display 316, “a video decoder 318
`which decodes compressed video data, and a video device network interface
`320 which interfaces the video display to the network.” Ex. 1003, 6:19–22
`(emphasis omitted). Video device 218 “may be a television monitor,
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`computer monitor, or [a] similar device.” Id. at 5:4–7. Video device 218
`may connect to network 216 through a wireless connection. Id. at 5:10–11.
`Control device 212 provides a “Graphical User Interface (GUI), for
`display of information and solicitation of consumer input/instruction.” Ex.
`1003, 6:40–42. To control video playback on video device 218, “control
`device [212] generates URLs, which pass parameters to a CGI application
`running under the HTTP server on the video device.” Id. at 6:43–47. The
`parameters include a URL (MediaURL) that points to the video to be
`displayed, and an IP address (VideoDevice) identifying the video device 218
`on which the video is to be displayed. Id. at 6:49–54.
`Figures 4 and 7 of Chen are reproduced below.
`
`
`
`Figure 4 of Chen is an illustration of a GUI (graphical user interface) that
`allows a user to select a video device on which video data is to be displayed.
`Id. at 7:4–5. Figure 7 of Chen is an illustration of a GUI that allows a user
`to select a video from a list of displayed videos. Id. at 7:60–8:10. The GUI
`shown in Figure 4 of Chen includes “an input field 410 for the consumer to
`specify the video device that is to be controlled,” and a connection button
`412 that “instructs the control device that the video device indicated in the
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`input field is to be provided video data.” Id. at 7:5–11. Input field 410 can
`be “a list of all available video devices to which the consumer has access.”
`Id. at 7:13–15. The list can be “a predetermined list of device names
`maintained on a server” or a list of device names discovered using a
`discovery protocol such as Address Resolution Protocol (ARP). Id. at 7:15–
`17, 7:23–25. In addition, the list can include “names entered by the
`consumer” or previously selected by the consumer. Id. at 7:18–20.
`2. Overview of Elabbady (Ex. 1004)
`Elabbady discloses “methods and systems for sharing media content
`between various devices.” Ex. 1004, 1:14–17. Figure 2A of Elabbady is
`reproduced below.
`
`
`Figure 2A of Elabbady is a block diagram of a media content sharing
`environment having a plurality of networked devices including one device
`configured to provide a media catalog service (CS) and other devices
`configured to provide media library services (LS). Id. at 2:36–40.
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`Device 202 provides a media catalog service 203 to devices 206a-d
`
`over network 204. Ex. 1004, 5:24–29. Network 204 can be established
`using “a Universal Plug-and-Play (UPnP) protocol that provides a
`peer-to-peer network capability that can support various devices through
`wired and/or wireless connections.” Id. at 5:54–58. Devices 202 and 206a-d
`can be any devices capable of sharing media content, including PCs, laptops,
`desktops, notebooks, tablets, PDAs, digital TVs, DVDs, and set-top boxes.
`Id. at 3:23–46, 5:66–6:6. Media content refers to “information that may be
`shared, processed, and/or played or otherwise reproduced,” and includes
`audio, video, and multimedia data. Id. at 6:66–7:5. Any of devices 202 and
`206a-d can play media content. Id. at 8:57–62.
`Devices 202 and 206a-d can also be coupled to media server 210 that
`includes database 212 of shareable media content. Ex. 1004, 5:32–45. Any
`of devices 206a-d (e.g., 206a) can query media catalog 203 on device 202,
`and device 202 will return the URL of a media item responsive to the query
`to device 206a. See, e.g., id. at 9:47–51, 10:11–22. Device 206a can use the
`URL to get the media item from media server 210. Id. at 10:24–38.
`3. Reasons to Combine Chen and Elabbady
`Petitioner’s challenge to claims 1–5, 16, 18, 24–26, 32–38, 40–42, 49,
`51–53, 55, 58, and 59 of the ’183 patent is based on modifying Chen to
`include several teachings from Elabbady.
`First, Petitioner argues that to the extent Chen’s control device 212
`(e.g., a PDA) does not teach selecting itself to play a selected video,
`Elabbady teaches doing so. Pet. 14–15. Relying on its expert, Petitioner
`argues “[i]t would have been obvious to modify Chen’s control device PDA
`to . . . present encoded video data” as taught by Elabbady, because doing so
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`would have combined elements and functions “that [were] known and
`commonly implemented in PDAs at the time.” Id. at 15 (citing Ex. 1002
`¶ 45). Petitioner argues modifying Chen in this way would have provided “a
`more desirable system, one where multiple media browsing devices also
`have the ability to playback selected data, using devices and functionalities
`that were well-known at the time.” Id. Petitioner further argues a person of
`ordinary skill in the art would have found it obvious to “modify Chen’s
`control device 212 PDA with Elabbady’s first device 202 [PDA] having
`video data playback capability. . . . because the PDAs in both systems are
`ordinary, common PDAs, and the implementation of a known function
`would have been straightforward and predictable.” Id. at 15–16.
`Second, Petitioner argues that to the extent Chen’s Address
`Resolution Protocol (ARP) is not a discovery protocol implemented at a
`layer above an internet protocol (IP) layer, Elabbady teaches using UPnP
`discovery protocol, which is implemented above the IP layer. Pet. 16–17.
`Relying on its expert, Petitioner argues it would have been obvious to
`replace Chen’s ARP-based discovery protocol with Elabbady’s UPnP-based
`discovery protocol in order “to provide ‘zero-configuration networking’ of
`Chen’s control and video devices.” Id. at 17 (citing Ex. 1002 ¶ 49).
`Petitioner argues modifying Chen in such a manner “would merely replace
`one technique for identifying available devices—ARP—with another known
`technique for identifying available devices—UPnP,” and the substitution
`would have been obvious because it “provides predictable, if not equivalent,
`results.” Id.
`Patent Owner argues it would not have been obvious “to modify
`Chen’s control device 212 with [] Elabbady’s first device 202 because these
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`two devices are performing completely different and separate functions.”
`PO Resp. 18. Patent Owner argues Chen’s control device 212 “selects video
`data to be played on video device 218,” and Elabbady’s first device 202
`“provides a media catalog service 203which gathers and/or distributes
`information about media content to other devices.” Id.
`We are not persuaded by Patent Owner’s arguments, which do not
`address the specific manner Petitioner has proposed modifying Chen in view
`of Elabbady. Petitioner has not proposed bodily incorporating the entire
`functionality of Elabbady’s first device 202 into Chen’s control device 212.
`Rather, Petitioner has proposed modifying Chen’s control device 212 to
`allow it to display selected videos on itself, as well as on video devices 218,
`because “Elabbady demonstrates how the PDA control device 212 of Chen
`could be modified to include additional functions of playing videos on the
`PDA.” Pet. Reply 24. Instead of addressing the merits of Petitioner’s
`proposed combination, Patent Owner sets forth various alternative
`combinations of Chen and Elabbady, none of which were proposed by
`Petitioner, and explains why those combinations are defective. See PO
`Resp. 17–21. As Petitioner correctly notes, Patent Owner’s arguments
`“fail[] to address the particular combination set forth in the Petition,” and
`fail to “set forth any evidence or expert testimony to demonstrate why one of
`ordinary skill in the art would not have modified Chen in view of Elabbady
`in the manner set forth in the Petition.” Pet. Reply 24.
`Upon consideration of Petitioner’s proposed combination of Chen and
`Elabbady and Patent Owner’s arguments against the same, we are persuaded
`by Petitioner’s reasoning that a person of ordinary skill in the art would have
`found it obvious to modify Chen based on the teachings of Elabbady in the
`
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`manner proposed by Petitioner. See Pet. 14–17. In particular, Petitioner has
`identified familiar elements in Chen and Elabbady that were known in the
`art, and has proposed combining those known elements according to known
`methods or substituting those known elements for others known in the field
`to obtain predictable results. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
`398, 416 (2007).
`4. Comparison of Claims 1–5, 16, 18, 24–26, 32–38, 40–42, 49, 51–
`53, 55, 58, and 59 to the Combination of Chen and Elabbady
`We have reviewed the Petition, Patent Owner’s Response, and
`Petitioner’s Reply. For the reasons that follow, notwithstanding Patent
`Owner’s arguments to the contrary, we are persuaded that Petitioner has
`demonstrated by a preponderance of evidence that claims 1–5, 16, 18, 24–
`26, 32–38, 40–42, 49, 51–53, 55, 58, and 59 are unpatentable over the
`combination of Chen and Elabbady.
`For example, claim 1 recites a method for use in a second
`computerized device set configured for wireless communication with a first
`computerized device set, and requires making available to a user a first user
`interface that allows the user to select a continuous media content to be
`presented to the user, wherein the continuous media content includes a set of
`encoded video data. Ex. 1001, 164:22–32. Petitioner demonstrates how the
`combination of Chen and Elabbady discloses this limitation. See Pet. 9–12,
`18–19. Figure 3 of Chen discloses control device 212 (second device) is in
`communication with video device 218 (first device) over network 216, and
`that network 216 can be a wireless 802.11b network. Ex. 1003 4:45–58,
`5:4–12, Fig. 3. Figure 7 of Chen discloses presenting a first user interface
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`on control device 212 (second device) to allow a user to select encoded
`video for presentation to the user. Id. at 3:36–38, 7:60–8:10, Fig. 7.
`Claim 1 requires making available to the user a second user interface
`that allows the user to select to have the continuous media content presented
`on either one of the first or second computerized device sets. Ex. 1001,
`164:33–36. Petitioner demonstrates how the combination of Chen and
`Elabbady discloses this limitation. See Pet. 11–12, 14–16, 19–20. Figure 4
`of Chen discloses presenting a second user interface on control device 212
`(second device) to allow a user to select a video device from among a list of
`available video devices. See Ex. 1003, 7:4–20, Fig. 4. The list includes “all
`available video devices to which the consumer has access.” Ex. 1003, 7:13–
`20 (emphasis added). Chen’s control device 212 is a video device because it
`can play videos. Id. at 4:47–53. For example, Chen’s control device 212
`can be a tablet, laptop, or desktop computer, and Chen’s video device can be
`the computer’s monitor. Id. at 4:59–60, 5:4–7. Moreover, as discussed in
`§ II.E.3, supra, Petitioner, relying on the opinion of its expert, persuasively
`argues that it would have been obvious to modify Chen to allow control
`device 212 (a PDA) to select itself as the video device on which to play
`selected videos because Elabbady teaches selecting and playing videos on a
`PDA. See Pet. 14–16; Ex. 1002 ¶¶ 43–46.
`Claim 1 requires receiving discovery information from a device
`management discovery protocol implemented at a communication layer
`above the IP layer that allows the second computerized device set to
`determine that the first computerized device set is capable of receiving and
`playing the continuous media content. Ex. 1001, 164:37–45. The ’183
`patent discloses the discovery management protocol can be, for example,
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`UPnP protocol. Id. at 37:35–55. Petitioner demonstrates how the
`combination of Chen and Elabbady discloses this limitation. See Pet. 16–17,
`20–21. Chen discloses using an ARP-like discovery protocol to discover all
`networked video devices capable of playing selected videos. Ex. 1003,
`7:23–25. Elabbady discloses using UPnP protocol to discover all networked
`devices 202 and 206a-d capable of playing selected videos. Ex. 1004, 5:24–
`31, 5:46–65. Petitioner’s expert, Dr. Weissman, declares UPnP protocol is
`implemented at a communication layer above the IP layer. Ex. 1002 ¶ 48.
`Dr. Weissman’s opinion is consistent with Elabbady’s disclosure that UPnP
`“leverages” TCP/IP protocol, implying UPnP is implemented above and
`uses IP protocol. Id. at 5:58–60. As discussed in § II.E.3, supra, Petitioner,
`relying on the opinion of its expert, persuasively argues that it would have
`been obvious to modify Chen by replacing Chen’s ARP-based discovery
`protocol with Elabbady’s UPnP-based discovery protocol because the
`modification would have been a simple substitution of one known device
`discovery technique for another to achieve a predictable result of zero-
`configuration networking. See Pet. 16–17; Ex. 1002 ¶¶ 47–49.
`Claim 1 requires decoding the continuous media content for
`presentation on the second computerized device set when the user selects the
`second media device set using the second user interface. Ex. 1001, 164:46–
`51. Petitioner demonstrates how the combination of Chen and Elabbady
`discloses this limitation. See Pet. 11–12, 21–22. Chen discloses playing a
`selected video on a video device selected from a list of video devices. Ex.
`1003, Fig. 4. The list includes “all available video devices to which the
`consumer has access.” Id. at 7:13–20 (emphasis added). Chen’s control
`device 212 is a video device because it can play videos. Id. at 4:47–53. For
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`example,
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