Unified Patents Inc. v. Convergent Media Solutions, LLC, IPR2016-00047, Paper 11 (PTAB Apr. 13, 2016) (Institution Decision)

8/18/2019 Unified Patents Inc. v. Convergent Media Solutions, LLC, IPR2016-00047, Paper 11 (PTAB Apr. 13, 2016) (Institutio…

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[email protected] Paper No. 11

571-272-7822 Filed: April 13, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

UNIFIED PATENTS INC.,

Petitioner,

v.

CONVERGENT MEDIA SOLUTIONS, LLC,

Patent Owner. ____________

Case IPR2016-00047

Patent 8,640,183 B2

____________

Before JAMESON LEE, LYNNE E. PETTIGREW, and

JOHN F. HORVATH, Administrative Patent Judges.

HORVATH, Administrative Patent Judge.

DECISION

Institution of Inter Partes Review

37 C.F.R. § 42.108


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I. INTRODUCTION

A.

Background

Unified Patents Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) toinstitute inter partes review of claims 1–5, 16, 18, 24–26, 32–38, 40–42, 49,

51–53, and 58–61 of U.S. Patent No. 8,640,183 B2 (Ex. 1001, “the ’183

patent”). Convergent Media Solutions, LLC, (“Patent Owner”) filed a

Preliminary Response (Paper 9, “Prelim. Resp.”).

Upon consideration of the Petition and Preliminary Response, we are

persuaded, under 35 U.S.C. § 314(a), that Petitioner has demonstrated a

reasonable likelihood that it would prevail in showing the unpatentability of

claims 1–5, 16, 18, 24–26, 32–38, 40–42, 49, 51–53, and 58–61 of the ’183

patent. Accordingly, we institute an inter partes review of these claims.

B.

Related Matters

Petitioner identifies the following as matters that could affect, or be

affected by, a decision in this proceeding: Convergent Media Solutions LLC

v. AT&T Inc., Case No. 3-15-cv-02156 (N.D. Tex.); Convergent Media

Solutions LLC v. Hulu, Inc., Case No. 3-15-cv-02158 (N.D. Tex.);

Convergent Media Solutions LLC v. Netflix Inc., Case No. 3-15-cv-02160

(N.D. Tex.). Pet. 2. Patent Owner identifies each of the preceding matters

as well as the following as a matter that could affect, or be affected by, a

decision in this proceeding: Convergent Media Solutions LLC v. Roku, Inc.;

Case No. 3-15-cv-02163 (N.D. Tex.). Paper 4, 2.


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C.

Evidence Relied Upon1

Reference Effective Date Exhibit

Chen US 8,479,238 B2 May 14, 20022 Ex. 1003

Elabbady US 7,483,958 B1 Mar. 26, 20023 Ex. 1004

Meade US Pub. 2003/0073412 A1 Oct. 16, 20014 Ex. 1005

D.

The Asserted Grounds of Unpatentability

Petitioner asserts the following grounds of unpatentability:

References Basis Claims Challenged

Chen and Elabbady § 103(a)1–5, 16, 18, 24–26, 32–38, 40–

42, 49, 51–53, 55, and 58–61

Meade and Elabbady § 103(a)1, 16, 18, 24, 32, 33, 37, 38, 41,

and 58–60

1 Petitioner also relies upon the Declaration of Jon Weissman (Ex. 1002).

2 Chen was filed on May 14, 2002 and issued on July 2, 2013. For purposes

of this decision, we consider Chen to be prior art to the ’183 patent under 35

U.S.C. § 102(e) with an effective date of May 14, 2002. See § II.C infra.

3 Elabbady was filed on March 26, 2002 and issued on January 27, 2009. It

is prior art under 35 U.S.C. § 102(e), with an effective date of March 26,2002.

4 Meade was filed on October 16, 2001 and published on April 17, 2003. It

is prior art under 35 U.S.C. § 102(e) with an effective date of October 16,

2001.


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II. ANALYSIS

A.

The ’183 Patent

The ’183 patent relates to systems and methods for navigatinghypermedia using multiple coordinated input/output device sets. Ex. 1001,

3:13–15. The method allows “a user and/or an author to control what

resources are presented on which device sets.” Id. at 3:15–17. The device

sets may include laptops, desktops, tablets, personal digital assistants

(PDAs), televisions (TVs), set-top boxes, video cassette recorders (VCRs)

and digital video recorders (DVRs). Id. at 16:28–43, 18:32–59, 19:32–47.

The term hypermedia refers to “any kind of media that may have the effect

of a non-linear structure of associated elements,” and includes “graphics,

video, and sound.” Id. at 7:13–22. The ’183 patent characterizes video and

sound as examples of “continuous media,” or a “representation of ‘content’

elements that have an intrinsic duration, that continue (or extend) and may

change over time.” Id . at 20:5–9.

The multiple input/output device sets described in the ’183 patent may

be coordinated using “a device set management process that performs basic

setup and update functions . . . to pre-identify and dynamically discover

device sets.” Ex. 1001 37:36–43. This management process can “be based

on and compatible with related lower-level processes and standards defined

for linking such existing devices and systems . . . based on UPnP, HAVi,

OSGi, Rendezvous and/or the like.” Id. at 37:46–50. The process enables basic communications among the devices in the device set, and “provide[s]

discovery, presence, registration, and naming services to recognize and

identify devices as they become available to participate in a network, and to

characterize their capabilities.” Id. at 37:50–55.


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Claims 1 and 58–60 of the ’183 patent are independent. Claim 1 is

representative of the claims of the ’183 patent, and is reproduced below.

Each of the other challenged claims depends from claim 1 or claim 60.1. A method for use in a second computerized

device set which is configured for wireless

communication using a wireless communications

protocol that enables wireless communication with

a first computerized device set, wherein the first and

second computerized device sets include respective

first and second continuous media players, the

method comprising:

making available to a user a first user interface that

allows the user to select a continuous media content

to be presented to the user, wherein the continuous

media content includes a set of encoded video data;

making available to the user a second user interface

that allows the user to select to have the continuous

media content presented on either one of the first

computerized device set and the second

computerized device set;

receiving discovery information at the second

computerized device set in accordance with a

device management discovery protocol that is

implemented at a communication layer above an

internet protocol layer, and

wherein the discovery information allows the

second computerized device set to determine that

the first computerized device set is capable ofreceiving the continuous media content and playing

the continuous media content;

wherein, in the event the user selects, via the second

user interface, to have the continuous media content

presented on the second computerized device set,


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the second media player decoding the continuous

media content for presentation on the second

computerized device set;

wherein, in the event the user selects, via the second

user interface, to have the continuous media content

presented on the first computerized device set,

wirelessly transmitting, in accordance with a

wireless local area network protocol, at least a

resource indicator, wherein the resource indicator

comprises at least one of a URL, URI, and URN,

from the second computerized device set to the first

computerized device set, wherein the resource

indicator facilitates obtaining the continuous mediacontent for presentation to the user on the first

computerized device set; and

wherein the continuous media content is not

presented on the second computerized device set

during presentation on the first computerized device

set, and the first user interface and the second user

interface together comprise a unified media

selection and presentation user interface, wherein

the unified media selection and presentation userinterface presents user input controls for selection

of the continuous media content and for selection of

either one of the first computerized device set and

the second computerized device set for presentation

of the continuous media content.

Ex. 1001, 164:22–165:6.

B.

Claim Construction

The Board interprets claims of an unexpired patent using the broadest

reasonable interpretation in light of the specification of the patent in which

they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC ,

793 F.3d 1268, 1275–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo


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Speed Techs., LLC v. Lee, 136 S. Ct., 890 (mem.) (2016). Even under the

rule of broadest reasonable interpretation, claim terms are generally given

their ordinary and customary meaning, as would be understood by one ofordinary skill in the art in the context of the entire disclosure. See In re

Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those

terms which are in controversy need to be construed and only to the extent

necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. &

Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).

Petitioner proposes we construe the term “unified media selection and

presentation interface.” Pet. 7–8. The term appears in each of independent

claims 1 and 58–60 in the phrase:

the first user interface and the second user interface

together comprise a unified media selection and

presentation user interface, wherein the unified

media selection and presentation user interface

presents user input controls for selection of the

continuous media content and for selection of either

one of the first computerized device set and thesecond computerized device set for presentation of

the continuous media content.

E.g., Ex. 1001, 164:65–165:6 (emphasis added).

Petitioner contends the term “unified” is not defined in the

Specification, and does not appear in the Specification other than in the

claims, and in the context of “unified messaging services” disclosed at

column 103, lines 35 through 42. Pet. 8. Consequently, based on a

dictionary definition of “unify,” Petitioner contends the term should be

construed to mean “a coherent set of user interfaces for selecting media and


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selecting a presentation device.” Id.; see also Ex. 1006, 1287 (defining

“unify” to mean “to make into a unit or a coherent whole: UNITE”).

Patent Owner does not dispute Petitioner’s proposed construction ofthe term “unified media selection and presentation interface,” and does not

propose the construction of any terms.

We agree with Petitioner that the term “unified media selection and

presentation interface” does not appear in the Specification, other than in

the claims. To determine the broadest reasonable interpretation of the term,

we therefore look to its ordinary and customary meaning, as would be

understood by one of ordinary skill in the art. As Petitioner notes, the

ordinary and customary meaning of the term “unify” is “to make into a unit

or a coherent whole: UNITE.” Ex. 1006, 1287. The ordinary and customary

meaning of “unite” includes “to become one or as if one,” and “to act in

concert.” Ex. 3001, 1291 (emphasis added). Thus, for purposes of this

Decision, we construe the term “unified media selection and presentation

interface” to mean one or more user interfaces that, together, present

controls for selecting continuous media content and a continuous media

content presentation device.

C. Whether Chen Is Prior Art to the ’183 Patent

The Chen patent was filed on May 14, 2002, and claims priority to

Provisional Application No. 60/290,788 (“the ’788 provisional application”)

filed on May 14, 2001. See Ex. 1003. Petitioner alleges “Chen is prior artunder at least U.S.C. § 102(e) based on at least its domestic priority date of

May 14, 2001.” Pet. 9.

The ’183 patent was filed on October 26, 2012 as a continuation of an

application filed on April 26, 2011, which is a continuation of an application


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filed on May 8, 2003. See Ex. 1001. The ’183 patent claims priority,

through these continuation applications, to three provisional applications,

including Provisional Application No. 60/379,635 (“the ’635 provisionalapplication”) filed on May 10, 2002. Id. Patent Owner alleges the priority

date of the ’183 patent is the May 10, 2002 filing date of the ’635

provisional application because “the provisional patent application is 283

pages in length.” Prelim. Resp., 3.

Patent Owner argues Chen is not entitled to claim priority to the ’788

provisional application, allegedly because the ’788 provisional application

“does not disclose all the subject matter that is disclosed in Chen (Ex.

1003),” and because “[t]he length of the provisional Chen ‘788 as compared

to Chen (Ex. 1003) is significantly smaller.” Prelim. Resp. 4. Therefore,

Patent Owner argues, Chen is not prior art to the ’183 patent because Chen’s

priority date is its May 14, 2002 filing date, which is after the claimed May

10, 2002 priority date of the ’183 patent. Id. at 3.

Section 119(e)(1)(pre-AIA) of Title 35 states:

An application for patent filed under section 111(a)

or section 363 of this title for an invention disclosed

in the manner provided by section 112 of this title

in a provisional application filed under section

111(b) of this title, by an inventor or inventors

named in the provisional application, shall have the

same effect, as to such invention, as though filed on

the date of the provisional application filed under

section 111(b) of this title . . . .

Consequently, “[a] reference patent is only entitled to claim the benefit of

the filing date of its provisional application if the disclosure of the

provisional application provides support for the claims in the reference


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patent in compliance with § 112, ¶ 1.” Dynamic Drinkware v. Nat’l

Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015).

At this stage of the proceeding, Petitioner has failed to prove Chen isentitled to claim priority to the ’788 provisional application because

Petitioner has “failed to compare the claims of the [Chen] patent to the

disclosure in the [Chen] provisional application.” Dynamic Drinkware, 800

F.3d at 1381. Likewise, assuming the ’183 patent is entitled to claim

priority under 35 U.S.C. § 120 to the May 8, 2003 filing date of its

grandparent application, Patent Owner has failed to prove the ’183 patent is

further entitled to claim priority to the ’635 provisional application for the

same reason. Id .; see also Polaris Wireless, Inc. v. Trueposition, Inc., Case

IPR2013-00323, slip op. at 29 (Paper 9) (“[T]he Patent Owner is not

presumed to be entitled to the earlier filing dates of ancestral applications

which do not share the same disclosure.”). Accordingly, for purposes of this

decision, Chen’s priority date is its May 14, 2002 filing date; the ’183

patent’s priority date is May 8, 2003; and Chen is available as prior art to the

’183 patent under 35 U.S.C. § 102(e) as Petitioner has alleged. See Pet. 9.

D.

Alleged Obviousness of Claims 1–5, 16, 18, 24–26, 32–38, 40–42,

49, 51–53, 55, and 58–61 over Chen and Elabbady

Petitioner alleges claims 1–5, 16, 18, 24–26, 32–38, 40–42, 49, 51–53,

55, and 58–61 of the ’183 patent would have been obvious under 35 U.S.C.

§ 103(a) in view of the combination of Chen and Elabbady. Pet. 4. In

particular, Petitioner alleges—to the extent Chen’s address resolution

protocol (ARP) is not implemented at a discovery layer above an internet

protocol layer—Elabbady teaches these elements. Pet. 16. Petitioner further

alleges it would have been obvious to modify Chen’s ARP based discovery


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protocol with Elabbady’s universal plug-and-play (UPnP) based discovery

protocol because such a modification would simply substitute one known

technique for another, and would provide zero-configuration networking toChen’s control and video devices. Id. at 17.

We have reviewed the Petition and Patent Owner’s Preliminary

Response, and are persuaded that Petitioner has demonstrated a reasonable

likelihood of establishing the unpatentability of claims 1–5, 16, 18, 24–26,

32–38, 40–42, 49, 51–53, 55, and 58–61 over the combination of Chen and

Elabbady.

1. Overview of Chen (Ex. 1003)

Chen discloses a system and method “for content-based non-linear

control of video data playback.” Ex. 1003, 1:64–65. Figure 3 of Chen is

reproduced below.

Figure 3 of Chen is a schematic illustration of the topology of Chen’s

networked system for non-linear control of video playback.


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Control device 212, multimedia server 222, video server 220, and

video device 218 are interconnected via network 216. Ex. 1003, 4:44–5:67,

Fig. 2. Control device 212 can be a personal digital assistant (PDA), tablet, palmtop, laptop, or desktop computer. Id. at 4:47–60. Control device 212

“acts as a dynamic control pad for initiating video playback of content

specific information,” and is “capable of inputting control command,

communicating data, and playing multimedia data such as . . . still images,

text, preview videos, or the like.” Id. at 4:47–53. Control device 212

connects to network 216 using a wireless communications protocol such as

Bluetooth or IEEE 802.11b. Id. at 4:55–57.

Video device 218 includes a video display 316, “a video decoder 318

which decodes compressed video data, and a video device network interface

320 which interfaces the video display to the network.” Ex. 1003, 6:19–22.

Video device 218 “may be a television monitor, computer monitor, or [a]

similar device.” Id. at 5:4–7. Video device 218 may connect to network 216

through a wireless connection. Id. at 5:10–11.

Control device 212 provides a “Graphical User Interface (GUI), for

display of information and solicitation of consumer input/instruction.” Ex.

1003, 6:40–42. To control video playback on video device 218, “control

device [212] generates URLs, which pass parameters to a CGI application

running under the HTTP server on the video device.” Id. at 6:43–47. The

passed parameters include a URL (MediaURL) pointing to the video to bedisplayed, and an IP address (VideoDevice) identifying the video device 218

on which the video is to be displayed. Id. at 6:49–54.


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Figures 4 and 7 of Chen are reproduced below.

Figure 4 of Chen is an illustration of a GUI allowing a user to select a video

device on which video data is to be displayed. Id. at 7:4–5. Figure 7 of

Chen is an illustration of a GUI for displaying a list of videos that can be

selected for display on a selected video device. Id. at 7:60–8:10. The

caption at the top of the GUI shown in Figure 4 of Chen reads “[t]his page is

used to specify a video device for viewing multimedia.” The GUI includes a

drop-down list of video devices that can be selected for displaying videos.

The list can be determined using ARP. Id. at 7:23–25. The list preferably

includes “all available video devices to which the consumer has access,” and

may include “a predetermined list of device names maintained on a server,”

as well as “names entered by the consumer” or previously selected by the

consumer. Id. at 7:13–20.

2.

Overview of Elabbady (Ex. 1004)Elabbady discloses “methods and systems for sharing media content

between various devices.” Ex. 1004, 1:14–17. Figure 2A of Elabbady is

reproduced below.


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Figure 2A of Elabbady is a block diagram of a media content sharing

environment.

Device 202, connected to devices 206a-d via network 204, provides a

media cataloguing service 203 to devices 206a-d. Ex. 1004, 5:24–29.

Network 204 can be established using “a Universal Plug-and-Play (UPnP) protocol that provides a peer-to-peer network capability that can support

various devices through wired and/or wireless connections.” Id. at 5:54–58.

Devices 202 and 206a-d can be any “variety of different devices that can be

used to provide features/capabilities associated with sharing media content.”

Id. at 5:66–7:2. These can include PCs, laptops, desktops, notebooks,

tablets, PDAs, digital TVs, DVDs, set-top boxes and the like. Id. at 3:23–

46. Media content refers to “any form of information that may be shared,

processed, and/or played or otherwise reproduced,” and can include audio,

video, and multimedia data. Id. at 6:66–7:5. Any of devices 202 and 206a-d

can play media content. Id. at 8:57–62.


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Devices 202 and 206a-d can also be coupled to media server 210 that

includes database 212 of shareable media content. Ex. 1004, 5:32–45. Any

of devices 206a-d, such as device 206a, can query media catalog 203 ondevice 202, and the URL of a media item responsive to the query is returned

to device 206a. See, e.g., id . at 9:47–51, 10:11–22. Device 206a can use the

URL to get the media item from media server 210. Id. at 10:24–38.

3.

Comparison of Claims 1–5, 16, 18, 24–26, 32–38, 40–42, 49, 51–

53, 55, and 58–61 to the Combination of Chen and Elabbady

Petitioner demonstrates a reasonable likelihood of showing that claims

1–5, 16, 18, 24–26, 32–38, 40–42, 49, 51–53, 55, and 58–61 would have

been obvious over the combination of Chen and Elabbady. See Pet. 9–37.

For example, claim 1 recites a method for use in a second

computerized device set configured for wireless communication with a first

computerized device set, and requires making available to a user a first user

interface that allows the user to select a continuous media content to be

presented to the user, wherein the continuous media content includes a set ofencoded video data. Ex. 1001, 164:22–32. Figure 7 of Chen discloses

presenting a first user interface on control device 212 (second computerized

device set) to allow a user to select an encoded video. See Pet. 11–12, 19;

Ex. 1003, 3:36–38, 7:60–8:10, Fig. 7.

Claim 1 requires making available to the user a second user interface

that allows the user to select to have the continuous media content presented

on either one of the first and second computerized device sets. Ex. 1001,

164:33–36. Figure 4 of Chen discloses presenting a second user interface on

control device 212 to allow a user to select a video device from among a list

of video devices. See Pet. 11–12, 19–20; Ex. 1003, 7:4–20, Fig. 4. The list


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includes “all video devices to which the consumer has access,” including the

names of devices entered by the user. Ex. 1003, 7:13–20. Chen discloses

that control device 212 (second computerized device set) is a video device because it is capable of playing videos, and further discloses that control

device 212 is capable of selecting other video devices 218 (first

computerized device sets) to play videos. See Pet. 21–22; Ex. 1003: 4:47–

53, 5:58–62.

Claim 1 requires receiving discovery information from a device

management discovery protocol implemented at a communication layer

above an internet protocol layer that allows the second computerized device

set to determine that the first computerized device set is capable of receiving

and playing the continuous media content. Ex. 1001, 164:37–45. The

discovery management protocol can be, for example, UPnP protocol. Id. at

37:35–55. Chen discloses identifying a list of video devices 18 (first

computerized device sets) using a protocol similar to ARP. See Pet. 16; Ex.

1003, 7:23–25. Elabbady discloses using UPnP to set up an ad-hoc network

among video playing device 202 (second computerized device set) and video

playing devices 206 (first computerized device sets). See Pet. 16, 20–21;

Ex. 1004, 5:24–31, 5:46–65.

Claim 1 requires presenting the continuous media content on the

second computerized device set when the user selects the second media

device set using the second user interface. Ex. 1001, 164:46–51. Chendiscloses playing a selected video on a video device that has been selected

from a list of video devices. See Pet. 11–12, 21–22; Ex. 1003, Fig. 4. The

list includes “all video devices to which the consumer has access.” Ex.


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1003, 7:13–20. Chen further discloses control device 212 is a video device

because it is capable of playing videos. See Pet. 21–22; Ex. 1003, 4:47–53.

Claim 1 requires wirelessly transmitting a resource indicator,comprising at least one of a URL, URI, and URN, from the second

computerized device set to the first computerized device set when the user

selects presenting the continuous media content on the first computerized

device set using the second user interface. Ex. 1001, 164:52–62. Chen

discloses control device 212 (second computerized device set) uses wireless

communication protocols to communicate over a network with video devices

218 (first computerized device sets), and initiates control of video data

playback on video devices by “generat[ing] URLs, which pass parameters to

a CGI application running under the HTTP server on the video device.” Ex.

1003, 4:55–58, 6:43–54, 8:21–25; see also Pet. 12–14, 22–23.

Finally, claim 1 requires the first user interface and the second user

interface to together comprise a unified media selection and presentation

user interface presenting user input controls for selection of the continuous

media content and for selection of either one of the first computerized device

set and the second computerized device set for presentation of the

continuous media content. Ex. 1001, 164:63–165:6. Chen discloses that

together, the user interfaces shown in Figures 4 and 7 present controls for

selecting continuous media content and a continuous media content

presentation device. See Pet. 12, 23; Ex. 1003, 5:58–62, 6:38–43, 7:4–11,8:7–10, Figs. 4, 7, 8.

Similarly to claim 1, discussed above, Petitioner demonstrates a

reasonable likelihood of showing claims 2–5, 16, 18, 24–26, 32–38, 40–42,

49, 51–53, 55, and 58–61 are unpatentable over the combination of Chen


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and Elabbady. See Pet. 9–37.

Patent Owner argues the combination of Chen and Elabbady fails to

disclose the second user interface that allows a user to select to havecontinuous media content presented on either one of the first and second

computerized device sets, as required by independent claims 1, 59, and 60,

and fails to disclose the user interface required in independent claim 58

having similar functionality. Prelim. Resp., 6–7, 12–15.

In particular, Patent Owner argues Chen fails to disclose this

limitation because Figure 4 of Chen “only allows selection of video devices

218, but does not allow the selection of the control device 212.” Prelim.

Resp. 7. According to Patent Owner, because the caption in the upper

portion of Chen’s Figure 4 reads “this page is used to specify a video device

for viewing multimedia,” Chen can only select “one of the video devices

218, which does not include the control device 212.” Id . at 9. Patent Owner

contends this interpretation is confirmed by Chen’s description of Figure 4,

which reads:

Fig. 4 illustrates an exemplary control device screen

for specifying the video device that is to be

controlled. The control device provides an input

field 410 for the consumer to specify the video

device that is to be controlled. In this example, the

user has entered the video device name “NTV1”.

Also provided is a connection button 412, which

upon selection, instructs the control device that the

video device indicated in the input field is to be provided video data.

Id. (quoting Ex. 1003, 7:4–10).

We are not persuaded by Patent Owner’s argument. We agree with

Patent Owner that the caption in the upper portion of Chen’s Figure 4 reads


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“this page is used to specify a video device for viewing multimedia.”

Ex. 1003, Fig. 4. However, nothing in that caption limits the list of

selectable video devices in Figure 4 to video devices 218, or excludescontrol device 212. Rather, Chen discloses Figure 4’s list of video devices

consists of “all available video devices to which the consumer has access,”

including “names entered by the consumer or selected previously.”

Ex. 1003, 7:13–20. Moreover, Chen discloses control device 212 is a video

device to which the consumer has access because it is “capable of . . .

playing multimedia data such as . . . preview videos.” Id. at 4:50–53.

Patent Owner also argues the combination of Chen and Elabbady fails

to disclose a wireless communication session between the first and second

computerized device sets as required by claim 60. Prelim. Resp. 13–14.

According to Patent Owner, because Petitioner’s claim chart for claim 60

only cites to Chen for wirelessly connecting control device 212 to network

access point 218, “Chen is deficient at describing a ‘wireless communication

session’ between the 1st CDS [computerized device set] and the 2nd CDS as

required by . . . claim 60 of the ‘183 Patent.” Id. at 14.

We are not persuaded by Patent Owner’s argument. Claim 60 recites

a method for use in a first computerized device set, and requires establishing

a wireless communication session with a second computerized device set.

Ex. 1001, 170:6–10, 170:20–21. The ’183 patent does not define the term

“wireless communication session,” and does not use the term other than inclaim 60. Chen discloses control device 212 (second computerized device

set) connects to network 216 using various wireless protocols such as

Bluetooth and IEEE 802.11b. See Pet. 10; Ex. 1003, 4:55–58. Chen further

discloses video devices 218 (first computerized device sets) connect to


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network 216 through a wireless connection. See Pet. 12; Ex. 1003, 5:9–12.

Elabbady discloses wirelessly connecting device 202 (second computerized

device set) with devices 206 (first computerized device sets) using UPnP protocol to establish a wireless peer-to-peer network. See Pet. 16; Ex. 1004,

5:23–31, 5:46–65, 9:53–60, 10:11–16. Any node in a wireless peer-to-peer

network can establish a wireless communication session with any other node

in the network. See Ex. 3002, 804 (defining a peer-to-peer communication

as a “[c]ommunication between two or more network nodes in which either

node can initiate sessions”).

Accordingly, we are persuaded, on this record, that Petitioner has

shown a reasonable likelihood that it would prevail in establishing the

unpatentability of claims 1–5, 16, 18, 24–26, 32–38, 40–42, 49, 51–53, 55,

and 58–61 over the combination of Chen and Elabbady.

E. Alleged Obviousness of Claims 1, 16, 18, 24, 32, 33, 37, 38, 41,

and 58–60 over Meade and Elabbady

Petitioner alleges claims 1, 16, 18, 24, 32, 33, 37, 38, 41, and 58–61of the ’183 patent would have been obvious under 35 U.S.C. § 103(a) over

Meade and Elabbady. Pet. 4. We have reviewed the Petition and Patent

Owner’s Preliminary Response, and are not persuaded that Petitioner has

demonstrated a reasonable likelihood of establishing the unpatentability of

claims 1, 16, 18, 24, 32, 33, 37, 38, 41, and 58–61 over the combination of

Meade and Elabbady.

1.

Overview of Meade (Ex. 1005)

Meade discloses an appliance control system consisting of “an

appliance and a mobile computing device configured for controlling the

appliance.” Ex. 1005 ¶ 8. Figure 1 of Meade is reproduced below.


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Figure 1 is a block diagram of Meade’s appliance control system.

Mobile computing device 12 is configured “to supply content 16 from

mobile computing device 12 (or from another source as controlled by mobile

computing device 12) to appliance 13 for performance by appliance 13.”

Ex. 1005 ¶ 32. Appliance 13 can be an audio device, video device,

computer, or mobile phone. Id. ¶ 34. Mobile computing device 12 can be a

PDA, handheld computer or laptop computer. Id. ¶ 41. To control

appliance 13, mobile computing device 12 first selects appliance 13 as an

appliance it wishes to control, and then establishes wireless communications

with appliance 13. Id. ¶ 35. Mobile computing device 12 then selects

content for performance on appliance 13. Id. ¶ 36. The selected content can

be obtained over a network 70 such as the Internet. Id. ¶ 42. In this way,

appliance 13 (e.g., an audio device 28), acting under the control of mobile

computing device 12, can obtain selected content (e.g., audio files) over the

Internet from a content web site 36. Id.

Mobile computing device 12 can display user interface 90 having an

appliance content selector 92 that is used “to determine what content is used


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or performed by appliance 13 . . . and where that content is obtained.”

Ex. 1005 ¶¶ 49, 108. Figure 9 of Meade illustrates user interface 90, and is

reproduced below.

Figure 9 of Meade is a block diagram of a user interface for an appliance

control system. The user interface includes appliance preferences 406 that

“determine[] the preferences a user has for appliances 13 they will control.”

Id. ¶ 111. Appliance preferences 406 include auto activation 460 that

“determines whether appliance 13 will be automatically activated in the

presence of mobile computing device 12,” and media selection 462 that, in

conjunction with appliance content selector 92, determines the content

selections for performance by appliance 13. Id.

2. Comparison of Claims 1 and 58–60 to the Combination of Meade

and Elabbady

On the record before us, Petitioner has failed to demonstrate a

reasonable likelihood of showing claims 1, 16, 18, 24, 32, 33, 37, 38, 41, and


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58–60 are unpatentable over the combination of Meade and Elabbady. See

Pet. 37–60. For example, claim 1 requires making available to a user of a

second computerized device set a second user interface that allows the userto select to have continuous media content presented on either one of a first

computerized device set and a second computerized device set. See Ex.

1001, 164:22–36.

Petitioner alleges Meade teaches mobile computing device 12 (second

computerized device set) displays user interface 90 that allows a user to

enter auto activation settings 460 for automatically activating selected

appliances 13, and to enter media selections 462 for selecting content to be

presented on the activated appliances. Pet. 38, 47–48. Petitioner further

alleges Meade teaches mobile computing device 12 can be a personal digital

assistant (PDA), and Elabbady teaches PDAs can be used to play media

content and also teaches “device selection between the first [PDA] device

202 and other devices 206 by virtue of using device 202 to either play video

or control playback on device[s] 206.” Id. at 40–41, 48–49.

Petitioner alleges it would have been obvious to a person of ordinary

skill in the art “to modify Meade’s mobile computing device 12 PDA to

provide functionality to present video data,” and that such “a modification

would combine known elements and functions– i.e., modifying mobile

computing device 12 to include a functionality that was known and

commonly implemented in PDAs at the time of Meade’s invention.” Pet.41. Petitioner further alleges the combination would have been obvious

because “it would provide a more desirable system, one where multiple

media browsing devices also have the ability to playback selected data,


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using devices and functionalities that were well-known at the time of

Meade’s invention.” Id. at 41–42.

Patent Owner argues the combination of Meade and Elabbady fails toteach or suggest making available a second user interface that allows the

user to select to have continuous media content presented on either one of

the first computerized device set and the second computerized device set as

required by claim 1. Prelim. Resp. 18. In particular, Patent Owner argues

“Petitioner only cites portions of Meade where the mobile computing device

12 controls appliances 13,” and that “Meade is deficient in describing where

the mobile computing device 12 allows a user to select via a ‘second user

interface’ continuous media content that can be presented on itself.” Id. at

19. According to Patent Owner, “Meade does not describe a second user

interface as required in claim 1, because the mobile computing device 12

controls appliances 13, rather than controlling content displayed on itself.”

Id. at 19–20.

Patent Owner further argues:

Elabbady was not cited by the Petitioner to describe

the “second user interface” rather, Elabbady in

combination with Meade was used to describe that

the mobile computing device 12 could be a PDA,

and that such PDA would be capable of displaying

video content. Regardless of whether the mobile

computing device 12 (of Meade) is a PDA, and that

PDA [] is capable of playing media content as

described in Elabbady, what is still missing from both Meade and Elabbady is a “second user

interface” for controlling whether the content is

displayed on the mobile computing device 12.

Meade only describes a system where a mobile


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computing device 12 controls whether video

content is displayed on one of the appliances 13.

Prelim. Resp. 20 (internal citations omitted).

Patent Owner argues that because Petitioner only relies on a portion of

Elabbady that discloses first device 202 can play media content, see

Ex. 1004, 8:57–62, “Petitioner does not demonstrate that Elabbady discloses

a user is able to use a ‘second user interface’ (as required in claim 1) to

select device 202 . . . so that video content can be played on device 202.”

Prelim. Resp. 20. Therefore, Patent Owner argues, “[e]ven if Meade and

Elabbady were combined, the combination also would be deficient for

failing to describe the ‘second user interface’ as required in claim 1 of the

’183 Patent.” Id. at 21. Patent Owner similarly argues the combination of

Meade and Elabbady fails to describe similarly worded user interface

limitations appearing in independent claims 58–60. Id. at 21–23.

We are persuaded by Patent Owner’s arguments. Claim 1 requires

making available to a user of a second computerized device set “a second

user interface that allows the user to select to have the continuous media

content presented on either one of the first computerized device set and the

second computerized device set.” Ex. 1001, 164:22–36. Petitioner relies

solely on Meade for teaching a mobile computing device 12 having a second

user interface that allows a user to set preferences for playing media content

on appliances 13. Pet. 37–38, 48. Petitioner consistently describes Meadeas teaching using mobile computing device 12 to control appliances 13 in

order to display media on appliances 13. For example, Petitioner alleges

“[m]obile computing device 12 includes an appliance content selector 92

and a user interface 90 for determining what content is performed by


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appliance 13.” Id. at 37–38. Petitioner never alleges user interface 90 can

select mobile computing device 12 to display selected media content, or that

it would have been obvious to a person of ordinary skill in the art at the timeof the invention described in the ’183 patent to modify Meade’s user

interface 90 to allow mobile computing device 12 to select itself to display

selected media content.

Although Petitioner relies on Elabbady for teaching that PDAs, such

as Meade’s mobile computing device 12 or Elabbady’s device 202, “can

play media content such as video,” Prelim. Resp. 41, Petitioner fails to

allege that Elabbady teaches making a second user interface available on

device 202 for selecting either of device 202 and devices 206 to display

selected media content. Instead, Petitioner alleges “ Elabbady teaches device

selection between the first device 202 and other devices 206 . . . by virtue of

using device 202 to either play video or control playback on device 206.”

Id. (emphasis added). Notably, Petitioner fails to allege device 202 includes

a second user interface that allows selection of device 202 or device 206 for

playing selected videos, or that it would have been obvious to one of

ordinary skill in the art at the time of the invention described in the ’183

patent to include a second user interface in device 202 to allow a user to

select either device 202 or device 206 to play selected videos.

Accordingly, Petitioner has failed to show a reasonable likelihood that

it would prevail in establishing the unpatentability of claims 1, 16, 18, 24,32, 33, 37, 38, 41, and 58–60 over the combination of Meade and Elabbady.


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III. CONCLUSION

Petitioner has established a reasonable likelihood that it would prevail

in showing the unpatentability of claims 1–5, 16, 18, 24–26, 32–38, 40–42,49, 51–53, and 58–61 of the ’183 patent over the combination of Chen and

Elabbady.

The Board has not yet made a final determination with respect to the

patentability of any claim.

IV.

ORDER

It is ORDERED that, pursuant to 35 U.S.C. § 314, an inter partes

review is hereby instituted on the following ground:

Claims 1–5, 16, 18, 24–26, 32–38, 40–42, 49, 51–53, and 58–61

under 35 U.S.C. § 103(a) as obvious over Chen and Elabbady; and

FURTHER ORDERED that, except as specifically enumerated above,

no other ground of unpatentability, with respect to any claim, is instituted for

trial; and

FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37

C.F.R. § 42.4, notice is hereby given of the institution of trial commencing

on the entry date of this Decision.


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For PETITIONER:

P. Andrew Riley

Joshua L. Goldberg

Kai RajanFINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP

[email protected]

Jonathan Stroud

UNIFIED PATENTS INC.

[email protected]

For PATENT OWNER:

Clay McGurk

THE LAW OFFICE OF CLAY McGURK

[email protected]

Robert Westerlund

[email protected]

Documents

Unified Patents Inc. v. Convergent Media Solutions, LLC, IPR2016-00047, Paper 11 (PTAB Apr. 13, 2016) (Institution Decision)