IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS, INC.,
`Petitioner,
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`v.
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`CONVERGENT MEDIA SOLUTIONS, LLC,
`Patent Owner
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`CASE NO. IPR2016-00047
`PATENT 8,640,183
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`PATENT OWNER’S RESPONSE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS, INC.,
`Petitioner,
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`v.
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`CONVERGENT MEDIA SOLUTIONS, LLC,
`Patent Owner
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`CASE NO. IPR2016-00047
`PATENT 8,640,183
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`PATENT OWNER’S RESPONSE
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`TABLE OF CONTENTS
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`I.
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`Introduction….………………………………………………………….
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`1
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`Chen does not have priority over the priority date of the
`‘183 Patent and is not prior art under 35 U.S.C. §102(e)…….…………
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`1
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`II.
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`III. Chen and Elabbady fail to disclose all the elements of
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`independent claims 1, 58 and 59 of the ‘183 Patent…..………………….. 3
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`There are clear differences between “multimedia data” and “video
`data” as described in Chen….……………………………………… 5
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`Chen teaches that “preview videos” is multimedia data
`and can be played on control device 212…………………..………. 7
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`“Preview video”, a type of multimedia data, is only
`playable on control device 212 using a “first user interface”
`(claim 1 of the ‘183 Patent)……….…,……………………………. 9
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`The purported “second user interface” (claim 1 of the ‘183 Patent)
`is not used to play “preview videos” on the control
`device 212 of Chen…………….…………………………………... 12
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`The control device 212 in Chen cannot be combined with
`the first device 202 of Elabbady…………………………………... 17
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`Summary of why claim 1 is patentable over a combination
`of Chen and Elabbady….……………………..…………………... 21
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`G.
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`Claims 58 and 59 of the ‘183 Patent are patentable over
`Chen and Elabbady for the same reasons as discussed for
`claim 1 of the ‘183 Patent….….…………………………………... 23
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`Certificate on number of words in this Response and Table I…………… 24
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`IV. Conclusion…..…………………………………………..………………. 23
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`V.
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`IPR2016-00047
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`Page ii
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`Patent Owner’s Response
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`TABLE OF AUTHORITIES
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`Statutes
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`35 U.S.C. § 103………………………………………………………………….. 2
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`IPR2016-00047
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`Page iii
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`Patent Owner’s Response
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`LIST OF EXHIBITS
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`EXHIBIT
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`DESCRIPTION
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`2001
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`2002
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`2003
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`2004
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`
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`U.S. Provisional 60/290,788 to “Chen” (previously provided with
`Preliminary Response)
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`U.S. Provisional 60/379,635 to Reisman (282 pages)
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`Annotated version of U.S. Publ. Appl. 2013/0061273 (98 pages)
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`Merriam-Webster’s on-line dictionary at www.merriam-
`webster.com for “connect” (2 pages)
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`IPR2016-00047
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`Page iv
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`Patent Owner’s Response
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`INTRODUCTION
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`The Patent Owner hereby provides a Response in the Inter Partes Review
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`I.
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`
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`IPR2016-00047. The Board issued a decision on April 13, 2016 (Dkt. 14,
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`“Decision”) where inter partes review was instituted for claims 1-5, 16, 18, 24-26,
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`32-38, 40-42, 49, 51-53, 55 and 58-61 of U.S. Patent 8,640,183 (‘183 Patent) as
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`being obvious under 35 U.S.C. § 103(a) based on “Chen” (Ex. 1003) and
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`“Elabbady” (Ex. 1004). No other grounds of unpatentability were instituted for trial.
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`Dkt. 14, Decision, 27:11-12.
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`Patent Owner respectfully requests the cancellation of claims 60-61.
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`Independent claim 60 uses “the first user interface” and “the second user interface”
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`in the last paragraph of claim 60 without first using those terms previously. The
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`other independent claims do not have a similar issue.
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`II. Chen Does Not Have Priority Over The Priority Date of The ‘183 Patent
`And Is Not Prior Art Under 35 U.S.C. § 102(e)
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`In the Preliminary Response, Patent Owner argued that the ‘183 Patent has a
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`priority date to May 10, 2002 because this is the filing date of the provisional patent
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`application 60/379,635 (“‘635 Prov.”). Dkt. 10, Preliminary Response, starting on p.
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`3. The filing date of the ‘635 Prov. precedes the filing date of Chen, which was filed
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`on May 14, 2002. If the priority date of the ‘183 Patent precedes the filing date of
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`Chen, Chen cannot be considered prior art under 35 U.S.C. §102(e). Although the
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`Patent Owner’s Response
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`IPR2016-00047
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`Page 1
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`Patent Owner claimed in the Preliminary Response that the ‘635 Prov. was 283
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`pages in length, no correlation was provided in the Preliminary Response to show
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`how certain claims of the ‘183 Patent were supported by the ‘635 Prov. Dkt. 14,
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`Decision, 10:3-17. This is being rectified herein to show support for the claims
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`under review in this proceeding so that the Board can clearly see that Chen is not
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`prior art under 35 U.S.C. § 103(a).
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`The ‘635 Prov. being provided in Exhibit 2002 was directly downloaded from
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`the USPTO’s PAIR website system. The ‘635 Prov. is 282 pages in length, and
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`contains 156 pages of specification, one page that contains Appendix A (on page
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`157), and 125 pages of claims.
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`The ‘183 Patent was filed on October 26, 2012, and was assigned Application
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`number 13/662,213 (‘213 Appl.), which claimed priority to the ‘635 Prov., and 4
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`other continuations and provisionals. The ‘213 Appl. was published on March 7,
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`2013 as U.S. Publ. Appl. 2013-0061273 (‘273 UPA). The ‘213 Appl. contains 10
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`figures, of which the first six figures 1-6 are the same as contained in the ‘635 Prov.
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`Figs. 7-10 do not appear in ‘635 Prov.
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`Exhibit 2003 is a copy of the ‘273 UPA (the published version of the ‘213
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`Appl.) which contains strike-outs for those portions of text that do not appear in the
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`‘635 Prov. In Exhibit 2003, paragraphs 2-10 in ‘273 UPA are underlined because
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`these paragraphs originally appeared in the ‘635 Prov. starting on page 35.
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`IPR2016-00047
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`Page 2
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`Patent Owner’s Response
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`One can see the many similarities in that the discussion about Figs. 1-6 from
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`paragraph 96 to paragraph 214 of the ‘213 application is quite to the similar to the
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`‘635 Prov. The largest difference starts on page 68 of the ‘213 application and runs
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`through to the end; this part of the specification of the ‘213 application does not
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`appear in the ‘635 specification. Appendix A on page 157 of the ‘635 provisional is
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`almost identical to the Appendix A on page 87 of the ‘213 application.
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`Attached at the end of this Response is Table I showing claims 1-5, 16, 18,
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`24-26, 32-38, 40-42, 49, 51-53, 55 and 58-61 and where each of the provisions or
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`elements of the claims is supported by the ‘635 Prov. The bottom line is that the
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`‘635 Prov. provides support for claims 1-5, 16, 18, 24-26, 32-38, 40-42, 49, 51-53,
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`55 and 58-61, entitling the ‘183 Patent to the filing date of the ‘635 Prov., that date
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`being May 10, 2002. Thus, the ‘183 Patent priority has priority over Chen’s filing
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`date of May 14, 2002, and Chen therefore is not prior art and cannot be used for an
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`obviousness rejection. It is respectfully requested that the Board find that Chen is
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`not prior art, thus dismissing this inter partes review for the lack of prior art
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`preceding the priority date of the ‘183 Patent to be used in the obviousness rejection.
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`
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`III. Chen and Elabbady fails to disclose all the elements of independent
`claims 1, 58 and 59 of the ‘183 Patent
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`There are four independent claims in the ‘183 Patent, those claims being
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`claims 1, 58, 59 and 60. Claim 60 is cancelled or withdrawn pursuant to this
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`IPR2016-00047
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`Page 3
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`Patent Owner’s Response
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`Response. Let’s first focus on claim 1 and see what is required before comparing
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`claim 1 to the other independent claims 58 and 59.
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`Claim 1 of the ‘183 Patent requires:
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`[1.B] 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;
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`[1.D] 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…
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`[1.E] 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…
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`The operative question is not whether a device or set of devices can play some
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`kind of video in some kind of way, but whether there is a suggestion of selecting and
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`then effecting the playing of a particular video program in the claimed manner. No
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`combination of the systems in Chen and Elabbady enable that. Chen does not give
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`the user an interface that enables a particular selection of the “video data,” to be
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`played on whichever of the “first computerized device set” or “second
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`computerized device set” the user selects. Chen and Elabbady lack the “second
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`user interface” and neither enable any of the “video data” (that selection or
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`otherwise) to be presented on a “second computerized device set”.
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`In the specification of the ‘183 Patent, and the ‘635 Prov., “continuous media
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`content” is defined to include video data, audio data, animation, virtual reality data,
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`etc. Ex. 2002, 27:19-28:9. “Video data” is also defined in the ‘183 Patent and the
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`‘635 Prov. to refer to “all forms of moving images, with or without accompanying
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`sound, including analog and digitally coded video…” Ex. 2002, 28:10-23. Thus
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`“continuous media content” is a broader term than “video data”.
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`This Response will first examine the differences between “multimedia data”
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`and “video data” as taught in Chen, explain what is meant by “preview videos” and
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`how such multimedia data is only playable on the control device 212 using a “first
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`user interface”. Second, this Response will explain why the “second user interface”
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`cannot be used to play “preview videos” and “video data” on the control device 212
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`of Chen. Third, this Response will explain how the control device 212 of Chen
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`cannot be combined with the first device 202 of Elabbady. Lastly, this Response
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`will explain that claims 58 and 59 are patentable over Chen and Elabbady for the
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`same reasons as provided for claim 1.
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`A.
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`There are clear differences between “multimedia data” and “video
`data” as described in Chen.
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`Chen states the following about “multimedia data” and “video data”:
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`Video data includes that data used to display the video source material
`100 on a video device (i.e., the video itself). Multimedia data includes
`multimedia content data, which is data based on the content of the video
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`data, such as content specific index data, for example, an index of select
`keywords referenced in the video data. Examples of multimedia content
`data include still images (e.g., images of a scene from a movie), preview
`videos (e.g., a theatrical trailer), detailed information about the video
`data (e.g., names of actors in a video program, the cinematography of
`the director of a video program), and the like. Multimedia data may also
`include metadata, which is other data used to index both the video data
`and multimedia data, such as the title of a movie, the name of a song, or
`the like. (Ex. 1003, 3:19-32)
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`It is critically important to understand that Chen makes a clear and distinction
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`between multimedia data and video data. Ex. 1003, 3:19-28. Multimedia data and
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`video data are not interchangeable words in Chen. Whenever Chen mentions the
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`control device 212 (shown in Fig. 3 of Chen reproduced below), Chen specifically
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`mentions that multimedia data is displayed on the graphic display 310 of the control
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`device 212. Ex. 1003, 4:50-55 (“The control device is capable of … playing
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`multimedia data…”); 6:22-28 (“The control device 212 includes a graphic display
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`which displays multimedia data…”). Whenever Chen mentions the video device
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`218 (shown in Fig. 3 of Chen reproduced below), Chen specifically mentions that
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`video data is displayed on the video display 316. See e.g., Ex. 1003, 5:4-13; 6:19-
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`22.
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`As described in Chen, the multimedia server 222 includes the multimedia
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`database 140 which stores multimedia data about the “video data.” Ex. 1003, 5:17-22;
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`6:26-31. The video server 220 includes a video database 322 which stores the “video
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`data.” Ex. 1003, 5:14-17; 6:22-27.
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`Thus, Chen teaches that multimedia data is separate and distinct from the
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`“video data,” and that multimedia data is displayable on the control device 212 while
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`the “video data” is displayable on the video device 218.
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`B. Chen teaches that “preview videos” is multimedia data and can be
`played on control device 212.
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`Chen states that “multimedia data” includes “multimedia content data” which
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`also includes “preview videos (e.g., a theatrical trailer)”. Ex. 1003, 3:19-29. The
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`control device 212 is capable of “playing multimedia data such as, preferably, still
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`images, text, preview videos, or the like.” Ex. 1003, 4:50-53. “Preview videos” is an
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`awkward term, is only used twice in Chen, and is undefined in Chen. An example of a
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`“preview video” is a theatrical trailer, which is a trailer or a movie trailer. What is clear
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`therefore, is that Chen can play “preview videos” on the control device 212.
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`But let’s be clear. Chen states that states that control device 212 can play
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`“multimedia data” which includes “preview videos”, but never states that control device
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`212 can play the “video data”. Id. Nowhere in Chen does it describe the control device
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`212 as having the capability of playing “video data”, only “preview videos” – which are
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`two entirely different types of data. In Chen, the only relationship between “preview
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`videos” and “video data” is that the “preview videos” are a type of multimedia data
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`which is associated with particular “video data”. Ex. 1003, 5:58-62; 6:11-21.
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`It was alleged by the Petitioner in the Petition and stated in the Decision by
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`Board that “Chen discloses a control device such as a PDA that browses video data
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`and plays videos.” EX1003 at 3:24-26, 4:50-53.” Dkt. 2, Petition, 14:15-16; Dkt.
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`14, Decision, 16: 2-6. This statement is factually incorrect because Chen only
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`teaches that control device 212 can only browse and play “multimedia data” which
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`includes “preview videos” (e.g., theatrical trailers, movie trailers). Ex. 1003, 4:50-
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`53; 5:29-31; 5:58-62; 6:12-18. “Preview videos” is a type of multimedia data which
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`is stored in the multimedia data 328 of multimedia server 222, and is entirely distinct
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`from the video database 322 of video server 220. Ex. 1003, 5:4-28. So when the
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`Petitioner alleges that control device 212 can browse “video data” and “play videos”,
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`a correct factual statement is that the control device 212 can browse multimedia
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`data including “preview videos” and can play preview videos, a type of multimedia
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`data. There is no suggestion that control device 212 can play the “video data”.
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`C.
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`“Preview video”, a type of multimedia data, is only playable on
`control device 212 using a “first user interface” (claim 1 of ‘183
`Patent).
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`As discussed above, Chen refers to “preview videos” as a type of multimedia
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`
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`data, and such multimedia data is displayable on the graphic display 310 of control
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`device 212. Claim 1 of the ‘183 Patent requires “making available to a user a first
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`user interface that allows the user to select a continuous media content to be
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`presented to the user, wherein the continuous media content includes a set of
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`encoded video data.” The Petitioner alleges that the “first user interface” is what is
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`shown in Fig. 7 of Chen. Dkt. 2, Petition, p. 19, 2nd col., 2nd ¶). Fig. 7 of Chen is
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`reproduced below:
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`The listing shown in Fig. 7 is the result of a search of multimedia data by a
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`user entering a search term in Fig. 5 of Chen, or selecting a link on the topic list in
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`Fig. 6 of Chen. Ex. 1003, 7:62 – 8:3. There are two important points to be made.
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`First, the screen view shown in Fig. 7 is a type of “first user interface” as required by
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`claim 1 and alleged to be so by the Petitioner. Second, displaying “preview videos”
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`(a type of multimedia data) on the control device 212 would occur in a similar way
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`to how the listings are shown in Fig. 7 of Chen. For example, a user by entering a
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`search term in Fig. 5 of Chen, or selecting a link on a topic list in Fig. 6 of Chen, one
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`or more informational items from the multimedia database that relate to the “video
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`data” would be shown on the control device 212. Multimedia data relating to an
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`item of the “video data” might include “preview videos” that are indicated to be
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`available, in a manner not clearly disclosed, but presumably similar to Figs. 7-10 of
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`Chen. A user could presumably select one of these “preview videos”, and play the
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`trailer on the control device 212. But it requires a separate step, addressed in section
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`D, below, to allow the user to somehow select that the “video data” that is associated
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`with, but distinct from, the “preview video” (i.e., the trailer) is to be played. It is
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`plain to see that playback of the “video data” is effected on the video device 218 that
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`is external to the control device 212 (that is, the control device 212 can be connected
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`to any selected external video device 218 via a separate interface – see FIG. 4 and
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`discussion thereof below. As explained below, Fig. 4’s user interface clearly
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`pertains to the “video data” that is in the video database – there is no reason to
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`suggest it can also be applied to the “preview video” that is in the separate
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`multimedia database. Thus, the “first user interface” (claim 1 of the ‘183 Patent) is
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`used for playing multimedia data including “preview videos” or trailers – which,
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`again, are not the “video data” – on the control device 212.
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`It would have been helpful if Chen would have shown an example of
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`“preview videos,” and how they are indicated as available to be played, in one of the
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`figures, but that is not the case. It would also have been helpful if Chen would have
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`explained how “preview videos” are formatted and stored in the multimedia database
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`328 of multimedia server 322 and how they are playable on the control device 212.
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`There is no reason to think that the user interface that enables a “preview
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`video” (trailer) to be played on control device 212 is anything other than a simple
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`click on an indication that it is available, just as is presumably the case for the other
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`kinds of multimedia data for which more detail is provided in Figs. 5-10 of Chen
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`depicting an Internet Explorer-based user interface. Although important details are
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`missing in Chen, what is clearly taught in Chen is that the control device 212
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`displays the multimedia data or “preview videos” from which the user can select,
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`and then, as a separate and different kind of action, the “video data” associated
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`with the “preview video” is caused to be played on the external video device 218 via
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`a separate (second) user interface. As explained in the next section, that second user
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`interface is only used to select “video data” to be played back on an external or
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`separate video device 218, which connection is effected by virtue of the user
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`clicking on the “Connect” button in the separate user interface shown in Fig. 4. An
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`entirely separate user interface (as illustrated in Figs 5-10 of Chen) is used to select
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`and play “multimedia” data, including “preview videos” on the control device 212.
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`D.
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`The purported “second user interface” (claim 1 of ‘183 Patent) is
`not used to play “preview videos” on the control device 212.
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`In this section, let’s examine what a “second user interface” requires in claim
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`
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`1 of the ‘183 Patent, followed what Petitioner is relying upon in Chen for describing
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`the purported “second user interface” in Chen, and then explain why the control
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`display screen shown in Fig. 4 of Chen is not a “second user interface” for playing
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`“preview videos”.
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`In claim 1 of the ‘183 Patent, the following is required: “making available to
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`the user a second user interface that allows the user to select to have the continuous
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`media content presented on either one of the first computerized device set and the
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`second computerized device set.”
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`In the Petition, the Petitioner alleges that:
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`• “second user interface” is the control display screen illustrated in Fig. 4 of
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`Chen. Dkt 2, Petition, p. 19, 2nd col. of 1.B, 2nd ¶.
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`• “first computerized device set” is the control device 212 of Chen. Dkt 2,
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`Petition, p. 18, 2nd col. of 1.P, 1st ¶.
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`• “second computerized device set” is the video device 218. Dkt 2, Petition, p.
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`18, 2nd col. of 1.P, 1st ¶.
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`Figure 4 of Chen is reproduced here with the annotations previously provided in the
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`Preliminary Response:
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`
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`What Petitioner is alleging that the control display screen (shown in Fig. 4), allows
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`the control device 212 to have “continuous media content” presented either on the
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`control device 212 or the video device 218. The complication that arises is that
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`“continuous media content” can refer to either “multimedia data” or “video data”.
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`The issue then becomes, does the control display screen of Fig. 4 of Chen (the
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`alleged “second user interface”) allow the user to select that “multimedia data” or
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`the “video data” (continuous media content) is to be displayed on the control device
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`212 (second computerized device set) or on the video device 218 (first computerized
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`device set)? Both cases will be analyzed separately below.
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`
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`First, Chen does not teach that the Fig. 4’s control display screen (the alleged
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`second user interface) can be used for presenting “multimedia data” including
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`“preview videos” (continuous media content) at all -- whether on the control device
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`212 (second computerized device set) or video device 218 (first computerized device
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`set). As explained previously, multimedia data including “preview videos” is only
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`displayed on the control device 212 using the “first user interface”, similar to what is
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`shown in the Fig. 7 and as explained above. Chen does not describe or suggest that
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`the Fig. 4’s control display screen could be used to display multimedia data at all,
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`whether on the video device 218 or anywhere else. Multimedia data is only
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`displayed on the control device 212, not on the video device 218. Ex. 1003, 4:47-
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`55; 5:58-62; 6:11-21, and as outlined in the previous section, there is no reason to
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`think Fig. 4’s control display screen has anything to do with that.
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`Second, Chen does not teach that the Fig. 4’s control display screen (the
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`alleged second user interface) can be used for presenting “video data” (continuous
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`media content) on either one of” the control device 212 (second computerized device
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`set) or video device 218 (first computerized device set) for the following four
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`reasons.
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`IPR2016-00047
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`Patent Owner’s Response
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`The first reason is that, as explained above, “video data” can only be
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`displayed on the video device 218, not on control device 212. Ex. 1003, 5:4-13;
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`5:58-62; 6:18-21. Chen does not describe or suggest that control device 212 could
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`ever display video data. Chen describes that control device 212 is only capable of
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`displaying multimedia data and “preview videos”, never video data.
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`The second reason is that it is erroneous to state that control device 212 can be
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`a “video device” because control device 212 can play multimedia data such as
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`“preview videos”. Chen clearly teaches throughout its specification that video
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`device 218 and control device 212 are two separate and distinct parts and are not
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`interchangeable. Chen describes that the control device 212 is a distinct and
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`separate unit from the video device 218. Ex. 1003, Figs. 2, 3; 4:47 – 5:13; 6:11-37.
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`Nowhere in Chen does it mention that the control device 212 can be a video device
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`218 or vice versa. To say that the control device 212 is a video device is never
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`stated nor implied anywhere in Chen.
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`
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`The third reason is that control device 212 is unable to play “video data”,
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`because the “connect” button 412 on the Fig. 4’s control display screen (reproduced
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`above) only allows control of a separate device. “Connect” is defined by Merriam
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`Webster in Exhibit 2004 to mean “to join (two or more things) together”. The
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`connect button 412, upon selection, instructs the control device 212 that the video
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`device 218 indicated in the input field 410 is to be provided “video data”. Ex. 1003,
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`7:9-11. It is important to note that the term “video data” was specifically used in
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`this section of Chen. Id. As emphasized before, Chen teaches that “video data” is
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`distinct from “multimedia data”. Ex. 1003, 3:19-20; 6:19-22; see also, Section A,
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`above. The control device 212 of Chen was never intended to play the “video data,”
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`only multimedia data. Ex. 1003, 3:21-42; 6:11-19.
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`The fourth reason is that in another part of Chen, it explicitly states that the
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`control device 212 is to be used to play “video data” on a “separate device”. Ex.
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`1003, 9:12-18. Chen explicitly states that its invention “finds application in self-
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`contained home entertainment system and pay-per-view video services on-the-go
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`(e.g., airport) where a consumer uses a control device to find/select video or
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`multimedia content to be delivered to a separate device”. Id. Chen explicitly stated
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`that the control device 212 selects a separate device to receive selected video
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`content. Thus, the control device screen shown in Fig. 4, associated with the control
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`device 212, is to be used for selecting a separate device for receiving selected video
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`content.
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`
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`Therefore for these four reasons, Chen does not teach or suggest that the
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`control display screen shown in Fig. 4 of Chen (the alleged “second user interface”)
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`allows a user to select to have multimedia data or video data (continuous media
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`content) presented on either one of the control device 212 (second computerized
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`device set) or the video device 218 (first computerized device set). Thus, control
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`device 212 of Chen lacks a “second user interface” as required by claim 1 of the
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`‘183 Patent.
`
`
`E.
`
`The control device 212 in Chen cannot be combined with the first
`device 202 of Elabbady.
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`
`As discussed in the previous section 4, Chen’s control device 212 (second
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`
`
`computerized device set) is incapable of playing the “video data” using Fig. 4’s
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`control display screen (alleged “second user interface”), or any other user interface.
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`Petitioner alleges that if the control device 212 in Chen is incapable of playing
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`“video data”, then Elabbady discloses this element. Dkt. 2, Petition, 14:15-18.
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`However, Elabbady fails to make up for the deficiency of Chen because what the
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`Petitioner references in Elabbady is not something akin to the control device 212 of
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`Chen, but a completely different device, namely a device 202 which provides media
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`catalog service (CS). As explained in detail below, in Elabbady, all of the claimed
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`actions of both the claimed first device set and the claimed second device set are
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`performed by a single device 300, not by two distinct device sets.
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`
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`To understand the fault in Petitioner’s argument, let’s examine it in order. First,
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`the Petitioner alleges that the control device 212 (i.e., the second computerized device
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`set) of Chen can be a PDA. Dkt. 2, Petition, 14:15-18. Second, the Petitioner alleges
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`that the first device 202 (i.e., the second computerized device set) in Elabbady can be a
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`PDA and may play media content, such as video data. Dkt. 2, Petition, 15:1-6. Lastly,
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`the Petitioner alleges that it would have been obvious to modify the PDA of the control
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`Patent Owner’s Response
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`IPR2016-00047
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`Page 17
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`
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`device 212 of Chen with the functionality of the PDA of the first device 202 of
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`Elabbady. Dkt. 2, Petition, 15:7-19. However, this is not the case. It would not have
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`been obvious to modify Chen’s control device 212 with the Elabbady’s first device 202
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`because these two devices are performing completely different and separate functions.
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`As stated before, the operative question is not whether a device or set of devices can
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`play some kind of video in some kind of way, but whether there is suggestion of
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`selecting and then effecting the playing of a particular video program in the claimed
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`manner. No combination of Chen’s and Elabbady’s systems enable that.
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`
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`The control device 212 (i.e., PDA) of Chen is where a user selects video data to
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`be played on video device 218. Ex. 1003, 5:58-62. The first device 202 (i.e., PDA) of
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`Elabbady does not perform a similar function at all. The first device 202 of Elabbady
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`provides a media catalog service 203 which gathers and/or distributes information about
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`media content to other devices. Ex. 1004, 6:7-23. In Chen, this function is performed
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`by multimedia server 222, not control device 212. Ex. 1003, 5:17-22. Thus, it would
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`not have been obvious to combine first device 202 of Elabbady with the control device
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`212 of Chen because they perform two separate and completely disparate functions –
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`selecting video data to watch (Chen) versus providing media content to other devices
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`(Elabbady).
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`
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`In Elabbady, the user control point (UCP) is to where the media catalog is sent
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`from the first device 202, wherein a user can select shared media data to watch, and
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`where a license can be obtained to watch the shared media data if one does not exist.
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`IPR2016-00047
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`Patent Owner’s Response
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`Ex. 1004, Abstract; 2:9-16; 9:56-58; 10:23-29; 12:18-25. As can be seen in Figures 2A,
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`2B and 3 of Elabbady, the UCP 315 is part of device 300. UCP 315 is where the shared
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`media data is selected from the media catalog provided by first device 202. Id. Once
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`the selection is made and a proper license has been obtained, media player 324 decodes
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`and displays the shared media data. Ex. 1004, 10:40-63.
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`
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`In Elabbady, the UCP 315 of device 300 is similar to the functionality performed
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`by Chen’s control device 212. Elabbady’s media player 324 of device 300 provides the
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`functionality of video device 218 of Chen. In essence, the functionality of Chen’s
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`control device 212 and video device 218 are combined into a single device 300 of
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`Elabbady. In other words, the ability to select a video (on the control device 212 in
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`Chen) and the ability to watch encoded video data (on the video device 218 in Chen), is
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`performed by the same device 300. Thus Elabbady’s device 300 corresponds to control
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`device 212 of Chen, not the first device 202 as alleged by the Petitioner.
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`
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`If Elabbady and Chen were somehow combined together, Chen’s control device
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`212 and video device 218 would be combined into Elabbady’s device 300, while
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`Chen’s multimedia server 222 would be combined into Elabbady’s first device 202. By
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`combining devices 212 and 218 into one device 300, it eliminates either the first
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`computerized device set or the second computerized device set as required by claim 1.
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`The multimedia server 222, which is the first device 202 of Elabbady, is neither the first
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`or second computerized device set required by claim 1. Thus the obviousness rejection
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`IPR2016-00047
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`Patent Owner’s Response
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`completely falls apart since one of the first or second computerized device sets is
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`missing in the combination of Chen and Elabbady.
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`
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`Those skilled in the art would find it difficult to combine Chen and Elabbady
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`since the system architectures and methodologies are quite different from each other.
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`Chen relies on a control device 212 that is able to view multimedia data from
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`multimedia server 222 to select video data from video server 220, and then select any
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`video device 218 to play video data transmitted by the video server 220 after first being
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`decoded by the video decoder 318. Ex. 1003, 5:58-67. In contrast, Elabbady relies on
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`UCP 315 contained in device 300 to select video data from the media catalog service
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`2
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