UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NETFLIX, 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. IPR2016-01812
`Patent No. 8,640,183 B2
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,640,183 B2
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`

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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 .................................................................... 5
`6.
`How Claims Are Unpatentable Under Statutory Grounds ........ 5
`IV. OVERVIEW OF THE ’183 PATENT ........................................................... 5
`A.
`PRIORITY DATE OF THE ’183 PATENT ........................................ 5
`B.
`SUMMARY OF THE ’183 PATENT .................................................. 6
`C.
`LEVEL OF ORDINARY SKILL IN THE ART ................................. 7
`D.
`PROPOSED CLAIM CONSTRUCTION ............................................ 7
`1.
`“the resource indicator comprises at least one of a URL,
`URI, and URN” in Independent Claims 1, 58, 59, 60 ............... 8
`“unified media selection and presentation interface” in
`Independent Claims 1, 58, 59, 60 .............................................. 9
`BACKGROUND OF THE PRIOR ART ....................................................... 9
`V.
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ’183 PATENT IS UNPATENTABLE ................... 15
`A.
`IDENTIFICATION OF THE REFERENCES AS PRIOR ART ....... 15
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`2.
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`-i-
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`TABLE OF CONTENTS
`(continued)
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`Page
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`
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`SUMMARY OF INVALIDITY POSITIONS ................................... 16
`B.
`THIS PETITION IS NOT REDUNDANT TO IPR2016-0047 ......... 17
`C.
`VII. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY OF THE CHALLENGED CLAIMS OF THE
`’183 PATENT ............................................................................................... 18
`A. GROUND 1: THE COMBINATION OF ELABBADY, PALM,
`AND ZINTEL RENDERS CLAIMS 1-5, 16, 18-20, 24, 32, 34-
`35, 37-38, 44, 47, 50-52, 55, 58-60 OBVIOUS ................................. 18
`1.
`The Prior Art ............................................................................ 18
`2.
`The Elabbady-Palm-Zintel Combination ................................. 21
`3.
`The Elabbady-Palm-Zintel Combination Renders
`Obvious the Claims 1-5, 16, 18-20, 24, 32, 34-35, 37-38,
`44, 47, 50-52, 55, 58-60 of the ’183 Patent ............................. 24
`B. GROUND 2: THE COMBINATION OF ELABBADY, PALM,
`ZINTEL, AND KATZ RENDERS OBVIOUS CLAIMS 42, 53,
`AND 54 .............................................................................................. 59
`1.
`The Elabaddy-Palm-Zintel-Katz Combination ........................ 59
`2.
`The Elabbady-Palm-Zintel-Katz Combination Renders
`Obvious Claims 42, 53, and 54 ................................................ 60
`VIII. CONCLUSION ............................................................................................. 62
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`-ii-
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`Petition for Inter Partes Review of U.S. Patent 8,640,183 B2
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`
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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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`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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`UPnP Newsletter 3Q00
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`EX1014
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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 IPR2016-01761 for Exhibits 1-27. Further,
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`Petitioner is concurrently filing Petitions on U.S. Patent Nos. 8,527,640; 8,914,840;
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`and 8,689,273 and is using the same numbering system in those petitions.
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`-iii-
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`Petition for Inter Partes Review of U.S. Patent 8,640,183 B2
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`EX1015
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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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`EX1028
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`EX1029
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`EX1030
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`EX1031
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`EX1032
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`EX1033
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`EX1034
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`EX1035
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`UPnP Newsletter 4Q00
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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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`Second Declaration of Dr. Wolfe
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`U.S. Patent No. 8,527,640 to Reisman (the “’640 patent”)
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`U.S. Patent No. 8,689,273 to Reisman (the “’273 patent”)
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`U.S. Patent No. 8,914,840 to Reisman (the “’840 patent”)
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`U.S. Patent No. 8,640,183 to Reisman (the “’183 patent”)
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`U.S. Patent No. 7,103,906 to Katz et al. (“Katz”)
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`U.S. Patent No. 7,650,621 to Thomas et al. (“Thomas”)
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`Prosecution File History of U.S. Patent No. 8,689,273
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`-iv-
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`Petition for Inter Partes Review of U.S. Patent 8,640,183 B2
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`EX1036
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`Convergent Media’s Infringement Chart Alleging Infringement
`of the ’640 Patent Submitted with its Complaint in the Northern
`District of Texas
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`EX1037
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`U.S. Patent No. 5,872,712 to Brenneman et al. (“Brenneman”)
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`EX1038
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`Excerpts pgs. 215 and 484 from Microsoft Press Computer
`Dictionary, Third Edition, ISBN: 1-57231-446-X, (1997).
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`-v-
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`Petition for Inter Partes Review of U.S. Patent 8,640,183 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, Netflix, Inc.
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`(“Petitioner”) petitions for inter partes review (“IPR”) of claims 1-5, 16, 18-20, 24,
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`32, 34-35, 37-38, 42, 44, 47, 50-55, 58-60 (“Challenged Claims”) of U.S. Pat. No.
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`5
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`8,640,183 (the “’183 patent,” EX1032), currently assigned to Convergent Media
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`Solutions, LLC (“Patent Owner” or “PO”).
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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 Challenged Claims challenged under 35 U.S.C.
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`§ 314(a). Specifically, these claims are unpatentable under 35 U.S.C. § 103(a)
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`10
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`based on the 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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`1-5, 16, 18-20, 24,
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`32, 34-35, 37-38, 44,
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`47, 50-52, 55, 58-60
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`Ground 2
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`Elabbady, Palm, Zintel, and Katz
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`42, 53-54
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`Petitioner respectfully requests the Board to institute an IPR trial and cancel
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`the Challenged Claims.
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`15
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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), Netflix Inc. is
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`-1-
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`Petition for Inter Partes Review of U.S. Patent 8,640,183 B2
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`the only real party in interest for this Petition.
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`B. RELATED MATTERS
`PO has asserted the ’183 patent and related U.S. Patents 8,914,840;
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`8,689,273; 8,850,507; and 8,527,640 against Petitioner in Convergent Media
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`5
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`Solutions, LLC v. Netflix, Inc., No. 3:15-cv-02160-M (N.D. Tex.). This case has
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`been consolidated for pretrial purposes with cases PO filed against AT&T, Hulu,
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`and Roku in lead case, Convergent Media Solutions, LLC v. AT&T, Inc., 3:15-cv-
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`2156-M (N.D. Tex.).
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`Petitioner filed an IPR petition on U.S. Patent 8,850,507 (IPR2016-01761),
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`10
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`and is simultaneously filing IPR petitions on U.S. Patents 8,527,640; 8,914,840;
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`and 8,689,273.
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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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`15
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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 back-up counsel.
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`Petitioner also requests authorization to file a motion for Matthew C. Bernstein to
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`appear pro hac vice. Mr. Bernstein is an experienced patent litigation attorney, is
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`lead counsel for Petitioner in the district court litigation, and has an established
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`20
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`familiarity with the subject matter at issue in this proceeding. Petitioner intends to
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`-2-
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`

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`Petition for Inter Partes Review of U.S. Patent 8,640,183 B2
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`file such a motion once authorization is granted. The above attorneys are all at the
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`mailing address of Perkins Coie LLP, 11988 El Camino Real, Suite 350, San
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`Diego, CA 92130, contact numbers of 858-720-5700 (phone) and 858-720-5799
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`(fax), and the following email for service and all communications:
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`5
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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 by Netflix
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`appointing the above-designated counsel is filed concurrently herewith.
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`III. REQUIREMENTS FOR INTER PARTES REVIEW
`This Petition is complete, complies with all requirements including those
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`10
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`under 35 U.S.C. § 312(a) and 37 C.F.R. §§ 42.8, 42.15, 42.104 and 42.105, and
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`thus should be accorded a filing date as the date of filing of this Petition under 37
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`C.F.R. § 42.106.
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`A. GROUND FOR STANDING
`Pursuant to § 42.104(a), Petitioners certify that the ’183 patent is available
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`15
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`for IPR and that the Petitioners are not barred or estopped from requesting IPR
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`challenging claims of the ’183 patent on the grounds identified herein. Specifically,
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`Petitioners have standing, and meet 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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`20
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`42.101 and 42.102.
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`-3-
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`

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`Petition for Inter Partes Review of U.S. Patent 8,640,183 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 1-5, 16, 18-20, 24, 32,
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`5
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`34-35, 37-38, 42, 44, 47, 50-55, 58-60 of the ’183 patent because they are invalid
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`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 6,910,068 (“Zintel”) (EX1003); U.S.
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`Patent 7,483,958 (“Elabbady”) (EX1004); U.S. Provisional Appl. 60/278,804
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`10
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`(“Elabbady Provisional”) (EX1005); U.S. Patent Appl. Pub. 2001/0042107
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`(“Palm”) (EX1006); and U.S. Patent 7,103,906 (“Katz”) (EX1033). See also
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`Exhibit List.
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`Supporting Evidence Relied Upon For The Challenge
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`3.
`The supporting Declaration of Dr. Wolfe (EX1028) and other supporting
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`15
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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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`-4-
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`

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`Petition for Inter Partes Review of U.S. Patent 8,640,183 B2
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`Claim Construction
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`5.
`The ’183 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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`challenged claims “its broadest reasonable construction in light of the specification
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`5
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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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`10
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`of how the Challenged Claims are unpatentable under 35 U.S.C. § 103, including
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`the identification of where each claim element is found in the cited prior art.
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`IV. OVERVIEW OF THE ’183 PATENT
`A.
`PRIORITY DATE OF THE ’183 PATENT
`The ’183 patent claims priority via a chain of continuation applications to
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`15
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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 ’183 patent also claims priority to three provisional applications with
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`60/379,635, filed May 10, 2002, being the earliest-filed. Although Petitioner does
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`not concede that the Challenged Claims are supported by any provisional
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`application, the cited prior art pre-dates the earliest-claimed May 10, 2002 priority
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`20
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`date.
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`-5-
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`

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`Petition for Inter Partes Review of U.S. Patent 8,640,183 B2
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`SUMMARY OF THE ’183 PATENT
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`B.
`The Challenged Claims of the ’183 patent generally relate to using one
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`device to select content for playback on itself or another playback device on the
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`local network. As shown herein, the claimed subject matter is merely an obvious
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`5
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`application of prior art technologies such as Universal Plug and Play (UPnP).
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`The ’183 specification even states that “it may be desirable” to use UPnP to
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`practice the claimed invention. EX1032 at 54:16-24.
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`The ’183 patent describes “systems and methods for navigating hypermedia
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`using multiple coordinated input/output device sets” which “allow a user… to
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`10
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`control what resources are presented on which device sets.” Id. at 3:13-23. For
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`example, a Graphic User Interface (GUI) may be presented on one device which
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`allows a user to select a “frame” on the same or a different device for a resource to
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`be presented in. Id. at 5:20-48. In order to present a resource on a different system,
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`the device may transfer a “link activation message,” which may be in the form of a
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`15
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`Universal Resource Locator (URL), Universal Resource Name (URN) or other
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`Universal Resource Identifier (URI). Id. at 5:49-62; 7:43-57.
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`The ’183 patent notes that existing standards such as Universal Plug and
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`Play (UPnP) can be used to coordinate the input/output device sets using “a device
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`set management process that performs basic setup and update functions… to pre-
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`20
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`identify and dynamically discover device sets.” Id. at 37:35-55. UPnP “enable[s]
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`-6-
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`Petition for Inter Partes Review of U.S. Patent 8,640,183 B2
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`basic communications among the devices, to provide discovery, presence,
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`registration, and naming services to recognize and identify devices as they become
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`available to participate in a network, and to characterize their capabilities.” Id. at
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`37:46-55; 54:16-23; 58:63-67. The ’183 patent also acknowledges that UPnP
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`5
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`supports remote command and control across networked devices. Id. at 59:52-56.
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`C. LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art, with regard to the ’183 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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`10
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`technical field related to multimedia technology and computer systems. EX1028 at
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`¶¶32-33.
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`PROPOSED CLAIM CONSTRUCTION
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`D.
`Petitioner proposes constructions pursuant to the broadest reasonable
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`interpretation (BRI) standard to comply with 37 C.F.R. §§ 42.100(b) and
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`15
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`42.104(b)(3) and for the sole purpose of this Petition. Such BRI constructions do
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`not necessarily reflect appropriate claim constructions to be used in litigation and
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`other proceedings where a different claim construction standard applies.
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`-7-
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`

`

`Petition for Inter Partes Review of U.S. Patent 8,640,183 B2
`
`1.
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`“the resource indicator comprises at least one of a URL,
`URI, and URN” in Independent Claims 1, 58, 59, 60
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`Petitioners propose that the term “the resource indicator comprises at least
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`one of a URL, URI, and URN” be construed under BRI as “the resource indicator
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`5
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`includes at least one URL, URI, or URN.”
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`The dependent claims of the ’183 patent show that a URL, URI, and URN
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`are alternatives for a resource indicator. Claim 55 requires the resource identifier
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`to be a URL, claim 56 requires it to be a URI, and claim 57 requires it to be a URN.
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`In light of the dependent claims, a POSITA would understand “at least one of a
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`10
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`URL, URI, and URN” to mean that the resource identifier is one of URL, URI, or
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`URN. EX1028 at ¶251. Indeed, a dependent claim cannot be broader (e.g., claim
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`55 requiring a URL) than a base dependent claim (e.g., if claim 1 were construed
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`to require that the identifier be all of a URL, URI, and a URN). See 35 USC § 112,
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`¶4; see also Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1367 (Fed. Cir.
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`15
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`2012) (“It is axiomatic that a dependent claim cannot be broader than the claim
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`from which it depends.”). Further, it was well understood in the art that URLs and
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`URNs are alternatives for identifying resources and both are URIs. See Ex1038 at
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`484. Accordingly, a contrary interpretation that requires all three would not make
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`sense to a POSITA. See EX1028 at ¶252.
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`-8-
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`

`Petition for Inter Partes Review of U.S. Patent 8,640,183 B2
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`2.
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`“unified media selection and presentation interface” in
`Independent Claims 1, 58, 59, 60
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`The BRI of this term is “one or more user interfaces that, together, present
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`controls for selecting continuous media content and a continuous media content
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`5
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`presentation device.” See EX1028 at ¶¶253-254. This construction was previously
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`adopted by the Board. See Unified Patents v. Convergent Media Solutions,
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`IPR2016-00047, Paper 13 at 8. “Unified” is not defined in the specification. Id.
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`The Board recognized that the ordinary and customary meaning of “unify” is “to
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`make into a unit or a coherent whole: UNITE” and “unite” includes “to become
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`10
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`one or as if one” and “to act in concert.” Id.; see also EX1039. PO did not dispute
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`this construction. See IPR2016-00047, Paper 16.
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`V. BACKGROUND OF THE PRIOR ART
`Because the Challenged Claims are directed to obvious applications of UPnP,
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`Petitioner provides here a brief introduction to UPnP. See also generally EX1010-
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`15
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`EX1013 (articles and papers discussing UPnP); EX1028 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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`20
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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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`Petition for Inter Partes Review of U.S. Patent 8,640,183 B2
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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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`5
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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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`Petition for Inter Partes Review of U.S. Patent 8,640,183 B2
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`EX1010 at 10 (excerpted left); EX1012 at 66 (excerpted right); see also, e.g.,
`
`EX1010 at 24 (wireless laptop as control point for DVD player); EX1011 at 107
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`(control points on “PCs, Internet appliances, and mobile devices”).
`
`UPnP facilitates device interaction through device discovery, description,
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`5
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`and control. EX1010 at 18-19. Discovery is the process by which devices on the
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`network find one another. Id. UPnP uses a protocol called Simple Service
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`Discovery Protocol (SSDP) for device discovery. Id. SSDP allows devices to
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`advertise the services they provide and also allows control points to search for and
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`identify devices of interest. Id. at 14-15.
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`10
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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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`15
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`below illustrates the description process.
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`Petition for Inter Partes Review of U.S. Patent 8,640,183 B2
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`EX1020 at 14.
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`Control is the process by which the control point controls a device. EX1010
`
`at 19. Because the information obtained during description describes the services
`
`performed by the remote device and how to interact with them, the control point
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`5
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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.
`
`EX1020 at 32.
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`UPnP uses a number of communication protocols stacked on top of a
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`10
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`foundational Internet Protocol (IP) layer.
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`Petition for Inter Partes Review of U.S. Patent 8,640,183 B2
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`
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`EX1010 at 12-13 (excerpted and annotated above); see also id.at 13-16 (discussing
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`protocols). As shown above, SSDP (including HTTPMU & HTTPU) is used for
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`discovery, HTTP is used for description, and SOAP and HTTP are used for control.
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`5
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`See also EX1020 at 2 (complete protocol stack); 7 (discovery); 30 (description);
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`32-33 (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
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`which included Microsoft, Broadcom, Philips, Sony, and others. EX1015 at 7. By
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`10
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`late 2000, the Audio/Video working committee was working on “services that
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`enable control of peer-to-peer AV streaming.” Id. By early 2001, the committee
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`had developed a Device Interaction Model which enabled a User Control Point to
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`Petition for Inter Partes Review of U.S. Patent 8,640,183 B2
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`discover and select AV content on the network, identify and select an appropriate
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`rendering device, and control the playback of that content to provide “a consistent
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`entertainment experience where all AV content in the home is available, browsable,
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`and controllable from any control point, and can be enjoyed on any compatible
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`5
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`rendering device.” EX1016 at 7-8. In 2001, the committee worked on “audio
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`streaming scenarios where audio content is located, browsed, and streamed from a
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`storage device to a player device” (EX1017 at 6), such as MP3 streaming via
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`HTTP (EX1018 at 4). By the end of 2001, UPnP members had successfully tested
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`scenarios in which a UPnP control point from one manufacturer could locate
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`10
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`content on a device from another manufacturer, and control the rendering of that
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`content on a device from a third manufacturer:
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`EX1019 at 1-2.
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`Petition for Inter Partes Review of U.S. Patent 8,640,183 B2
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`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’183 PATENT IS UNPATENTABLE
`
`The Challenged Claims are unpatentable under 35 U.S.C. § 103(a) for
`
`merely reciting known, predictable, and/or obvious combinations of the cited prior
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`5
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`art references.
`
`IDENTIFICATION OF THE REFERENCES AS PRIOR ART
`
`A.
`This Petition relies on the following prior art references, none of which were
`
`of record during the original prosecution of the ’183 patent.
`
`Zintel (EX1003): Zintel is a Microsoft patent was filed March 16, 2001 and
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`10
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`published July 21, 2005. Zintel is a continuation-in-part that claims priority to U.S.
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`Appl. 09/496318 filed February 1, 2000 and to three provisional applications.
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`Zintel is prior art at least under 35 U.S.C. §102(e).
`
`Elabbady (EX1004/EX1005): Elabbady is another Microsoft patent.
`
`Elabbady was filed March 26, 2002 and claims priority to Provisional Appl.
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`15
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`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
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`MPEP § 2163.07(b); see also, e.g., Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d
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`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,
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`20
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`1335 (Fed. Cir. 2011) (broad and unequivocal language was effective to
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`incorporate-by-reference an entire application).
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`Petition for Inter Partes Review of U.S. Patent 8,640,183 B2
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`Elabbady is effective prior art as of the filing date of its provisional
`
`application. See Dynamic Drinkware v. Nat’l Graphics, 800 F.3d 1375, 1381-82
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`(Fed. Cir. 2015). Thus, if PO attempts to antedate the March 26, 2002 filing date
`
`of Elabbady, Petitioner will show that the Elabbady Provisional supports at least
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`5
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`claim 1 of the Elabbady patent and that the relevant disclosures were carried over
`
`from the Provisional. See id. at 1379 (burden of production shifted back to
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`Petitioner after PO presented evidence that challenged claims had priority over
`
`filing date of patent). Elabbady is prior art under at least 35 U.S.C. §102(e).
`
`Palm (EX1006): Palm is a published Broadcom patent application filed
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`10
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`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
`
`least under 35 U.S.C. §102(a) and (e).
`
`Katz (EX1033): Katz is an IBM patent. Katz was filed on September 29,
`
`2000 and issued on September 5, 2006. Katz is prior art at least under 35 U.S.C.
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`15
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`§102(e).
`
`SUMMARY OF INVALIDITY POSITIONS
`
`B.
`The combination of Elabbady, Zintel, and Palm renders obvious Claims 1-5,
`
`16, 18-20, 24, 32, 34-35, 37-38, 44, 47, 50-52, 55, 58-60. EX1028 at ¶34.
`
`The combination of Elabbady, Zintel, Pam, and Katz renders obvious Claims
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`20
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`42, 53, and 54. EX1028 at ¶34.
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`Petition for Inter Partes Review of U.S. Patent 8,640,183 B2
`
`C. THIS PETITION IS NOT REDUNDANT TO IPR2016-0047
`Elabbady was cited by Petitioner Unified Patents in IPR2016-00047
`
`challenging the ’183 patent. In particular, Unified Patents cited Elabbady as a
`
`secondary reference in an obviousness combination with U.S. Patent 8,479,238
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`5
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`(Chen). The Board instituted review of Claims 1–5, 16, 18, 24–26, 32–38, 40–42,
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`49, 51–53, 55, and 58–61. IPR2016-00047, Paper 13 at 27.
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`Here, Petitioner presents Elabbady as a primary reference and highlights
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`additional and different disclosures, including highly relevant disclosures in the
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`Elabbady Provisional which is incorporated-by-reference into Elabbady. As the
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`10
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`Board will see, Petitioner Netflix highlights the relevant teachings of Elabbady for
`
`almost all limitations of the Challenged Claims. Compare IPR2016-00047, Paper
`
`1 at 19-37 (not citing Elabbady for Claim 1[A], [E], and [F] and many dependent
`
`claims and citing it minimally for Claim 1[B] and [D]). Moreover, Elabbady is
`
`combined here with different prior art references (Palm, Zintel, and Katz) to form
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`15
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`different combinations that render obvious the Challenged Claims. Petitioner
`
`Netflix also challenges additional claims. Therefore, the obviousness grounds and
`
`prior art teachings here are newly presented to the Board.
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`Petition for Inter Partes Review of U.S. Patent 8,640,183 B2
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`5
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`VII. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY OF THE CHALLENGED CLAIMS OF
`THE ’183 PATENT
`A. GROUND 1: THE COMBINATION OF ELABBADY, PALM,
`AND ZINTEL RENDERS CLAIMS 1-5, 16, 18-20, 24, 32, 34-35,
`37-38, 44, 47, 50-52, 55, 58-60 OBVIOUS
`1.
`
`The Prior Art
`a.
`Elabbady is a Microsoft patent that describes a system that enables client
`
`Elabbady (EX1004/EX1005)
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`10
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`devices to access a catalog of multimedia content, select content items for playback,
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`and then stream the content from other devices on the network or the Internet.
`
`EX1004 at 1:60-2:25, 5:32-45, 12:11-33; EX1005 at 1-4, 7, 15-16. Elabbady
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`incorporates-by-reference the Elabbady Provisional in its entirety. EX1004 at 1:7-
`
`11. The Elabbady Provisional includes several detailed Microsoft specifications
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`15
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`and technical documents:
`
`Elabbady Provisional Section
`
`Pages (EX1005)
`
`Invention Summary
`
`1-4
`
`DigitalAudioReceiver (“DAR”) Device Template
`
`5-12
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`DAR Architecture
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`Digital Media Description Language
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`Media Library Service Template
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`Music Manager Specification
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`13-17
`
`18-24
`
`25-36
`
`37-57
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`-18-
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`Petition for Inter Partes Review of U.S. Patent 8,640,183 B2
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`Media Library Service System Architecture
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`58-66
`
`
`The Elabbady system uses UPnP and thus includes devices, services, and
`
`control points. EX1004 at 2:19-25; 5:54-65; EX1005 at 1-4. A device provides a
`
`media cataloging service which gathers information about content items on the
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`5
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`network and creates a catalog that is displayable in a user interface. EX1004 at
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`6:7-23; EX1005 at 1-2, 25-36. The catalog includes metadata about the content
`
`items including URLs. EX1004 at 6:30-36, 10:18-23; EX1005 at 20, 23, 27.
`
`Client devices include control points with user interfaces for browsing the
`
`catalog and selecting content for playback. EX1004 at 6:7-23; 12:18-25; Fig. 2A,
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`10
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`3; EX1005 at 1-4, 15-16. Client devices can include PCs, PDAs, and special-
`
`purpose devices such as digital audio receivers (DARs). EX1004 at 3:23-46, 5:66-
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`6:6, 9:1-21; EX1005 at 7, 15-17. The control points can reside on a DAR, on a
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`PDA, or on a PC. EX1005 at 16, 45. In annotated Figure 2A, the control point
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`315 resides on client device 300 which also includes media player 324:
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`Petition for Inter Partes Review of U.S. Patent 8,640,183 B2
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`
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`Once content has been selected, the user selects the playback device from
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`those available on the network. EX1005 at 15-17; see also id. at 2. The control
`
`point then sends a PLAY command and the URL for the selected content to the
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`5
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`selected player so it can begin streaming the content. EX1005 at 15-17; see also
`
`EX1004 at 10:17-32, 12:18-27.
`
`b.
`Palm describes networked multimedia players which stream audio/video
`
`Palm (EX1006)
`
`content from servers on a local network or the Internet. EX1006 at Abstract, ¶¶7, 9,
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`10
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`21, 43, 53, 64-65, 78; Fig. 1. A player device can be a handheld computer running
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`Windows CE or PalmOS. Id. at ¶71. The players allow users to browse for
`
`audio/video content and select content for playback. Id. at ¶¶40-43, 55-62, 73-74,
`
`77-80, 90. The players receive URLs for content items that enable the player to
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`stream the content items from the media servers. Id. at ¶¶48, 80-83, 88. Palm
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`Petition for Inter Partes Review of U.S. Patent 8,640,183 B2
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`teaches that the players are UPnP-compliant and can automatically discover media
`
`servers. Id. at ¶¶76-77.
`
`c.
`Zintel is a Microsoft patent and provides a detailed description of UPnP.
`
`Zintel (EX1003)
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`5
`
`EX1003 at Abstract, 2:62-3:20; 4:57-6:52. Zintel describes “User Control Points”
`
`which may be “handheld computer[s]” or “smart mobile phone[s].” Id. at 6:60-
`
`7:14. Zintel also describes “Controlled