Docket No.

: 113866-0007-401
(PATENT)

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re Patent Application of:

Simmons et al.

Reissue Application No.: 14/803,629 Confirmation No.: 8768

Filed: July 20, 2015 Art Unit: 3992

For: TRANSACTION SYSTEM FOR Examiner: Minh Dieu T. Nguyen

TRANSPORTING MEDIA FILES FROM
CONTENT PROVIDER SOURCES TO
HOME ENTERTAINMENT DEVICES

CERTIFICATE OF SERVICE

Sir:
It is certified that copies of Protest under 37 C.F.R. § 1.291: Estoppel Applies to this
Reissue Proceeding under 37 C.F.R. § 42.73(d)(3)(i), Information Disclosure Statement, Non-Patent
Literature documents and a copy of this Certificate of Service have been served in their entireties on
December 15, 2017 by causing the aforementioned documents to be deposited with the United
States Postal Service as first class mail postage pre-paid in an envelope addressed to:
René A. Vazques, Esq.
Sinergia Technology Law Group, PLLC
18296 St. George Ct.
Leesburg, VA 20176

Dated: December 15, 2017 Respectfully submitted,

By: /Scott A. McKeown/

Scott A. McKeown
Registration No.: 42,866
ROPES & GRAY LLP
2099 Pennsylvania Avenue, NW
Washington, D.C. 20006-6807
Phone: +1-202-508-4740
Fax: +1-617-235-9492
Attorney For Unified Patents Inc.

66213058_1
 Docket No.: 113866-0007-401
(PATENT)

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re Patent Application of:

Simmons et al.

Reissue Application No.: 14/803,629 Confirmation No.: 8768

Filed: July 20, 2015 Art Unit: 3992

For: TRANSACTION SYSTEM FOR Examiner: Minh Dieu T. Nguyen

TRANSPORTING MEDIA FILES FROM
CONTENT PROVIDER SOURCES TO
HOME ENTERTAINMENT DEVICES

PROTEST UNDER 37 C.F.R. § 1.291:

ESTOPPEL APPLIES TO THIS REISSUE PROCEEDING UNDER 37 C.F.R. §
42.73(d)(3)(i)

Unified Patents Inc. (“Unified” or “Protester”) is a third-party to reissue application number

14/803,629 and submits this protest with the U.S. Patent and Trademark Office (USPTO) in

accordance with 37 C.F.R. § 1.291. This is Unified’s first protest submitted in this reissue

proceeding.

66212736_1
Reissue Application No. 14/803,629 Docket No.: 113866-0007-401
Protest under 37 C.F.R. § 1.291

INTRODUCTION

Reissue application number 14/803,629 (filed July 20, 2015) is a reissue application of U.S.

Patent No. 7,269,854 (“the ’854 patent,” issued September 11, 2007).

At the time of the filing of the reissue application, the ‘854 patent was being asserted in

several proceedings, including two proceedings at the Patent Trial and Appeal Board (PTAB):

IPR2015-01061 (filed April 18, 2015) and CBM2015-00147 (filed June 3, 2015). The PTAB stayed

the reissue proceeding in January 2016 prior to examination on the merits of the reissue

application.1 The PTAB subsequently issued final written decisions in each of the IPR and CBM

proceedings, finding claims 1-23 (i.e., all claims at the time) unpatentable.2,3 The PTAB lifted the

stay of the reissue proceeding shortly thereafter.4

In the reissue proceeding, the Patent Owner submitted preliminary amendments that

amended independent claims 1 and 14 and added new dependent claims 24-36. Claims 1-36

currently stand rejected based on a Non-Final Rejection dated November 24, 2017.

Unified submits this protest under 37 C.F.R. § 1.291, asserting that the estoppel provisions

of 37 C.F.R. § 42.73(d)(3)(i) should be applied against the Patent Owner in this reissue application.

1
CBM2015-00147, Paper No. 18 (January 17, 2016).
2
CBM2015-00147, Paper No. 28 (October 11, 2016); IPR2015-01061, Paper No. 22 (October 12, 2016).
3
As of the filing of this Protest, no party has filed an appeal in either the IPR or CBM proceeding. Furthermore, claims
1-23 have not yet been formally canceled via an Inter Partes Review Certificate.
4
CBM2015-00147, Paper No. 30 (November 8, 2016).

2
66212736_1
Reissue Application No. 14/803,629 Docket No.: 113866-0007-401
Protest under 37 C.F.R. § 1.291

37 C.F.R. § 42.73(d)(3)(i)

Rule 37 C.F.R. § 42.73(d)(3)(i) recites:

42.73 Judgment
(d) Estoppel.
(3) Patent applicant or owner. A patent applicant or owner is
precluded from taking action inconsistent with the adverse
judgment, including obtaining in any patent:
(i) A claim that is not patentably distinct from a
finally refused or canceled claim….

Protester asserts that § 42.73(d)(3)(i) prevents the Patent Owner from seeking any claim that

is not patentably distinct from the claims found unpatentable in the IPR and CBM proceedings. That

is, Patent Owner cannot now pursue claims in the reissue application that are patentably indistinct

from the claims canceled in the IPR and CBM proceedings. Claims are patentably indistinct from

each other when, for example, they overlap in scope, are substantially connected in design,

operation, or effect, and are obvious over one another.5

The proposed claims of the reissue application are not patentably distinct from the claims

found unpatentable by the PTAB. Independent claims 1 and 14, from which all other claims depend,

were amended by the Patent Owner to describe the already-claimed Internet as being “public” and

“using TCP/IP protocols.” These amendments were merely superficial, as the specification of the

‘854 patent readily admits that the Internet is a “public” network that typically uses the known

standard protocol of “TCP/IP.”6 At best, the amended claims are an obvious variant of the finally

refused claims. As Patent Owner raises these indistinct amendments after the Board’s adverse

judgment, estoppel applies. 37 C.F.R. §42.73(d)(3)(i)

5
See MPEP § 802.01, Meaning of “Independent” and “Distinct;” see also MPEP § 806.05(j), Related Products;
Related Processes.
6
‘854 patent: col. 1, ll. 19-20; col. 2, ll. 39-40; col. 4, ll. 44-47.

3
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Reissue Application No. 14/803,629 Docket No.: 113866-0007-401
Protest under 37 C.F.R. § 1.291

CLAIM CHART

The following claim chart illustrates just how similar and indistinct claim 1 of the ‘854

patent (as finally refused by the PTAB) is to claim 1 as currently amended (amended by the

preliminary amendment of March 6, 2017). The added language of the reissue proceeding is shown

in underline.

4
66212736_1
Reissue Application No. 14/803,629
Protest under 37 C.F.R. § 1.291
Original Claim 1
(found unpatentable by the PTAB)
A system for executing user transaction
requests for delivering digital media files via
the Internet for driving a user site television set
and/or audio equipment, said system
comprising:
a plurality of user sites, each user site including
a player/receiver, a television set and/or audio
equipment, and a connectivity device for
connecting said player/receiver to the Internet;
a plurality of provider sites, each provider site
including a media server comprising a media
file storage device and a media file encryptor,
and a connectivity device for connecting said
provider site media server to the Internet;
a transaction server and a connectivity device
for connecting said transaction server to the
Internet;
each said player/receiver including a user
interface for sending a media file request via
the Internet to said transaction server
requesting delivery of an identified media file;
said transaction server being responsive to a
received media file request for sending an
authorization to the provider site storing the
requested media file authorizing delivery of the
requested media file from said provider site to
the requesting player/receiver directly via the
Internet;
5
66212736_1
Docket No.: 113866-0007-401
Reissue Application Claim 1
(amended in the preliminary amendment of
March 6, 2017)
A system for executing user transaction
requests for delivering digital media files via
the public Internet using TCP/IP protocols for
driving a user site television set and/or audio
equipment, said system comprising:
a plurality of user sites, each user site including
a player/receiver, a television set and/or audio
equipment, and a connectivity device for
connecting said player/receiver to the public
Internet using TCP/IP protocols;
a plurality of provider sites, each provider site
including a media server comprising a media
file storage device and a media file encryptor,
and a connectivity device for connecting said
provider site media server to the public Internet
using TCP/IP protocols;
a transaction server and a connectivity device
for connecting said transaction server to the
public Internet using TCP/IP protocols;
each said player/receiver including a user
interface for sending a media file request via
the public Internet using TCP/IP protocols to
said transaction server requesting delivery of an
identified media file;
said transaction server being responsive to a
received media file request for sending an
authorization to the provider site storing the
requested media file authorizing delivery of the
requested media file from said provider site to
the requesting player/receiver directly via the
public Internet using TCP/IP protocols;
Reissue Application No. 14/803,629 Docket No.: 113866-0007-401
Protest under 37 C.F.R. § 1.291

said authorized provider site being responsive
to said transaction server authorization for
uniquely encrypting the identified media file
and for downloading the encrypted media file
directly via the Internet to said requesting
player/receiver;
said authorized provider site being responsive
to said transaction server authorization for
uniquely encrypting the identified media file
and for downloading the encrypted media file
directly via the public Internet to said
requesting player/receiver using TCP/IP
protocols;

each said player/receiver including a media file each said player/receiver including a media file
decryptor; and wherein decryptor; and wherein

only said requesting player/receiver decryptor
is capable of decrypting said encrypted media
file downloaded thereto for playback on the
television set and/or audio equipment at the
same user site.
only said requesting player/receiver decryptor
is capable of decrypting said encrypted media
file downloaded thereto for playback on the
television set and/or audio equipment at the
same user site.

OBJECTION TO CLAIMS 1-36 UNDER 37 C.F.R. § 42.73(d)(3)(i)

In view of the discussion above, claims 1-36 should be objected to under 37 C.F.R. §

42.73(d)(3)(i) as being not patentably distinct from finally refused claims 1-23 in CBM2015-00147

and IPR2015-01061. The claimed systems and methods of claims 1-36 are not patentably distinct

from the finally refused claims because they are nearly identical to the finally refused claims with

only the superficial amendment of an Internet being “public” and “using TCP/IP protocols,” and

therefore they substantially overlap in scope, are substantially connected in design, operation, and

effect, and are obvious over one another.

Accordingly, Patent Owner is precluded from taking action inconsistent with the adverse

judgment in the related CBM and IPR proceedings.

6
66212736_1
Reissue Application No. 14/803,629 Docket No.: 113866-0007-401
Protest under 37 C.F.R. § 1.291

Dated: December 15, 2017 Respectfully submitted,

By: /Scott A. McKeown/

Scott A. McKeown
Registration No.: 42,866
ROPES & GRAY LLP
2099 Pennsylvania Avenue, NW
Washington, D.C. 20006-6807
Phone: +1-202-508-4740
Fax: +1-617-235-9492
Customer No. 28120
Attorney For Unified Patents Inc.

7
66212736_1
 PTO/SB/08b (07-09)
Approved for use through 07/31/2016. OMB 0651-0031
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number.

Substitute for form 1449/PTO

Complete if Known
Application Number 14/803,629
INFORMATION DISCLOSURE Filing Date July 20, 2015
STATEMENT BY APPLICANT First Named Inventor Simmons et al.
Art Unit 3992
(Use as many sheets as necessary)
Examiner Name Minh Dieu T. Nguyen
Sheet 1 of 1 Attorney Docket Number 113866-0007-401

U. S. PATENT DOCUMENTS
Examiner Cite Document Number Publication Date Name of Patentee or Pages, Columns, Lines, Where
Initials* No.1 MM-DD-YYYY Applicant of Cited Document Relevant Passages or Relevant
Number-Kind Code2 (if known) Figures Appear

FOREIGN PATENT DOCUMENTS

Examiner Cite Foreign Patent Document Publication Name of Patentee or Pages, Columns, Lines,
Initials* No.1 Date Applicant of Cited Document Where Relevant Passages
MM-DD-YYYY Or Relevant Figures Appear T6
Country Code3 -Number4 -Kind Code5 (if known)

NON PATENT LITERATURE DOCUMENTS

Examiner Cite Include name of the author (in CAPITAL LETTERS), title of the article (when appropriate), title of
Initials* No.1 the item (book, magazine, journal, serial, symposium, catalog, etc.), date, page(s), volume-issue T2
number(s), publisher, city and/or country where published.
October 11, 2016, Final Written Decision, CBM Case No. CBM2015-00147 (34 pages)
October 12, 2016, Final Written Decision, IPR Case No. IPR2015-01061 (32 pages)

Examiner Date
Signature Considered

*EXAMINER: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through citation if not in conformance and not
considered. Include copy of this form with next communication to applicant. 1 Applicant’s unique citation designation number (optional). 2 See Kinds Codes of
USPTO Patent Documents at www.uspto.gov or MPEP 901.04. 3 Enter Office that issued the document, by the two-letter code (WIPO Standard ST.3). 4 For
Japanese patent documents, the indication of the year of the reign of the Emperor must precede the serial number of the patent document. 5Kind of document by
the appropriate symbols as indicated on the document under WIPO Standard ST.16 if possible. 6 Applicant is to place a check mark here if English language
Translation is attached.

66212118_1
Trials@uspto.gov Paper 28
571-272-7822 Entered: October 11, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

HULU, LLC, NETFLIX, INC., SPOTIFY USA INC., and VIMEO, LLC,
Petitioner,

v.

iMTX STRATEGIC, LLC,

Patent Owner.
____________

Case CBM2015-00147
Patent 7,269,854 B2
____________

Before KEVIN F. TURNER, THOMAS L. GIANNETTI, and

MATTHEW R. CLEMENTS, Administrative Patent Judges.

GIANNETTI, Administrative Patent Judge.

FINAL WRITTEN DECISION

35 U.S.C. § 328(a) and 37 C.F.R. § 42.73

Hulu, LLC; Netflix, Inc.; Spotify USA Inc.; and Vimeo, LLC
(collectively, “Petitioner”) filed a Corrected Petition pursuant to 35 U.S.C.
§§ 321–329 to institute a covered business method patent review of claims
1–23 (all claims) of U.S. Patent No. 7,269,854 B2 (Ex. 1001, “the ’854
CBM2015-00147
Patent 7,269,854 B2

patent”). Paper 8 (“Pet.”). iMTX Strategic, LLC (“Patent Owner”) filed a

Preliminary Response. Paper 13 (“Prelim. Resp.”). Applying the standard
set forth in 35 U.S.C. § 324(a), we granted Petitioner’s request and instituted
a covered business method patent review of all challenged claims. Paper 14
(“Institution Decision” or “Dec.”).
During the trial, Patent Owner filed a Patent Owner Response
(Paper 20, “PO Resp.”), and Petitioner filed a Reply to the Patent Owner
Response (Paper 23, “Pet. Reply”). An oral hearing was held on August 26,
2016, and a copy of the transcript has been made part of the record. Paper
27 (“Hearing Tr.”).
We have jurisdiction under 35 U.S.C. § 6(b). This Decision is a Final
Written Decision under 35 U.S.C. § 328(a) as to the patentability of the
claims on which we instituted trial. Based on the record before us, we
determine that Petitioner has shown, by a preponderance of the evidence,
that claims 1–23 of the ’854 patent are unpatentable under 35 U.S.C.
§ 103(a).

I. BACKGROUND
A. The Ҳ854 patent (Ex. 1001)
The ‫ތ‬854 patent is titled “Transaction System for Transporting Media
Files from Content Provider Sources to Home Entertainment Devices.” The
Abstract describes the subject matter as follows:
A system and method for enabling a user to request and
download selected media files from distributed content provider
sites via the Internet. The system includes a plurality of user
sites each including a player/receiver housed in an enclosure
having a simple user interface, a plurality of content provider
sites, and a transaction server site. The player/receiver enables

2
CBM2015-00147
Patent 7,269,854 B2

the user to connect to the transaction server via the Internet to

access a program guide listing available media files. The user
is then able to select a desired file and, via the player/receiver
and Internet, request the transaction server to authorize
download of the selected file. The file request along with file
encryption and transfer instructions are sent from the
transaction server via the Internet to the content provider site
storing the requested file. Requested files are then dynamically
encrypted by the content provider site and securely downloaded
to the requesting player/receiver. The requesting
player/receiver is uniquely capable of decrypting a downloaded
file concurrent with playing back the file on a conventional
home television set and/or audio system.

Ex. 1001, Abstract. This is illustrated by Figure 1 of the patent, which is

reproduced below:

Figure 1 above is a block diagram showing the architecture of a preferred

system in accordance with the invention. Ex. 1001, col. 3, ll. 66–67. The
system is comprised of a plurality of content provider sites 61, 62, etc.; a
plurality of home user sites 71, 72, etc.; and transaction server site 10. Each
of these is connected to a common communications network 11. Id. at
col. 4, ll. 31–36. In the preferred embodiment, network 11 is the public

3
CBM2015-00147
Patent 7,269,854 B2

Internet. Id. at col. 4, ll. 37–38. In alternative embodiments, however,

network 11 could comprise other public or private networks. Id. at col. 4, ll.
42–44. According to the specification, “the invention can operate with
various, public and private communications networks.” Id. at col. 2, ll. 30–
31.
In the preferred embodiment, connections to the Internet are formed
by a suitable broadband network connectivity device 12. Examples include
cable modems, digital subscriber lines, or very small satellite Internet access
systems. Id. at col. 4, ll. 38–41.
The specification includes the following statement under the section
heading “Summary of the Invention:”
Systems in accordance with the invention are generally
characterized by the following features:
1. They are readily scalable and can accommodate a
virtually unlimited number of content provider sites and home
user sites communicating via the Internet using a standard
protocol, e.g., TCP/IP . . . .
Id. at col 2, ll. 35–40 (emphasis added). The specification also includes the
following statement under the section heading “Description of the Preferred
Embodiments”:
The “Internet” refers to a global network that facilitates the
connectivity of computer-based systems typically using a
common communications protocol known as Transmission
Control Protocol/Internet Protocol (TCP/IP).
Id. at col. 4, ll. 44–47 (emphasis added). As discussed infra, Petitioner and
Patent Owner dispute the significance of these statements in the
specification.

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CBM2015-00147
Patent 7,269,854 B2

B. Illustrative Claim
Claims 1 and 14 are independent claims. Claim 1 is illustrative of the
claims at issue and is reproduced below:
1. A system for executing user transaction requests for
delivering digital media files via the Internet for driving a user
site television set and/or audio equipment, said system
comprising:
a plurality of user sites, each user site including a
player/receiver, a television set and/or audio equipment, and a
connectivity device for connecting said player/receiver to the
Internet;
a plurality of provider sites, each provider site including
a media server comprising a media file storage device and a
media file encryptor, and a connectivity device for connecting
said provider site media server to the Internet;
a transaction server and a connectivity device for
connecting said transaction server to the Internet;
each said player/receiver including a user interface for
sending a media file request via the Internet to said transaction
server requesting delivery of an identified media file;
said transaction server being responsive to a received
media file request for sending an authorization to the provider
site storing the requested media file authorizing delivery of the
requested media file from said provider site to the requesting
player/receiver directly via the Internet;
said authorized provider site being responsive to said
transaction server authorization for uniquely encrypting the
identified media file and for downloading the encrypted media
file directly via the Internet to said requesting player/receiver;
each said player/receiver including a media file
decryptor; and wherein
only said requesting player/receiver decryptor is capable
of decrypting said encrypted media file downloaded thereto for
playback on the television set and/or audio equipment at the
same user site.

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CBM2015-00147
Patent 7,269,854 B2

Claim 14, directed to a method, recites subject matter similar to that of

claim 1.
C. Related Proceedings
Petitioner and Patent Owner identify a number of related proceedings
in the Northern District of California and the District of Delaware involving
the ‫ތ‬854 patent. Pet. 18–19; Paper 5; Paper 11. To establish standing under
AIA § 18(a)(1)(B), each of Hulu, LLC; Netflix, Inc.; Spotify USA Inc.; and
Vimeo, LLC represents that it has been sued for infringing the ‫ތ‬854 patent in
the District of Delaware. Pet. 18. In addition, the ’854 patent is the subject
of a reissue application, which has been stayed (Paper 18), and an inter
partes review proceeding, Case IPR2015-01061.
D. Real Party in Interest
Petitioner identifies Hulu, LLC; Netflix, Inc.; Spotify USA Inc.; and
Vimeo, LLC as the real parties-in-interest. Pet. 18. Patent Owner does not
challenge this assertion.
E. References
Petitioner relies on the following references:
1. “Hooper,” U.S Patent 5,671,225, issued Sept. 23, 1997 (Ex. 1006)
2. “Li,” Yongcheng Li, et al., Security Enhanced MPEG Player,
March 25–26, 1996 (Ex. 1007)
3. “Kohl,” Ulrich Kohl, Secure Container Technology as a Basis for
Cryptographically Secured Multimedia Communication,
Multimedia’98, Sept. 1998 (Ex. 1008)
4. “Hickey,” U.S. Patent 5,475,835, issued Dec. 12, 1995 (Ex. 1009)
5. “Garcia-Molina,” Hector Garcia-Molina, et al., Safeguarding and
Charging for Information on the Internet, PROCEEDINGS OF
ICDE ’98, Feb. 1998 (Ex. 1010)

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CBM2015-00147
Patent 7,269,854 B2

F. Grounds Asserted
The Board instituted a covered business method patent review of the
’854 patent on the following grounds identified by Petitioner (Pet. 19–20) as
Grounds 2–5:1
1. Obviousness of claims 1, 2, 6, 12, and 14 over Hooper and Li
2. Obviousness of claims 3–5 and 15–18 over Hooper, Li, and Kohl
3. Obviousness of claims 7–11 and 19–22 over Hooper, Li, and
Hickey
4. Obviousness of claims 13 and 23 over Hooper, Li, and Garcia-
Molina
G. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
construed according to their broadest reasonable interpretation in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under
that standard, claim terms are generally given their ordinary and customary
meaning, as would be understood by one of ordinary skill in the art in the
context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).
1. Means plus Function
In our Institution Decision, the only means plus function term we
construed was in dependent claims 9 and 10. Dec. 9–10. The term we
construed was: “means for displaying a program guide listing media files
stored by the digital storage device therein.” Id. at 9. We determined that,

1
Ground 1 was a challenge under 35 U.S.C. § 101. Pet. 19. The Board
denied institution on that challenge. Dec. 14.

7
CBM2015-00147
Patent 7,269,854 B2

under 35 U.S.C. § 112, ¶ 6, the corresponding structure for this term is a

conventional, television/video display. Id. at 10. Neither party has
contested this construction. We have considered the record and determine
that this construction should not be changed.
2. “Internet”
Patent Owner asserted in the Preliminary Response that as to
“Internet,” the “applicant chose to be his own lexicographer and provided an
explicit definition.” Prelim. Resp. 29. Patent Owner quoted the ’854 patent
specification in construing the Internet as “a global network that facilitates
the connectivity of computer-based systems typically using a common
communications protocol known as Transmission Control Protocol/Internet
Protocol (TCP/IP).” Prelim. Resp. 29 (citing Ex. 1001, col. 4, ll. 44–47). In
our Institution Decision, we concluded no special definition beyond the plain
meaning of the term “Internet” was necessary. Dec. 10.
Later in our Institution Decision, however, we responded to an
argument by Patent Owner that the testimony of Dr. Long, Petitioner’s
expert, was “flawed” because he had analyzed the claims without a proposed
construction for “Internet.” Dec. 16–17 (citing Prelim. Resp. 61). We again
concluded that “[t]he ‫ތ‬854 patent specification provides no special definition
for the term ‘Internet’ beyond its plain and ordinary meaning.” Id. at 17.
We further stated, however, that the description of the Internet set forth in
the ’854 patent “is consistent with the term’s plain meaning.” Id. Finally,
we cited a dictionary definition that we said was “a relevant definition of
‘Internet.’” Id. Specifically, we cited the Microsoft Computer Dictionary
242 (4th ed. 1999), defining Internet as: “[t]he worldwide collection of

8
CBM2015-00147
Patent 7,269,854 B2

networks and gateways that use the TCP/IP suite of protocols to

communicate with one another.” Ex. 3001.
Patent Owner now has abandoned its argument that the ’854 patent
specially defines the term “Internet.” Instead, Patent Owner now “agrees”
with the definition in the Microsoft Computer Dictionary. PO Resp. 23.
Building on this alleged definition of Internet, Patent Owner also contends
that the claims of the ’854 patent, by referring to “the Internet,” require use
of the TCP/IP protocol. PO Resp. 23.
We are not persuaded by this argument. As noted supra, the ’854
patent specification states that the patented invention “communicat[es] via
the Internet using a standard protocol, e.g., TCP/IP.” Ex. 1001, col. 2,
ll. 39–40 (emphasis added). At oral argument, counsel for Patent Owner
confirmed that the ’854 patent specification gives TCP/IP only as an
example:
[THE BOARD]: In fact, would you agree that the
specification doesn't require the TCP/IP protocol? It gives it as
an example of the protocol that you could use. Just answer my
question, please, isn't it true that it just offers it up as an
example?
[COUNSEL FOR PATENT OWNER]: It uses the word
“EG.”
[THE BOARD]: That's an example, right?
[COUNSEL FOR PATENT OWNER]: Yes, Your
Honor.
Hearing Tr. 24:23–25:5.
Similarly, the ’854 patent defines the Internet as “typically using a
common communications protocol known as Transmission Control
Protocol/Internet Protocol (TCP/IP).” Ex. 1001, col. 4, ll. 45–48 (emphasis

9
CBM2015-00147
Patent 7,269,854 B2

added). Dr. Long’s testimony confirms this: “[T]he Internet as you know it
and call it runs largely, but not entirely on TCP/IP. There’s a large number
of protocols.” Ex. 2009 (“Long Dep.”), 40:14–16. We find, therefore, that
the description of the invention in the ’854 patent specification permits the
use of protocols other than TCP/IP. This conclusion is reinforced by the fact
that, according to the specification, “the invention can operate with various,
public and private communications networks.” Ex. 1001, col. 2, ll. 30–31.
Such networks, presumably, could use non-TCP/IP protocols. We conclude,
therefore, that the specification of the ’854 patent contradicts Patent Owner’s
argument that the claims require the use of TCP/IP.
Patent Owner’s reliance on the Microsoft Computer Dictionary
definition is misplaced. The Microsoft Computer Dictionary describes a
“TCP/IP suite of protocols” (Ex. 3001, 242 (emphasis added)), which is
broader than just TCP/IP. Moreover, Patent Owner’s statement that “the
Board has indicated” that the definition from the Microsoft Computer
Dictionary is “the proper definition of the term” mischaracterizes the record.
PO Resp. 25. The Board concluded that although that definition was
“relevant,” the term “Internet” did not require construction. Dec. 10, 17
(“There was, therefore, no necessity for Petitioner or Dr. Long to offer a
proposed construction for that term.”). This claim construction issue is not
dispositive, however. Even applying Patent Owner’s proposed construction
for Internet, we would reach the same result in this case. See infra Section
II.B.3.

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3. “downloading the encrypted media file directly via the

Internet to said requesting player/receiver”[claim 1] /
“causing said identified media server to uniquely encrypt the
identified media file and download it directly via the Internet to the
requesting user” [claim 14]
Patent Owner proffers the same construction for these two similar
terms (appearing in claims 1 and 14, respectively), as follows:
downloading an encrypted media file from a provider site
to a requesting user via the Internet [1] without the media file
being stored or processed by the transaction server, and [2]
without specifying a particular set of connections from the
provider site to the user site.
PO Resp. 27–28 (reference numbers added). Thus, Patent Owner’s proposed
construction would include two negative limitations, identified as [1] and [2]
in the paragraph above.

Patent Owner’s argument for the including negative limitation [1],

“without the media file being stored or processed by the transaction server,”
is based on the prosecution history. PO Resp. 24–25. Thus, Patent Owner
asserts:
During prosecution of the ‘854 patent, applicant
consistently defined a direct transfer of a media file as one in
which the media file is not stored or processed by the
transaction server in order to distinguish the claims from the
Toyouchi reference. Thus, this limitation should properly be
included in the broadest reasonable interpretation of these
phrases for at least the reason that the applicant disclaimed a
broader interpretation during prosecution.
Id. at 25.
We considered but did not adopt this proposed construction in our
Institution Decision. Dec. 10–11. We concluded there that the proposed
construction would rewrite the claims and was not consistent with the

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broadest reasonable interpretation. Id. at 11. For similar reasons, we do not

adopt this construction now.
We have also considered Patent Owner’s prosecution history
argument and conclude it is unavailing. PO Resp. 24–25. The argument
focuses on the applicants’ successful attempt to overcome the Examiner’s
rejections of claims 1 and 14 over a Toyouchi reference. Id. at 24. But
Patent Owner has not adequately explained Toyouchi, or attempted to
compare Toyouchi to any of the art relied on by Petitioner, in a way that
would be helpful to our analysis or supportive of its argument.
Moreover, we disagree with Patent Owner’s argument that the cited
responses by the applicants to the Examiner’s rejections support the
proposed construction. Id. at 13–16, 20. In those responses, the applicants
argued that “applicant’s [sic] system architecture calls for the direct transfer
of a media file from a provider site to a user site without the media file being
stored or processed by the transaction server.” Id. at 24.
The Examiner’s May 22, 2007, Reasons for Allowance, however,
only partially quoted in Patent Owner’s Response,2 and did not adopt
applicants’ reasoning that “without the media file being stored or processed
by the transaction server” distinguishes Toyouchi. Instead, the Examiner
focused on the path the media file follows from the transaction server to the
client, stating:
[T]he prior art fails to teach the receiving a request for a file at
the transaction server and authorizing a provider to send the
requested file directly to the client. The prior art generally

2
PO Resp. 20. Patent Owner’s quotation omits the italicized sentence. Also
Patent Owner incorrectly identifies August 22, 2007, as the date of the
Reasons for Allowance. Id.

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teaches all traffic between the client and provider being

transmitted through the transaction server.”
Ex. 1004, 0010 (emphasis added).3 The Examiner thus contrasted “directly
to the client” in the claims with “being transmitted through a transaction
server,” not with whether the media file is “stored or processed by the
transaction server.” Thus, we find that the Reasons for Allowance, by not
adopting Patent Owner’s “stored or processed” reasoning, do not support
Patent Owner’s argument. “[T]he doctrine of prosecution disclaimer only
applies to unambiguous disavowals.” Grober v. Mako Prods., Inc., 686 F.3d
1335, 1341 (Fed. Cir. 2012) (citation omitted). We find that the prosecution
record cited by Patent Owner in this case does not meet that test.
The Board “is under no obligation to accept a claim construction
proffered as a prosecution history disclaimer, which generally only binds the
patent owner.” Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed.
Cir. 2014). There is no reason to depart from that approach here. As
Petitioner points out, unlike in district court, Patent Owner had the
opportunity to propose an amendment to the claims to include the limitations
it now says are “properly included” in the broadest reasonable interpretation.
Pet. Reply 4.
According to Patent Owner, negative limitation [2], “without
specifying a particular set of connections from the provider site to the user
site,” is “properly included” in the proposed construction because of the
reference in the claims to the Internet. PO Resp. 28. This argument is tied
in with Patent Owner’s proposed construction of the claims as requiring use
of TCP/IP. See supra Section I.G.2. Thus, Patent Owner asserts:

3
Patent Owner’s citation to the Examiner’s Reasons for Allowance is
incorrect. PO Resp. 20 (citing Ex. 1004, 221).

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The language “without specifying a particular set of

connections from the provider site to the user site” is properly
included in the broadest reasonable interpretation because this
language merely states how data is inherently transmitted over
the Internet as a result of the standard TCP/IP protocols that are
necessarily used by the Internet, in the absence of a component
that overrides the standard TCP/IP protocols of the Internet.
Id. at 28–29.
Petitioner responds by asserting that Patent Owner is attempting “to
improperly rewrite the claims.” Pet. Reply 8. Petitioner contends that the
specification and prosecution history are inconsistent with Patent Owner’s
proposed construction. Id. To the extent that the terms need construction,
Petitioner proposes the following: “‘directly’ should be construed to mean
that the file is transmitted from the provider site to the player/receiver
without being transmitted through a transaction server.” Pet. Reply 9.
Petitioner relies on statements in the prosecution history to support this
construction, including the Examiner’s Reasons for Allowance previously
discussed, in which the Examiner contrasts sending files “directly to the
client” with prior art teaching “all traffic between the client and provider
being transmitted through the transaction server.” Id. at 9 (citing Ex. 1004,
010).
We find Patent Owner’s proposal—adding the negative limitation
related to “specifying a particular set of connections” to the claims—is
unavailing for reasons similar to those expressed above and in our Institution
Decision. Specifically, we disagree with Patent Owner’s argument that the
claims should be read as prohibiting “specifying a particular set of
connections” in downloading media files. Patent Owner points us to nothing
in the specification that would support that reading of the claims. In fact, as

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pointed out in Section I.G.2 supra, the specification is to the contrary, for
example, in its description of the Internet as “typically” (but not necessarily)
using TCP/IP, and in its reference to alternative embodiments comprising
other public or private networks. Ex. 1001, col. 2, ll. 30–31, col. 4, ll. 42–
44. So, too, is the record developed at trial, including credible testimony
from Petitioner’s expert, Dr. Long, that the Internet does not run “entirely on
TCP/IP.” Long Dep. 40:15.
Nor are we persuaded by Patent Owner’s reliance on a paper
(Ex. 2007) authored by Dr. Charles A. Eldering, an expert for the petitioner
in IPR2015-01061, another proceeding before the Board involving the ’854
patent. PO Resp. 26–27, 29. According to Patent Owner, Dr. Eldering
“distinguishes TCP/IP based networks, such as the Internet, from
‘connection-oriented’ networks, such as ATM [asynchronous transfer mode]
networks.” Id. at 27. Patent Owner’s reliance is misplaced. The argument
advanced by Patent Owner, contrasting TCP/IP and ATM, assumes that the
’854 patent claims, by referring to the Internet, require the use of TCP/IP.
For the reasons discussed, we do not agree with that construction advanced
by Patent Owner.
We conclude that Patent Owner’s arguments in support of including
its two negative limitations in these claim elements are unavailing. We,
therefore, rely on the plain meaning of these terms in the claims, not
including the negative limitations proposed by Patent Owner.
4. “transaction server” and “encrypted media file”
In our Institution Decision, we determined that construction of these
terms was not necessary. Dec. 10–11. Patent Owner again proffers
constructions for the terms. PO Resp. 30–34. However, Patent Owner’s

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arguments for patentability do not turn on those constructions. In light of

this, we do not agree with Patent Owner that providing constructions for
these terms is “necessary.” In any event, for reasons similar to those stated
above, e.g., in connection with the term “Internet,” we are not persuaded that
special constructions of “transaction server” and “encrypted media file” are
required.
In any case, we do not agree with Patent Owner’s proposed
constructions for these terms. PO Resp. 30–34. Patent Owner contends that
the broadest reasonable interpretation for the term “transaction server” is “a
server that authenticates each player/receiver, and sends information
regarding a requested media file and information regarding a player/receiver
that requested the media file to one of the multiple content provider sites that
contains the requested media file.” PO Resp. 30. Patent Owner contends
the broadest reasonable interpretation of “encrypted media file” is “a media
file that can only be played back on the requesting player/receiver.” Id. at
34.
Patent Owner supports its proposed constructions by citations to the
specification. Nonetheless, the specification references describing the
function of the transaction server do not rise to the level of a limiting
definition. PO Resp. 31–32. Likewise, the specification references for
“encrypted media file” describe the results of the encryption, not the
encryption process itself. Id. at 33. We are not persuaded that such
limitations from the specification should be imported into the claims.

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II. ANALYSIS
A. Background
All four grounds in this trial are based on Hooper and Li, together or
in combination with other references. Dec. 19–20. Patent Owner’s
Response focuses on independent claims 1 and 14 and on the combination of
Hooper and Li. See discussion of Grounds 2–5 at PO Resp. 34 (“The
common combination of references used in Grounds 2–5 is Hooper and
Li.”). Patent Owner presents separate arguments for only two dependent
claims: claims 7 and 19, which relate to storing downloaded media files.
See PO Resp. 51–53 (discussing separately claims 7 and 19). We, therefore,
focus our discussion here on the obviousness of claims 1 and 14 based on
the combination of Hooper and Li. Following that, we will separately
discuss claims 7 and 13. We will not address the dependent claims that
Patent Owner did not argue separately in the Patent Owner Response and
which are addressed in the Petition.
B. Claims 1 and 14
1. Hooper Overview
Hooper is titled “Distributed Interactive Multimedia Service System.”
Ex. 1006. Hooper is directed to providing multimedia services using
distributed computer networks. Id. at col. 1, ll. 5–8. These services include
video (i.e., movies). Id. at col. 4, ll. 42–43. The operation of the system is

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shown in Figure 4 from Hooper which follows:

Figure 4 of Hooper is a flow diagram of interactions between clients

and servers of the distributed interactive multimedia services. Ex. 1006,
col. 2, ll. 56–59. As shown in Figure 4, client application (CA) 11 initiates a
service session by sending attach request 410 to session manager (SEM)
205. Id. at col. 5, ll. 24–26. Attach request 410 can include the address of
set-top box 11, an initial service pathway, and client profile. Id. at col. 5,
ll. 26–29. The client address identifies a particular set-top box, and can also
include user identification information, such as a unique password. Id. at
col. 5, ll. 29–31.
In response to receiving attach request 410, SEM 205 validates the
client/user identity against subscriber database 420. Id. at col. 5, ll. 41–43.
Upon validation of the request as authentic, SEM 205 sends allocate request

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440 to resource manager (RM ) 210. RM 210 allocates the apperopriate

resources for the initial services. Id. at col. 5, ll. 41–48.
SEM 205 sends create request 450 to media stream manager (MSM)
207, and the MSM creates or allocates media stream port 205. Id. at col. 5,
ll. 49–51. SEM 205 receives the address or “handle” of media stream port
240 so that the services can be connected to deliver constant bit rate video
stream directly to the client. Id. at col. 5, ll. 52–55. A particular service can
be selected for execution by client application 11 by sending an open
request, as shown in Fig. 6. Id. at col. 6, ll. 47–49.
In the final step, SEM 205 generates launch request 460 to launch the
selected services in one or more servers 200 (shown in Fig. 2). Launching
means the execution of the process of the services, and access to the
associated content assets are enabled. Id. at col. 5, ll. 56–60.
The services can send video streams directly to client 10 via media
stream port 240. Id. at col. 5, ll. 61–63. The reply to a successful attach
request 460 can include the addresses or “handles” of the launched services.
Client application 11 uses these handles to communicate directly with the
selected services during subsequent requests. Id. at col. 5, ll. 63–67.
2. Li Overview
Li describes a security-enhanced MPEG player that can be used with a
World Wide Web browser to deliver video over the Internet. Ex. 1007, 1;
Ex. 1023 (“Soske Dep.”), 33:25–34:2. Li describes the use of both secret
key and public key encryption and decryption of continuous, real-time video
streams such as MPEG streams. Id. Petitioner relies on Li for its teaching
use of encryption and decryption and for its disclosure of video streaming
over the Internet. Pet. 36; Pet. Reply 11–13; Hearing Tr. 10:1–13.

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3. Discussion
At the outset of its Response, Patent Owner presents a discussion of
the state of the art and the development of Patent Owner’s technology. PO
Resp. 2–11. As much of this discussion overlaps with Patent Owner’s
argument regarding objective indicia of non-obviousness (id. at 53–66), we
will defer discussing this until we reach the issue of secondary
considerations, infra.
Patent Owner’s response focuses on two limitations of claims 1 and
14. Patent Owner asserts Hooper and Li do not teach or suggest the
following limitations from claim 1: (1) “downloading a media file, directly
via the Internet, from a specialized media file storage device to a requesting
user” and (2) “a transaction server that sends an authorization to a provider
site storing a requested media file.” PO Resp. 1–2. Corresponding
limitations appear in claim 14.
Petitioner’s claim charts demonstrate where each element of claims 1
and 14 is found in the Hooper–Li combination. Pet. 36–53. For example,
Petitioner identifies the recited “player/receiver” with the disclosure of a
television set top box in Hooper. Pet. 19. Petitioner’s expert, Dr. Long,
explains in detail how the Hooper–Li combination meets the elements of
these claims. Ex. 1002 (“Long Decl.”) ¶¶ 86–106 (discussing claims 1 and
14). We find this testimony is credible.
Petitioner also provides a persuasive rationale for combining the
teachings of Hooper and Li. Pet. 51–53; Long Decl. ¶¶ 83–85. Petitioner
asserts that “[a]mong those aspects of video transmission known at the time,
encryption and decryption techniques were known and commonly employed
in various video transmissions systems predating the filing date by decades.”

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Id. at 51 (citing Long Decl. ¶ 83). Petitioner also argues that “[t]hus, the
combination of Hooper with Li represents making use of known
technologies as in Li so as to improve Hooper in a similar manner.” Id.
Petitioner also demonstrates that it would have been obvious to
combine Li’s teaching of use of the Internet to deliver video with Hooper.
Pet. Reply 11–13. Petitioner relies on Dr. Long’s testimony that “an
ordinarily skilled artisan making use of the video transmission methods and
systems of the type described in Hooper would know to incorporate various
aspects of video transmission that were commonly employed at the time.”
Id. at 12 (quoting Long Decl. ¶ 83).
We have considered Petitioner’s obviousness analysis based on the
combination of Hooper and Li in light of the record developed during trial,
including credible supporting testimony from a qualified expert, Dr. Long.
We adopt that analysis and its underlying reasoning. We note, also, that
Patent Owner’s challenge to that analysis focuses on a few points, which we
have considered and will now discuss.
Patent Owner’s response focuses on two limitations of claims 1 and
14. Patent Owner asserts neither Hooper nor Li (nor any of the other cited
art) teaches or suggests the following claim 1 limitations: (1) “downloading
a media file, directly via the Internet, from a specialized media file storage
device to a requesting user” and (2) “a transaction server that sends an
authorization to a provider site storing a requested media file.” PO Resp. 1–
2. The same is alleged of the corresponding limitations appearing in claim
14.
Patent Owner contends that Hooper does not meet the first limitation
of downloading a media file directly via the Internet because Hooper does

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not teach use of the Internet to deliver a requested media file. PO Resp. 35.
This argument is based on Patent Owner’s assertion that by referring to the
Internet, the claims are limited to TCP/IP.
More than that, however, Patent Owner contends that Hooper
“describes functionality that is inconsistent with the use of the TCP/IP suite
of protocols used by the Internet.” Id. Patent Owner contends that Hooper
discloses a gateway router (designated L1 in Fig. 2) that provides a set of
connections between clients and servers. Id. at 38. This is in contrast to
claims 1 and 14, according to Patent Owner, because “properly construed”
they require the media file to be downloaded “without specifying a particular
set of connections from the provider site to the user site.” Id.
Petitioner responds by challenging Patent Owner’s claim construction
that would limit the claims to use of TCP/IP. Pet. Resp. 4–7. For the
reasons stated by Petitioner and those discussed in Section I.G.2 supra,
under the heading Claim Construction, we agree with Petitioner that the
’854 patent claims are not limited to TCP/IP. As Dr. Long testified, “the
Internet as you know it and call it runs largely, but not entirely on TCP/IP.
There’s a large number of protocols.” Long Dep. 40:14–16. Moreover, we
agree with Petitioner’s reasoning that the negative claim limitations
proposed by Patent Owner are not in the claims and should not be read into
the claims. See discussion at PO Resp. 8–9 and supra under Claim
Construction.
Petitioner contends that Hooper discloses the Internet because the
Internet is “a collection of networks” and Hooper’s network would be part of
that collection. Pet. Reply 10. In that regard, Dr. Long testifies that a
person of ordinary skill “would view Hooper as teaching the Internet as the

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primary, most common type of network.” Long Decl. ¶ 86. Also, Dr. Long
testifies that Hooper discloses a network that would be “part of the Internet”:
[Patent Owner’s Counsel]: Claim 1 calls for the Internet,
and there's no explicit use of the term “Internet” in Hooper, but
your testimony is that they disclose a network and that is
sufficient. Is that accurate?
[Dr. Long] I said they disclose a network that would be
part of the Internet. If you had your hypothetical new network,
would I connect it into the Internet? You bet I would. Why
wouldn't I?
Long Dep. 74:20–75:5. We agree with Petitioner’s reasoning.
But even if we were to accept Patent Owner’s argument that Hooper
does not disclose use of the Internet, Patent Owner’s argument fails for
another reason. As testimony from Patent Owner’s expert confirms, Li
discloses use of the Internet to stream video. Pet. Reply 11–12 (citing Soske
Dep. 33:25–34:2). Combining Hooper and Li, therefore, meets this
limitation. Patent Owner does not convincingly challenge this disclosure of
the Internet by Li. For this reason, among others, Patent Owner’s argument
that the claims are limited to use of TCP/IP, even if true, would fail to
convince us that the combination of Hooper and Li fails to meet this
limitation.
Moreover, we adopt the reasoning presented by Petitioner and Dr.
Long for combining Hooper and Li set forth by Petitioner and find that such
a combination would have been obvious. Patent Owner does not
convincingly challenge the rationale or motivation set forth by Petitioner and
its expert for combining the teachings of Hooper and Li. See PO Resp. 49–
51. Patent Owner states: “[t]here is absolutely no analysis by Petitioners . . .
as to how Li’s teaching that MPEG video streaming can occur over the

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Internet can be combined with Hooper’s system.” PO Resp. 51. We do not

agree. We find Petitioner’s rationale for combining the references
persuasive. See discussion supra. Nor are we persuaded that Hooper
teaches away from the use of TCP/IP or the Internet. In that connection, we
credit Dr. Long’s testimony that Hooper is “protocol agnostic.” Long Dep.
71:15. As he explains: “It doesn’t matter what protocol you are using. A bit
pipe is a bit pipe.” Id. at 71:15–16.
For the reasons stated above and in Petitioner’s arguments, therefore,
we are persuaded that the combination of Hooper and Li discloses use of the
Internet to stream video, and that it would have been obvious to have made
that combination. As the Federal Circuit reminded in Western Union Co. v.
MoneyGram Payment Systems, Inc., 626 F.3d 1361, 1370 (Fed. Cir. 2010),
“[a]pplying modern electronics to older mechanical devices has been
commonplace in recent years.” See also Muniauction, Inc. v. Thompson
Corp., 532 F.3d 1318, 1326–27 (Fed. Cir. 2008) (concluding a patent was
obvious where “adapting existing electronic processes to incorporate modern
internet and web browser technology was similarly commonplace” at the
time the application was filed, citing Leapfrog Enterprises, Inc. v. Fisher
Price, Inc., 485 F.3d 1157 (Fed. Cir. 2007)).
We have considered Patent Owner’s other arguments distinguishing
these references and determine that they are not persuasive. For example,
we are not persuaded by Patent Owner’s argument that Hooper describes a
“closed system.” PO. Resp. 40–41. The requirement for an “open” system
is not in the claims, and we do not credit Patent Owner’s argument that the
reference to Internet in the claims is sufficient to impose this limitation. As
noted in Section I.A supra, according to the ’854 patent, “the invention can

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operate with various, public and private communications networks.”

Ex. 1001, col. 2, ll. 30–31.
We are not persuaded, either, by Patent Owner’s argument that this
requirement is not met by Hooper based upon the operation of the L1 and L2
gateway routers. PO Resp. 37–44. Patent Owner first argues that the
“network control” and “routing” provided by the L1 gateway is “completely
inconsistent” with using the TCP/IP protocol as in the patent claims. Id. at
37–38. This argument is based on Patent Owner’s erroneous construction of
the claims as limited to TCP/IP and is, therefore, unavailing.
Patent Owner’s second argument is based on the construction of the
claims including the negative limitation “without the media file being stored
or processed by the transaction server.” Id. at 41–44. As discussed in
Section I.G.3 supra, we do not adopt that construction. In any event the
argument is without merit. In Hooper, the video files are not stored or
processed by either the L1 or L2 gateways. They are transferred directly
from the servers to the clients. Ex. 1006, col. 4, ll. 23–29. We agree with
Petitioner’s reasoning that Hooper meets this limitation. See discussion at
Pet. Reply 14–15 (Patent Owner “incorrectly focuses on the path of the
control data, ignoring that the claim requires only that the media file be
directly downloaded.”)
Nor do we credit Patent Owner’s alternative argument that exercising
“functional commands” such as pause, play, and read, the gateways in
Hooper constitutes “storing or processing” of the video file. PO Resp. 43–
44. We have specifically rejected Patent Owner’s attempt to read a negative
“storing or processing” limitation into the claims. See infra Section I.G.3.
There is, moreover, no evidence that the gateways store the video data or

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that the control commands result in any change to the video file that would
constitute processing. And in any event, as Patent Owner acknowledges,
control of the delivery of the video content in Hooper is handed off and
communications between client and service bypass the L1 and L2 gateways
once a session is established. Exhibit 1006, col. 6, ll. 55–60 (“[T]he client
11 . . . is communicating directly with the services, by-passing the SEM
205”); Hearing Tr. 29:1–6.
Finally, we address Patent Owner’s contention that Hooper fails to
teach sending an authorization instruction to the provider site storing the
requested media file. PO Resp. 45–49. According to Patent Owner and its
expert, Mr. Soske,
Instead of sending an authorization or instruction to the
provider site that stores the requested video, which is what
claims 1 and 14 require, the session manager (SEM), which
resides on the L2 gateway router/IGU 202, sends an allocate
request to the RM 210, and sends a create request to a media
stream manager 207, neither of which are described as being
located at or being a part of the provider site that contains the
requested content.
PO Resp. 46; Soske Decl. ¶ 83.
Peitioner repsonds that Patent Owner “completely ignores the launch
request of Hooper.” Pet. Reply 17. The launch request is specifically
identified with this limitation in Petitioner’s claim charts. Pet. 44 (claim
element [1f]). Furthermore, Mr. Soske admits he does not mention the
launch request in his declaration. Soske Dep. 30:18–31:7. He agrees, also,
that after launch the client can directly commuinicate with the server. Id. at
32:32–35.
We agree with Petitioner’s reasoning that Patent Owner’s argument
has no merit. Pet. Reply 17–19. As explained supra, SEM 205 in Hooper

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generates launch request 460 to launch the selected services in one or more
servers 200. Ex. 1006, col. 5, ll. 56–58. As shown in Figure 4 of Hooper,
reporduced supra, the launch request goes directly from the SEM to the
service. Launching means the execution of the process of the services, and
access to the associated content assets are enabled. Id. at col. 5, ll. 58–60.
We find, therefore, that the launch request in Hooper meets this requirement
of claims 1 and 14 for an authorization instruction.
We have considered Patent Owner’s other arguments regarding this
ground of challenge and find them unpersuasive for reasons including those
set forth in the Patent Owner’s Reply. We conclude that Petitioner has
proved by a preponderance of the evidence that claims 1 and 14 would have
been obvious over Hooper and Li.
C. Claims 7 and 19
These dependent claims contain limitations relating to storing of
media files. Petitioner asserts they would have been obvious over the
combination of Hooper, Li, and Hickey, and provides and analysis of these
claims (including claim charts) in relation to those references in the Petition.
Pet. 61– 66, 72–74. Petitioner relies on Hickey as teaching the additional
user interface and storage features of the claims. Id. at 62–63. Moreover,
Petitioner provides a persuasive rationale for combining the references. Id.
at 73–74.
Patent Owner first argues in response that “Hooper does not disclose,
teach or suggest storing a downloaded encrypted media file on a digital
storage device, accessing the stored encrypted media file, and controlling the
playback of that stored accessed media file, as claims 7 and 19 require.” PO
Resp. 53 (citing Ex. 2002 (“Soske Decl.”) ¶ 89). Patent Owner next argues

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that those features are not taught or suggested by Hickey. Id. According to
Patent Owner, “the only teaching in Hickey as to controlling playback of
media is with regards to controlling ‘video tape record-playback units, audio
tape record playback units, video disc record or playback units, CD audio
record or playback units, and the like.’” Id. (citing Ex. 1009, Abstract).
Citing testimony from Mr. Soske, Petitioner responds that this is
untrue and that “Hickey discloses numerous types of digital storage,
including compact discs, DAT digital versions of tapes, video discs and
others that [Mr. Soske] is not familiar with, namely DCC and MD format
CDs.” Pet. Reply 20 (citing Soske Dep. 37:9–38:17). Moreover, Dr. Long
testifies credibly that this claim element is met by Hooper, Li, and Hickey:
Hooper indicates that data can “be stored in the client,” i.e. at a
player/receiver, and Hickey discloses “a computer with
associated software, for controlling any combination or number
of video tape record-playback units, audio tape record playback
units, video disc record or playback units, CD audio record or
playback units, and the like” that satisfies the limitation of a
storage device for media files recited in claim 7. Ex. 1006 at
4:17-20; 1009 at Abstract.
Long Decl. ¶ 122 (claim 7); see also id. ¶ 129 (applying same analysis to
claim 19).
We credit Dr. Long’s testimony and are persuaded that for the reasons
set forth Petitioner’s analysis in the Petition and Reply, the limitations of
claims 7 and 19 are met by the combination of Hooper, Li, and Hickey, and
that it would have been obvious to combine the teachings from those
references.
D. Claims 2–6, 8–13, 15–18, and 20–23
Claims 2–6 and 8–13 depend directly or indirectly from claim 1.
Claims 15–18 and 20–23 depend directly or indirectly from claim 14. Patent

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Owner presented no separate argument for these dependent claims beyond

the arguments directed to claims 1 and 14. Accordingly, we determine that
they would have been obvious for the reasons set forth above with respect to
claims 1 and 14 and the adopted grounds set forth in the Petition.
E. Objective Indicia
As noted supra, Patent Owner relies on asserted the existence of
“objective indicia of nonobviousness.” PO Resp. 53–66. After
consideration of the record presented by Patent Owner and Petitioner’s
response, we are not persuaded by those arguments.
1. Asserted Long-Felt Need and Failure of Others
Patent Owner contends there was a long-felt need for the invention of
the ’854 patent. PO Resp. 56–64. In support of this contention, Patent
Owner relies mainly on testimony from co-inventor Selwyn D. Simmons
(Ex. 2001) and, to a lesser degree, from Mr. Soske.
According to Patent Owner, prior to 1998, video downloading was
available to home users only on what it terms “closed networks” controlled
by large corporations. Id. at 57. Patent Owner identifies several “hurdles”
to providing video downloading via the Internet, including the fact that high-
speed broadband connections were not available, file sizes were large due to
the unavailability of appropriate codecs, suitable devices for connecting
televisions to the Internet were lacking, downloading times were slow, and
there was no “transaction platform” enabling transactions to purchase online
content for download. Id. at 59–60. According to Patent Owner, “there was
no reason for the ‘walled garden’ providers to open up their networks, as this
would introduce unwanted competition for content distribution.” Id. at 62–
63 (citing Ex. 2001 ¶ 13).

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Patent Owner asserts, “[t]he inventions described and claimed in the

‘854 patent solved these problems in a unique way that revolutionized access
to media.” Id. at 63. Patent Owner then presents a listing of “problems
solved”:
(1) a player/receiver that is able to playback a media file on a
television set and/or audio equipment, and that is able to connect to the
Internet;
(2) a transaction server that authenticates each player/receiver, and
sends information regarding a requested media file and information
regarding a player/receiver that requested the media file to one of multiple
content provider sites that contains the requested media file; and
(3) an architecture that enabled downloading of uniquely encrypted
media files directly via the Internet from a provider site to a request
player/receiver, without the media file being stored or processed by the
transaction server and without specifying a particular set of connections
from the provider site to the user site.
Petitioner responds that because Mr. Simmons is an interested party,
as a named inventor and managing member of Patent Owner, his testimony
is entitled to little weight. PO Reply 22–23. Petitioner also contends there
is no nexus between the alleged objective indicia and the claims. Id. at 23.
We agree with Petitioner’s reasoning that this information does not
demonstrate a long-felt need or failure by others. Patent Owner has not tied
the information to the invention defined by the claims that are being
challenged. “For objective evidence of secondary considerations to be
accorded substantial weight, its proponent must establish a nexus between
the evidence and the merits of the claimed invention.” ClassCo, Inc. v.

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Apple, Inc., No. 2015-1853, 2016 WL 5219886, at *4 (Fed. Cir. Sept. 16,
2016) (citations omitted). “A nexus may not exist where, for example, the
merits of the claimed invention were readily available in the prior art.
Additionally, there is no nexus unless the evidence presented is reasonably
commensurate with the scope of the claims.” Id. (citations and internal
quotation marks omitted). In fact, the alleged “hurdles” facing Mr.
Simmons, such as limited bandwidth, large file sizes, slow download times,
etc., are not addressed by the ’854 patent, but were solved by others. See,
e.g., Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir.
1988) (“Like the inventor in Calmar, Inc. v. Cook Chemical Co., part of the
Graham trilogy, once another supplied the key element, there was no long-
felt need or, indeed, a problem to be solved by Ferguson.”). Even Mr.
Simmons’s explanation of the importance of the Internet to his invention
(e.g., Ex. 2001 ¶¶ 22–24) is unconvincing in light of the statements in the
specification that “the invention can operate with various, public and private
communications networks.” Ex. 1001, col. 2, ll. 30–31.
Nor are the “problems solved” by the ’854 patent listed by Patent
Owner the focus of the claims. PO Resp. 63–64. The ’854 patent is not
directed to a player or a transaction server. The problem involving the
“architecture” of the system refers to the Internet, which was not Mr.
Simmons’ invention. And, as mentioned, Patent Owner’s attempt to
construe the claims to define the particular architecture described, one
“without the media file being stored or processed by the transaction server
and without specifying a particular set of connections from the provider site
to the user site,” is unavailing. See discussion of Claim Construction, supra.

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After consideration of the arguments and evidence, we therefore give

little weight to Patent Owner’s argument based on alleged long-felt need.
2. Asserted Industry Skepticism
In support of this contention, Patent Owner relies mainly on
Petitioner’s expert, Dr. Long. PO Resp. 64–66. In an article cited by Patent
Owner, Dr. Long wrote that “[n]one of the companies that invested in VOD
have been able to come up with a single successful commercial system.”
Ex. 2003, 1; PO Resp. 64. However, he also wrote, in the next sentence,
“[t]he overall consensus now is that the commercial deployment of VOD
will have to wait until the cost of building and maintaining the required
infrastructure can be significantly lowered.” Ex. 2003, 1. A second article
by Dr. Long attributes the lack of successful video on demand services to the
lack of sufficient bandwidth, which “would require costly upgrades of the
existing communication infrastructure.” Ex. 2005, 2. This is consistent with
Mr. Simmons’s testimony that the availability of broadband access to the
Internet was a limitation on the development of commercial video on
demand systems. Ex. 2001 ¶ 10.
We are not persuaded by Patent Owner’s argument and evidence that
the industry was skeptical about the invention claimed in the ’854 patent.
No testimony from independent industry sources is proffered. Nor does
Patent Owner tie the alleged skepticism to the subject matter of the claims.
To the contrary, both Dr. Long’s and Mr. Simmons’s statements attribute
any lack of commercially successful video on demand services to
insufficient bandwidth to access the Internet, a problem which the
’854 patent does not address.

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F. Conclusion
In sum, after considering all the evidence and arguments presented,
including the evidence of objective indicia presented by Patent Owner, we
conclude that Petitioner has demonstrated by a preponderance of the
evidence that claims 1–23 of the ’854 patent would have been obvious.
III. ORDER
In consideration of the foregoing, it is
ORDERED that, because this is a final written decision of the Board
under 35 U.S.C. § 328(a), parties to the proceeding seeking judicial review
of the decision must comply with the notice and service requirements of 37
C.F.R. § 90.2; and
FURTHER ORDERED that claims 1–23 of U.S. Patent 7,269,854 B2
are unpatentable under 35 U.S.C. § 103(a).

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PETITIONER:
Michael Rosato
mrosato@wsgr.com

Jennifer Schmidt
jschmidt@wsgr.com

Michael Guo
mguo@wsgr.com

PATENT OWNER:
René A. Vazquez
rvazquez@sinergialaw.com

34
Trials@uspto.gov Paper 22
571-272-7822 Entered: October 12, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

UNIFIED PATENTS INC.,

Petitioner,

v.

iMTX STRATEGIC, LLC,

Patent Owner.
____________

Case IPR2015-01061
Patent 7,269,854 B2
____________

Before KEVIN F. TURNER, THOMAS L. GIANNETTI, and

MATTHEW R. CLEMENTS, Administrative Patent Judges.

GIANNETTI, Administrative Patent Judge.

FINAL WRITTEN DECISION

35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

Unified Patents Inc. (“Petitioner”) filed a Petition pursuant to 35

U.S.C. §§ 311–319 to institute an inter partes review of claims 1–23 (all
claims) of U.S. Patent No 7,269,854 B2 (Ex. 1001, “the ’854 patent”).
Paper 1 (“Pet.”). iMTX Strategic, LLC (“Patent Owner”) filed a Preliminary
IPR2015-01061
Patent 7,269,854 B2

Response. Paper 6 (“Prelim. Resp.”). Applying the standard set forth in

35 U.S.C. § 314(a), we granted Petitioner’s request and instituted an inter
partes review of all challenged claims. Paper 9 (“Institution Decision” or
“Dec.”).
During the trial, Patent Owner filed a Patent Owner Response
(Paper 16, “PO Resp.”), and Petitioner filed a Reply to the Patent Owner
Response (Paper 18, “Pet. Reply”). An oral hearing was held on July 11,
2016, and a copy of the transcript has been made part of the record. Paper
21 (“Hearing Tr.”).
We have jurisdiction under 35 U.S.C. § 6(b). This Decision is a Final
Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
claims on which we instituted trial. Based on the record before us, we
determine that Petitioner has shown, by a preponderance of the evidence,
that claims 1–23 of the ’854 patent are unpatentable under 35 U.S.C.
§ 103(a).

I. BACKGROUND
A. The ʼ854 patent (Ex. 1001)
The ʼ854 patent is titled “Transaction System for Transporting Media
Files from Content Provider Sources to Home Entertainment Devices.” The
Abstract describes the subject matter as follows:
A system and method for enabling a user to request and
download selected media files from distributed content provider
sites via the Internet. The system includes a plurality of user
sites each including a player/receiver housed in an enclosure
having a simple user interface, a plurality of content provider
sites, and a transaction server site. The player/receiver enables
the user to connect to the transaction server via the Internet to

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access a program guide listing available media files. The user

is then able to select a desired file and, via the player/receiver
and Internet, request the transaction server to authorize
download of the selected file. The file request along with file
encryption and transfer instructions are sent from the
transaction server via the Internet to the content provider site
storing the requested file. Requested files are then dynamically
encrypted by the content provider site and securely downloaded
to the requesting player/receiver. The requesting
player/receiver is uniquely capable of decrypting a downloaded
file concurrent with playing back the file on a conventional
home television set and/or audio system.

Ex. 1001, Abstract. This is illustrated by Figure 1 of the patent, which is

reproduced below:

Figure 1 above is a block diagram showing the architecture of a preferred

system in accordance with the invention. Ex. 1001, col. 3, ll. 66–67. The
system is comprised of a plurality of content provider sites 61, 62, etc.; a
plurality of home user sites 71, 72, etc.; and transaction server site 10. Each
of these is connected to a common communications network 11. Id. at
col. 4, ll. 31–36. In the preferred embodiment, network 11 is the public

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Internet. Id. at col. 4, ll. 37–38. In alternative embodiments, however,

network 11 could comprise other public or private networks. Id. at col. 4, ll.
42–44. According to the Specification, “the invention can operate with
various, public and private communications networks.” Id. at col. 2, ll. 30–
31.
In the preferred embodiment, connections to the Internet are formed
by a suitable broadband network connectivity device 12. Examples include
cable modems, digital subscriber lines, or very small satellite Internet access
systems. Id. at col. 4, ll. 38–41.
The specification includes the following statement under the section
heading “Summary of the Invention:”
Systems in accordance with the invention are generally
characterized by the following features:
1. They are readily scalable and can accommodate a
virtually unlimited number of content provider sites and home
user sites communicating via the Internet using a standard
protocol, e.g., TCP/IP . . . .
Id. at col 2, ll. 35–40 (emphasis added). The specification also includes the
following statement under the section heading “Description of the Preferred
Embodiments”:
The “Internet” refers to a global network that facilitates the
connectivity of computer-based systems typically using a
common communications protocol known as Transmission
Control Protocol/Internet Protocol (TCP/IP).
Id. at col. 4, ll. 44–47 (emphasis added). As discussed infra, Petitioner and
Patent Owner dispute the significance of these statements in the
specification.

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B. Illustrative Claim
Claims 1 and 14 are independent claims. Claim 1 is illustrative of the
claims at issue and is reproduced below:
1. A system for executing user transaction requests for
delivering digital media files via the Internet for driving a user
site television set and/or audio equipment, said system
comprising:
a plurality of user sites, each user site including a
player/receiver, a television set and/or audio equipment, and a
connectivity device for connecting said player/receiver to the
Internet;
a plurality of provider sites, each provider site including
a media server comprising a media file storage device and a
media file encryptor, and a connectivity device for connecting
said provider site media server to the Internet;
a transaction server and a connectivity device for
connecting said transaction server to the Internet;
each said player/receiver including a user interface for
sending a media file request via the Internet to said transaction
server requesting delivery of an identified media file;
said transaction server being responsive to a received
media file request for sending an authorization to the provider
site storing the requested media file authorizing delivery of the
requested media file from said provider site to the requesting
player/receiver directly via the Internet;
said authorized provider site being responsive to said
transaction server authorization for uniquely encrypting the
identified media file and for downloading the encrypted media
file directly via the Internet to said requesting player/receiver;
each said player/receiver including a media file
decryptor; and wherein
only said requesting player/receiver decryptor is capable
of decrypting said encrypted media file downloaded thereto for
playback on the television set and/or audio equipment at the
same user site.

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Claim 14, directed to a method, recites subject matter similar to that of

claim 1.
C. Related Proceedings
Petitioner and Patent Owner identify a number of related proceedings
in the Northern District of California and the District of Delaware involving
the ʼ854 patent. Pet. 2–3; Paper 5, 2–3; Paper 14, 2–3; Paper 17, 2–3. In
addition, the ’854 patent is the subject of Case CBM2015-00147.
D. Real Party in Interest
Petitioner certified that Unified Patents Inc. is the real party in
interest, and “further certifies that no other party exercised control or could
exercise control over Unified’s participation in this proceeding, the filing of
this petition, or the conduct of any ensuing trial.” Pet. 2. In support of this
assertion, Petitioner filed “voluntary interrogatory responses,” signed by its
counsel and verified by its CEO. Ex. 1018.
Patent Owner’s Preliminary Response contended that the Petition
should be denied for failure to name the real party in interest. Prelim. Resp.
12–16. Patent Owner’s Response, however, does not mention this
contention. For this reason, we deem this argument waived. Paper 10, 3
(“The patent owner is cautioned that any arguments for patentability not
raised in the response will be deemed waived.”).

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E. References
Petitioner relies on the following three references:
1. “Spies,” U.S. Patent No. 6,055,314, Apr. 25, 2000 (Ex. 1006)
2. “Kenner,” U.S. Patent No. 5,956,716, Sept. 21, 1999 (Ex. 1007)
3. “Libman,” Roger E. Libman et al., The Interactive Video Network:
An Overview of the Video Manager and V Protocol, AT&T Tech.
J., Sept./Oct. 1995 (Ex. 1009)
F. Grounds Asserted
Petitioner challenged the patentability of claims 1–23 of the ʼ854
patent on the following grounds:
1. Obviousness over Libman and Spies under 35 U.S.C. § 103(a)
2. Obviousness over Kenner and Spies under 35 U.S.C. § 103(a)
We instituted trial on both grounds. Dec. 17.
G. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
construed according to their broadest reasonable interpretation in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under
that standard, claim terms are generally given their ordinary and customary
meaning, as would be understood by one of ordinary skill in the art in the
context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).
1. Means plus Function
In our Institution Decision, the only means plus function term we
construed was a means-plus-function term in dependent claims 9 and 10.
Dec. 7. The term we construed was: “means for displaying a program guide
listing media files stored by the digital storage device therein.” Id. We

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determined that, under 35 U.S.C. § 112, ¶ 6, the corresponding structure for

this term is a conventional, television/video display. Id. Neither party has
contested this construction. We have considered the record and determine
that this construction should not be changed.
2. “Internet”
Patent Owner asserted in the Preliminary Response that as to
“Internet,” the “applicant chose to be his own lexicographer and provided an
explicit definition.” Prelim. Resp. 24. Patent Owner cited the following
language from the ’854 patent specification: “‘[T]he ‘Internet’ refers to a
global network that facilitates the connectivity of computer-based systems
typically using a common communications protocol known as Transmission
Control Protocol/Internet Protocol (TCP/IP).’” Id. at 23–24 (citing Ex.
1001, col. 4, ll. 44–47). In our Institution Decision, we concluded no special
definition beyond the plain meaning of the term “Internet” was necessary.
Dec. 8. In reaching this determination, we relied on the fact that “[t]he ʼ854
patent Specification . . . specifically refers to the ‘public Internet.’” Dec. 7–
8 (citing Ex. 1001, col. 4, ll. 37–38).
Later in our Institution Decision, however, we responded to an
argument by Patent Owner that Petitioner’s expert, Dr. Eldering, had
analyzed the claims using the incorrect definition for the term “Internet.”
Dec. 13. We again concluded that “we do not accept Patent Owner’s
argument that the ʼ854 patent specification provides a special definition for
the term ‘Internet’ beyond its plain and ordinary meaning.” Id. We further
stated, however, that Patent Owner’s description of the Internet and the
description in the ’854 patent were “consistent with the plain meaning.” Id.

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Finally, we cited a dictionary definition that we said was “a relevant

definition of the ‘Internet.’” Id. Specifically, we cited the Microsoft
Computer Dictionary 242 (4th ed. 1999), defining Internet as: “[t]he
worldwide collection of networks and gateways that use the TCP/IP suite of
protocols to communicate with one another.” Ex. 3001.
Patent Owner now has abandoned its argument that the ’854 patent
specially defines the term “Internet.” Instead, Patent Owner now “agrees”
with the cited definition in the Microsoft Computer Dictionary. PO Resp.
19. At oral argument, Patent Owner’s counsel argued that the description of
the Internet in the ’854 patent is “incorrect” because it uses the word
“typically” in connection with using TCP/IP protocol:
[THE BOARD]: So your position is that this is not a
correct statement because it uses the word "typically"? You
would say it must use TCP/IP protocol, otherwise it isn't the
Internet?
[PATENT OWNER’S COUNSEL]: That's correct, Your
Honor.
[THE BOARD]: So was this a typo?
[PATENT OWNER’S COUNSEL]: I didn't write this
patent, Your Honor. I would assume that maybe it was a typo.
Hearing Tr. 35:3–7.
We are not persuaded by Patent Owner’s current argument that the
description of Internet in the patent specification is necessarily incorrect or
resulted from a “typo.” We are not persuaded, either, by Patent Owner’s
related argument that claims of the ’854 patent, by referring to “the
Internet,” require use of the TCP/IP protocol. PO Resp. 21. As noted supra,
the ’854 patent states that the patented invention “communicat[es] via the
Internet using a standard protocol, e.g., TCP/IP.” Ex. 1001, col. 2, ll. 39–40
(emphasis added). Similarly, the patent defines the Internet as “typically

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using a common communications protocol known as Transmission Control

Protocol/Internet Protocol (TCP/IP).” Id. at col. 4, ll. 45–48 (emphasis
added). We find, therefore, that the description of the invention in the ’854
patent specification permits the use of protocols other than TCP/IP. This
conclusion is reinforced by the fact that, according to the specification, “the
invention can operate with various, public and private communications
networks.” Id. at col. 2, ll. 30–31. Such networks, presumably, could use
non-TCP/IP protocols. We conclude, therefore, that the specification of the
’854 patent contradicts Patent Owner’s argument that the claims require the
use of TCP/IP.
Patent Owner’s reliance on the Microsoft Computer Dictionary
definition is misplaced. The Microsoft Computer Dictionary describes a
“TCP/IP suite of protocols” (Ex. 3001, 242 (emphasis added)), which is
broader than just TCP/IP. Moreover, Patent Owner’s counsel misstates the
record in arguing that the definition from the Microsoft Computer
Dictionary is “the Board's proposed definition of the Internet.” Hearing Tr.
33:14–15. The Board concluded that although that definition was
“relevant,” the term “Internet” did not require construction. Dec. 13. Nor
do we see this claim construction issue as “[p]otentially dispositive” of the
case, as Patent Owner suggests. Hearing Tr. 28:1–8. Even applying Patent
Owner’s proposed construction, we would reach the same result. See
discussion infra Sections II.A.3 and II.B.2.

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3. “downloading the encrypted media file directly via the

Internet to said requesting player/receiver”[claim 1] /
“causing said identified media server to uniquely encrypt the
identified media file and download it directly via the Internet to the
requesting user” [claim 14]
Patent Owner proffers the same construction for these two similar
terms (appearing in claims 1 and 14, respectively), as follows:
downloading an encrypted media file from a provider site
to a requesting user via the Internet [1] without the media file
being stored or processed by the transaction server, and [2]
without specifying a particular set of connections from the
provider site to the user site.
PO Resp. 27 (reference numbers added).
Patent Owner’s argument for the including the first negative
limitation, “without the media file being stored or processed by the
transaction server,” is based on the prosecution history. PO Resp. 19–21.
Thus, Patent Owner asserts:
During prosecution of the ‘854 patent, applicant
consistently defined a direct transfer of a media file as one in
which the media file is not stored or processed by the
transaction server in order to distinguish the claims from the
Toyouchi reference. Thus, this limitation should properly be
included in the broadest reasonable interpretation of these
phrases for at least the reason that the applicant disclaimed a
broader interpretation during prosecution.
Id. at 21.
We considered but did not adopt this proposed construction in our
Institution Decision. Dec. 8. We concluded there that the proposed
construction would rewrite the claims and was not consistent with the
broadest reasonable interpretation. Id. For similar reasons, we do not adopt
this construction now.

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We have also considered Patent Owner’s prosecution history

argument and conclude it is unavailing. PO Resp. 19–21. The argument
focuses on the applicants’ successful attempt to overcome the Examiner’s
rejections of claims 1 and 14 over a Toyouchi reference. Id. at 19. But
Patent Owner has not adequately explained Toyouchi, or attempted to
compare Toyouchi to any of the art relied on by Petitioner, in a way that
would be helpful to our analysis or supportive of its argument.
Moreover, we disagree with Patent Owner’s argument that the cited
responses by the applicants to the Examiner’s rejections support the
proposed construction. Id. at 13–16, 20. In those responses, the applicants
argued that “applicant’s [sic] system architecture calls for the direct transfer
of a media file from a provider site to a user site without the media file being
stored or processed by the transaction server.” Id. at 20.
The Examiner’s May 22, 2007 Reasons for Allowance, however, only
partially quoted in Patent Owner’s Response,1 did not adopt applicants’
reasoning that “without the media file being stored or processed by the
transaction server” distinguishes Toyouchi. Instead, the Examiner focused
on the path the media file follows from the transaction server to the client,
stating:
[T]he prior art fails to teach the receiving a request for a file at
the transaction server and authorizing a provider to send the
requested file directly to the client. The prior art generally
teaches all traffic between the client and provider being
transmitted through the transaction server.”

1
PO Resp. 15–16. Patent Owner’s quotation omits the italicized sentence.
Also Patent Owner incorrectly identifies August 22, 2007, as the date of the
Reasons for Allowance. Id. at 15.

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Ex. 1003, 221 (emphasis added). The Examiner thus contrasted “directly to
the client” in the claims with “being transmitted through a transaction
server,” not with whether the media file is “stored or processed by the
transaction server.” Thus, we find that the Reasons for Allowance, by not
adopting Patent Owner’s “stored or processed” reasoning, do not support,
Patent Owner’s argument. “[T]he doctrine of prosecution disclaimer only
applies to unambiguous disavowals.” Grober v. Mako Prods., Inc., 686 F.3d
1335, 1341 (Fed. Cir. 2012) (citation omitted). We find that the prosecution
record cited by Patent Owner in this case does not meet that test.
The Board “is under no obligation to accept a claim construction
proffered as a prosecution history disclaimer, which generally only binds the
patent owner.” Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed.
Cir. 2014). There is no reason to depart from that approach here. As
Petitioner points out, unlike in district court, Patent Owner had the
opportunity to propose an amendment to the claims to include the limitations
it now says are “properly included” in the broadest reasonable interpretation.
Pet. Reply 4.
According to Patent Owner, the second negative limitation, “without
specifying a particular set of connections from the provider site to the user
site,” is “properly included” in the proposed construction because of the
reference in the claims to the Internet. PO Resp. 27–28. This argument is
tied in with Patent Owner’s proposed construction of the claims as requiring
use of TCP/IP. See supra Section I.G.2. Thus, Patent Owner asserts:
The language “without specifying a particular set of
connections from the provider site to the user site” is properly
included in the broadest reasonable interpretation because this
language merely states how data is inherently transmitted over

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the Internet as a result of the standard TCP/IP protocols that are

necessarily used by the Internet, in the absence of a component
that overrides the standard TCP/IP protocols of the Internet.
Id. at 27.
Petitioner responds by asserting that Patent Owner is improperly
importing “negative” limitations into the claims. Pet. Reply 4. Petitioner
contends that Patent Owner’s argument fails because “[t]he plain and
ordinary meaning of ‘Internet’ can include both specified and unspecified
paths.” Id. at 5.
Petitioner points us to the disclosure in Kenner (Ex. 1007), which we
discuss infra, as contradicting Patent Owner’s position. Pet. Reply 5.
Specifically, Petitioner quotes testimony from Patent Owner’s expert, Mr.
Soske, which, Petitioner asserts, “concedes” that Kenner “teaches delivering
video clips via the Internet by specifying ‘a connection path between
equipment interspersed over the Internet.’” Id. (quoting Ex. 2005 ¶ 96).
We find Patent Owner’s proposal—adding the negative limitation
related to “specifying a particular set of connections” to the claims—is
unavailing for reasons similar to those expressed above and in our Institution
Decision. Specifically, we disagree with Patent Owner’s argument that the
claims should be read as prohibiting “specifying a particular set of
connections” in downloading media files. Patent Owner points us to nothing
in the specification that would support that reading of the claims. In fact, as
pointed out in Section I.G.2 supra, the specification is to the contrary, for
example, in its description of the Internet as “typically” (but not necessarily)
using TCP/IP, and in its reference to alternative embodiments comprising
other public or private networks. Ex. 1001, col. 2, ll. 30–31, col. 4, ll. 42–
44. So, too, is the record developed at trial, including credible testimony

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from Petitioner’s expert, Dr. Eldering, indicating that TCP/IP transport

protocol “could be run over any number of networks at least a decade prior
to the filing of the priority application” that led to the ’854 patent. Ex. 1002
(“Eldering Decl.”) ¶ 20.
We conclude that Patent Owner’s arguments in support of including
its negative limitations in these claim elements are unavailing. We,
therefore, rely on the plain meaning of these terms in the claims, not
including the negative limitations proposed by Patent Owner.
4. “transaction server” and “encrypted media file”
For reasons similar to those stated above, e.g., in connection with the
term “Internet,” we are not persuaded that special constructions of
“transaction server” and “encrypted media file” are necessary.
II. ANALYSIS
A. Asserted Ground Based on Libman and Spies
We instituted trial on the ground that the subject matter of claims 1–
23 would have been obvious over Libman and Spies. Dec. 11–14; Pet. 11–
42. Having now considered the evidence of record, we are persuaded that,
based on this record, Petitioner has demonstrated by a preponderance of the
evidence that the claims would have been obvious over those references in
combination.
1. Libman Overview
Libman describes a network architecture that allows users to search
for and download interactive multimedia services including video. Eldering
Decl. ¶ 40. This architecture is illustrated by annotated Figure 2 of Libman,
which is reproduced below with red directional arrows provided by
Petitioner (id. at ¶ 41):

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Figure 2 of Libman, reproduced above, shows a triangular network

architecture whereby a client, using a V protocol, contacts a video manager
through a transportation network. Eldering Decl. ¶ 41. The Video Manager
contacts a server hosting content. Id. The Video Manager then takes that
request, identifies a server where the desired item is stored, and opens a
session allowing the server to transport multimedia files directly to the
client. Id. The Video Manager, thus, contacts the server and authorizes the
server to transport multimedia files to the client. Pet. 12. Libman discloses
a system architecture where multiple users can use the system to contact
multiple content providers through network intermediaries. Id. Because the
transmission medium is shared, Libman also discloses using encryption to
control access and privacy. Id. at 14.
Patent Owner distinguishes Libman from claims 1 and 14 on a
number of grounds. PO Resp. 33–40. According to Patent Owner, the
Video Manager in Libman “establishes, monitors and manages a unique
‘video phone call’ between the set top and media server via a virtual circuit.”
Id. at 34 (quoting the Declaration of Patent Owner’s expert, Mr. Joshua W.
Soske, Ex. 2005). Thus, according to Patent Owner, “[t]he connection (like

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a telephone call) includes a predictable if not guaranteed route and

performance once it is established between the server and set top for the
duration of the ‘call.’” Id. Patent Owner further concludes that “the AT&T
Interactive Video Network disclosed in Libman is designed for and utilizes a
closed, proprietary network that does not operate over the Internet, nor does
it utilize the TCP/IP protocols of the Internet.” Id. at 35. Moreover, Patent
Owner asserts that because the Video Manager interacts with clients and
servers the scalability of the system “is limited.” According to Patent
Owner, scalability is one of the “precise problems” the claimed invention
addresses. Id. at 40.
2. Spies Overview
Spies discloses a system and method for secure purchase and delivery
of video content programs over various distribution media, including
distribution networks. Ex. 1006, Abstract, col. 2, ll. 26–29. The system
includes an integrated circuit (“IC”) card that is configured to store
decryption information for related video programs. Id. at Abstract. When a
purchaser orders a particular video program, the decryption capabilities for
that program are downloaded by the video merchant to the IC card, either at
the merchant’s premises or over a distribution network. Id. Video content
programs are distributed in encrypted format by the distribution medium to
the purchaser. The IC card uses the decryption capability to at least partially
decrypt video content program. Id.
Spies teaches the use of various encryption techniques that allow the
video merchant to encrypt a media file. In one embodiment, a secure key is
provided from a secure key store. Ex. 1006, Fig. 1, col. 5, ll. 10–53. Spies
describes a video purchase and delivery system in which the video content

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program is delivered in encrypted format to the purchaser via a distribution

medium. Id. at Fig. 2, col. 5, l. 56–col. 6, l. 10. The video content is
delivered in encrypted format to the purchaser via the distribution medium.
The purchaser uses a specially coded IC card to decrypt the video content.
Id. at Fig. 3, col. 8, l. 60–col. 9, l. 51.
Patent Owner contends that Spies does not “remedy the deficiencies”
identified in Libman. PO Resp. 40–46. Specifically, Patent Owner asserts
“Spies fails to remedy the fact the Libman fails to teach or suggest the
claimed ‘transaction server’ and downloading an encrypted media file from
a provider site to a user site via the Internet without the media file being
stored processed by the transaction server.” Id. at 40. Further, Patent
Owner contends Spies fails to teach the “functional relationships” “between
the transaction server, provider site and player/receiver” recited in the
claims. Id. at 42.
3. Discussion
At the outset, we consider Patent Owner’s description of the state of
the prior art and supporting testimony from co-inventor Selwyn D. Simmons
(Ex. 2008) and, to a lesser degree, from Mr. Soske. PO Resp. 2–9.
According to Patent Owner, prior to 1998, video downloading was available
to home users only on what it terms “closed networks” controlled by large
corporations. Id. at 2. Patent Owner identifies several “hurdles” to
providing video downloading via the Internet, including the fact that high-
speed broadband connections were not available, file sizes were large due to
the unavailability of appropriate codecs, suitable devices for connecting
televisions to the Internet were lacking, downloading times were slow, and

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there was no “transaction platform” enabling transactions to purchase online

content for download. Id. at 5–6. According to Patent Owner:
Mr. Simmons realized that using the Internet as the
communications and transport network, with the associated
TCP/IP as the communications protocol, would enable the
iMTX platform to quickly scale without having to rely on
proprietary architectures and technologies, such as the
architectures and technologies used by the telephone and cable
companies.
Id. at 7.
Petitioner characterizes these topics as “irrelevant” to the issues of
what the prior art teaches and the rationale for combining references. Pet.
Reply 12. In addition, Petitioner points out that Mr. Simmons has an interest
in the outcome of the case. Id.
We agree with Petitioner that the relevance of this information is, at
best, marginal. Patent Owner has not tied the information to the invention
defined by the claims that are being challenged. In fact, the alleged
“hurdles” facing Mr. Simmons, such as limited bandwidth, large file sizes,
slow download times, etc., are not addressed by the ’854 patent, but were
solved by others. See, e.g., Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d
757, 768 (Fed. Cir. 1988) (“Like the inventor in Calmar, Inc. v. Cook
Chemical Co., part of the Graham trilogy, once another supplied the key
element, there was no long-felt need or, indeed, a problem to be solved by
Ferguson.”). Even Mr. Simmons’s explanation of the importance of the
Internet to his invention is unconvincing in light of the statements in the
specification that “the invention can operate with various, public and private
communications networks.” Ex. 1001, col. 2, ll. 30–31. We therefore give

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little weight to Patent Owner’s argument based on the state of the art and
Mr. Simmons’ supporting declaration.
Patent Owner’s response to Petitioner’s challenge addresses claims 1
and 14 only, and does not argue separately the patentability of the dependent
claims. See, e.g., PO Resp. 35 (discussing claims 1 and 14). Furthermore,
as discussed infra, Patent Owner’s response focuses on only one limitation
of claim 1 (element [1.10] in Petitioner’s claim chart, Pet. 22) and the
corresponding limitation in claim 14 (element [14.7], Pet. 38–39). We,
therefore, focus our discussion here, and in the discussion of the Kenner-
Spies ground of challenge, below, on those claim elements and arguments.
Petitioner’s claim charts demonstrate where each element of claims 1
and 14 is found in the Libman-Spies combination. Pet. 18–42. For example,
Petitioner identifies the recited “player/receiver” with the disclosure of a
personal computer, workstation, or television set top box in Libman. Pet.
19. Petitioner also identifies this element with the set-top box and television
disclosed in Spies. Id. Petitioner’s expert, Dr. Eldering, explains in detail
how the Libman-Spies combination meets the elements of the claims.
Eldering Decl. ¶¶ 39–48, Exhibit 1. We find this testimony is credible.
Petitioner also provides a persuasive rationale for combining the
teachings of Libman and Spies. Pet. 15–17; Eldering Decl. ¶¶ 49–56.
Petitioner acknowledges that Libman generally discloses encryption to
control access and privacy over a shared transmission medium. Id. at 14.
But according to Petitioner, a person of ordinary skill would have been
motivated to apply the various encryption techniques described in Spies to
increase security further. Id. at 16–17. Dr. Eldering opines that the

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challenged claims would have been obvious over Libman and Spies.
Eldering Decl. ¶¶ 57–64.
We have considered Petitioner’s obviousness analysis of claims 1–23
based on the combination of Kenner and Spies in light of the record
developed during trial, including credible supporting testimony from a
qualified expert, Dr. Eldering. We adopt that analysis and its underlying
reasoning. We note, also, that Patent Owner’s challenge to that analysis
focuses on a few points which we have considered and will now discuss.
Patent Owner asserts that Petitioner’s challenge based on Libman and
Spies is “deficient” in several respects. PO Resp. 33–40. According to
Patent Owner and its expert, Mr. Soske, Libman is based on a platform
(Video Dialtone) that provides a “predictable if not guaranteed route” once a
connection is established by the Video Manager in Libman. PO Resp. 34.
As a result, according to Patent Owner, Libman fails to meet the requirement
of the claim for “downloading the encrypted media file directly via the
Internet to said requesting player/receiver.” Id. at 35–36. Patent Owner
attributes this difference to the fact that “Libman is designed for and utilizes
a closed, proprietary network that does not operate over the Internet, nor
does it utilize the TCP/IP protocols of the Internet.” Id. at 35. As a further
result, Patent Owner contends, the “scalability of Libman’s system is limited
by the capacity and communications bandwidth of the Video Manager.” Id.
at 40.
In response, Petitioner points out that none of the claims requires an
“open” network. Pet. Reply 9. Petitioner further contends that “[a]dding the
‘Internet’ to the network of Libman would have been obvious to one of skill
in the art.” Id. at 10. Petitioner also points out that the claims do not

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exclude “pre-established connections,” referring back to Patent Owner’s

attempt to construe the claims to require such through its proposed
construction. Id. Finally, Petitioner addresses the “scalability” argument by
pointing out that none of the claims requires scalability, and that Patent
Owner could have sought to add this feature to the claims by requesting an
amendment. Id. at 10–11.
As noted, Patent Owner asserts that Spies “fails to remedy the
deficiencies noted Libman.” PO Resp. 40–46. Principally, Patent Owner
repeats its argument from the Preliminary Response that Petitioner fails to
show how Libman and Spies disclose certain “functional relationships”
recited in the claims. Prelim. Resp. 34; PO Resp. 40–43. As an example,
Patent Owner cites the claim language: “for sending an authorization to the
provider site storing the requested media file authorizing delivery of the
requested media file from said provider site to the requesting
player/receiver.” PO Resp. 41. Patent Owner contends that Petitioner has
failed adequately to show how this limitation is met by Spies. Id. at 42.
Patent Owner asserts that we failed to address this in our Institution
Decision. Id. at 43.
Petitioner replies that by focusing this argument on Spies, Patent
Owner fails to address the issue of whether Libman or Libman in view of
Spies meet this claim element. Pet. Reply 11–12. Petitioner also asserts that
the argument is based on Patent Owner’s “faulty, twice-argued claim
constructions.” Id. at 12.
We have considered Patent Owner’s arguments distinguishing these
references and determine that they are not persuasive. The requirement for
an “open” system is not in the claims, and we do not credit Patent Owner’s

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argument that the reference to Internet in the claims is sufficient to impose

this limitation. As noted in Section I.A supra, according to the ’854 patent
specification, “the invention can operate with various, public and private
communications networks.” Ex. 1001, col. 2, ll. 30–31.
Likewise, we are not persuaded by Patent Owner’s argument that the
claims exclude “pre-established connections” because they refer to the
Internet which uses TCP/IP protocol. PO Resp. 36. We determine that this
argument fails for at least the reason that the claims of the ’854 patent are
not limited to use of the TCP/IP protocol. See, e.g., discussion supra in
Sections I.G.2 and I.G.3.
Even if there were merit to Patent Owner’s assertion based on the
establishment of “guaranteed” routes in Libman, however, its argument
would fail because Petitioner’s obviousness analysis relies also on the fact
that Spies explicitly discloses use of the Internet. Pet. 23 (quoting Spies, Ex.
1006, col. 14, ll. 17–30 (“Current and proposed technology further permits
image transmission from a server over conventional data networks, such as
the Internet, to computers or network terminals which display the images.”)).
For this reason, among others, Patent Owner’s argument that the claims are
limited to use of TCP/IP, even if true, would fail to convince us that the
combination of Libman and Spies fails to meet this limitation.
Patent Owner does not challenge the rationale or motivation set forth
by Petitioner and its expert, Dr. Eldering, for combining the teachings of
Libman and Spies. Nor would such a challenge be supported by the record,
especially in light of Libman’s explicit disclosure that the V protocol used
by Libman “is not linked to any particular transport network technology”
which presumably would include TCP/IP. Ex. 1009, 8. As Dr. Eldering

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credibly testified, the TCP/IP protocol “could be run over any number of
networks.” Ex. 2004, 57:6–8. We are persuaded, therefore, that the
combination of Libman and Spies discloses the “Internet” under the plain
meaning of that term. As the Federal Circuit reminded in Western Union
Co. v. MoneyGram Payment Systems, Inc., 626 F.3d 1361, 1370 (Fed. Cir.
2010), “[a]pplying modern electronics to older mechanical devices has been
commonplace in recent years.” See also Muniauction, Inc. v. Thompson
Corp., 532 F.3d 1318, 1326–27 (Fed. Cir. 2008) (concluding a patent was
obvious where “adapting existing electronic processes to incorporate modern
internet and web browser technology was similarly commonplace” at the
time the application was filed, citing Leapfrog Enterprises, Inc. v. Fisher
Price, Inc., 485 F.3d 1157 (Fed. Cir. 2007)).
Finally, even if Petitioner were correct that Spies fails to show the
“functional relationship” involving sending authorization to the prtovider
site, that would be unavailing in light of our finding that “[t]he description of
Libman, above, and in Petitioner’s claim charts demonstrate that this
element is met by Libman. Pet. 22–23.” Dec. 13.
We have considered Patent Owner’s other arguments regarding this
ground of challenge and find them unpersuasive for reasons including those
set forth in the Petitioner’s Reply.
We conclude that Petitioner has proved by a preponderance of the
evidence that claims 1–23 would have been obvious over Libman and Spies.

B. Asserted Ground Based on Kenner and Spies

The second ground for trial contends that the subject matter of claims
1–23 would have been obvious over Kenner and Spies. Dec. 14–16; Pet.

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42–60. Having now considered the evidence of record, we determine that

Petitioner has demonstrated by a preponderance of the evidence that the
challenged claims would have been obvious over those references in
combination.
1. Kenner Overview
Kenner describes an Internet-based video storage and retrieval system.
Pet. 43; Ex. 1007, Abstract, Fig. 1. The system architecture is illustrated by
annotated Figure 1 of Kenner, which is reproduced below with red
directional arrows provided by Petitioner (Pet. 43):

As shown in Figure 1 of Kenner, reproduced above, video clips are stored on

extended storage and retrieval units (“SRUs”). The users obtain videos by
contacting the primary index manager (“PIM”) via the local SRU. Ex. 1007,
col. 7, ll. 23–27. The PIM locates the video and creates a data sequencing
interface (“DSI”) to direct the download to the user terminal. Id. at col. 7, ll.
27–29. The DSI supervises communications between the remote SRUs

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storing the requested information and the local SRU. Id. at col. 12, ll. 5–15.
The local SRU downloads the compressed video to the user’s terminal. Id.
at col. 9, ll. 31–32. Kenner discloses storing the video stream in an
encrypted state via known encryption methods, such as DES and RSA. Id.
at col. 25, ll. 60–62.
Patent Owner contends that Kenner fails to meet the elements of the
challenged claims because Kenner fails to teach or suggest the limitation:
“for downloading the encrypted media file directly via the Internet to said
requesting player/receiver” in claim 1, and the similar recitation “causing
said identified media server to uniquely encrypt the identified media file and
download it directly via the Internet to the requesting user” in claim 14. PO
Resp. 47. Patent Owner asserts that “the PIM in Kenner is intimately
involved in pre-establishing connections between the extended SRUs.” Id.
Patent Owner acknowledges that Kenner teaches that video clips can
be delivered via the Internet, but goes on to explain: “the Kenner system
overrides the standard TCP/IP addressing protocols and public Internet
architecture by utilizing PIMs, which create DSIs that predetermine a
connection path between equipment interspersed over the Internet (e.g., the
remote SRUs in Kenner) that a requested video clip will take to the user.”
Id. at 50. Because Kenner’s PIM is “intimately involved” in pre-establishing
connections between SRUs on the Internet, and also “stores and/or
processes” the requested media file, Patent Owner argues the “scalability” of
the system is limited. Id. at 50–51.
Patent Owner argues that Spies fails to remedy the alleged
deficiencies in Kenner “for at least the reasons” discussed with respect to
Libman, namely, “Spies fails to remedy the fact the Kenner fails to teach or

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suggest the claimed ‘transaction server’ and downloading an encrypted

media file from a provider site to a user site via the Internet without the
media file being stored or processed by the transaction server.” Id. at 51.
2. Discussion
Petitioner’s detailed claim charts demonstrate where each element of
claims 1 and 14 and their dependent claims is found in the Kenner-Spies
combination. Pet. 47–60. For example, Petitioner identifies the recited
“player/receiver” with the disclosure of a personal computer, workstation, or
television set top box in Kenner. Pet. 47. Petitioner’s expert, Dr. Eldering,
explains in detail how the Kenner-Spies combination meets the elements of
the claims. Eldering Decl. ¶¶ 57–64, Exhibit 2. Dr. Eldering opines that the
challenged claims would have been obvious. Id. at ¶ 65.
Petitioner also provides a persuasive rationale and detailed supporting
testimony for combining the teachings of Kenner and Spies. Pet. 44–47;
Eldering Decl. ¶¶ 65–85. Petitioner acknowledges that Kenner discloses
storing the video stream in an encrypted state via known encryption
methods, and even gives as examples DES and RSA. Pet. 44. According to
Petitioner, a person of ordinary skill would have had reason to combine the
conventional existing encryption algorithms described in Spies to avoid the
disadvantages of a “massive parallel system” disclosed in Kenner. Id.
(citing Eldering Decl. ¶¶ 66–68). Further reasons for combining Kenner and
Spies are provided at pages 45–47 of the Petition and paragraphs 69–84 of
the Eldering Declaration.
We have considered Petitioner’s obviousness analysis of claims 1–23
based on the combination of Kenner and Spies in light of the record
developed during trial, including persuasive supporting testimony from a

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qualified expert, Dr. Eldering. We adopt that analysis and its underlying
reasoning. We note, also, that Patent Owner’s challenge to that analysis
focuses on a few points which we have considered and will now discuss.
As discussed supra, Patent Owner challenges Petitioner’s obviousness
case based on Kenner and Spies in two respects. Both rely on constructions
of claims 1 and 14 incorporating negative limitations that we do not adopt.
Thus, Patent Owner’s assertion that Kenner fails to teach “downloading the
encrypted media file directly via the Internet to said requesting
player/receiver” (PO Resp. 47) is unavailing. This contention is based on
(1) Patent Owner’s interpretation of Kenner’s teachings; and (2) its proposed
negative limitations including “without the media file being stored or
processed by the transaction server.” We discuss these in turn.
As noted supra, Patent Owner does not dispute that Kenner’s video
and storage system is Internet-based. This illustrated in Figure 4 of Kenner
reproduced below:

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Figure 4 of Kenner the shows the system for delivering video clips over
Internet 56 described supra. As noted, Patent Owner does not dispute that
Kenner teaches this delivery of video clips occurs over the Internet. Instead,
Patent Owner contends that Kenner “overrides” what Patent Owner refers to
as “standard TCP/IP addressing protocols and public Internet architecture.”
PO Resp. 50. This is because, according to Patent Owner, the PIM in
Kenner “is intimately involved in pre-establishing connections between the
extended SRUs, distributed within the Internet.” Id. at 47. We do not find
this argument convincing.
The DSIs in Kenner are described as “a software process which . . .
oversees the download process.” Ex. 1007, col. 25, ll. 37–38. Patent Owner
does not point us to anything in Kenner indicating that Internet 56 shown in
Kenner’s Figure 4 is “overridden” by this operation. Instead, Patent Owner
cites several examples of PIM functionality, including checking user’s
subscription rights, creating remote DSIs when other DSIs are busy, search
engine and data base management, and directing downloads from
“extended” SRUs. PO Resp. 48–49. The mere fact that the PIMs are
involved in these activities does not “override” the fact that Internet 56 is the
vehicle in Kenner for delivering the requested files, as Patent Owner
concedes.
As noted supra in discussing Libman, we do not agree that the ’854
patent claims prohibit “pre-establishing” connections. But even if they did,
we are not convinced by Patent Owner’s argument that because the DSI in
Kenner “directs and oversees the download process,” it means that “the
video clip will take the same predetermined path through the determined

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equipment to the user.” PO Resp. 50. Even assuming that the DSI
determines a particular SRU from which the video clip is transmitted, Patent
Owner has not cited persuasive evidence that the DSI predetermines the
connection path between that SRU and the user terminal. The only support
Patent Owner cites for this assertion is the declaration of it expert, Mr.
Soske. Id. (citing Ex. 2005 ¶¶ 95–96). For several reasons, we do not credit
this testimony. First, Mr. Soske concedes that “Kenner teaches that video
clips can be delivered via the Internet.” Ex. 2005 ¶ 96. This statement,
alone, undercuts Patent Owner’s fundamental criticism of Kenner. Second,
Mr. Soske cites no support for his conclusion. Such expert opinions
unsupported by facts are entitled to little or no weight. 37 C.F.R. § 42.65(c)
(“Expert opinion testimony that does not disclose the underlying facts or
data on which the opinion is based are entitled to little or no weight.”). We,
therefore, give minimal weight to Mr. Soske’s testimony on this issue.
Patent Owner’s second argument is that Kenner does not meet the
asserted requirement of: “transferring [the] media file from a provider site
to a user site via the Internet without the media file being stored or
processed by the transaction server.” PO Resp. 49–50. As we explain
above, this proposed construction rewrites the claims and is not consistent
with the broadest reasonable interpretation. We, therefore, do not credit
Patent Owner’s argument attempting to distinguish Kenner based on this
proposed construction. Instead, we credit Petitioner’s analysis and
supporting expert testimony demonstrating that the claim 1 limitation
“authorizing delivery of the requested media file from said provider site to
the requesting player/receiver directly via the Internet” and the
corresponding claim 14 limitation are met by the Kenner-Spies combination.

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Pet. 49 [1.10], 56–57 [14.5]. We find that for the reasons given by
Petitioner, the PIM in Kenner authorizes the SRUs to download video clips
directly to users via the Internet.
We have considered Patent Owner’s other arguments regarding this
ground of challenge and find them unpersuasive, for reasons including those
set forth on Petitioner’s Reply.
We conclude that Petitioner has proved by a preponderance of the
evidence that claims 1–23 would have been obvious over Kenner and Spies.

III. SUMMARY
Petitioner has proved by a preponderance of the evidence that claims
1–23 the ʼ854 patent would have been:
A. obvious over Libman and Spies; and
B. obvious over Kenner and Spies.

IV. ORDER
In consideration of the foregoing, it is
ORDERED that, because this is a final written decision of the Board
under 35 U.S.C. § 318(a), parties to the proceeding seeking judicial review
of the decision must comply with the notice and service requirements of 37
C.F.R. § 90.2; and
FURTHER ORDERED that claims 1–23 of U.S. Patent 7,269,854 B2
are unpatentable under 35 U.S.C. § 103(a).

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PETITIONER:
P. Andrew Riley
Linda Thayer
Joshua L. Goldberg
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
andrew.riley@finnegan.com
iMTX_IPR2015-01061@finnegan.com

Jonathan Stroud
UNIFIED PATENTS INC.
jonathan@unifiedpatents.com

PATENT OWNER:
René A. Vazquez
Sinergia Technology Law Group, PLLC
rvazquez@sinergialaw.com

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