Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 7
`Filed: March 3, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`CONVERGENT MEDIA SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01762
`Patent 8,893,212 B2
`____________
`
`
`
`Before JAMESON LEE, KEN B. BARRETT, and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 7
`Filed: March 3, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`CONVERGENT MEDIA SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01762
`Patent 8,893,212 B2
`____________
`
`
`
`Before JAMESON LEE, KEN B. BARRETT, and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`IPR2016-01762
`Patent 8,893,212 B2
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`
`I. INTRODUCTION
`
`A. Background
`Roku, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) to institute
`inter partes review of claims 1–23 of U.S. Patent No. 8,893,212 B2
`(Ex. 1002, “the ’212 patent”). Convergent Media Solutions, LLC, (“Patent
`Owner”) did not file a Preliminary Response.
`Upon consideration of the Petition, we are persuaded, under
`35 U.S.C. § 314(a), that Petitioner has demonstrated a reasonable likelihood
`that it would prevail in showing the unpatentability of claims 1–22 of the
`’212 patent. However, we are not persuaded that Petitioner has
`demonstrated a reasonable likelihood that it would prevail in showing the
`unpatentability of claim 23 of the ’212 patent. Accordingly, we institute an
`inter partes review of claims 1–22 of the ’212 patent.
`
`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. Roku, Inc., No. 3:15-cv-02163 (N.D. Tex); Convergent Media
`Solutions LLC v. AT&T Inc., Case No. 3:15-cv-02156 (N.D. Tex.), the latter
`being a lead case consolidating individual cases brought by Convergent
`Media Solutions LLC against AT&T Inc., Hulu, Inc., and Netflix Inc. Pet.
`2. Patent Owner identifies the same matters. Paper 4.
`
`C. Evidence Relied Upon
`
`Reference
`
`Effective Date
`
`Exhibit
`
`Zintel
`
`US 6,910,068 B2
`
`Mar. 16, 2001 (filing) Ex. 1003
`
`2
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`Reference
`
`Effective Date
`
`Exhibit
`
`Elabbady
`
`US 7,483,958 B1
`
`Mar. 26, 2002 (filing) Ex. 1004
`
`Palm
`
`Janik
`
`US 2001/0042107 A1
`
`Jan. 8, 2001 (filing)
`
`Ex. 1006
`
`US 7,130,616 B2
`
`Aug. 7, 2001 (filing)
`
`Ex. 1007
`
`Vallone
`
`US 6,847,778 B1
`
`Mar. 30, 2000 (filing) Ex. 1008
`
`
`Petitioner also relies upon the Declaration of Andrew Wolfe, Ph.D. Ex.
`1009.
`D. The Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`References
`Basis
`Claims Challenged
`Elabbady, Palm, and Zintel
`§ 103(a) 1–18, 20, 22, and 23
`Elabbady, Palm, Zintel, and Vallone
`§ 103(a) 19
`Elabbady, Palm, Zintel, and Janik
`§ 103(a) 21
`
`
`
`II. ANALYSIS
`
`A. The ’212 Patent
`The ’212 patent relates to systems and methods for navigating
`hypermedia using multiple coordinated input/output device sets. Ex. 1002,
`3:4–6. The method allows “a user and/or an author to control what
`resources are presented on which device sets.” Id. at 3:6–8. The device sets
`may include laptops, desktops, tablets, personal digital assistants (PDAs),
`televisions (TVs), set-top boxes (STBs), video cassette recorders (VCRs)
`and digital video recorders (DVRs). Id. at 16:29–36, 18:38–19:40. The
`term hypermedia refers to “any kind of media that may have the effect of a
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`non-linear structure of associated elements,” and includes “graphics, video,
`and sound.” Id. at 7:5–14. The ’212 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 19:65–20:2.
`The multiple input/output device sets described in the ’212 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. 1002, 37:28–35. 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 37:38–42. 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 37:42–47.
`Independent claim 1 of the ’212 patent, reproduced below, is
`illustrative of the claims of the ’212 patent. Each of the other challenged
`claims depends from claim 1.
`1.
`A method for use in a second computerized
`device set which
`is configured for wireless
`communication using a wireless communications
`protocol that enables 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:
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`receiving discovery information that is obtained in
`accordance with a device management discovery
`protocol that is implemented at a communication
`layer above an internet protocol layer wherein the
`discovery information allows a determination to be
`made at the second computerized device set that the
`first computerized device set
`is capable of
`supporting selected functions;
`
`making available to a user a first user interface that
`allows the user to enable communications with the
`first computerized device set;
`
`making available to the user a second user interface
`that allows the user to browse internet content
`including a listing of continuous media content, the
`continuous media content being available to be
`accessed and presented on demand, wherein the
`listing is accessible via the internet using an internet
`protocol, the listing allowing the user to identify a
`particular content item of the continuous media
`content;
`
`responsive to the user identifying the particular
`content item of the continuous media content,
`causing to be wirelessly transmitted, in accordance
`with a wireless local area network protocol, an
`identification of the particular content item from the
`second computerized device set for subsequent use
`by the first computerized device set to facilitate
`accessing and presenting the particular content item
`on the first computerized device set;
`
`wherein the supported selected functions include at
`least receiving of the identification of the particular
`content item, the accessing of the particular content
`item and the presenting of the particular content
`item.
`
`Ex. 1002, 163:62–165:33.
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`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, 2142–46 (2016). Consistent with 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 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 the broadest reasonable interpretation for all claim
`terms is their plain and ordinary meaning, and does not propose any express
`construction for any claim term. Pet. 8. Upon reviewing the claims and
`Specification of the ’212 patent, we agree with Petitioner that no express
`construction is needed for any claim term of the ’212 patent.
`C. Alleged Obviousness of Claims 1–18, 20, 22, and 23 over
`Elabbady, Palm, and Zintel
`Petitioner argues claims 1–18, 20, 22, and 23 of the ’212 patent are
`obvious under 35 U.S.C. § 103(a) in view of the combination of Elabbady,
`Palm, and Zintel. Pet. 20–55. For the reasons discussed below, we are
`persuaded that Petitioner has demonstrated a reasonable likelihood of
`establishing the unpatentability of claims 1–18, 20, and 22 over Elabbady,
`Palm, and Zintel. However, we are not persuaded that Petitioner has
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`demonstrated a reasonable likelihood of establishing the unpatentability of
`claim 23 over these references.
`1. Overview of Elabbady (Ex. 1004)
`Elabbady discloses “methods and systems for sharing media content
`between various devices,” and incorporates by reference the entire
`disclosure of U.S. Provisional Application No. 60/278,804. Ex. 1004, 1:7–
`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. Id. at 2:36–37.
`
`Device 202 provides a media cataloging service 203 to devices 206a-d
`and 300 to which device 202 is connected via network 204. Ex. 1004, 5:24–
`29. Devices 202, 206a-d, and 300 can be any of a “variety of different
`devices that can be used to provide features/capabilities associated with
`sharing media content.” Id. at 5:66–6:2. These can include PCs, laptops,
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`desktops, notebooks, tablets, PDAs, TVs, STBs, digital versatile disc (DVD)
`players, and the like. Id. at 3:23–46. Media content refers to “any form of
`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, 206a-d, and 300 can play media content, and can
`be coupled to media server 210 having database 212 of shareable media
`content. Id. at 5:32–45, 8:57–62, Fig. 2A. Media server 210 can provide an
`Internet-based service, such as a radio program service, a television service,
`or the like, to devices 202, 206a-d, and 300. Id. at 5:34–39.
`Local network 204, which connects devices 202, 206a-d, and 300, 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.” Ex. 1004, 5:54–58. UPnP
`networked devices provide controllable services that are controlled via
`control points. Ex. 1005, 1–4.1 For example, an UPnP device can provide a
`media cataloging service that gathers information about media content
`located on other UPnP networked devices, and creates and publishes a
`catalog of information about the media content. Ex. 1004, 6:7–23; Ex. 1005,
`1–2, 27, 29, 32. The published catalog includes metadata about the media
`content, including URLs identifying the media content’s location on the
`network. Ex.1004, 6:30-36, 10:18-23; Ex.1005, 19–20, 27. Control points
`(CPs) on UPnP networked devices discover the media catalog and provide
`user interfaces for browsing and selecting media content for playback. Ex.
`
`1 Exhibit 1005 is U.S. Provisional Application No. 60/278,804, and is
`incorporated by reference in its entirety into Elabbady. See Ex. 1004, 1:6–
`7–11.
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`1004, 12:18–25, Figs. 2A and 3; Ex. 1005, 1–4, 15–17. Control points can
`reside on various networked devices such as digital audio/video (DAV)
`players, and PDA’s that are used to remotely control other networked
`devices. Ex. 1005, 16–17, 45–46. A control point on a remote control
`device (e.g., a PDA) can select media content and a media device, and
`instruct the media device to play the media content by sending a PLAY
`command to the media device with the URL of the media content. Ex. 1005,
`15–17.
`2. Overview of Palm (Ex. 1006)
`Palm discloses a multimedia discovery system consisting of media
`devices 105 networked to media servers 115 on local or wide area networks.
`Ex. 1006 ¶¶ 7, 43, Fig. 1. Figure 1 of Palm is reproduced below.
`
`
`Figure 1 of Palm illustrates a home-network based multimedia discovery
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`system. Id. ¶ 14. Media devices 105 can be TVs, STBs, PCs, laptops, PDAs
`or similar devices. Id. ¶¶ 64–65, 71. Media devices 105 can automatically
`discover local or remote media servers 115 using UPnP protocol, and use a
`graphical user interface (GUI) to browse, select, and receive media content
`stored on media servers 115. Id. ¶¶ 7, 43–42, 55–61, 73–79. The media
`content can be audio or video. Id. at ¶¶ 21, 53. When a user of device 105
`selects media content, a URL identifying the media content is sent to media
`device 105 to allow media device 105 to retrieve and play the content from
`media server 115. Id. ¶¶ 80–83, 88.
`3. Overview of Zintel (Ex. 1003)
`Zintel discloses UPnP device 102, and how it “makes itself known
`and available for communication with other entities on a network” through a
`set of discovery, description, control, eventing, and presentation processes.
`Ex. 1003, 2:62–67, Fig. 1. Device 102 broadcasts a discovery message to
`other UPnP devices 103 on the network. Id. at 2:67–3:3. UPnP devices 103
`can learn about the capabilities of device 102 by requesting its device
`description from a URL contained in the discovery message. Id. The device
`description includes a list of URLs for device 102 and other devices
`embedded in device 102, as well as for services provided by device 102 and
`its embedded devices, such as URLs for control, eventing, and presentation
`services. Id. at 3:8–10. UPnP networking protocol enables networked
`device and resource control so that “any device can transfer . . . A/V
`[audio/video] data streams from any device on the network, to any device on
`the network, under the control of any device on the network.” Id. at 6:48–52
`(emphases added).
`Control of UPnP devices and resources is enabled by Control Points
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`(CPs), which are “typically implemented on devices that have a user
`interface.” Ex. 1003, 6:64–65. Control Points can “aggregate the control of
`multiple Controlled Devices (the universal remote),” and can “initiat[e] the
`transfer of data to or from a Controlled Device.” Id. at 7:4–8. Control
`Points can be located on various types of devices, such as PCs, TVs, STBs,
`handheld computers, smart phones, and the like. Id. at 7:8–11. Controlled
`Devices can include VCRs, DVD players, audio/video playback devices,
`PCs, handheld computers, smart phones, and the like. Id. at 7:25–29. UPnP
`devices can be both Controlled Devices having controllable services, and
`Control Points for controlling other devices and services. Id. at 7:11–14.
`4. Reasons to combine Elabbady, Palm, and Zintel
`Petitioner argues a person of ordinary skill in the art would have
`combined the teachings of Elabbady, Palm, and Zintel because “the
`references provide similar and complementary teachings to achieve the same
`goals.” Pet. 24. Petitioner argues Elabbady teaches using a handheld device
`(e.g., a PDA) as a control point for selecting and playing media content on a
`selected device, and Palm teaches using a handheld device to select and play
`media content from an Internet-based media server. Id. at 26. Therefore,
`Petitioner argues, the combination teaches using a handheld device to select
`media content from an Internet-based media server, and to select a
`networked device on which to play the selected media content. Id.
`Petitioner argues it would have been advantageous to combine the teachings
`of Elabbady and Palm to “eliminate[] the need for a computer on the local
`network to keep track of Internet content which may change rapidly,” and to
`allow content providers “to insert additional content such as advertising and
`branding” into the selected content. Id. at 26–27.
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`Petitioner further argues a person of ordinary skill in the art would
`have been motivated to combine the teachings of Elabbady and Palm in the
`manner proposed by Petitioner, because both Elabbady and Palm describe
`UPnP connected devices and Zintel teaches that “UPnP can be used in the
`kinds of systems described in Elabbady and Palm, i.e., ‘to initiate and
`control the transfer of . . . A/V data streams from any device on the network,
`to any device on the network, under the control of any device on the
`network.’” Id. at 25 (quoting Ex. 1003, 5:26–29).
`We are persuaded, on this record, that Petitioner has provided
`reasoning with rational underpinnings to support combining the teachings of
`Elabbady, Palm, and Zintel in the manner proposed by Petitioner. Petitioner
`has identified familiar elements known in the art from Elabbady and Palm,
`all of which are connected via the UPnP protocol, and Zintel teaches UPnP
`protocol can be used to implement the types of systems described in
`Elabbady and Palm “to initiate and control the transfer of . . . A/V data
`streams from any device on the network, to any device on the network,
`under the control of any device on the network.” Ex. 1003, 5:26–29. Thus,
`the motivation to combine is implicit from the prior art as a whole, i.e., it is a
`combination of familiar elements according to known methods that yields a
`predictable result. See KSR Int’l Co., 550 U.S. 398, 415–416 (2007); see
`also In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000).
`5. Claims 1–18, 20, and 22
`Petitioner has demonstrated how the combination of Elabbady, Palm,
`and Zintel adequately accounts for each of the limitations required by claims
`1–18, 20, and 22. See Pet. 20–54.
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`For example, claim 1 recites a method for use in a second
`computerized device set that is configured for wireless communication with
`a first computerized device set, and requires receiving discovery information
`from a device management discovery protocol that is implemented at a
`communication layer above an internet protocol layer, and that allows the
`second computerized device set to determine that the first computerized
`device set is capable of supporting selected functions. Ex. 1002, 163:60–
`164:7. The ’212 patent discloses the discovery management protocol can be,
`for example, UPnP protocol. Id. at 37:27–47.
`Elabbady and Palm both disclose using UPnP protocol for device
`discovery. See Pet. 31; Ex. 1004 5:54–65; Ex. 1006 ¶¶ 76–77. Zintel
`discloses UPnP device discovery involves requesting and receiving device
`description documents “to learn the capabilities of a Controlled Device,”
`such as the services provided by that device, and how to interact with and
`control those services. Pet. 31–32 (emphasis omitted); see also Ex. 1003
`8:57–67, 27:55–67. Zintel discloses UPnP device discovery is implemented
`at a communication layer above the IP (Internet Protocol) layer because
`device description documents are requested and provided using HTTP
`(HyperText Transfer Protocol), and HTTP is a communication layer
`implemented above the IP layer. See Pet. 33; Ex. 1003, 20:54–58, 25:47–58,
`Fig. 27. We are persuaded that Petitioner has sufficiently accounted for this
`limitation.
`Claim 1 requires making a first user interface available to a user to
`allow the user to enable communications with the first computerized device
`set. Ex. 1002, 164:8–10. Elabbady discloses a PDA (second device) having
`a Control Point that allows the PDA to select, communicate with, and
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`control a digital A/V player (first device) on the network. See Pet. 35; Ex.
`1005, 16. The PDA’s Control Point communicates with the digital A/V
`player through a user interface because it displays “icons of discovered
`devices and enabl[es] the transfer of control to a browser or application to
`interact with the Controlled Device.” Pet. 35 (quoting Ex. 1003, 11:6–10).
`We are persuaded that Petitioner has sufficiently accounted for this
`limitation.
`Claim 1 requires making a second user interface available to the user
`to allow the user to browse and identify continuous media content on the
`Internet that can be presented on demand. Ex. 1002, 164:60–67. Palm
`discloses a PDA having a user interface that allows a user to browse and
`select media content on an Internet media server for on-demand playback.
`See Pet. 36; Ex. 1006 ¶¶ 9, 43, 65. Elabbady similarly discloses the PDA
`Control Point having a user interface that allows a user to browse and select
`media content on an Internet media server for on-demand playback. See Pet.
`37–38; Ex. 1004, 5:32–45, 6:64–65, Fig. 2A. We are persuaded that
`Petitioner has sufficiently accounted for this limitation.
`Claim 1 requires wirelessly transmitting an identification of user
`identified media content from the second computerized device set to the first
`computerized device. Ex. 1002, 165:1–8. Elabbady discloses that when a
`PDA Control Point (second device) receives user selected media content and
`a user selected playback device, the PDA “sends the URL for the selected
`content item to the player along with a PLAY command.” Pet. 39; see also
`Ex. 1005, 15–17. Elabbady further discloses the PDA can use a wireless
`connection to send the URL of the selected media content to the selected
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`media player. See Pet. 40; Ex. 1004, 5:46–53; Ex. 1005, 42. We are
`persuaded that Petitioner has sufficiently accounted for this limitation.
`Finally, claim 1 requires the first computerized device set to support
`the functions of receiving an identification of user identified media content,
`and accessing and presenting the user identified media content. Ex. 1002,
`165:9–12. Petitioner, relying on the opinion of its expert, demonstrates how
`Elabbady discloses the information the PDA (second device) receives from
`the digital A/V player’s (first device) device description document “allow[s]
`the PDA . . . to determine that the digital A/V player can receive an
`identification of a content item, access the content item, and present the
`content item.” Pet. 41–42; Ex. 1009 ¶¶ 191–196. We are persuaded that
`Petitioner has sufficiently accounted for this limitation.
`On this record, for the reasons discussed above, Petitioner has
`demonstrated how the combined teachings of Elabbady, Palm, and Zintel
`adequately accounts for each of the limitations required by claim 1. See Pet.
`20–42. Petitioner has similarly demonstrated how the combined teachings
`of Elabbady, Palm, and Zintel adequately accounts for each of the
`limitations required by claims 2–18, 20, and 22. See Pet. 42–54.
`Accordingly, on this record, we are persuaded that Petitioner has shown a
`reasonable likelihood that it would prevail in establishing the unpatentability
`of claims 1–18, 20, and 22 over Elabaddy, Palm, and Zintel.
`6. Claim 23
`Claim 23 depends from claim 1, and requires making a third user
`interface available on the second computerized device set to allow the user
`to actuate a hyperlink associated with a starting resource presented at one of
`the first and second computerized device sets with an attribute specifying the
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`ending resource of the hyperlink is to be presented at the other computerized
`device set. Ex. 1002, 166:39–45.
`Petitioner, relying on the opinion of its expert, argues Elabbady
`discloses:
`
`one device can select another device to send a URL
`of content item to. EX1005 at 16. This can be
`implemented in HTML or JavaScript and can
`accordingly be actuated via hyperlink, which would
`contain
`information regarding
`the destination
`device. Id. Accordingly, a user is able to actuate a
`hyperlink (because it is browser accessible) on a
`source device (starting resource from which the
`URL is sent) with an attribute identifying the
`destination device (ending resource that receives the
`URL).
`
`Pet. 55 (citing Ex. 1009 ¶ 228). Petitioner’s expert, Dr. Wolfe, essentially
`repeats Petitioner’s argument verbatim. See Ex. 1009 ¶ 228. We are not
`persuaded, on this record, that Petitioner has demonstrated a reasonable
`likelihood that it would prevail in establishing the unpatentability of claim
`23 over Elabbady, Palm, and Zintel.
`
`Petitioner argues Elabbady discloses a PDA (second device) sending
`the URL of a selected media content item to a digital A/V player (first
`device). See Pet. 55; Ex. 1005, 16. However, Elabbady does not disclose
`the second device presents the URL in a hyperlink, or actuates the URL or a
`hyperlink containing the URL in any way, let alone by setting the value of
`an attribute of the URL or hyperlink containing the URL to identify the first
`device as the ending resource. Petitioner argues a user can actuate the URL
`to identify the first device as the ending resource because Elabbady discloses
`its functionality can be implemented using HTML and JavaScript. Pet. 55;
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`Ex. 1009 ¶ 228. However, Petitioner fails to explain why a person of
`ordinary skill in the art would have found it obvious to modify Elabbady to
`present the URL as a hyperlink on the PDA (second device), or to actuate
`the URL or hyperlink containing the URL by setting the value of an attribute
`of the URL or hyperlink to identify the digital A/V player (first device) as
`the ending resource.
`In an Inter Partes review, Petitioner bears the burden of proof. See 35
`
`U.S.C. § 316(e). The Petition must contain a full statement of the requested
`relief and the reasons therefor, “including a detailed explanation of the
`significance of the evidence.” 37 C.F.R. § 42.22(a)(2). Here, Petitioner has
`failed to adequately explain how Elabbady’s disclosure of a PDA sending
`the URL of a selected media content item to a digital A/V player can be
`mapped to the limitations required by claim 23, and has similarly failed to
`explain why a person of ordinary skill in the art would have found it obvious
`to modify this disclosure to include actuating the URL by setting the value
`of an attribute of the URL to identify the digital A/V player as the ending
`resource.
`
`Accordingly, for the reasons indicated above, Petitioner has failed to
`demonstrate a reasonable likelihood that it would prevail in establishing the
`unpatentability of claim 23 over Elabaddy, Palm, and Zintel
`D. Alleged Obviousness of Claim 19 over Elabbady, Palm, Zintel, and
`Vallone
`Petitioner alleges claim 19 of the ’212 patent would have been
`obvious under 35 U.S.C. § 103(a) over Elabbady, Palm, Zintel, and Vallone.
`Pet. 1. We have reviewed the Petition and are persuaded that Petitioner has
`
`17
`
`
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`IPR2016-01762
`Patent 8,893,212 B2
`
`demonstrated a reasonable likelihood of establishing the unpatentability of
`claim 19 over the combination of Elabbady, Palm, Zintel, and Vallone.
`1. Overview of Vallone
`Vallone discloses a digital A/V player having a programming guide in
`which bookmarks can be recorded. Ex. 1008, 12:53–58, 15:34–38, Fig. 18.
`Figures 17 and 18 of Vallone, as annotated by Petitioner, are reproduced
`below.
`
`
`Figure 17 illustrates a program list or “Now Showing” screen, and Figure 18
`illustrates a program information screen according to Vallone’s invention.
`Id. at 3:9–12. The “Now Showing” screen contains a list of programs the
`user requested to be recorded or that were recommended to the user by
`Vallone’s system. Id. at 14:52–55. Upon selecting a program in the “Now
`Showing” screen, the user is presented with a detailed listing of that program
`in the program information screen shown in Figure 18. Id. at 15:10–14. The
`detailed listing includes an icon 1808, representing a bookmark, illustrating
`where the user discontinued viewing a recorded program. Id. at 15:34–48.
`
`18
`
`
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`IPR2016-01762
`Patent 8,893,212 B2
`
`
`2. Reasons to combine Elabbady, Palm, Zintel, and Vallone
`As discussed in § II.C.4, supra, Petitioner has provided reasoning with
`rational underpinnings to support combining the teachings of Elabbady,
`Palm, and Zintel in the manner proposed. Petitioner further argues it would
`have been obvious to add the teachings of Vallone to the combination of
`Elabbady, Palm, and Zintel because Elabbady, Palm, and Vallone are in the
`same field of invention, namely, organizing, navigating, and selecting media
`content for playback via user interface. Pet. 62. Petitioner argues Elabbady
`and Palm both teach saving a list of favorite media content, and Palm
`teaches the favorites’ list includes associated metadata. Id. at 62–63.
`Petitioner argues Vallone teaches a method for bookmarking media content
`that can be applied “to any video or audio applications.” Id at 62–63
`(quoting Ex. 1008, 16:30–33). Therefore, relying on the opinion of its
`expert, Petitioner argues that a person of ordinary skill in the art would have
`found it obvious to improve upon the combination of Elabbady, Palm, and
`Zintel by including Vallone’s bookmarking teachings in order to “allow a
`user to return to a particular viewing or listening session.” Id. at 62 (citing
`Ex. 1009 ¶ 232).
`We are persuaded, on this record, that Petitioner has provided
`reasoning with rational underpinnings to support combining the teachings of
`Elabbady, Palm, Zintel, and Vallone. Petitioner has identified familiar
`elements known in the art, and has articulated reasoning with rationale
`underpinning to combine the known elements to enable a user to easily
`determine if they had partially viewed a listed item of media content, and if
`so, to return to a bookmarked location where they had discontinued viewing
`
`19
`
`
`
`IPR2016-01762
`Patent 8,893,212 B2
`
`the partially viewed media content item. See KSR Int’l Co., 550 U.S. at
`415–416.
`3. Comparison of Claim 19 to the Combination of Elabbady, Palm,
`Zintel, and Vallone
`Claim 19 depends from claim 1, and further requires the listing of
`media content to include an identification of one or more programs for
`which presentation on the second computerized device set had already
`begun. Ex. 1002, 166:19–21. Petitioner has demonstrated how the
`combination of Elabbady, Palm, Zintel, and Vallone adequately accounts for
`each of the limitations required by claim 19. See Pet. 20–42, 63–64.
`For example, as discussed in § II.C.5 supra, Petitioner argues the
`combination of Elabbady, Palm, and Zintel teaches a PDA (second device)
`that selects media content from a list of media content, and plays the
`selected media content on a controlled digital A/V player (first device). The
`displayed list of media content includes associated metadata. See Pet. 63;
`Ex. 1006 ¶¶ 82, 84. Vallone teaches bookmarking partially viewed media
`content. See Pet. 62–63, Ex. 1008, 15:34–48. Relying on its expert,
`Petitioner argues that “[i]t would have been obvious to combine Vallone’s
`teachings of bookmarks with Palm’s catalog of Internet content items to
`allow users to see that the user had previously started playing a particular
`content item.” Pet. 63 (citing Ex. 1009 ¶ 234). Petitioner further argues it
`would have been easy to modify the metadata associated with media content
`listed in a catalog of media content “to indicate a bookmark and playback
`position so that an indicator could be shown in the catalog UI as disclosed in
`Vallone.” Id. at 63–64 (citing Ex. 1009 ¶ 234).
`
`20
`
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`IPR2016-01762
`Patent 8,893,212 B2
`
`
`Petitioner has demonstrated how the combined teachings of Elabbady,
`Palm, Zintel, and Vallone adequately accounts for each of the limitations
`required by claim 19 for the reasons discussed above. See Pet. Pet. 20–42,
`63–64. Accordingly, on this record, we are persuaded that Petitioner has
`shown a reasonable likelihood that it would prevail in establishing the
`unpatentability of claim 19 over Elabaddy, Palm, Zintel, and Vallone.
`E. Alleged Obviousness of Claims 21 over Elabbady, Palm, Zintel,
`and Janik
`Petitioner alleges claim 21 of the ’212 patent would have been
`obvious under 35 U.S.C. § 103(a) over Elabbady, Palm, Zintel, and Janik.
`Pet. 1. We have reviewed the Petition and are persuaded that Petitioner has
`demonstrated a reasonable likelihood of establishing the unpatentability of
`claim 21 over the combination of Elabbady, Palm, Zintel, and Janik.
`1. Overview of Janik
`
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