Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 7
`Entered: March 3, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`CONVERGENT MEDIA SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01812
`Patent 8,640,183 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
`
`
`
`
`
`
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`

`

`IPR2016-01812
`Patent 8,640,183 B2
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`
`I. INTRODUCTION
`
`A. Background
`Netflix, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) to institute
`inter partes review of claims 1–5, 16, 18–20, 24, 32, 34, 35, 37, 38, 42, 44,
`47, 50–55, and 58–60 of U.S. Patent No. 8,640,183 B2 (Ex. 1032, “the ’183
`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 1–5, 16, 18–
`20, 24, 32, 34, 35, 37, 38, 42, 44, 47, 50–55, and 58–60 of the ’183 patent.
`Accordingly, we institute an inter partes review of these claims.
`
`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. Netflix Inc., Case No. 3:15-cv-02160 (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 Roku, Inc. Pet. 2.
`Patent Owner identifies the same matters. Paper 4, 2.
`
`C. Evidence Relied Upon
`
`Reference
`
`Date
`
`Zintel
`
`US 6,910,068 B2
`
`Mar. 16, 2001 (filed)
`
`Elabbady US 7,483,958 B1
`
`Mar. 26, 2002 (filed)
`
`Palm
`
`US 2001/0042107 A1 Jan. 8, 2001 (filed)
`
`Exhibit
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1006
`
`2
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`IPR2016-01812
`Patent 8,640,183 B2
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`
`Reference
`
`Date
`
`Katz
`
`US 7,103,906 B1
`
`Sept. 29, 2000 (filed)
`
`Exhibit
`
`Ex. 1033
`
`
`Petitioner also relies on the Declaration of Andrew Wolfe, Ph.D. Ex. 1028.
`D. The Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`References
`Elabbady, Palm, and
`Zintel
`Elabbady, Palm,
`Zintel, and Katz
`
`
`
`Claims Challenged
`Basis
`§ 103(a) 1–5, 16, 18–20, 24, 32, 34, 35, 37,
`38, 44, 47, 50–52, 55, and 58–60
`§ 103(a) 42, 53, and 54
`
`II. ANALYSIS
`
`A. The ’183 Patent
`The ’183 patent relates to systems and methods for navigating
`hypermedia using multiple coordinated input/output device sets. Ex. 1032,
`3:13–15. The method allows “a user and/or an author to control what
`resources are presented on which device sets.” Id. at 3:15–17. The device
`sets may include laptops, desktops, tablets, personal digital assistants
`(PDAs), televisions (TVs), set-top boxes (STBs), video cassette recorders
`(VCRs) and digital video recorders (DVRs). Id. at 16:28–43, 18:32–59,
`19:32–47. The term hypermedia refers to “any kind of media that may have
`the effect of a non-linear structure of associated elements,” and includes
`“graphics, video, and sound.” Id. at 7:13–22. The ’183 patent characterizes
`video and sound as examples of “continuous media,” or a “representation of
`‘content’ elements that have an intrinsic duration, that continue (or extend)
`and may change over time.” Id. at 20:5–9.
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`
`The multiple input/output device sets described in the ’183 patent may
`be coordinated using “a device set management process that performs basic
`setup and update functions . . . to pre-identify and dynamically discover
`device sets.” Ex. 1032, 37:36–43. This management process can “be based
`on and compatible with related lower-level processes and standards defined
`for linking such existing devices and systems . . . based on UPnP, HAVi,
`OSGi, Rendezvous and/or the like.” Id. at 37:46–50. The process enables
`basic communications among the devices in the device set, and “provide[s]
`discovery, presence, registration, and naming services to recognize and
`identify devices as they become available to participate in a network, and to
`characterize their capabilities.” Id. at 37:50–55.
`Claims 1 and 58–60 of the ’183 patent are independent. Claim 1,
`reproduced below, is illustrative. Each of the other challenged claims
`depends from claim 1 or claim 60.
`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:
`
`making available to a user a first user interface that allows
`the user to select a continuous media content to be presented to
`the user, wherein the continuous media content includes a set of
`encoded video data;
`
`making available to the user a second user interface that
`allows the user to select to have the continuous media content
`presented on either one of the first computerized device set and
`the second computerized device set;
`second
`the
`at
`
`receiving discovery
`information
`computerized device set
`in accordance with a device
`management discovery protocol that is implemented at a
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`
`communication layer above an internet protocol layer, and
`wherein
`the discovery
`information allows
`the second
`computerized device set to determine that the first computerized
`device set is capable of receiving the continuous media content
`and playing the continuous media content;
`
`wherein, in the event the user selects, via the second user
`interface, to have the continuous media content presented on the
`second computerized device set, the second media player
`decoding the continuous media content for presentation on the
`second computerized device set;
`
`wherein, in the event the user selects, via the second user
`interface, to have the continuous media content presented on the
`first computerized device set, wirelessly transmitting, in
`accordance with a wireless local area network protocol, at least a
`resource indicator, wherein the resource indicator comprises at
`least one of a URL, URI, and URN, from the second
`computerized device set to the first computerized device set,
`wherein
`the resource
`indicator facilitates obtaining
`the
`continuous media content for presentation to the user on the first
`computerized device set; and
`
`wherein the continuous media content is not presented on
`the second computerized device set during presentation on the
`first computerized device set, and the first user interface and the
`second user interface together comprise a unified media selection
`and presentation user interface, wherein the unified media
`selection and presentation user interface presents user input
`controls for selection of the continuous media content and for
`selection of either one of the first computerized device set and
`the second computerized device set for presentation of the
`continuous media content.
`Ex. 1032, 164:22–165:6.
`B. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
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`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 requests construction of two terms that appear in all of the
`independent claims: “the resource indicator comprises at least one of a
`URL, URI, and URN,” and “a unified media selection and presentation
`[user] interface.” Pet. 8–9. We explicitly construe these terms below. No
`other terms of the ’183 patent need explicit construction, and all are
`considered to have their plain and ordinary meaning.
`1. the resource indicator comprises at least one of a URL, URI,
`and URN
`Petitioner argues this term, appearing in claim 1, should be construed
`to mean “the resource indicator includes at least one URL, URI, or URN.”
`Pet. 8. Petitioner argues this construction is supported by claims 55–57,
`which depend from claim 1, and respectively require the resource indicator
`to be either a URL (claim 55), a URI (claim 56), or a URN (claim 57). Id.
`Petitioner argues that because claims 55–57 cannot be broader than claim 1,
`the resource indicator required by claim 1 must be at least one of a URL,
`URI, or URN, and not at least one of each of them. Id. Petitioner further
`argues that URLs (Uniform Resource Locators) and URNs (Uniform
`Resource Names) are known alternatives for identifying resources, and are
`particular examples of URIs (Uniform Resource Identifiers). Id. (citing Ex.
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`1038, 484).
`After considering the Specification and claims, we agree with
`Petitioner that the plain and ordinary meaning of the term “the resource
`indicator comprises at least one of a URL, URI, and URN” is that “the
`resource indicator includes at least one URL, URI, or URN.” The ’183
`patent indicates that URLs, URIs, and URNs are typical mechanisms for
`addressing Internet resources. Ex. 1032, 7:43–47. Claims 56–58,
`respectively, specifically require the resource indicator to be either a URL,
`URI, or URN. Id. at 168:26–31. Thus, a resource indicator comprising at
`least one of a URL, URI, and URN, as recited in claims 1 and 58–60 refers
`to a resource indicator that is at least one member of the group consisting of
`a URL, URI, and URN.
`2. unified media selection and presentation user interface
`Petitioner argues the broadest reasonable interpretation of this term is
`“one or more user interfaces that, together, present controls for selecting
`continuous media content and a continuous media content presentation
`device.” Pet. 9. That is the construction determined by the Board in a
`previous proceeding involving the same patent. See Unified Patents Inc. v.
`Convergent Media Solutions, LLC., Case IPR2015-00047, Paper 13, 8
`(PTAB April 13, 2016).
`The term “unified media selection and presentation user interface”
`appears in each of independent claims 1 and 58–60 in the phrase:
`the first user interface and the second user interface together
`comprise a unified media selection and presentation user
`interface, wherein the unified media selection and presentation
`user interface presents user input controls for selection of the
`continuous media content and for selection of either one of the
`first computerized device set and the second computerized
`device set for presentation of the continuous media content.
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`Ex. 1032, 164:65–165:6 (emphasis added).
`
`Other than in claims 1 and 58–60, the term “unified media selection
`and presentation user interface” does not appear in the Specification. We
`construe the term to have its ordinary and customary meaning, as would
`have been understood by one of ordinary skill in the art. The term “unify”
`means “to make into a unit or a coherent whole: UNITE.” Ex. 3001, 1290
`(Webster’s Ninth New Collegiate Dictionary (Merriam-Webster, 1989)).
`The term “unite” means “to become one or as if one,” and “to act in
`concert.” Id. at 1291 (emphasis added). Thus, for purposes of this Decision,
`we find the plain and ordinary meaning of the term “unified media selection
`and presentation user interface” to mean one or more user interfaces that,
`together, present controls for selecting continuous media content and a
`continuous media content presentation device.
`C. Alleged Obviousness of claims 1–5, 16, 18–20, 24, 32, 34, 35, 37,
`38, 44, 47, 50–52, 55, and 58–60 over Elabbady, Palm, and Zintel
`Petitioner argues claims 1–5, 16, 18–20, 24, 32, 34, 35, 37, 38, 44, 47,
`50–52, 55, and 58–60 of the ’183 patent are obvious under 35 U.S.C.
`§ 103(a) in view of the combination of Elabbady, Palm, and Zintel. Pet. 24–
`59. Upon review of the Petition, and for the reasons discussed below, we are
`persuaded that Petitioner has demonstrated a reasonable likelihood of
`establishing the unpatentability of claims 1–5, 16, 18–20, 24, 32, 34, 35, 37,
`38, 44, 47, 50–52, 55, and 58–60 over the combination of Elabbady, Palm,
`and Zintel.
`1. Overview of Elabbady (Ex. 1004)
`Elabbady discloses “methods and systems for sharing media content
`between various devices,” and “incorporates by reference the entire
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`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.
`
`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,
`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
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`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.
`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
`
`
`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, 1:7–
`11.
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`command to the selected media device with a URL of the selected 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
`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
`
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`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, including all or parts of a song, album, and
`the like. Id. ¶¶ 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, which “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 an initial discovery message
`that allows other UPnP devices 103 on the network to learn about the
`capabilities of device 102 by requesting its device description from a URL
`contained in the discovery message. Id. at 2:67–3:3. The device description
`includes a list of URLs for 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 networks enable 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.” Ex. 1003, 6:48–52 (emphases added). Control of
`UPnP devices and resources is enabled by Control Points (CPs), which are
`“typically implemented on devices that have a user interface.” Id. at 6:64–
`65. Control Points can “aggregat[e] 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
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`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 offering 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. 21. Petitioner argues Elabbady teaches using a PDA as a
`control point for browsing and selecting media content, and playing the
`selected content on a selected device, and Palm teaches the PDA can itself
`be the device that downloads and plays selected media content. Id. at 23.
`Therefore, Petitioner argues, the combination teaches using a PDA to
`browse and select media content, and to choose to play the media content on
`the PDA itself or on another device. Id. Petitioner argues a person of
`ordinary skill in the art would have been motivated to combine the teachings
`of Elabbady and Palm because the combination would have allowed
`Elabbady’s selected media content to be played back on the PDA when other
`media players were not available. Id.
`Petitioner further argues a person of ordinary skill in the art would
`have been motivated to combine the teachings of Elabbady and Palm, both
`of which describe UPnP connected devices, in the manner proposed by
`Petitioner, because “Zintel even points out 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,
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`to any device on the network, under the control of any device on the
`network.’” Pet. 22 (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,
`which are implemented using UPnP protocol. Zintel explicitly teaches using
`UPnP protocol to implement systems like those described in Elabbady and
`Palm in order “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, Zintel
`explicitly provides reasoning for combining the features of Elabbady and
`Palm that allow media content to be transferred from any device on the
`network, to any device, and under the control of any device.
`5. Comparison of Claims 1–5,16, 18–20, 24, 32, 34, 35, 37, 38, 44,
`47, 50–52, 55, and 58–60 to the Combination of Elabbady, Palm,
`and Zintel
`Petitioner has demonstrated how each of the limitations required by
`claims 1–5, 16, 18–20, 24, 32, 34, 35, 37, 38, 44, 47, 50–52, 55, and 58–60
`is adequately accounted for by the combined teachings of Elabbady, Palm,
`and Zintel. See Pet. 24–59.
`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 making a first user interface
`available to the user in the second computerized device set to allow the user
`to select continuous media content in the form of encoded video. Ex. 1032,
`164:29–32. Elabbady discloses a PDA Control Point having a user interface
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`that allows the user to browse and select media content from a media catalog
`service. Pet. 26–27; Ex. 1004, 10:15–23, 12:18–27; Ex. 1005, 2, 15–16.
`Elabbady also discloses the selected media content can be encoded video.
`Pet. 27–28; Ex. 1004, 6:66–7:10; Ex. 1005, 7, 27, 61. We are persuaded that
`Petitioner has sufficiently accounted for this claim limitation.
`Claim 1 requires making a second user interface available to the user
`in the second computerized device set to allow the user to select to have the
`media content presented on the first or second device sets. Ex. 1032,
`164:33–36. Elabbady discloses the PDA Control Point allows a user to
`select a media playback device on which to play selected media content,
`where the media playback device is selected from a list of media playback
`devices on the network. Pet. 28–29; Ex. 1005, 16. Palm discloses the PDA
`itself can be a media playback device on the network. Pet. 29; Ex. 1006 ¶¶
`65, 71. Therefore, Petitioner argues, the combined teachings of Elabbady
`and Palm suggest “a PDA could be used to browse the catalog and then
`select a playback device, one of which would be the PDA itself.” Pet. 29.
`Petitioner argues combining the teachings of Elabbady and Palm in this way
`would have been “consistent with Zintel’s teachings that ‘UPnP makes it
`possible 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.’” Pet. 30 (quoting Ex. 1003, 5:26–31)
`(emphases added). We are persuaded that Petitioner has sufficiently
`accounted for this claim limitation.
`Claim 1 requires receiving discovery information via a device
`management discovery protocol that is implemented above an internet
`protocol layer, and that allows the second computerized device set to
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`determine the first computerized device set is capable of receiving and
`playing the continuous media content. Ex. 1032, 164:37–45. The ’183
`patent discloses the discovery management protocol can be, for example,
`UPnP protocol. Id. at 37:35–55. Elabbady and Palm both disclose using
`UPnP protocol for device discovery. Pet. 30; see also 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 the Controlled Device,
`and how to interact with and control those services. Pet. 30–31 (quoting Ex.
`1003 8:57–67) (emphasis omitted); see also Ex. 1003 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. Pet. 32–
`33; see also Ex. 1003, 20:54–58, 25:47–58, Fig. 27. We are persuaded that
`Petitioner has sufficiently accounted for this claim limitation.
`Claim 1 requires the second computerized device set to decode the
`selected media content when the user chooses to present the selected media
`content on the second computerized device set. Ex. 1032, 164:46–51.
`Elabbady discloses how a selected device, which could be the PDA itself per
`the teachings of Palm, decodes received content for presentation. Pet. 34;
`see also Ex. 1004 10:32–42; Ex. 1005, 2, 4. We are persuaded that
`Petitioner has sufficiently accounted for this claim limitation.
`Claim 1 requires the second computerized device set to wirelessly
`transmit a URL, URI, or URN to the first computerized device set to help
`the first computerized device set obtain the selected media content when the
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`user chooses to present the selected media content on the first computerized
`device set. Ex. 1032, 164:52–62. Elabbady discloses how the PDA Control
`Point (second device) wirelessly transmits a URL for selected media content
`to a selected digital A/V player (first device). Pet. 35; see also Ex. 1005,
`15–17. Petitioner argues the URL facilitates obtaining the media content
`because “the URL allows the digital A/V player to download the content.”
`Pet. 35; Ex. 1005, 16. We are persuaded that Petitioner has sufficiently
`accounted for this claim limitation.
`Claim 1 requires not presenting the selected media content on the
`second computerized device set while it is being presented on the first
`computerized device set. Ex. 1032, 164:63–65. Elabbady discloses how the
`PDA Control Point selects a networked device to play selected media
`content. Pet. 36; Ex. 1005, 16, 42. Petitioner argues “[n]othing in Elabbady
`suggests that the selected content item is automatically presented on the
`device with the player control point where a different device is selected as
`the player.” Pet. 36. Petitioner further argues that a person of ordinary skill
`in the art would have understood that when another device is selected to
`playback content, “the content item is played only on that device, not also on
`the PDA (second device set).” Id. at 36–37. We are persuaded that
`Petitioner has sufficiently accounted for this claim limitation.
`Finally, claim 1 requires the first and second user interfaces to
`comprise a unified media selection and presentation interface having
`controls to select media content and controls to select the first or second
`computerized device sets. Ex. 1032, 164:65–165:6. Petitioner argues the
`combination of Elabbady and Palm teaches a first user interface allowing
`content selection and a second user interface allowing selection of the first
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`or second device sets as discussed supra. Petitioner argues Elabbady
`discloses how the first and second user interfaces can reside on the same
`PDA. Pet. 37 (citing Ex. 1005, 15–16, 45–46). Petitioner, relying on its
`expert, argues a PDA so configured “provides a unified media selection and
`presentation user interface” as required by claim 1. Pet. 37 (citing Ex. 1028
`¶¶ 551–553). We are persuaded that Petitioner has sufficiently accounted
`for this claim limitation.
`Petitioner has demonstrated how the combined teachings of Elabbady,
`Palm, and Zintel adequately accounts for each of the limitations required by
`claim 1 for the reasons discussed above. Petitioner has similarly shown how
`the combined teachings of Elabbady, Palm, and Zintel adequately accounts
`for each of the limitations required by claims 2–5, 16, 18–20, 24, 32, 34, 35,
`37, 38, 44, 47, 50–52, 55, and 58–60. See Pet. 37–59. Accordingly, on this
`record, we are persuaded that Petitioner has shown a reasonable likelihood
`that it would prevail in establishing the unpatentability of claim 1–5, 16, 18–
`20, 24, 32, 34, 35, 37, 38, 44, 47, 50–52, 55, and 58–60 over Elabbady,
`Palm, and Zintel.
`D. Alleged Obviousness of Claims 42, 53, and 54 over Elabbady,
`Palm, Zintel, and Katz
`Petitioner alleges claims 42, 53, and 54 of the ’183 patent would have
`been obvious under 35 U.S.C. § 103(a) over Elabbady, Palm, Zintel, and
`Katz. Pet. 1. We have reviewed the Petition, and are persuaded that
`Petitioner has demonstrated a reasonable likelihood of establishing the
`unpatentability of claims 42, 53, and 54 over the combination of Elabbady,
`Palm, Zintel, and Katz.
`1. Overview of Katz
`Katz discloses a multiple device media-on-demand system that allows
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`different client devices to receive media from a media server over a network
`regardless of the type of client device. Ex, 1033, 5:19–25. Client devices
`can include, e.g., PCs, TVs, laptops, desktops, handheld devices, and mobile
`phones. Id. at 5:55–63. The network can be cable or fiber-based, and can
`use various networking protocols such as Ethernet, TCP/IP, and X.25. Id. at
`5:64–6:14. The media server can deliver media to a particular “client
`device in a format consonant with the properties of the client device which
`can include device type [and] acceptable media format.” Id. at 5:25–28.
`Deliverable media formats can include, e.g., MPEG1, MPEG2, and
`Quicktime. Id. at 6:18–23. The media server can store media in these
`different formats or convert media from a default format to an acceptable
`format upon receiving a media request from a particular client device. Id. at
`6:18–30. Alternatively, an intermediate server can be used to convert
`requested media from the format stored in the media server to the format
`needed by the requesting device. Id. at 3:4–19, 10:26–35.
`2. Reasons to combine Elabbady, Palm, Zintel, and Katz
`Petitioner argues a person of ordinary skill in the art would have
`found it obvious to combine the teachings of Katz with the teachings of
`Elabbady, Palm, and Zintel because Katz’s teachings would have improved
`the types of video-on-demand systems disclosed by Elabbady and Palm, or
`the combination of Elabbady, Palm, and Zintel. Pet. 59–60. For example,
`relying on the opinion of its expert, Petitioner argues it would have been
`obvious to modify Elabbady, Palm, and Zintel to include Katz’s teaching of
`providing format appropriate media file versions to different media devices
`to facilitate device appropriate viewing experiences (e.g., based on device
`resolution), to conserve network bandwidth, and to minimize media file
`download times. Pet. 60 (citing Ex. 1028 ¶ 605). Petitioner, relying on the
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`opinion of its expert, also argues it would have been obvious to modify
`Elabbady, Palm, and Zintel to include Katz’s teaching of converting file
`formats on-the-fly to reduce