UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ROKU, INC.,
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`Petitioner,
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`v.
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`CONVERGENT MEDIA SOLUTIONS, LLC,
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`Patent Owner.
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`PTAB Case No. IPR2016-01762
`Patent No. 8,893,212 B2
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,893,212 B2
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION .......................................................................................... 1
`I.
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B) ............................ 1
`A.
`REAL PARTY IN INTEREST ............................................................ 1
`B.
`RELATED MATTERS ........................................................................ 2
`C. NOTICE OF COUNSEL AND SERVICE INFORMATION ............. 2
`III. REQUIREMENTS FOR INTER PARTES REVIEW ................................... 3
`A. GROUND FOR STANDING ............................................................... 3
`B.
`IDENTIFICATION OF CHALLENGE ............................................... 4
`1.
`Claims Challenged ..................................................................... 4
`2.
`The Prior Art .............................................................................. 4
`3.
`Supporting Evidence Relied Upon For The Challenge ............. 4
`4.
`Statutory Ground(s) Of Challenge And Legal Principles .......... 4
`5.
`Claim Construction .................................................................... 4
`6.
`How Claims Are Unpatentable Under Statutory Grounds ........ 5
`IV. OVERVIEW OF THE ’212 PATENT ........................................................... 5
`A.
`PRIORITY DATE OF THE ’212 PATENT ........................................ 5
`B.
`SUMMARY OF THE ’212 PATENT .................................................. 5
`C.
`LEVEL OF ORDINARY SKILL IN THE ART ................................. 8
`D.
`PROPOSED CLAIM CONSTRUCTION ............................................ 8
`BACKGROUND OF THE PRIOR ART ....................................................... 8
`V.
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ’212 PATENT IS UNPATENTABLE ................... 14
`A.
`IDENTIFICATION OF THE REFERENCES AS PRIOR ART ....... 14
`B.
`SUMMARY OF INVALIDITY POSITIONS ................................... 19
`VII. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY OF CLAIMS 1-23 OF THE ’212 PATENT ........... 20
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`TABLE OF CONTENTS
`(continued)
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`Page
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`A. GROUND 1: CLAIMS 1-18, 20, and 22-23 ARE OBVIOUS
`OVER ELABBADY, PALM, AND ZINTEL ................................... 20
`1.
`The Prior Art ............................................................................ 20
`2.
`The Elabbady-Palm-Zintel Combination ................................. 24
`3.
`The Elabbady-Palm-Zintel Combination Renders
`Obvious Claims 1-18, 20, and 22-23 of the ’212 Patent ......... 28
`B. GROUND 2: CLAIM 21 IS OBVIOUS OVER ELABBADY,
`PALM, ZINTEL, AND JANIK .......................................................... 55
`1.
`The Elabbady-Palm-Zintel-Janik Combination ....................... 55
`2.
`The Elabbady-Palm-Zintel-Janik Combination Renders
`Obvious Claim 21 .................................................................... 58
`C. GROUND 3: CLAIM 19 IS OBVIOUS OVER ELABBADY,
`PALM, ZINTEL, AND VALLONE .................................................. 60
`1.
`Vallone (EX1008) .................................................................... 60
`2.
`The Elabbady-Palm-Zintel-Vallone Combination
`Renders Obvious Claim 19 ...................................................... 63
`VIII. CONCLUSION ............................................................................................. 64
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`Petition for Inter Partes Review of U.S. Patent 8,893,212 B2
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`EXHIBIT LIST1
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`U.S. Patent No. 8,850,507 to Reisman (the “’507 patent”)
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`U.S. Patent No. 8,893,212 to Reisman (the “’212 patent”)
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`U.S. Patent No. 6,910,068 (“Zintel”)
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`U.S. Patent No. 7,483,958 (“Elabbady”)
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`U.S. Provisional Application No. 60/278804 (“Elabbady
`Provisional”)
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`U.S. Application Publication No. 2001/0042107 (“Palm”)
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`U.S. Patent No. 7,130,616 (“Janik”)
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`U.S. Patent No. 6,847,778 (“Vallone”)
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`Declaration of Dr. Wolfe
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`Windows ME White Paper
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`Miller et al., Home Networking with Universal Plug and Play,
`IEEE 0163-6804 (Dec. 2001)
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`Steinfeld, Devices that Play Together, Work Together (Sept.
`2001)
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`Bell et al., A Call For The Home Media Network (May 2001)
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`UPnP Newsletter 3Q00
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`EX1001
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`EX1002
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`EX1003
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`EX1004
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`EX1005
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`EX1006
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`EX1007
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`EX1008
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`EX1009
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`EX1010
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`EX1011
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`EX1012
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`EX1013
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`EX1014
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`UPnP Newsletter 4Q00
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`EX1015
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` 1
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` For the benefit of the Board, Petitioner has used the same exhibit numbering
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`system for this Petition as used in the Inter Partes Review Petition for related U.S.
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`Patent 8,850,507 that Petitioner is concurrently filing.
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`Petition for Inter Partes Review of U.S. Patent 8,893,212
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`UPnP Newsletter 1Q01
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`UPnP Newsletter 2Q01
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`UPnP Newsletter 4Q01
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`UPnP Newsletter 1Q02
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`UPnP Device Architecture V.1 Specification (June 2000)
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`Microsoft Press Release re UPnP Formation (April 1999)
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`LinkSys WAP11 Product Page (June 2001)
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`LinkSys WAP11 User Guide (2001)
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`U.S. Patent No. 6,084,876 (“Kwok”)
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`U.S. Patent No. 7,031,335 (“Donahue”)
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`U.S. Patent No. 6,134,035 (“Krimmel”)
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`U.S. Provisional Application No. 60/174,706 (“Palm
`Provisional”)
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`EX1016
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`EX1017
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`EX1018
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`EX1019
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`EX1020
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`EX1021
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`EX1022
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`EX1023
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`EX1024
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`EX1025
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`EX1026
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`EX1027
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`Petition for Inter Partes Review of U.S. Patent 8,893,212 B2
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`I.
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`INTRODUCTION
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`Pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100, Roku, Inc.
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`(“Petitioner”) petitions for inter partes review (“IPR”) of claims 1-23 of U.S. Pat.
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`No. 8,893,212 (the “’212 patent,” EX1002), currently assigned to Convergent
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`Media Solutions, LLC (“Patent Owner”).
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`This Petition shows a reasonable likelihood that Petitioner will prevail with
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`respect to at least one of the claims 1-23 challenged under 35 U.S.C. § 314 (a).
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`Specifically, these claims are unpatentable under 35 U.S.C. § 103 (a) based on the
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`specific grounds listed below.
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`Grounds
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`References
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`Challenged Claims
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`Ground 1:
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`Elabbady, Palm and Zintel
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`Claims 1-18, 20, and
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`22-23
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`Elabbady, Palm, Zintel, and Janik
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`Claim 21
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`Elabbady, Palm, Zintel, and Vallone
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`Claim 19
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`Ground 2:
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`Ground 3:
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`Petitioner respectfully requests the Board to institute a trial for IPR and to
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`cancel claims 1-23.
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`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B)
`A. REAL PARTY IN INTEREST
`Pursuant to 35 U.S.C. §312(a)(2) and 37 C.F.R. §42.8(b)(1), Petitioner Roku,
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`Petition for Inter Partes Review of U.S. Patent 8,893,212 B2
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`Inc. is the real party in interest.
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`B. RELATED MATTERS
`Patent Owner has asserted the ’212 patent against Roku in Convergent
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`Media Solutions, LLC v. Roku, Inc., No. 3:15-cv-02163-M (N.D. Tex). This case
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`has been consolidated with cases Patent Owner filed against AT&T, Inc., Hulu,
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`LLC, and Netflix in lead case, Convergent Media Solutions, LLC v. AT&T, Inc.,
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`3:15-cv-2156-M (N.D. Tex.).
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`Patent Owner has also asserted U.S. Patent No. 8,850,507 against Roku.
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`Roku is simultaneously filing an IPR petition against this patent.
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`C. NOTICE OF COUNSEL AND SERVICE INFORMATION
`Pursuant to 37 C.F.R. §§ 42.8(b)(3), 42.8(b)(4) and 42.10(a), Petitioner
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`appoints Chun M. Ng (Reg. No. 36,878) as its lead counsel, and Vinay P. Sathe
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`(Reg. No. 55,595), Patrick J. McKeever (Reg. No. 66,019), Miguel J. Bombach
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`(Reg. No. 68,636), and Kevin E. Kantharia (Reg. No. 71,071) as its back-up
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`counsel. Petitioner also requests authorization to file a motion for Matthew C.
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`Bernstein to appear pro hac vice. Mr. Bernstein is an experienced patent litigation
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`attorney, is lead counsel for Petitioner in the district court litigation, and has an
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`established familiarity with the subject matter at issue in this proceeding.
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`Petitioner intends to file such a motion once authorization is granted. The above
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`attorneys are all at the mailing address of Perkins Coie LLP, 11988 El Camino
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`Petition for Inter Partes Review of U.S. Patent 8,893,212 B2
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`Real, Suite 350, San Diego, CA 92130, contact numbers of 858-720-5700 (phone)
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`and 858-720-5799 (fax), and the following email for service and all
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`communications:
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`PerkinsServiceConvergentMediaIPR@perkinscoie.com
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`Petitioner hereby consents to electronic service under 37 C.F.R. § 42.6(e).
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`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney executed Roku, Inc.
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`for appointing the above designated counsel is concurrently filed.
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`III. REQUIREMENTS FOR INTER PARTES REVIEW
`This Petition is complete, complies with all requirements including those
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`under 35 U.S.C. §312(a) and 37 C.F.R. §§ 42.8, 42.15, 42.104, 42.105, and thus
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`should be accorded a filing date as the date of filing of this Petition under 37 C.F.R.
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`§ 42.106.
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`A. GROUND FOR STANDING
`Pursuant to § 42.104(a), Petitioner certifies that the ’212 patent is available
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`for IPR and that Petitioner is not barred or estopped from requesting IPR
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`challenging claims of the ’212 patent on the grounds identified herein. Specifically,
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`Petitioner has the standing and meets all requirements to file this Petition under 35
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`U.S.C. §§ 315(a)(1), 315(b), 315(e)(1), and 325(e)(1) and 37 C.F.R. §§42.73(d)(1),
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`42.101, and 42.102.
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`Petition for Inter Partes Review of U.S. Patent 8,893,212 B2
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`B.
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`IDENTIFICATION OF CHALLENGE
`1.
`Pursuant to 37 C.F.R. §§ 42.104(b) and 42.22, the precise relief requested is
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`Claims Challenged
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`that the Board institute an IPR trial on and cancel Claims 1-23 of the ’212 patent
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`because they are invalid on the presented grounds and evidence.
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`The Prior Art
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`2.
`This Petition relies upon U.S. Patent No. 6,910,068 (“Zintel”) (EX1003);
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`U.S. Patent 7,483,958 (“Elabbady”) (EX1004); U.S. Provisional Appl. 60/278,804
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`(“Elabbady Provisional”) (EX1005); U.S. Patent 7,130,616 (“Janik”) (EX1007);
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`US Patent Appl. Pub. 2001/0042107 (“Palm”) (EX1006); and U.S. Patent
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`6,847,778 (“Vallone”) (EX1008). See also Exhibit List.
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`Supporting Evidence Relied Upon For The Challenge
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`3.
`The supporting Declaration of Dr. Wolfe (EX1009) and other supporting
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`evidence in the Exhibit List are filed herewith.
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`Statutory Ground(s) Of Challenge And Legal Principles
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`4.
`Pursuant to 37 C.F.R. § 42.104 (b)(2), the review of the challenged claims is
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`governed by pre-AIA 35 U.S.C. §§ 102 and 103 and AIA 35 U.S.C. §§ 311 to 319
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`and 325.
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`Claim Construction
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`5.
`The ’212 patent has not expired and the Patent Office must apply the
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`broadest reasonable interpretation (BRI) standard in this IPR to give each
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`Petition for Inter Partes Review of U.S. Patent 8,893,212 B2
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`challenged claim “its broadest reasonable construction in light of the specification
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`of the patent in which it appears” to a person of ordinary skill in the art
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`(“POSITA”). See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee, 136 S.
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`Ct. 2131, 2142-46 (2016).
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`6. How Claims Are Unpatentable Under Statutory Grounds
`Pursuant to 37 C.F.R. § 42.104 (b)(4), Section VII provides an explanation
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`of how claims 1-23 are unpatentable 35 U.S.C. § 103, including the identification
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`of where each claim element is found in the cited prior art.
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`IV. OVERVIEW OF THE ’212 PATENT
`A.
`PRIORITY DATE OF THE ’212 PATENT
`The ’212 patent claims priority via a chain of continuation applications to
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`application No. 10/434,032, filed on May 8, 2003, now Pat. No. 7,987,491.
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`The ’212 patent claims the benefit of priority to three U.S. provisional applications
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`with U.S. Provisional App. 60/379,635, filed May 10, 2002, being the earliest
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`filing. Although Petitioner does not concede that the Challenged Claims are
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`supported by any provisional application such that they can be accorded an early
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`priority date, the cited prior art pre-dates May 10, 2002, the earliest claimed
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`priority date.
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`SUMMARY OF THE ’212 PATENT
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`B.
`The Challenged Claims of the ’212 patent generally relate to browsing and
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`selecting Internet content on one device and watching it on another. As shown
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`Petition for Inter Partes Review of U.S. Patent 8,893,212 B2
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`herein, the claimed subject matter is merely an obvious application of prior art
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`technologies such as Universal Plug and Play (UPnP). The ’212 specification even
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`states that “it may be desirable” to use UPnP to practice the claimed invention.
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`EX1002 at 54:4-12; see also EX1009 at ¶36.
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`The “Background of the Invention” section of the ’212 patent acknowledges
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`that “‘convergence’ of television (TV) and computer technology has been a major
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`focus of innovation and commercial development since the early 1990s” (EX1002
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`at 1:20-31), but notes a “divide” between “how TV-centric and computer-centric
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`media are used.” Id. at 1:32-37. The ’212 patent suggests that “variant device sets
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`and applications such as PDAs, tablets, and video games” reflect a desire to
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`integrate user entertainment and information experiences. Id. at 1:45-49. Overall,
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`the ’212 patent asserts that the prior art lacked “a broadly flexible, powerful,
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`selective, and simple user interface paradigm for browsing hypermedia across
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`multiple device sets … and provision of an effective method for independent
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`systems to coordinate browsing activities to enable such a user interface to be
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`employed across multiple independent systems.” Id. at 2:55-63.
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`The ’212 patent’s purported solution to this perceived need comprises
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`“systems and methods for navigating hypermedia using multiple coordinated
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`input/output device sets” which “allow a user… to control what resources are
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`presented on which device sets.” Id. at 3:4-14. For example, a Graphic User
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`Petition for Inter Partes Review of U.S. Patent 8,893,212 B2
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`Interface (GUI) may be presented on one device which allows a user to select a
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`“frame” on the same or a different device for a resource to be presented in. Id. at
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`5:12-40. In order to present a resource on a different system, the device may
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`transfer a “link activation message,” which may be in the form of a Universal
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`Resource Locator (URL), Universal Resource Name (URN), or other Universal
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`Resource Identifier (URI). Id. at 5:41-47; 7:35-39. The term “hypermedia” refers
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`to “any kind of media that may have the effect of a non-linear structure of
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`associated elements,” and includes “graphics, video, and sound.” Id. at 7:5-16.
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`The media content can be any form of audio or video (id. at 19:65-20:19) and can
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`come from any source, such as the Internet (id. at 15:8-19). The device sets may
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`include laptops, desktops, tablets, personal digital assistants (PDAs), TVs, set-top
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`boxes, videocassette recorders (VCRs), media players, music systems including
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`speakers, and digital video recorders (DVRs). Id. at 16:21-36; 16:44-48; 18:25-53;
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`19:25-40.
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`The ’212 patent notes that existing standards such UPnP can be used to
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`coordinate the input/output device sets using “a device set management process
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`that performs basic setup and update functions… to pre-identify and dynamically
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`discover device sets.” Id. at 37:29-31; 37:38-41. UPnP “enable[s] basic
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`communications among the devices, to provide discovery, presence, registration,
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`and naming services to recognize and identify devices as they become available to
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`Petition for Inter Partes Review of U.S. Patent 8,893,212 B2
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`participate in a network, and to characterize their capabilities.” Id. at 37:41-57;
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`54:8-15; 58:55-57. The ’212 patent also acknowledges that UPnP supports remote
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`command and control across networked devices. Id. at 59:43-45.
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`C. LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art with regard to the ’212 patent would
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`have at least a Bachelor of Science or equivalent degree in electrical engineering,
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`computer engineering, or computer science with at least 2 years of experience in a
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`technical field related to multimedia technology and computer systems. EX1009 at
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`¶¶32-33.
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`PROPOSED CLAIM CONSTRUCTION
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`D.
`The Board should apply the BRI standard in this IPR to give each challenged
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`claim “its broadest reasonable construction in light of the specification of the
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`patent in which it appears” to POSITA. 37 C.F.R. § 42.100(b); see Cuozzo, 136 S.
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`Ct. at 2144. Such BRI constructions do not necessarily reflect appropriate claim
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`constructions to be used in litigation and other proceedings where a different claim
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`construction standard applies. For the purposes of this petition, and to comply with
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`37 C.F.R. §§ 42.100(b) and 42.104(b)(3), Petitioners propose that the BRI of all
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`claim terms in the ’212 patent is their plain and ordinary meaning.
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`V. BACKGROUND OF THE PRIOR ART
`As mentioned above, the Challenged Claims are directed to obvious
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`applications of the prior art UPnP protocol. Provided below is a brief introduction
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`Petition for Inter Partes Review of U.S. Patent 8,893,212 B2
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`to UPnP, with a focus on aspects relevant to the Challenged Claims. See also
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`generally EX1010-EX1013 (prior art articles and papers providing overviews of
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`UPnP); see also EX1009 at ¶¶36-53.
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`The UPnP Forum was formed by Microsoft, Intel, and others in April 1999
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`to “promot[e] Universal Plug and Play networking protocols and device
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`interoperability standards based on open Web-based protocols.” EX1021 at 1
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`(Microsoft Press Release). The basic architecture of UPnP was well established by
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`June 2000, when the UPnP Device Architecture v1.0 specification (EX1020) was
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`published. Numerous articles were published about UPnP and its potential
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`applications. See, e.g., EX1011; EX1012; EX1013. By early 2001, more than 300
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`companies had joined the UPnP Forum. EX1016 at 1.
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`“The basic building blocks of a UPnP network are devices, services, and
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`control points.” EX1010 at 10. Devices on a network perform one or more
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`services. “For instance, a VCR device may consist of a tape transport service, a
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`tuner service, and a clock service.” Id. at 10-11. Control points are controllers that
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`allow users to interact with devices and their services. Id. at 11-12.
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`As shown below, a control point may exist on the controlled device itself or
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`on other devices that remotely control the controlled device over the network.
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`EX1010 at 10 (excerpted left); EX1012 at 66 (excerpted right). See also, e.g.,
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`EX1010 at 24 (wireless laptop as control point for DVD player); EX1011 at 8-9
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`(control points on “PCs, Internet appliances, and mobile devices”).
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`UPnP facilitates device interaction through device discovery, description,
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`and control. EX1010 at 18-19; see also EX1009 at ¶¶46-51. Discovery is the
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`process by which devices on the network find one another. EX1010 at 18-19.
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`UPnP uses a protocol called Simple Service Discovery Protocol (SSDP) for device
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`discovery. Id. SSDP allows devices to advertise the services they provide and also
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`allows control points to search for and identify devices of interest. Id. at 14-15.
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`Description is the process by which devices learn about one another’s
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`capabilities. Id. at 19. Once a control point has discovered a device of interest, it
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`can obtain a device description with basic information about the device and the
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`services it performs. Id. The control point can then obtain a service description
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`with details about a service of interest and how to interact with it. Id. The figure
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`below illustrates the description process.
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`EX1020 at 0014.
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`Control is the process by which the control point controls a device. EX1010
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`at 19. Because the information obtained during description describes the services
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`performed by the remote device and how to interact with them, the control point
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`can use that information to send commands to the controlled device. Id. The
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`figure below illustrates the control process.
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`EX1020 at 0032.
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`UPnP uses a number of communication protocols stacked on top of a
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`foundational Internet Protocol (IP) layer.
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`EX1010 at 12-13 (excerpted annotated figure above); see also id.at 13-16
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`(discussing protocols). As shown above, SSDP (including HTTPMU & HTTPU)
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`is used for discovery, HTTP is used for description, and SOAP and HTTP are used
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`for control. See also EX1020 at 0002 (complete protocol stack); 0007 (discovery);
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`0030 (description); 0032-33 (control).
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`From early on, the UPnP Forum included working committees focused on
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`different applications of UPnP, including the Audio/Video Working Committee
`
`which included Microsoft, Broadcom, Philips, Sony, and others. EX1015 at 7. By
`
`late 2000, the Audio/Video working committee was working on “services that
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`10
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`enable control of peer-to-peer AV streaming.” Id. By early 2001, the committee
`
`had developed a Device Interaction Model which enabled a User Control Point to
`
`discover and select AV content on the network, identify and select an appropriate
`
`rendering device, and control the playback of that content to provide “a consistent
`
`entertainment experience where all AV content in the home is available, browsable,
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`15
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`and controllable from any control point, and can be enjoyed on any compatible
`
`rendering device.” EX1016 at 0007-0008. In 2001, the committee worked on
`
`“audio streaming scenarios where audio content is located, browsed, and streamed
`
`from a storage device to a player device” (EX1017 at 0006), such as MP3
`
`streaming via HTTP (EX1018 at 0004). By the end of 2001, UPnP members had
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`20
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`successfully tested scenarios in which a UPnP control point from one manufacturer
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`Petition for Inter Partes Review of U.S. Patent 8,893,212 B2
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`could locate content on a device from another manufacturer, and control the
`
`rendering of that content on a device from a third manufacturer:
`
`
`
`EX1019 at 0001-0002.
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`5
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`Therefore, the supposedly inventive concept described and claimed in
`
`the ’212 patent was well-known to those of skill in the art prior to the earliest
`
`claimed priority date of the ’212 patent, and further described specifically in the
`
`prior art references relied upon by this Petition.
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’212 PATENT IS UNPATENTABLE
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`10
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`Claims 1-23 are unpatentable under 35 U.S.C. § 103(a) for merely reciting
`
`known, predictable and/or obvious combinations of the cited prior art references.
`
`IDENTIFICATION OF THE REFERENCES AS PRIOR ART
`
`A.
`This Petition relies on the following prior art references, none of which were
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`15
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`of record during the original prosecution of the ’212 patent.
`
`-14-
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`

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`Petition for Inter Partes Review of U.S. Patent 8,893,212 B2
`
`Zintel (EX1003): Zintel is a Microsoft patent that was filed March 16, 2001
`
`and published July 21, 2005. Zintel is a continuation-in-part that claims priority to
`
`U.S. Appl. 09/496318 filed February 1, 2000 and to three provisional applications.
`
`Zintel is prior art at least under 35 U.S.C. §102(e).
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`5
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`Elabbady (EX1004/EX1005): Elabbady is another Microsoft patent.
`
`Elabbady was filed March 26, 2002 and claims priority to Provisional Appl.
`
`60/278804 (EX1005), filed March 26, 2001. Elabbady incorporates-by-reference
`
`into its disclosure the Elabbady Provisional in its entirety. EX1004 at 1:7-11; see
`
`MPEP § 2163.07(b) (“The information incorporated is as much a part of the
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`10
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`application as filed as if the text was repeated in the application, and should be
`
`treated as part of the text of the application as filed.”); see also, e.g., Liebel-
`
`Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1381-82 (Fed. Cir. 2007) (claims
`
`anticipated by prior art patent that incorporated-by-reference another prior art
`
`patent); Harari v. Lee, 656 F.3d 1331, 1335 (Fed. Cir. 2011) (holding broad and
`
`15
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`unequivocal language was effective to incorporate-by-reference an entire
`
`application’s disclosure).
`
`Elabbady is Entitled to the Priority Date of Its Provisional
`
`Elabbady was filed March 26, 2002 and is 102(e) prior art based on that
`
`filing date. Elabbady is also effective as of the filing date of the Provisional
`
`20
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`application, i.e., March 26, 2001. See Dynamic Drinkware v. Nat’l Graphics, 800
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`-15-
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`Petition for Inter Partes Review of U.S. Patent 8,893,212 B2
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`F.3d 1375, 1381-82 (Fed. Cir. 2015) (“A reference patent is … entitled to claim the
`
`benefit of the filing date of its provisional application if the disclosure of the
`
`provisional application provides support for the claims in the reference patent in
`
`compliance with § 112, ¶ 1.”); see also IPR2014-01276, Paper 40 at 22 n.9 (Feb.
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`5
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`17, 2016). Both dates pre-date the earliest provisional date of the ’212 patent.
`
`Thus, Elabbady is a 102(e) prior art reference as of the filing date of its provisional
`
`application, i.e., March 26, 2001.
`
`The Elabbady Provisional provides written description support for at least
`
`claim 1 of the issued Elabbady patent as shown in the chart below.2 To the extent
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`10
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`there is a separate requirement that the subject matter of the provisional application
`
`
`
` 2
`
` Petitioner does not have the burden to establish an early priority date for
`
`Elabbady unless PO shows that Elabbady is not effective prior art based on its
`
`March 26, 2002 filing date. See Dynamic Drinkware, 800 F.3d at 1379 (initial
`
`burden satisfied by showing reference was prior art under 102(e)(2) even without
`
`early priority date); see also IPR2014-01093, Paper 69 at 9-10 (Jan. 7, 2016).
`
`Notwithstanding, given the word count constraints for reply briefs, Petitioner has
`
`identified written description support for claim 1 here. Petitioner reserves the right
`
`to provide additional evidence and discussion if PO attempts to swear behind the
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`March 26, 2002 filing date of the Elabbady patent.
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`Petition for Inter Partes Review of U.S. Patent 8,893,212 B2
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`is carried over into the reference patent,3 that requirement is clearly met here where
`
`the provisional application is incorporated-by-reference in its entirety.
`
`Elabbady Claim 1
`A system to share media content stored
`on a home network among devices of
`the home network, the system
`comprising:
`
`a processor; and
`memory accessible to the processor, the
`memory comprising:
`
`a content database storing media content
`files available for sharing among the
`devices of the home network, the home
`network utilizing universal plug-and-
`play (UPnP) protocols;
`
`a media library service to provide
`metadata associated with the media
`content files available for sharing to a
`media catalog service;
`
`a content server to:
`receive a request from a home network
`device to access a particular media
`content file;
`
`Elabbady Provisional
`See EX1005 at 1-2; 15-17, 27, 42-46.
`
`A PC with media store and library
`service would include a processor and
`memory. EX1005 at 1-2, 27.
`
`The media library service describes
`collection of content stored on the PC
`and available for sharing. See EX1005
`at 1-2, 27, 42-46; see also EX1005 at 3
`(showing file / content database), 45
`(showing music library).
`
`The network uses UPnP protocols. See
`EX1005 at 1-2, 15-17, 27.
`
`The Elabbady provisional discloses a
`media library service that publishes
`metadata to the catalog service. See
`EX1005 at 1-2, 25-36. 40, 45-46.
`
`The Elabbady Provisional discloses a
`player device using URLs to download
`content from a “content server.”
`EX1005 at 2. See also, e.g., EX1005 at
`
`
`
` 3
`
` See IPR2014-01093, Paper 69 at 11 (citing Giacomini, 612 F.3d 1380, 1383 (Fed.
`
`Cir. 2010).
`
`-17-
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`Petition for Inter Partes Review of U.S. Patent 8,893,212 B2
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`15-17.
`
`
`The Elabbady Provisional discloses a
`DRM client which services requests for
`portable media licenses from the license
`generator. See, e.g., EX1005 at 3-4, 40,
`54-55, 61, 64-65.
`
`The Elabbady Provisional discloses a
`license generator on the content server
`PC which processes requests for media
`playing licenses and grants portable
`media licenses to authorized devices.
`See, e.g., EX1005 at 3-4, 40, 54-55, 61,
`64-65.
`
`retrieve the particular media content file
`from the content database; and
`send the particular media content file to
`the home network device;
`a digital rights management client to:
`determine whether an original media
`playing license associated with the
`particular media content file is
`available; and
`generate a temporary media playing
`license from the original media playing
`license, the temporary media playing
`license specifying restrictions relating to
`playback of the particular media content
`file via the home network device;
`a license generator to:
`receive a request from the home
`network device for a media playing
`license relating to the particular media
`content file;
`determine whether the home network
`device is properly registered;
`send a request to the digital rights
`management client for the temporary
`media playing license relating to the
`particular media content file when the
`home network device is properly
`registered; and
`send the temporary media playing
`license to the home network device.
`
`
`Palm (EX1006): Palm is a published Broadcom patent application filed
`
`January 8, 2001 and published November 15, 2001. Palm claims priority to
`
`Provisional Appl. 60/174706 (EX1027) filed January 6, 2000. Palm is prior art at
`
`5
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`least under 35 U.S.C. §102(a) and (e).
`
`-18-
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`

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`Petition for Inter Partes Review of U.S. Patent 8,893,212 B2
`
`Janik (EX1007): Janik is a patent that was filed August 7, 2001 and
`
`published June 6, 2002. Janik is a continuation-in-part of Appl. No. 09/841268,
`
`filed on April 24, 2001 and claims priority to Provisional Appl. Nos. 60/199638,
`
`60/268434, and 60/223872 filed on April 25, 2000, February 12, 2001, and August
`
`5
`
`8, 2000, respectively. Janik is therefore prior art at least under 35 U.S.C. §102(e).
`
`Vallone (EX1008): Vallone is a Tivo patent. Vallone was filed March 30,
`
`2000 and issued January 25, 2005. Vallone claims priority to Provisional App.
`
`09/539433, which was filed on March 30, 1999. Vallone is therefore prior art at
`
`least under 35 U.S.C. §102(e).
`
`10
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`SUMMARY OF INVALIDITY POSITIONS
`
`B.
`The combination of Elabbady, Palm, and Zintel renders obvious ’212 claims
`
`1-18, 20, and 22-23. EX1009 at ¶¶35, 152. Like the ’212 patent, Elabbady teaches
`
`the use of a device to locate content and then direct another device on the network
`
`to play that content. Palm discloses retrieving multimedia catalog data from
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`15
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`servers over the Internet. Both Elabbady and Palm disclose the use of UPnP and
`
`Zintel describes in detail how UPnP devices discover one another, exchange
`
`information about their capabilities, and control one another in accordance with
`
`UPnP protocols.
`
`-19-
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`

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`Petition for Inter Partes Review of U.S. Patent 8,893,212 B2
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`The combination of Elabbady, Palm, Zintel, and Janik renders obvious claim
`
`21. This claim adds “enhancement content,” a feature that the patent itself admits
`
`was well-known and widely used.
`
`The combination of Elabbady, Palm, Zintel, and Vallone renders obvious
`
`5
`
`claim 19. This claim adds limitations describing well known features, such as
`
`bookmarking and presenting an identifier for played content.
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`10
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`VII. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY OF CLAIMS 1-23 OF THE ’212 PATENT
`A. GROUND 1: CLAIMS 1-18, 20, and 22-23 ARE OBVIOUS OVER
`ELABBADY, PALM, AND ZINTEL
`1.
`
`The Prior Art
`a.
`Elabbady (EX1004) is a Microsoft patent that describes a system that allows
`
`Elabbady (EX1004; EX1005)
`
`a variety of client devices to access a catalog of multimedia content, including
`
`15
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`Internet content, select content i