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8/18/2019 Unified Patents Inc. v. Convergent Media Solutions, LLC, IPR2016-00047, Paper 11 (PTAB Apr. 13, 2016) (Institutio…
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[email protected] Paper No. 11
571-272-7822 Filed: April 13, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
UNIFIED PATENTS INC.,
Petitioner,
v.
CONVERGENT MEDIA SOLUTIONS, LLC,
Patent Owner. ____________
Case IPR2016-00047
Patent 8,640,183 B2
____________
Before JAMESON LEE, LYNNE E. PETTIGREW, 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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I. INTRODUCTION
A.
Background
Unified Patents Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) toinstitute inter partes review of claims 1–5, 16, 18, 24–26, 32–38, 40–42, 49,
51–53, and 58–61 of U.S. Patent No. 8,640,183 B2 (Ex. 1001, “the ’183
patent”). Convergent Media Solutions, LLC, (“Patent Owner”) filed a
Preliminary Response (Paper 9, “Prelim. Resp.”).
Upon consideration of the Petition and Preliminary Response, 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, 24–26, 32–38, 40–42, 49, 51–53, and 58–61 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. AT&T Inc., Case No. 3-15-cv-02156 (N.D. Tex.); Convergent Media
Solutions LLC v. Hulu, Inc., Case No. 3-15-cv-02158 (N.D. Tex.);
Convergent Media Solutions LLC v. Netflix Inc., Case No. 3-15-cv-02160
(N.D. Tex.). Pet. 2. Patent Owner identifies each of the preceding matters
as well as the following as a matter that could affect, or be affected by, a
decision in this proceeding: Convergent Media Solutions LLC v. Roku, Inc.;
Case No. 3-15-cv-02163 (N.D. Tex.). Paper 4, 2.
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C.
Evidence Relied Upon1
Reference Effective Date Exhibit
Chen US 8,479,238 B2 May 14, 20022 Ex. 1003
Elabbady US 7,483,958 B1 Mar. 26, 20023 Ex. 1004
Meade US Pub. 2003/0073412 A1 Oct. 16, 20014 Ex. 1005
D.
The Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability:
References Basis Claims Challenged
Chen and Elabbady § 103(a)1–5, 16, 18, 24–26, 32–38, 40–
42, 49, 51–53, 55, and 58–61
Meade and Elabbady § 103(a)1, 16, 18, 24, 32, 33, 37, 38, 41,
and 58–60
1 Petitioner also relies upon the Declaration of Jon Weissman (Ex. 1002).
2 Chen was filed on May 14, 2002 and issued on July 2, 2013. For purposes
of this decision, we consider Chen to be prior art to the ’183 patent under 35
U.S.C. § 102(e) with an effective date of May 14, 2002. See § II.C infra.
3 Elabbady was filed on March 26, 2002 and issued on January 27, 2009. It
is prior art under 35 U.S.C. § 102(e), with an effective date of March 26,2002.
4 Meade was filed on October 16, 2001 and published on April 17, 2003. It
is prior art under 35 U.S.C. § 102(e) with an effective date of October 16,
2001.
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II. ANALYSIS
A.
The ’183 Patent
The ’183 patent relates to systems and methods for navigatinghypermedia using multiple coordinated input/output device sets. Ex. 1001,
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, 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.
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. 1001 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.
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Claims 1 and 58–60 of the ’183 patent are independent. Claim 1 is
representative of the claims of the ’183 patent, and is reproduced below.
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;
receiving discovery information at the second
computerized device set in accordance with a
device management discovery protocol that is
implemented at a 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 ofreceiving 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,
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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 mediacontent 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 userinterface 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. 1001, 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); In re Cuozzo Speed Techs., LLC ,
793 F.3d 1268, 1275–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo
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Speed Techs., LLC v. Lee, 136 S. Ct., 890 (mem.) (2016). Even under the
rule of broadest reasonable interpretation, claim terms are generally given
their ordinary and customary meaning, as would be understood by one ofordinary skill in the art in the context of the entire disclosure. See In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those
terms which are in controversy need to be construed and only to the extent
necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. &
Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
Petitioner proposes we construe the term “unified media selection and
presentation interface.” Pet. 7–8. The term 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 thesecond computerized device set for presentation of
the continuous media content.
E.g., Ex. 1001, 164:65–165:6 (emphasis added).
Petitioner contends the term “unified” is not defined in the
Specification, and does not appear in the Specification other than in the
claims, and in the context of “unified messaging services” disclosed at
column 103, lines 35 through 42. Pet. 8. Consequently, based on a
dictionary definition of “unify,” Petitioner contends the term should be
construed to mean “a coherent set of user interfaces for selecting media and
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selecting a presentation device.” Id.; see also Ex. 1006, 1287 (defining
“unify” to mean “to make into a unit or a coherent whole: UNITE”).
Patent Owner does not dispute Petitioner’s proposed construction ofthe term “unified media selection and presentation interface,” and does not
propose the construction of any terms.
We agree with Petitioner that the term “unified media selection and
presentation interface” does not appear in the Specification, other than in
the claims. To determine the broadest reasonable interpretation of the term,
we therefore look to its ordinary and customary meaning, as would be
understood by one of ordinary skill in the art. As Petitioner notes, the
ordinary and customary meaning of the term “unify” is “to make into a unit
or a coherent whole: UNITE.” Ex. 1006, 1287. The ordinary and customary
meaning of “unite” includes “to become one or as if one,” and “to act in
concert.” Ex. 3001, 1291 (emphasis added). Thus, for purposes of this
Decision, we construe the term “unified media selection and presentation
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. Whether Chen Is Prior Art to the ’183 Patent
The Chen patent was filed on May 14, 2002, and claims priority to
Provisional Application No. 60/290,788 (“the ’788 provisional application”)
filed on May 14, 2001. See Ex. 1003. Petitioner alleges “Chen is prior artunder at least U.S.C. § 102(e) based on at least its domestic priority date of
May 14, 2001.” Pet. 9.
The ’183 patent was filed on October 26, 2012 as a continuation of an
application filed on April 26, 2011, which is a continuation of an application
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filed on May 8, 2003. See Ex. 1001. The ’183 patent claims priority,
through these continuation applications, to three provisional applications,
including Provisional Application No. 60/379,635 (“the ’635 provisionalapplication”) filed on May 10, 2002. Id. Patent Owner alleges the priority
date of the ’183 patent is the May 10, 2002 filing date of the ’635
provisional application because “the provisional patent application is 283
pages in length.” Prelim. Resp., 3.
Patent Owner argues Chen is not entitled to claim priority to the ’788
provisional application, allegedly because the ’788 provisional application
“does not disclose all the subject matter that is disclosed in Chen (Ex.
1003),” and because “[t]he length of the provisional Chen ‘788 as compared
to Chen (Ex. 1003) is significantly smaller.” Prelim. Resp. 4. Therefore,
Patent Owner argues, Chen is not prior art to the ’183 patent because Chen’s
priority date is its May 14, 2002 filing date, which is after the claimed May
10, 2002 priority date of the ’183 patent. Id. at 3.
Section 119(e)(1)(pre-AIA) of Title 35 states:
An application for patent filed under section 111(a)
or section 363 of this title for an invention disclosed
in the manner provided by section 112 of this title
in a provisional application filed under section
111(b) of this title, by an inventor or inventors
named in the provisional application, shall have the
same effect, as to such invention, as though filed on
the date of the provisional application filed under
section 111(b) of this title . . . .
Consequently, “[a] reference patent is only 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
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patent in compliance with § 112, ¶ 1.” Dynamic Drinkware v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015).
At this stage of the proceeding, Petitioner has failed to prove Chen isentitled to claim priority to the ’788 provisional application because
Petitioner has “failed to compare the claims of the [Chen] patent to the
disclosure in the [Chen] provisional application.” Dynamic Drinkware, 800
F.3d at 1381. Likewise, assuming the ’183 patent is entitled to claim
priority under 35 U.S.C. § 120 to the May 8, 2003 filing date of its
grandparent application, Patent Owner has failed to prove the ’183 patent is
further entitled to claim priority to the ’635 provisional application for the
same reason. Id .; see also Polaris Wireless, Inc. v. Trueposition, Inc., Case
IPR2013-00323, slip op. at 29 (Paper 9) (“[T]he Patent Owner is not
presumed to be entitled to the earlier filing dates of ancestral applications
which do not share the same disclosure.”). Accordingly, for purposes of this
decision, Chen’s priority date is its May 14, 2002 filing date; the ’183
patent’s priority date is May 8, 2003; and Chen is available as prior art to the
’183 patent under 35 U.S.C. § 102(e) as Petitioner has alleged. See Pet. 9.
D.
Alleged Obviousness of Claims 1–5, 16, 18, 24–26, 32–38, 40–42,
49, 51–53, 55, and 58–61 over Chen and Elabbady
Petitioner alleges claims 1–5, 16, 18, 24–26, 32–38, 40–42, 49, 51–53,
55, and 58–61 of the ’183 patent would have been obvious under 35 U.S.C.
§ 103(a) in view of the combination of Chen and Elabbady. Pet. 4. In
particular, Petitioner alleges—to the extent Chen’s address resolution
protocol (ARP) is not implemented at a discovery layer above an internet
protocol layer—Elabbady teaches these elements. Pet. 16. Petitioner further
alleges it would have been obvious to modify Chen’s ARP based discovery
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protocol with Elabbady’s universal plug-and-play (UPnP) based discovery
protocol because such a modification would simply substitute one known
technique for another, and would provide zero-configuration networking toChen’s control and video devices. Id. at 17.
We have reviewed the Petition and Patent Owner’s Preliminary
Response, and are persuaded that Petitioner has demonstrated a reasonable
likelihood of establishing the unpatentability of claims 1–5, 16, 18, 24–26,
32–38, 40–42, 49, 51–53, 55, and 58–61 over the combination of Chen and
Elabbady.
1. Overview of Chen (Ex. 1003)
Chen discloses a system and method “for content-based non-linear
control of video data playback.” Ex. 1003, 1:64–65. Figure 3 of Chen is
reproduced below.
Figure 3 of Chen is a schematic illustration of the topology of Chen’s
networked system for non-linear control of video playback.
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Control device 212, multimedia server 222, video server 220, and
video device 218 are interconnected via network 216. Ex. 1003, 4:44–5:67,
Fig. 2. Control device 212 can be a personal digital assistant (PDA), tablet, palmtop, laptop, or desktop computer. Id. at 4:47–60. Control device 212
“acts as a dynamic control pad for initiating video playback of content
specific information,” and is “capable of inputting control command,
communicating data, and playing multimedia data such as . . . still images,
text, preview videos, or the like.” Id. at 4:47–53. Control device 212
connects to network 216 using a wireless communications protocol such as
Bluetooth or IEEE 802.11b. Id. at 4:55–57.
Video device 218 includes a video display 316, “a video decoder 318
which decodes compressed video data, and a video device network interface
320 which interfaces the video display to the network.” Ex. 1003, 6:19–22.
Video device 218 “may be a television monitor, computer monitor, or [a]
similar device.” Id. at 5:4–7. Video device 218 may connect to network 216
through a wireless connection. Id. at 5:10–11.
Control device 212 provides a “Graphical User Interface (GUI), for
display of information and solicitation of consumer input/instruction.” Ex.
1003, 6:40–42. To control video playback on video device 218, “control
device [212] generates URLs, which pass parameters to a CGI application
running under the HTTP server on the video device.” Id. at 6:43–47. The
passed parameters include a URL (MediaURL) pointing to the video to bedisplayed, and an IP address (VideoDevice) identifying the video device 218
on which the video is to be displayed. Id. at 6:49–54.
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Figures 4 and 7 of Chen are reproduced below.
Figure 4 of Chen is an illustration of a GUI allowing a user to select a video
device on which video data is to be displayed. Id. at 7:4–5. Figure 7 of
Chen is an illustration of a GUI for displaying a list of videos that can be
selected for display on a selected video device. Id. at 7:60–8:10. The
caption at the top of the GUI shown in Figure 4 of Chen reads “[t]his page is
used to specify a video device for viewing multimedia.” The GUI includes a
drop-down list of video devices that can be selected for displaying videos.
The list can be determined using ARP. Id. at 7:23–25. The list preferably
includes “all available video devices to which the consumer has access,” and
may include “a predetermined list of device names maintained on a server,”
as well as “names entered by the consumer” or previously selected by the
consumer. Id. at 7:13–20.
2.
Overview of Elabbady (Ex. 1004)Elabbady discloses “methods and systems for sharing media content
between various devices.” Ex. 1004, 1:14–17. Figure 2A of Elabbady is
reproduced below.
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Figure 2A of Elabbady is a block diagram of a media content sharing
environment.
Device 202, connected to devices 206a-d via network 204, provides a
media cataloguing service 203 to devices 206a-d. Ex. 1004, 5:24–29.
Network 204 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.” Id. at 5:54–58.
Devices 202 and 206a-d can be any “variety of different devices that can be
used to provide features/capabilities associated with sharing media content.”
Id. at 5:66–7:2. These can include PCs, laptops, desktops, notebooks,
tablets, PDAs, digital TVs, DVDs, set-top boxes 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 can include audio,
video, and multimedia data. Id. at 6:66–7:5. Any of devices 202 and 206a-d
can play media content. Id. at 8:57–62.
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Devices 202 and 206a-d can also be coupled to media server 210 that
includes database 212 of shareable media content. Ex. 1004, 5:32–45. Any
of devices 206a-d, such as device 206a, can query media catalog 203 ondevice 202, and the URL of a media item responsive to the query is returned
to device 206a. See, e.g., id . at 9:47–51, 10:11–22. Device 206a can use the
URL to get the media item from media server 210. Id. at 10:24–38.
3.
Comparison of Claims 1–5, 16, 18, 24–26, 32–38, 40–42, 49, 51–
53, 55, and 58–61 to the Combination of Chen and Elabbady
Petitioner demonstrates a reasonable likelihood of showing that claims
1–5, 16, 18, 24–26, 32–38, 40–42, 49, 51–53, 55, and 58–61 would have
been obvious over the combination of Chen and Elabbady. See Pet. 9–37.
For example, claim 1 recites a method for use in a second
computerized device set configured for wireless communication with a first
computerized device set, and requires 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 ofencoded video data. Ex. 1001, 164:22–32. Figure 7 of Chen discloses
presenting a first user interface on control device 212 (second computerized
device set) to allow a user to select an encoded video. See Pet. 11–12, 19;
Ex. 1003, 3:36–38, 7:60–8:10, Fig. 7.
Claim 1 requires 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 and second computerized device sets. Ex. 1001,
164:33–36. Figure 4 of Chen discloses presenting a second user interface on
control device 212 to allow a user to select a video device from among a list
of video devices. See Pet. 11–12, 19–20; Ex. 1003, 7:4–20, Fig. 4. The list
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includes “all video devices to which the consumer has access,” including the
names of devices entered by the user. Ex. 1003, 7:13–20. Chen discloses
that control device 212 (second computerized device set) is a video device because it is capable of playing videos, and further discloses that control
device 212 is capable of selecting other video devices 218 (first
computerized device sets) to play videos. See Pet. 21–22; Ex. 1003: 4:47–
53, 5:58–62.
Claim 1 requires receiving discovery information from a device
management discovery protocol implemented at a communication layer
above an internet protocol layer that allows the second computerized device
set to determine that the first computerized device set is capable of receiving
and playing the continuous media content. Ex. 1001, 164:37–45. The
discovery management protocol can be, for example, UPnP protocol. Id. at
37:35–55. Chen discloses identifying a list of video devices 18 (first
computerized device sets) using a protocol similar to ARP. See Pet. 16; Ex.
1003, 7:23–25. Elabbady discloses using UPnP to set up an ad-hoc network
among video playing device 202 (second computerized device set) and video
playing devices 206 (first computerized device sets). See Pet. 16, 20–21;
Ex. 1004, 5:24–31, 5:46–65.
Claim 1 requires presenting the continuous media content on the
second computerized device set when the user selects the second media
device set using the second user interface. Ex. 1001, 164:46–51. Chendiscloses playing a selected video on a video device that has been selected
from a list of video devices. See Pet. 11–12, 21–22; Ex. 1003, Fig. 4. The
list includes “all video devices to which the consumer has access.” Ex.
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1003, 7:13–20. Chen further discloses control device 212 is a video device
because it is capable of playing videos. See Pet. 21–22; Ex. 1003, 4:47–53.
Claim 1 requires wirelessly transmitting a resource indicator,comprising at least one of a URL, URI, and URN, from the second
computerized device set to the first computerized device set when the user
selects presenting the continuous media content on the first computerized
device set using the second user interface. Ex. 1001, 164:52–62. Chen
discloses control device 212 (second computerized device set) uses wireless
communication protocols to communicate over a network with video devices
218 (first computerized device sets), and initiates control of video data
playback on video devices by “generat[ing] URLs, which pass parameters to
a CGI application running under the HTTP server on the video device.” Ex.
1003, 4:55–58, 6:43–54, 8:21–25; see also Pet. 12–14, 22–23.
Finally, claim 1 requires the first user interface and the second user
interface to together comprise a unified media selection and presentation
user interface presenting 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. 1001, 164:63–165:6. Chen discloses that
together, the user interfaces shown in Figures 4 and 7 present controls for
selecting continuous media content and a continuous media content
presentation device. See Pet. 12, 23; Ex. 1003, 5:58–62, 6:38–43, 7:4–11,8:7–10, Figs. 4, 7, 8.
Similarly to claim 1, discussed above, Petitioner demonstrates a
reasonable likelihood of showing claims 2–5, 16, 18, 24–26, 32–38, 40–42,
49, 51–53, 55, and 58–61 are unpatentable over the combination of Chen
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and Elabbady. See Pet. 9–37.
Patent Owner argues the combination of Chen and Elabbady fails to
disclose the second user interface that allows a user to select to havecontinuous media content presented on either one of the first and second
computerized device sets, as required by independent claims 1, 59, and 60,
and fails to disclose the user interface required in independent claim 58
having similar functionality. Prelim. Resp., 6–7, 12–15.
In particular, Patent Owner argues Chen fails to disclose this
limitation because Figure 4 of Chen “only allows selection of video devices
218, but does not allow the selection of the control device 212.” Prelim.
Resp. 7. According to Patent Owner, because the caption in the upper
portion of Chen’s Figure 4 reads “this page is used to specify a video device
for viewing multimedia,” Chen can only select “one of the video devices
218, which does not include the control device 212.” Id . at 9. Patent Owner
contends this interpretation is confirmed by Chen’s description of Figure 4,
which reads:
Fig. 4 illustrates an exemplary control device screen
for specifying the video device that is to be
controlled. The control device provides an input
field 410 for the consumer to specify the video
device that is to be controlled. In this example, the
user has entered the video device name “NTV1”.
Also provided is a connection button 412, which
upon selection, instructs the control device that the
video device indicated in the input field is to be provided video data.
Id. (quoting Ex. 1003, 7:4–10).
We are not persuaded by Patent Owner’s argument. We agree with
Patent Owner that the caption in the upper portion of Chen’s Figure 4 reads
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“this page is used to specify a video device for viewing multimedia.”
Ex. 1003, Fig. 4. However, nothing in that caption limits the list of
selectable video devices in Figure 4 to video devices 218, or excludescontrol device 212. Rather, Chen discloses Figure 4’s list of video devices
consists of “all available video devices to which the consumer has access,”
including “names entered by the consumer or selected previously.”
Ex. 1003, 7:13–20. Moreover, Chen discloses control device 212 is a video
device to which the consumer has access because it is “capable of . . .
playing multimedia data such as . . . preview videos.” Id. at 4:50–53.
Patent Owner also argues the combination of Chen and Elabbady fails
to disclose a wireless communication session between the first and second
computerized device sets as required by claim 60. Prelim. Resp. 13–14.
According to Patent Owner, because Petitioner’s claim chart for claim 60
only cites to Chen for wirelessly connecting control device 212 to network
access point 218, “Chen is deficient at describing a ‘wireless communication
session’ between the 1st CDS [computerized device set] and the 2nd CDS as
required by . . . claim 60 of the ‘183 Patent.” Id. at 14.
We are not persuaded by Patent Owner’s argument. Claim 60 recites
a method for use in a first computerized device set, and requires establishing
a wireless communication session with a second computerized device set.
Ex. 1001, 170:6–10, 170:20–21. The ’183 patent does not define the term
“wireless communication session,” and does not use the term other than inclaim 60. Chen discloses control device 212 (second computerized device
set) connects to network 216 using various wireless protocols such as
Bluetooth and IEEE 802.11b. See Pet. 10; Ex. 1003, 4:55–58. Chen further
discloses video devices 218 (first computerized device sets) connect to
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network 216 through a wireless connection. See Pet. 12; Ex. 1003, 5:9–12.
Elabbady discloses wirelessly connecting device 202 (second computerized
device set) with devices 206 (first computerized device sets) using UPnP protocol to establish a wireless peer-to-peer network. See Pet. 16; Ex. 1004,
5:23–31, 5:46–65, 9:53–60, 10:11–16. Any node in a wireless peer-to-peer
network can establish a wireless communication session with any other node
in the network. See Ex. 3002, 804 (defining a peer-to-peer communication
as a “[c]ommunication between two or more network nodes in which either
node can initiate sessions”).
Accordingly, we are persuaded, on this record, that Petitioner has
shown a reasonable likelihood that it would prevail in establishing the
unpatentability of claims 1–5, 16, 18, 24–26, 32–38, 40–42, 49, 51–53, 55,
and 58–61 over the combination of Chen and Elabbady.
E. Alleged Obviousness of Claims 1, 16, 18, 24, 32, 33, 37, 38, 41,
and 58–60 over Meade and Elabbady
Petitioner alleges claims 1, 16, 18, 24, 32, 33, 37, 38, 41, and 58–61of the ’183 patent would have been obvious under 35 U.S.C. § 103(a) over
Meade and Elabbady. Pet. 4. We have reviewed the Petition and Patent
Owner’s Preliminary Response, and are not persuaded that Petitioner has
demonstrated a reasonable likelihood of establishing the unpatentability of
claims 1, 16, 18, 24, 32, 33, 37, 38, 41, and 58–61 over the combination of
Meade and Elabbady.
1.
Overview of Meade (Ex. 1005)
Meade discloses an appliance control system consisting of “an
appliance and a mobile computing device configured for controlling the
appliance.” Ex. 1005 ¶ 8. Figure 1 of Meade is reproduced below.
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Figure 1 is a block diagram of Meade’s appliance control system.
Mobile computing device 12 is configured “to supply content 16 from
mobile computing device 12 (or from another source as controlled by mobile
computing device 12) to appliance 13 for performance by appliance 13.”
Ex. 1005 ¶ 32. Appliance 13 can be an audio device, video device,
computer, or mobile phone. Id. ¶ 34. Mobile computing device 12 can be a
PDA, handheld computer or laptop computer. Id. ¶ 41. To control
appliance 13, mobile computing device 12 first selects appliance 13 as an
appliance it wishes to control, and then establishes wireless communications
with appliance 13. Id. ¶ 35. Mobile computing device 12 then selects
content for performance on appliance 13. Id. ¶ 36. The selected content can
be obtained over a network 70 such as the Internet. Id. ¶ 42. In this way,
appliance 13 (e.g., an audio device 28), acting under the control of mobile
computing device 12, can obtain selected content (e.g., audio files) over the
Internet from a content web site 36. Id.
Mobile computing device 12 can display user interface 90 having an
appliance content selector 92 that is used “to determine what content is used
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or performed by appliance 13 . . . and where that content is obtained.”
Ex. 1005 ¶¶ 49, 108. Figure 9 of Meade illustrates user interface 90, and is
reproduced below.
Figure 9 of Meade is a block diagram of a user interface for an appliance
control system. The user interface includes appliance preferences 406 that
“determine[] the preferences a user has for appliances 13 they will control.”
Id. ¶ 111. Appliance preferences 406 include auto activation 460 that
“determines whether appliance 13 will be automatically activated in the
presence of mobile computing device 12,” and media selection 462 that, in
conjunction with appliance content selector 92, determines the content
selections for performance by appliance 13. Id.
2. Comparison of Claims 1 and 58–60 to the Combination of Meade
and Elabbady
On the record before us, Petitioner has failed to demonstrate a
reasonable likelihood of showing claims 1, 16, 18, 24, 32, 33, 37, 38, 41, and
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58–60 are unpatentable over the combination of Meade and Elabbady. See
Pet. 37–60. For example, claim 1 requires making available to a user of a
second computerized device set a second user interface that allows the userto select to have continuous media content presented on either one of a first
computerized device set and a second computerized device set. See Ex.
1001, 164:22–36.
Petitioner alleges Meade teaches mobile computing device 12 (second
computerized device set) displays user interface 90 that allows a user to
enter auto activation settings 460 for automatically activating selected
appliances 13, and to enter media selections 462 for selecting content to be
presented on the activated appliances. Pet. 38, 47–48. Petitioner further
alleges Meade teaches mobile computing device 12 can be a personal digital
assistant (PDA), and Elabbady teaches PDAs can be used to play media
content and also teaches “device selection between the first [PDA] device
202 and other devices 206 by virtue of using device 202 to either play video
or control playback on device[s] 206.” Id. at 40–41, 48–49.
Petitioner alleges it would have been obvious to a person of ordinary
skill in the art “to modify Meade’s mobile computing device 12 PDA to
provide functionality to present video data,” and that such “a modification
would combine known elements and functions– i.e., modifying mobile
computing device 12 to include a functionality that was known and
commonly implemented in PDAs at the time of Meade’s invention.” Pet.41. Petitioner further alleges the combination would have been obvious
because “it would provide a more desirable system, one where multiple
media browsing devices also have the ability to playback selected data,
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using devices and functionalities that were well-known at the time of
Meade’s invention.” Id. at 41–42.
Patent Owner argues the combination of Meade and Elabbady fails toteach or suggest making available a second user interface that allows the
user to select to have continuous media content presented on either one of
the first computerized device set and the second computerized device set as
required by claim 1. Prelim. Resp. 18. In particular, Patent Owner argues
“Petitioner only cites portions of Meade where the mobile computing device
12 controls appliances 13,” and that “Meade is deficient in describing where
the mobile computing device 12 allows a user to select via a ‘second user
interface’ continuous media content that can be presented on itself.” Id. at
19. According to Patent Owner, “Meade does not describe a second user
interface as required in claim 1, because the mobile computing device 12
controls appliances 13, rather than controlling content displayed on itself.”
Id. at 19–20.
Patent Owner further argues:
Elabbady was not cited by the Petitioner to describe
the “second user interface” rather, Elabbady in
combination with Meade was used to describe that
the mobile computing device 12 could be a PDA,
and that such PDA would be capable of displaying
video content. Regardless of whether the mobile
computing device 12 (of Meade) is a PDA, and that
PDA [] is capable of playing media content as
described in Elabbady, what is still missing from both Meade and Elabbady is a “second user
interface” for controlling whether the content is
displayed on the mobile computing device 12.
Meade only describes a system where a mobile
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computing device 12 controls whether video
content is displayed on one of the appliances 13.
Prelim. Resp. 20 (internal citations omitted).
Patent Owner argues that because Petitioner only relies on a portion of
Elabbady that discloses first device 202 can play media content, see
Ex. 1004, 8:57–62, “Petitioner does not demonstrate that Elabbady discloses
a user is able to use a ‘second user interface’ (as required in claim 1) to
select device 202 . . . so that video content can be played on device 202.”
Prelim. Resp. 20. Therefore, Patent Owner argues, “[e]ven if Meade and
Elabbady were combined, the combination also would be deficient for
failing to describe the ‘second user interface’ as required in claim 1 of the
’183 Patent.” Id. at 21. Patent Owner similarly argues the combination of
Meade and Elabbady fails to describe similarly worded user interface
limitations appearing in independent claims 58–60. Id. at 21–23.
We are persuaded by Patent Owner’s arguments. Claim 1 requires
making available to a user of a second computerized device set “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.” Ex. 1001, 164:22–36. Petitioner relies
solely on Meade for teaching a mobile computing device 12 having a second
user interface that allows a user to set preferences for playing media content
on appliances 13. Pet. 37–38, 48. Petitioner consistently describes Meadeas teaching using mobile computing device 12 to control appliances 13 in
order to display media on appliances 13. For example, Petitioner alleges
“[m]obile computing device 12 includes an appliance content selector 92
and a user interface 90 for determining what content is performed by
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appliance 13.” Id. at 37–38. Petitioner never alleges user interface 90 can
select mobile computing device 12 to display selected media content, or that
it would have been obvious to a person of ordinary skill in the art at the timeof the invention described in the ’183 patent to modify Meade’s user
interface 90 to allow mobile computing device 12 to select itself to display
selected media content.
Although Petitioner relies on Elabbady for teaching that PDAs, such
as Meade’s mobile computing device 12 or Elabbady’s device 202, “can
play media content such as video,” Prelim. Resp. 41, Petitioner fails to
allege that Elabbady teaches making a second user interface available on
device 202 for selecting either of device 202 and devices 206 to display
selected media content. Instead, Petitioner alleges “ Elabbady teaches device
selection between the first device 202 and other devices 206 . . . by virtue of
using device 202 to either play video or control playback on device 206.”
Id. (emphasis added). Notably, Petitioner fails to allege device 202 includes
a second user interface that allows selection of device 202 or device 206 for
playing selected videos, or that it would have been obvious to one of
ordinary skill in the art at the time of the invention described in the ’183
patent to include a second user interface in device 202 to allow a user to
select either device 202 or device 206 to play selected videos.
Accordingly, Petitioner has failed to show a reasonable likelihood that
it would prevail in establishing the unpatentability of claims 1, 16, 18, 24,32, 33, 37, 38, 41, and 58–60 over the combination of Meade and Elabbady.
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III. CONCLUSION
Petitioner has established a reasonable likelihood that it would prevail
in showing the unpatentability of claims 1–5, 16, 18, 24–26, 32–38, 40–42,49, 51–53, and 58–61 of the ’183 patent over the combination of Chen and
Elabbady.
The Board has not yet made a final determination with respect to the
patentability of any claim.
IV.
ORDER
It is ORDERED that, pursuant to 35 U.S.C. § 314, an inter partes
review is hereby instituted on the following ground:
Claims 1–5, 16, 18, 24–26, 32–38, 40–42, 49, 51–53, and 58–61
under 35 U.S.C. § 103(a) as obvious over Chen and Elabbady; and
FURTHER ORDERED that, except as specifically enumerated above,
no other ground of unpatentability, with respect to any claim, is instituted for
trial; and
FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37
C.F.R. § 42.4, notice is hereby given of the institution of trial commencing
on the entry date of this Decision.
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For PETITIONER:
P. Andrew Riley
Joshua L. Goldberg
Kai RajanFINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
Jonathan Stroud
UNIFIED PATENTS INC.
For PATENT OWNER:
Clay McGurk
THE LAW OFFICE OF CLAY McGURK
Robert Westerlund