Filed on behalf of: Unified Patents Inc.
`By: P. Andrew Riley
`Joshua D. Goldberg
`Kai Rajan
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001–4413
`Telephone: 202-408-4000
`E–mail:
`Convergent-183-IPR@finnegan.com
`
`Jonathan Stroud
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, D.C., 20009
`Telephone: 202-805-8931
`E–mail:
`jonathan@unifiedpatents.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner
`
`v.
`
`CONVERGENT MEDIA SOLUTIONS, LLC,
`Patent Owner
`____________
`
`IPR2016-00047
`Patent 8,640,183
`Method and Apparatus for Browsing Using Alternative Linkbases
`____________
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 8,640,183
`
`
`
`
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ................................................................................... 1
`
`II. MANDATORY NOTICES ....................................................................... 2
`
`A.
`
`B.
`
`C.
`
`Real Party-in-Interest ....................................................................................... 2
`
`Related Matters ................................................................................................. 2
`
`Lead and Back-Up Counsel, and Service Information ............................. 3
`
`III. FEE PAYMENT ....................................................................................... 3
`
`IV.
`
`STATEMENT OF PRECISE RELIEF REQUESTED .......................... 3
`
`A.
`
`B.
`
`C.
`
`Claims for Which Review Is Requested ...................................................... 3
`
`Statutory Grounds of Challenge .................................................................... 3
`
`The Level of Ordinary Skill in the Art at the Time of the
`Claimed Invention ............................................................................................ 4
`
`V.
`
`THE ’183 PATENT .................................................................................. 4
`
`A. Overview of the Disclosure ............................................................................ 4
`
`B.
`
`Prosecution History .......................................................................................... 5
`
`VI. GROUNDS FOR STANDING ................................................................. 6
`
`VII. STATEMENT OF PRECISE RELIEF REQUESTED FOR
`EACH CLAIM CHALLENGED .............................................................. 6
`
`A.
`
`B.
`
`C.
`
`Claims for Which Review is Requested ...................................................... 6
`
`Statutory Grounds of Challenge .................................................................... 7
`
`Claim Construction .......................................................................................... 7
`
`1.
`
`
`“Unified Media Selection and Presentation User
`Interface” ................................................................................................ 7
`
`ii
`
`

`

`A.
`
`B.
`
`E.
`
`VIII. CLAIMS 1-5, 16, 18, 24-26, 32-38, 40-42, 49, 51-53, 55, and 58-61 OF
`THE ’183 PATENT ARE UNPATENTABLE UNDER 35 U.S.C.
`§ 103(a) ...................................................................................................... 9
`Chen is Prior Art Under 35 U.S.C. § 102(e) ............................................... 9
`Elabbady is Prior Art Under 35 U.S.C. § 102(e) ....................................... 9
`C. Meade is Prior Art Under 35 U.S.C. § 102(e) ............................................ 9
`D. Ground 1: Chen in view of Elabbady renders claims 1-5, 16,
`18, 24-26, 32-38, 40-42, 49, 51-53, 55, and 58-61 obvious .................... 9
`Implementation of Chen’s Second Computerized Device
`Set ........................................................................................................... 14
`Implementation of Chen’s Discovery Protocol ............................ 16
`Ground 2: Meade in view of Elabbady renders claims 1, 16, 18,
`24, 32, 33, 37, 38, 41, 55, 58, 59, and 60 obvious ................................... 37
`Implementation of Meade’s Second Computerized
`Device Set ............................................................................................. 40
`Implementation of Meade’s Discovery Protocol ......................... 42
`Implementation of Meade’s Resource Indicator .......................... 44
`
`1.
`
`
`2.
`
`
`1.
`
`
`2.
`
`
`3.
`
`
`IX. CONCLUSION....................................................................................... 60
`
`
`
`
`
`
`iii
`
`

`

`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Convergent Media Solutions LLC v. AT&T Inc.,
`3-15-cv-02156 (N.D. Tex.) .................................................................................. 2
`
`Convergent Media Solutions LLC v. Hulu, Inc.,
`3-15-cv-02158 (N.D. Tex.) .................................................................................. 2
`
`Convergent Media Solutions LLC v. Netflix Inc.,
`3-15-cv-02160 (N.D. Tex.) .................................................................................. 2
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 7
`
`Federal Statutes
`
`35 U.S.C. § 103(a) ............................................................................................. 4, 7, 9
`
`35 U.S.C. § 311 ...................................................................................................... 3, 7
`Regulations
`
`37 C.F.R. § 42.8(b)(1) ................................................................................................ 2
`
`37 C.F.R. § 42.15(a) ................................................................................................... 3
`
`37 C.F.R. § 42.100(b) ................................................................................................ 7
`
`37 C.F.R. § 42.103(a) ................................................................................................. 3
`
`37 C.F.R. § 42.104(a) ................................................................................................. 6
`
`
`
`
`
`
`
`iv
`
`

`

`LIST OF EXHIBITS
`
`Description
`Exhibit
`EX1001 U.S. Patent No. 8,640,183 B2 to Richard Reisman
`EX1002 Declaration of Jon Weissman, Ph.D.
`EX1003 U.S. Patent No. 8,479,238 B2 to Chen, et al. (“Chen”)
`EX1004 U.S. Patent No. 7,483,958 B1 to Elabbady, et al. (“Elabbady”)
`EX1005 U.S. Patent Application Publication No. 2003/0073412 to William
`K. Meade, II (“Meade”)
`EX1006 Merriam-Webster’s Collegiate Dictionary (10th ed. 2000) (definition
`of “unified”)
`EX1007 Excerpts of Prosecution History for U.S. Patent No. 8,640,183
`EX1008 Petitioner’s Voluntary Interrogatory Responses
`EX1009 Microsoft Computer Dictionary (5th ed. 2002) (definitions of
`“UPnP” and “URL”)
`
`
`
`
`
`v
`
`

`

`
`
`I.
`
`IPR2016-00047
`U. S. Patent 8,640,183
`
`
`INTRODUCTION
`Petitioner Unified Patents Inc. (“Unified”) requests Inter Partes Review
`
`(“IPR”) of claims 1-5, 16, 18, 24-26, 32-38, 40-42, 49, 51-53, 55, and 58-61 of
`
`U.S. Patent No. 8,640,183 (“the ’183 patent”) assigned to Convergent Media
`
`Solutions, LLC (“Convergent”) (EX1001).
`
`The ’183 patent, which has a filing date of October 26, 2012 and a priority
`
`date of May 10, 2002, describes systems and methods for navigating hypermedia
`
`using multiple coordinated input/output device sets. EX1001 at Abstract. The ’183
`
`patent suggests that it uniquely fills gaps in interactive media control, id. at
`
`1:30-35, 2:63-3:4, by providing user interfaces for controlling what resources (e.g.
`
`media) are presented on which device sets. Id. at 3:15-20.
`
`Technologies that enable media selection and device selection were well-
`
`known in the art. The claimed “first and second computerized device sets” are
`
`devices such as a television and personal digital assistant, respectively–electronic
`
`devices that have been used for decades. As the ’183 patent concedes, innovators
`
`since the 1990s focused on “converging” television and computer technologies. Id.
`
`at 1:30-32. Other facets of the ’183 patent, such as discovery information and
`
`resource indicators, are known in Universal Plug and Play and networked media
`
`systems. Indeed, the ’183 patent specification concedes that aspects of the claims
`
`are based on known standards and prior art systems. See e.g., id. at 37:46-55. Thus,
`
`1
`
`

`

`
`
`IPR2016-00047
`U. S. Patent 8,640,183
`
`
`technologies that enable selecting media for presentation on another device were
`
`well-known prior to the application for the ’183 patent and its priority date.
`
`Years before the ’183 patent’s effective filing date, a myriad of prior art
`
`patents and printed publications disclosed the claimed combination of elements. As
`
`this petition demonstrates, the disclosures of Chen (EX1003), Elabbady (EX1004),
`
`and Meade (EX1005), among other patents and publications, warrant cancellation
`
`of claims 1-5, 16, 18, 24-26, 32-38, 40-42, 49, 51-53, 55, and 58-61.
`
`II. MANDATORY NOTICES
`A. Real Party-in-Interest
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Unified is the real
`
`party-in-interest, and further certifies that no other party exercised control or could
`
`exercise control over Unified’s participation in this proceeding, the filing of this
`
`petition, or the conduct of any ensuing trial. In this regard, Unified has submitted
`
`voluntary discovery. See EX1008
`
`(Petitioner’s Voluntary
`
`Interrogatory
`
`Responses).
`
`B. Related Matters
`Upon information and belief, the ’183 patent was asserted in the following
`
`cases: Convergent Media Solutions LLC v. AT&T Inc., 3-15-cv-02156 (N.D. Tex.),
`
`Convergent Media Solutions LLC v. Hulu, Inc., 3-15-cv-02158 (N.D. Tex.), and
`
`Convergent Media Solutions LLC v. Netflix Inc., 3-15-cv-02160 (N.D. Tex.).
`
`
`
`2
`
`

`

`
`
`IPR2016-00047
`U. S. Patent 8,640,183
`
`
`C. Lead and Back-Up Counsel, and Service Information
`The signature block of this petition designates lead counsel, backup counsel,
`
`and service information for each petitioner. Unified designates P. Andrew Riley
`
`(Reg. No. 66,290) as lead counsel and designates Joshua L. Goldberg (Reg. No.
`
`59,369) and Kai Rajan (Reg. No. 70,110) as backup counsel. All can be reached at
`
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, 901 New York Avenue,
`
`NW, Washington, DC 20001-4413 (phone: 202.408.4000; fax: 202.408.4400).
`
`Unified also designates as backup counsel Jonathan Stroud (Reg. No. 72,518).
`
`Petitioner consents to e-mail service at Convergent-183-IPR@finnegan.com.
`
`III. FEE PAYMENT
`The required fees are submitted under 37 C.F.R. §§ 42.103(a) and 42.15(a).
`
`If any additional fees are due during this proceeding, the Office may charge such
`
`fees to Deposit Account No. 06–0916.
`
`IV. STATEMENT OF PRECISE RELIEF REQUESTED
`A. Claims for Which Review Is Requested
`Petitioner requests IPR and cancellation of claims 1-5, 16, 18, 24-26, 32-38,
`
`40-42, 49, 51-53, 55, and 58-61 of the ’183 patent under 35 U.S.C. § 311.
`
`Statutory Grounds of Challenge
`
`B.
`Petitioner requests that the Board hold claims 1-5, 16, 18, 24-26, 32-38, 40-
`
`42, 49, 51-53, 55, and 58-61 unpatentable as follows:
`
`
`
`3
`
`

`

`
`
`
`
`IPR2016-00047
`U. S. Patent 8,640,183
`
`
`1
`
`Ground Proposed Statutory Rejections for the ’183 Patent
`Claims 1-5, 16, 18, 24-26, 32-38, 40-42, 49, 51-53, 55,
`and 58-61 are obvious under § 103(a) over U.S. Patent
`No. 8,479,238 to Chen, et al. (“Chen”) in view of U.S.
`Patent No. 7,483,958 to Elabbady, et al. (“Elabbady”).
`Claims 1, 16, 18, 24, 32, 33, 37, 38, 41, 58, 59, and 60
`are obvious under § 103(a) over U.S. Patent
`Application Publication No. 2003/0073412 to William
`K. Meade, II (“Meade”) in view of Elabbady.
`
`2
`
`Exhibit No(s).
`
`EX1003,
`EX1004
`
`EX1005, EX
`1004
`
`C. The Level of Ordinary Skill in the Art at the Time of the Claimed
`Invention
`
`The ’183 patent claims priority to U.S. Provisional Application No.
`
`60/379635, filed May 10, 2002. At that time, a person having ordinary skill in the
`
`art (hereafter, “POSA”) of hypermedia browsing and control (i.e., in the art for the
`
`’183 patent) would have (i) a B.S. degree in computer engineering, computer
`
`science, or equivalent training, and (ii) approximately two years of experience or
`
`research related to computer networking. See EX1002 at ¶ 23.
`
`V. THE ’183 PATENT
`A. Overview of the Disclosure
`The ’183 patent describes systems and methods for navigating hypermedia
`
`using multiple coordinated input/output device sets. EX1001 at Abstract. The
`
`device sets may include personal computing (PC) devices such as Personal Digital
`
`Assistants (PDAs), and televisions (TVs). Id. at 16:28-43, 19:32-47.
`
`Hypermedia may include “any kind of media that may have the effect of a
`
`non-linear structure of associated elements,” and includes “graphics, video, and
`
`4
`
`

`

`
`
`IPR2016-00047
`U. S. Patent 8,640,183
`
`
`sound.” Id. at 7:13-22. Notably, none of the claims require or recite “hypermedia.”
`
`Instead, the claims recite “continuous media,” which broadly encompasses “any
`
`representation of ‘content’ elements that have an intrinsic duration, that continue
`
`(or extend) and may change over time, including one or more of ‘audio data,’
`
`‘video data,’ animation, virtual reality data, hybrid natural and synthetic video
`
`data, including both ‘stored format’ and ‘streams’ or streaming transmission
`
`formats.” Id. at 20:5-12.
`
`Prosecution History
`
`B.
`The application was filed on October 26, 2012, EX1007 at 160-510, and
`
`claimed the priority of multiple non-provisional and provisional applications, the
`
`earliest of which was U.S. Provisional Application No. 60/379,635, filed on May
`
`10, 2002. Id. at 460. Thus, the ’183 patent may have an effective filing date of May
`
`10, 2002, pending full support in the provisional application.
`
`The Examiner opened prosecution in June of 2013, by restricting the original
`
`three claims. EX1007 at 123-128. In response, Applicant cancelled one claim, and
`
`added 61 new claims to the remaining two claims. Id. at 94-117. Nearly 60 of the
`
`new claims were distinct and did not have overlapping or duplicate subject matter.
`
`The Examiner conducted a brief search, unnecessarily confined to class 725, for
`
`words within the specification, and not for prior art. Id. at 47-48 (Ref. Nos. S1-S9).
`
`In September of 2013, the Examiner proposed claim amendments during an
`
`5
`
`

`

`
`
`IPR2016-00047
`U. S. Patent 8,640,183
`
`
`Examiner-initiated interview (EX1007 at 36), and then mailed a Notice of
`
`Allowance on September 18, 2013. Id. at 18-35. In the Examiner’s Amendment,
`
`the Examiner failed to cancel dependent claims that recited the same elements as
`
`those incorporated into the independent claims, such as dependent claims 46 and
`
`47. More remarkable, the Examiner never rejected any of the claims. In the Notice
`
`of Allowance, the Examiner declined to identify the allowable aspects of the
`
`claims, and instead vaguely stated that “[t]he prior art of record fails to neither (sic)
`
`disclose nor sufficiently suggest the combination of features as claimed and
`
`arranged by applicant.” Id. at 34.
`
`VI. GROUNDS FOR STANDING
`Petitioner certifies that the ’183 patent is available for IPR and that the
`
`Petitioner is not barred or estopped from requesting IPR challenging the ’183
`
`patent on the grounds identified. See 37 C.F.R. § 42.104(a). Specifically: (1)
`
`Petitioner is not the owner of the ’183 patent; (2) Petitioner is not barred or
`
`estopped from requesting IPR; and (3) Petitioner has not been served with a
`
`complaint alleging infringement of the ’183 patent.
`
`VII. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`A. Claims for Which Review is Requested
`Petitioner respectfully requests review under 35 U.S.C. § 311 of claims 1-5,
`
`16, 18, 24-26, 32-38, 40-42, 49, 51-53, 55, and 58-61 of the ’183 patent, and their
`
`6
`
`

`

`
`
`cancellation as unpatentable.
`
`IPR2016-00047
`U. S. Patent 8,640,183
`
`
`Statutory Grounds of Challenge
`
`B.
`Claims 1-5, 16, 18, 24-26, 32-38, 40-42, 49, 51-53, 55, and 58-61 are
`
`challenged as unpatentable under 35 U.S.C. § 103(a). The claim construction,
`
`reasons for unpatentability, and specific evidence supporting this request are
`
`detailed below.
`
`C. Claim Construction
`Claim terms are given their ordinary and customary meaning as understood
`
`
`
`by a POSA. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en
`
`banc). A claim in an unexpired patent subject to inter partes review receives the
`
`“broadest reasonable construction in light of the specification of the patent in
`
`which it appears.” 37 C.F.R. § 42.100(b). The majority of the claims are common
`
`terms that deserve their ordinary and customary meaning. Unified suggests the
`
`following term from the claims of the ’183 patent requires construction.1
`
`“Unified Media Selection and Presentation User Interface”
`
`
`1.
`Independent claims 1, 58, 59, and 60 all specify that “the first user interface
`
`and the second user interface together comprise a unified media selection and
`
`presentation user interface.” EX1001 at 164:65-165:1, 169:6-9, 57-60, 140:44-47.
`
`
`1 The broadest reasonable interpretation should be applied to any claim terms not
`
`addressed below.
`
`7
`
`

`

`
`
`IPR2016-00047
`U. S. Patent 8,640,183
`
`
`The term “unified” is not defined or even recited anywhere in the specification,
`
`except in 103:35-42, where the term is used in a different context of “unified
`
`messaging services.” The term “unified” is also not defined anywhere in the
`
`dependent claims, and only appears in dependent claim 47, which merely
`
`duplicates elements from independent claim 1. The dictionary definition of
`
`“unified” is “ma[d]e into a unit or a coherent whole.” EX1006. The independent
`
`claims specify that the “unified media selection and presentation user interface”
`
`includes controls for (1) selecting continuous media content and (2) selecting one
`
`of the first or second computerized device sets for presentation of the continuous
`
`media content. EX1001, claims 1, 58, 59, 60. Taken in the context of the
`
`specification and the claims, which are directed to a first and second user interface,
`
`the phrase “unified media selection and
`
`presentation user
`
`interface” should be
`
`construed to mean “a coherent set of user
`
`interfaces for selecting media and selecting
`
`Portion of ’183 Patent
`(EX1001), FIG. 3
`
`a presentation device.” EX1002 at ¶¶ 26-27. This construction is consistent with
`
`FIG. 3 of the ’183 patent, which shows “typical displays” and “user interface
`
`display layouts according to certain embodiments of the present invention.”
`
`EX1001 at FIG. 3, 3:37-39. A portion of FIG. 3 illustrates the “coherent set of user
`
`interfaces for selecting media,” as used in a personal digital assistant (PDA):
`
`8
`
`

`

`
`
`IPR2016-00047
`U. S. Patent 8,640,183
`
`
`VIII. CLAIMS 1-5, 16, 18, 24-26, 32-38, 40-42, 49, 51-53, 55, and 58-61 OF
`THE ’183 PATENT ARE UNPATENTABLE UNDER 35 U.S.C.
`§ 103(a)
`A. Chen is Prior Art Under 35 U.S.C. § 102(e)
`U.S. Patent No. 8,479,238 (EX1003, “Chen”), filed on May 14, 2002, claims
`
`priority to U.S. Provisional Patent Application No. 60/290,788, filed on May 14,
`
`2001. Chen is prior art under at least 35 U.S.C. § 102(e) based on at least its
`
`domestic priority date of May 14, 2001.
`
`B.
`Elabbady is Prior Art Under 35 U.S.C. § 102(e)
`U.S. Patent No. 7,483,958 (EX1004, “Elabbady”), filed on March 26, 2002,
`
`claims priority to U.S. Provisional Patent Application No. 60/278,804, filed on
`
`March 26, 2001. Elabbady is prior art under at least 35 U.S.C. § 102(e) based on at
`
`least its domestic priority date of March 26, 2001.
`
`C. Meade is Prior Art Under 35 U.S.C. § 102(e)
`U.S. Patent Application Publication No. 2003/0073412 (EX1005, “Meade”),
`
`filed on October 16, 2001. Meade is prior art under at least 35 U.S.C. § 102(e)
`
`based on its filing date of October 16, 2001.
`
`D. Ground 1: Chen in view of Elabbady renders claims 1-5, 16, 18,
`24-26, 32-38, 40-42, 49, 51-53, 55, and 58-61 obvious
`Chen discloses “control of multimedia playback,” just like the ’183 patent.
`
`See EX1003 Title. FIG. 3 of Chen shows an exemplary network topology
`
`including a Control Device 212, in communication with a Video Device 218:
`
`9
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`

`

`
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`IPR2016-00047
`U. S. Patent 8,640,183
`
`
`EX1004, FIG. 3
`
`
`
`Control Device 212 can include a portable computerized device such as a personal
`
`digital assistant (PDA) (claim 37) or a tablet computer (claim 40) capable of
`
`“playing multimedia data such as, preferably, still images, text, preview videos, or
`
`the like.” EX1003 at 4:47-60. In Chen’s system, Control Device 212 serves as a
`
`“dynamic control pad for initiating video playback.” Id. Control Device 212
`
`communicates with other components (such as Video Device 218) via network
`
`216, which may operate using wireless protocols such as “Bluetooth, IEEE,
`
`802.11b, infrared protocols, or other wireless protocols.” Id. at 4:55-58. Network
`
`216 may include an Internet Protocol (IP) network. Id. at 65-66. 802.11b is known
`
`as a version of WiFi, to people of ordinary skill in the art (POSA) of wireless data
`
`networks. EX 1002 at ¶33.
`
`
`
`Control device 212 includes a display screen that provides multiple user
`
`interfaces for selecting content and for controlling playback on video device 218.
`
`10
`
`

`

`
`
`IPR2016-00047
`U. S. Patent 8,640,183
`
`
`EX1003 at FIGS. 4-10. Chen discloses having “more
`
`than one video
`
`device …controlled by the [same] control device.” Id. at 5:13-14.
`
`
`
`An exemplary graphical user interface displayed on control device 212
`
`provides multimedia data representing video data for browsing and selection for
`
`playback. EX1003 at 8:1-10. An example of this
`
`graphical user interface is illustrated in FIG. 7 of
`
`Chen (reproduced at the right). Video data
`
`relative to a search term is displayed, so that the
`
`consumer can browse available videos, and select
`
`a particular video from the list. Id. at 4:32-35.
`
`Represented video data can be stored in a
`
`centralized video database, or stored locally and
`
`proximate to the video device 218. Id. at 5:31-32,
`
`EX1003, FIG. 7
`
`7:66-:810. Represented video data can include
`
`videos encoded according to a standard such as
`
`the Moving Picture Experts Group (MPEG)–a
`
`type of encoded video. Id. at 3:35-38; EX1002 at
`
`¶ 35.
`
`
`
`In addition to displaying a listing of
`
`multimedia programs, the user interface displayed
`
`11
`
`EX1003, portion of FIG. 4
`
`
`
`

`

`
`
`IPR2016-00047
`U. S. Patent 8,640,183
`
`
`on the control device 212 includes multimedia content data based on the content of
`
`the video data. EX1003 at 3:21-29. The multimedia content data can include still
`
`images, preview videos, and detailed information about the video data. Id.
`
`
`
`A consumer may select a particular video data (such as a television program)
`
`for playback, from the displayed multimedia data. Id. at 8:3-10.
`
`
`
`Prior to selecting the video data, control device 212 may display another
`
`exemplary graphical user interface to allow the user to “specify a video device for
`
`viewing multimedia.” EX1003 at FIG. 4 (reproduced to the right). A single control
`
`device 212 may control multiple video devices. Id. at 5:13-14.
`
`
`
`Control device 212 displays the user interfaces illustrated in FIGS. 4 and 8
`
`as part of a coherent set of user interfaces for selecting media for playback and for
`
`selecting a presentation device, and thus Chen discloses a “unified media selection
`
`and presentation interface.” See EX1002 at ¶ 39.
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`
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`Video device 218 may include a television (claims 38, 41) or computer
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`monitor that plays video. EX1003 at 5:4-5. Video device 218 is capable of
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`decoding compressed video data, including MPEG video (claim 42). Video device
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`218 communicates with the system, including with control device 212, using a
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`wireless connection with sufficient bandwidth to support playback of digital video
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`data. Id. at 5:5-9. Chen discloses storing multiple versions of the video data in
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`various formats, so that the highest possible quality version may be delivered and
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`played on a video device. The video quality is determined based on the capability
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`of the video device 218 to receive the video data, including the available
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`bandwidth for the video device and the video device capabilities. Id. at 3:38-42.
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`Chen discloses using a protocol similar to an Address Resolution Protocol
`
`(ARP) to discover nearby devices and determine which video devices 218 are
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`active and capable of receiving and playing video. EX1003, at 7:13-25. When a
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`user accesses the user interface shown in FIG. 4 (reproduced above), the control
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`device 212 provides a list of available video devices to which the consumer has
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`access. Id. The consumer inputs a selection of an available video device, and the
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`selected video device receives selected video data to begin playback. Id. at 7:4-25.
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`After the consumer selects a playback video device and then selects the video data,
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`control device 212 generates and transmits URLs (claim 55) to the video device
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`218. Id. at 6:43-54. The generated URL can include a MediaURL and other
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`parameters which facilitate retrieval of the video data for playback on the selected
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`video device 218. Id. Control device 212 and video device 218 communicate over
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`network 216, which uses wireless protocols such as Bluetooth (claim 33), IEEE, or
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`WiFi (claim 32), which are types of packet networks. EX1003 at 4:55-58; EX1002
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`at ¶ 41. Control device 212 also communicates with a video server 220 to assist the
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`video device 218 with retrieving the desired video data for playback. EX1003 at
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`5:58-62. Video server 220 may be located remotely from the premises, and
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`communicate with video device 218 and control device 212 using a Wide Area
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`Network (WAN) that routes packets between devices. Id. at 5:31-38. The Internet
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`is a common type of Wide Area Network, and thus the video device 218 and
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`control device 212 may communicate over the Internet with video server 220,
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`acting as a web server. EX 1002 at 41.
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`
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`During playback, the video data is presented on the video device 218, and
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`the control device 212 provides a user interface for soliciting consumer
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`input/instructions to control video playback. EX1003 at 6:40-50. Using the
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`interface, the consumer can control parameters including volume, play, stop, and
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`pause (claim 25), for example. Id. at 6:58-67. Video server 220 may be included in
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`an implementation of Chen’s system that provides media content distribution
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`services such as network-based, video-on-demand entertainment and information
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`services. EX1003 at 9:12-18.
`
`
`Implementation of Chen’s Second Computerized Device Set
`1.
`As explained above, Chen discloses a control device such as a PDA that
`
`browses video data and plays videos. EX1003 at 3:24-26, 4:50-53. To the extent
`
`that the control device in Chen does not present MPEG encoded video data,
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`Elabbady discloses this element.
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`Elabbady, like Chen and the ’183 patent, discloses a media browsing and
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`playback system having a first device 202 and other devices 206a-d. EX1004 at
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`5:24-31. Like Chen, first device 202 in Elabbady is a PDA that provides a media
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`catalog for a user to select media content for playback. Id. at 9:53-60. Elabbady
`
`also teaches that first device 202 PDA can play media content such as video. Id. at
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`3:33-46, 5:66-6:3, 7:3-8, 8:57-62. Thus, Elabbady recognizes that a PDA is a
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`media processing device and that it has an ordinary function of playing media
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`content such as video. Id.
`
`It would have been obvious to modify Chen’s control device PDA to provide
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`functionality to present encoded video data. EX1002 at ¶ 45. Such a modification
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`would combine known elements and functions–i.e., modifying control device 202
`
`to include a functionality that was known and commonly implemented in PDAs at
`
`the time of Chen’s invention. Furthermore, both Chen and Elabbady are analogous
`
`references in the same art of media browsing and playback. Id. Moreover, the
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`combination of Chen and Elabbady is obvious because it would provide 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 of Chen’s invention. Id.
`
`Therefore, it would have been obvious to POSA to modify Chen’s control
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`device 212 PDA with Elabbady’s first device 202 having video data playback
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`capability. POSA would have had a reasonable likelihood of success when
`
`combining the two because the PDAs in both systems are ordinary, common
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`PDAs, and
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`the
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`implementation of a known function would have been
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`straightforward and predictable. EX1002 at ¶ 46.
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`Implementation of Chen’s Discovery Protocol
`
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`2.
`As discussed above, Chen discloses an interface that presents a list of
`
`available video devices. EX1003 at 7:13-25. To do this, Chen teaches using a
`
`protocol similar to an Address Resolution Protocol (ARP)–a type of discovery
`
`protocol to identify nearby video devices. Id., EX1002 at ¶ 47. To the extent that
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`Chen’s ARP protocol is not “a discovery protocol that is implemented at a
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`communication layer above an internet protocol layer,” Elabbady teaches these
`
`elements.
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`Like Chen, Elabbady discloses locally networked devices that browse and
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`play video data. Elabbady discloses devices 202 (which can be a PDA),206, and
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`300 (which can televisions) connected via network 204. EX1004 at 5:23-31, 9:56-
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`60. One implementation of Elabbady’s network 204 uses a Universal Plug-and-
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`play (UPnP) protocol (claim 16) that connects devices 202 and 206 and connects
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`devices 202 and 300. Id. at 5:54-65, 10:11-16. Similar to the ARP protocol in
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`Chen, Elabbady’s UPnP provides for device collaboration and communication in
`
`network 204 in a peer-to-peer manner with zero-configuration networking, to
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`configure devices that were previously not connected (claim 18). Id. The UPnP
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`protocol is implemented in a communication layer that is above an internet
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`protocol layer. EX1002 at ¶ 48. Notably, claim 16 of the ’183 patent specifies that
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`“the discovery protocol is performed at least partially in accordance with a
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`universal plug and play (UPnP) protocol,” and, therefore, Elabbady’s UPnP
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`protocol meets the “discovery protocol” of the claims. Indeed, “UPnP is a known
`
`mechanism for devices to discover and connect to other devices and to enumerate
`
`the characteristics of those devices.” EX1009.
`
`It would have been obvious to modify Chen’s determination of available
`
`video devices with Elabbady’s UPnP discovery protocol to provide “zero-
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`configuration networking” of Chen’s control and video devices. EX1002 at ¶ 49.
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`Such a modification would merely replace one technique for identifying available
`
`devices–ARP–with another known technique for identifying available devices–
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`UPnP. As illustrated in Chen and Elabbady, both techniques are known to POSA
`
`for identifying available devices in a network that are capable of receiving and
`
`playing video data. Id. Furthermore, “UPnP is intended to be an element of home
`
`networking, in which PCs, appliances, and the services they provide are linked
`
`together.” EX1009. Thus, the combination of Chen and Elabbady would have been
`
`obvious because Elabbady substitutes one known technique for another, and
`
`provides predictable, if not equivalent, results. EX1002 at ¶ 49.
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`As further explained in the chart below, 2 the combination of Chen and
`
`2 All emphasis in the claim charts in this petition is added unless otherwise noted.
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`Elabbady teach all elements of claims 1-5, 16, 18, 24-26, 32-38, 40-42, 49, 51-53,
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`55, and 58-61 of the ’183 patent.3
`
`[1.P] 1. A method
`for use in a
`second
`computerized
`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:
`
`Chen discloses a control device 212 (the claimed “second
`