DivX, LLC

Patent Trials and Appeals Board

Sep 27, 2021

IPR2020-00647 (P.T.A.B. Sep. 27, 2021)

Trials@uspto.gov Paper 28
571-272-7822 Entered: September 27, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
HULU, LLC and NETFLIX, INC.,
Petitioner,
v.
DIVX, LLC,
Patent Owner.
____________

IPR2020-00647
Patent 9,270,720 B2
____________

Before BART A. GERSTENBLITH, MONICA S. ULLAGADDI, and
IFTIKHAR AHMED, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
Background
Hulu, LLC and Netflix, Inc. (collectively “Petitioner”) filed a Petition
(Paper 3, “Pet.”) requesting institution of inter partes review of claims 1–5
and 12 (“the Challenged Claims”) of U.S. Patent No. 9,270,720 B2
(Ex. 1001, “the ’720 patent”). DivX, LLC (“Patent Owner”) filed a
Preliminary Response (Paper 7, “Prelim. Resp.”). Applying the standard set
forth in 35 U.S.C. § 314(a), we instituted an inter partes review of the
Challenged Claims. Paper 9 (“Inst. Dec.”).
After institution, Patent Owner filed a Patent Owner Response
(Paper 14, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s Response
(Paper 17, “Pet. Reply”), and Patent Owner filed a Sur-reply (Paper 21, “PO
Sur-reply”). An oral hearing was held on June 14, 2021, and a copy of the
transcript was entered in the record. Paper 26 (“Tr.”).1
We have jurisdiction pursuant to 35 U.S.C. § 6. This Decision is a
Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to
the patentability of the claims on which we instituted trial. Petitioner bears
the burden of proving unpatentability of the Challenged Claims, and the
burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To
prevail, Petitioner must prove unpatentability by a preponderance of the
evidence. See 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2019).
Having reviewed the arguments and the supporting evidence, we determine

1 The oral hearings for this proceeding and IPR2020-00648 were held
together because many of the issues presented by the parties overlap.
Paper 22 (Order Granting the Parties’ Requests for Oral Hearing), 1.
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that Petitioner has not shown, by a preponderance of the evidence, that the
Challenged Claims of the ’720 patent are unpatentable.
Related Proceedings
Petitioner and Patent Owner identify the following related matters:
DivX, LLC v. Netflix, Inc., No. 2:19-cv-01602 (C.D. Cal.) and DivX, LLC v.
Hulu, LLC, No. 2:19-cv-01606 (C.D. Cal.). Pet. 77; Paper 5 (Patent
Owner’s Mandatory Notices), 1.
Real Parties in Interest
Petitioner identifies Netflix, Inc. and Hulu, LLC as the real parties in
interest. Pet. 77. Patent Owner identifies DivX, LLC and DivX CF
Investors LLC as the real parties in interest. Paper 5, 1.
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The Instituted Grounds of Unpatentability and Declaration
Evidence
Petitioner challenges the patentability of claims 1–5 and 12 of the
’720 patent on the following grounds:
Claim(s) Challenged 35 U.S.C. §2 Reference(s)/Basis
1–5, 12 103(a) Pyle,3 Marusi4
1–5, 12 103(a) Lewis,5 Marusi
Pet. 7. Petitioner supports its challenge with a Declaration by Clifford
Reader, Ph.D. (Ex. 1003). Patent Owner supports its arguments with a
Declaration by Kenneth A. Zeger, Ph.D. (Ex. 2010).
The ’720 Patent
The ’720 patent is directed to “streaming media and more specifically
to the automatic generation of top level index files for use in adaptive bitrate
streaming.” Ex. 1001, 1:17–19. In its Background section, the ’720 patent
explains that “[a]daptive bit rate streaming or adaptive streaming involves
detecting the present streaming conditions (e.g. the playback device’s
networking bandwidth and video decoding capacity) in real time and

2 The Leahy-Smith America Invents Act (“AIA”) included revisions to
35 U.S.C. § 103 that became effective on March 16, 2013. Because the
’720 patent has an effective filing date before March 16, 2013, we apply the
pre-AIA version of § 103.
3 U.S. Patent No. 8,782,268 B2 (Ex. 1004, “Pyle”). Pyle was filed
November 3, 2010, published January 26, 2012, and claims priority to a
provisional patent application that was filed July 20, 2010. Ex. 1004,
codes (22), (60), (65).
4 European Patent Application EP 2180664 A1, published April 28, 2010
(Ex. 1005, “Marusi”).
5 U.S. Patent Application Publication No. US 2012/0047542 A1, published
February 23, 2012 (Ex. 1006, “Lewis”).
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adjusting the quality of the streamed media accordingly.” Id. at 1:30–34.
Further, “[i]n adaptive streaming systems, the source media is typically
stored on a media server as a top level index file pointing to a number of
alternate streams that contain the actual video and audio data. Each stream
is typically stored in one or more container files.” Id. at 1:57–61. The
’720 patent describes a top level index as follows:
A top level index is a file that describes the location and content
of container files containing streams of media (e.g. audio,
video, metadata, and sub-titles) that can be utilized by the
playback device to stream and playback content. In adaptive
bitrate streaming systems, the top level index file typically
references the alternative streams that the playback device can
switch between.
Id. at 6:39–45.
Figure 1 of the ’720 patent is reproduced below:

Figure 1 “is a network diagram of a streaming system including a playback
server.” Ex. 1001, 6:3–5. The ’720 patent explains:
streaming system 10 includes a number of playback devices 12
configured to request streaming of content from remote servers
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within content delivery networks (CDNs) 14 via a network 16
such as the Internet. In order to stream content, the playback
device obtains a top level index file that is automatically
generated by the playback server 18 using a database 20 of
available assets (i.e. container files containing streams of
content associated with specific titles) and a set of
predetermined filters or criteria.
To perform adaptive bitrate streaming, the playback
devices 12 select content from different alternative streams
described in the top level index file. Alternative streams are
streams that encode the same media content in different ways.
In many instances, alternative streams encode media content
(such as but not limited to video) at different maximum bitrates.
Id. at 7:20–35.
Figure 4 of the ’720 patent is reproduced below:

Figure 4 “is a flow chart illustrating a process for automatically generating a
top level index file.” Ex. 1001, 6:12–14. The ’720 patent explains that the
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process shown in Figure 4 “commences when the playback server
receives (72) a request for a top level index file with respect to a specific
piece of content from a specific playback device.” Id. at 11:43–46. The
“capabilities of the playback device” may be “identified using a product ID,
which is associated with specific playback capabilities in a database
accessible to the playback server.” Id. at 11:52–55.
The ’720 patent describes the remaining steps of the process as
follows:
The playback server retrieves (74) assets associated with
the requested piece of content. The playback server filters (76)
the assets based upon one or more filters associated with the
capabilities of the playback device, the preferences of the user,
and the requirements of the content owner. Accordingly,
different top level index files can be generated with respect to
the same content dependent on factors including (but not
limited to) differences in playback capabilities between devices,
differences in geographic location, and/or differences in
language preferences associated with the playback devices.
Processes for retrieving and filtering assets associated with a
specific piece of content in accordance with an embodiment of
the invention are discussed further below. Following filtering,
the remaining assets can be utilized to generate (78) the top
level index file, which can be provided (80) to the playback
device.
Ex. 1001, 11:56–12:4. The ’720 patent states that “[i]n a number of
embodiments, playback devices 12 provide information concerning their
playback capabilities to the playback server 18 and the server automatically
generates top level index files by filtering assets associated with a purchased
piece of content based upon device capabilities.” Id. at 7:55–59.
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Illustrative Claim
Claim 1, the sole independent claim challenged in this proceeding, is
illustrative of the claimed subject matter and is reproduced below, with
Petitioner’s bracketing added for reference:
1. [a] A method of generating a top level index file,
comprising:
[b] receiving a request from a playback device at a
playback server system, where the request (i) identifies a piece
of content and (ii) includes a product identifier;
[c] retrieving, using the playback server system, (i) a list
of assets associated with the identified piece of content and
(ii) at least one device capability based upon the product
identifier, wherein each asset is a different stream associated
with the piece of content;
[d] filtering the list of assets using the at least one device
capability using the playback server system, wherein the
playback server system maintains a database of product
identifiers and associated device capabilities;
[e] generating a top level index file describing each asset
in the filtered list of assets using the playback server system;
and
[f] sending the top level index file to the playback device
using the playback server system, wherein the top level index
file is used by the playback device to determine which assets to
request for playback on the device.
Ex. 1001, 20:15–35.
Level of Ordinary Skill in the Art
Petitioner, supported by Dr. Reader’s testimony, proposes that a
person of ordinary skill in the art at the time of the invention would have had
“a bachelor’s degree in mechanical engineering, electrical engineering,
computer science, or a similar field with at least two years of experience in
adaptive streaming and content management” or “a master’s degree in
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mechanical engineering, electrical engineering, computer science, or a
similar field with a specialization in adaptive streaming or content
management.” Pet. 18 (citing Ex. 1003 ¶ 72). Petitioner contends that “[a]
person with less education but more relevant practical experience may also
meet this standard.” Id.
Additionally, Petitioner asserts that one of ordinary skill in the art
would have known and had the skills necessary to create
architectures necessary for adaptive streaming and content
management, including cataloging content, storing data in
streaming container files and using manifest or index files to
distribute streaming content to client devices. It was
well-known to select amongst different encodings of content to
optimize the delivery of content based upon various parameters,
including device capabilities, network conditions, geographic
location and content ratings. A [person of ordinary skill in the
art] would also have been aware of standards, such as the 3GPP
specification, that utilized manifests, such as the Media
Presentation Description (MPD) manifest for adaptive
streaming applications. A [person of ordinary skill in the art]
would also have been familiar with techniques for adaptive
streaming, including switching between different portions of a
movie or show depending upon various factors, including
network conditions.
Pet. 18–19 (citing Ex. 1003 ¶ 72).
Patent Owner does not address, expressly, the level of ordinary skill in
the art in its Response. See generally PO Resp. Patent Owner’s declarant,
Dr. Zeger, however, adopts the same level of ordinary skill in the art
proposed by Dr. Reader. See Ex. 2010 ¶ 18 (“For purposes of this
proceeding, I will adopt Dr. Reader’s definition of the level of ordinary skill
in the art . . . .” (citing Ex. 1003 ¶ 71)).
In our Institution Decision, we found that Petitioner’s proposal was
consistent with the level of ordinary skill in the art reflected by the prior art
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of record and we preliminarily adopted Petitioner’s unopposed position.
Inst. Dec. 8–9 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
579 F.2d 86, 91 (CCPA 1978)). As neither party challenges our preliminary
finding regarding the level of ordinary skill in the art, we see no reason to
disturb that finding. Accordingly, we maintain and reaffirm that one of
ordinary skill in the art at the time of the invention would have had “a
bachelor’s degree in mechanical engineering, electrical engineering,
computer science, or a similar field with at least two years of experience in
adaptive streaming and content management” or “a master’s degree in
mechanical engineering, electrical engineering, computer science, or a
similar field with a specialization in adaptive streaming or content
management” and that “[a] person with less education but more relevant
practical experience may also meet this standard.” See Inst. Dec. 7–9
(setting forth and adopting Petitioner’s unopposed position as to the level of
ordinary skill in the art) (alteration in original).
II. CLAIM CONSTRUCTION
In this inter partes review, claims are construed using the same claim
construction standard that would be used to construe the claims in a civil
action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2019). The
claim construction standard includes construing claims in accordance with
the ordinary and customary meaning of such claims as understood by one of
ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH
Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing
claims in accordance with their ordinary and customary meaning, we take
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into account the specification and prosecution history. Phillips, 415 F.3d at
1315–17.
If the specification “reveal[s] a special definition given to a claim
term by the patentee that differs from the meaning it would otherwise
possess[,] . . . the inventor’s lexicography governs.” Phillips, 415 F.3d at
1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
(Fed. Cir. 2002)). Another exception to the general rule that claims are
given their ordinary and customary meaning is “when the patentee disavows
the full scope of a claim term either in the specification or during
prosecution.” Uship Intellectual Props., LLC v. United States, 714 F.3d
1311, 1313 (Fed. Cir. 2013) (quoting Thorner v. Sony Computer Entm’t Am.,
LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)).
Additionally, only terms that are in controversy need to be construed,
and these need be construed 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) (holding that “only those terms need be construed that
are in controversy, and only to the extent necessary to resolve the
controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of
an inter partes review).
“top level index file”
Petitioner proposes only a single claim term6—“top level index
file”—for construction. Pet. 19–20. Patent Owner’s Preliminary Response

6 In its Reply, Petitioner asserts that “Dr. Zeger admitted that the plain
meaning of ‘retrieve’ is to ‘locate and read from storage,’ (Ex. 1010, 124:7–
11) and that ‘maintaining’ in the context of a database suggests retrieving,
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did not contest Petitioner’s proposed construction. Inst. Dec. 10 (citing
Prelim. Resp.). In our Institution Decision, we construed “top level index
file” as “a file that describes the location and content of container files
containing streams of media (e.g. audio, video, metadata, and subtitles) that
can be utilized by the playback device to stream and playback content.” Id.
at 11.
Neither party contests our construction in the briefing following
institution. See generally PO Resp.; Pet. Reply; PO Sur-reply. Accordingly,
for the same reasons explained in our Institution Decision (Inst. Dec. 10–
11), we maintain and reaffirm our preliminary construction of “top level
index file.”
“a list of assets”; “the list of assets”; “the filtered list of
assets”
Limitation 1[c] recites, inter alia, “retrieving . . . (i) a list of assets
associated with the identified piece of content”; limitation 1[d] recites, inter
alia, “filtering the list of assets”; and limitation 1[e] recites, inter alia,
“generating a top level index file describing each asset in the filtered list of
assets.” Ex. 1001, 20:20–30 (emphasis added). Although neither party
initially requested that we construe the phrases “a list of assets,” “the list of

filtering, and other similar operations on a database (Ex. 1010, 157:17–
158:17).” Pet. Reply 14. Patent Owner contests Petitioner’s interpretation
of Dr. Zeger’s testimony. PO Sur-reply 12–13. Petitioner did not propose
either “retrieve” or “maintaining” for construction and the Petition does not
apply either alleged construction in its analysis of the grounds asserted
therein. Accordingly, even if we were to find Petitioner’s Reply arguments
on these terms persuasive, the Petition fails to set forth how the meanings
would apply to the specific issues before us. Thus, we decline to construe
these terms.
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assets,” or “the filtered list of assets,” several aspects of the parties’ dispute
involve the meaning of the terms “a” and “the” as recited in these
limitations. Therefore, because the parties’ dispute the meaning of these
terms, we address them here.
Considering the phrase “a list of assets” first, the parties dispute the
meaning of the term “a.” Specifically, Petitioner contends “a” means “one
or more” (see Pet. 31; Pet. Reply 15), whereas Patent Owner contends “a”
means only one (see PO Resp. 13). This dispute is presented in the context
of the parties’ arguments regarding Petitioner’s first ground, based on the
combination of Pyle and Marusi. Specifically, Petitioner contends that
(a) each of Pyle’s manifests includes a list of assets and (b) it would have
been obvious that all of the manifests associated with a piece of content form
a list of assets. Pet. 31 (citing Ex. 1003 ¶ 166).
Patent Owner asserts that “the claims requir[e] ‘retrieving a list of
assets’” and that “[a]s is clear from the plain language of the claims, this
requires a single ‘list of assets.’” PO Resp. 13 (citing Ex. 2010 ¶ 35). Patent
Owner contends that Petitioner’s argument as to why all of the manifests
associated with a piece of content form a list of assets is not supported
sufficiently by Dr. Reader’s testimony. Id. at 13–14. Patent Owner relies
upon Dr. Zeger’s testimony that “[e]ven if Pyle’s single manifest file was a
‘list’ of representations, a [person of ordinary skill in the art] would not
understand Pyle’s multiple manifest files to form a single list.” Id. at 15
(quoting Ex. 2010 ¶ 37).
In its Reply, Petitioner contends that Patent Owner’s attempt to
construe “a list of assets” to mean “a single ‘list of assets’” as opposed to
“one or more list of assets” should be rejected “because it goes against
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decades of precedent finding that ‘a’ means ‘one or more’ except in limited
circumstances that are not present here.” Pet. Reply 15 (citing KCJ Corp. v.
Kinetic Concepts, Inc., 223 F.3d 1351, 1355 (Fed. Cir. 2000)).
In its Sur-reply, Patent Owner asserts that Petitioner’s proposed
construction is untimely because it was not raised in the Petition and that the
plain language of the claim clearly indicates that only a single list is used to
list multiple assets. PO Sur-reply 14–15 (citing, inter alia, Harari v. Lee,
656 F.3d 1331, 1341 (Fed. Cir. 2011); TiVo, Inc. v. Echostar Commc’ns
Corp., 516 F.3d 1290, 1303 (Fed. Cir. 2008); In re Varma, 816 F.3d 1352,
1362 (Fed. Cir. 2016); Ex. 1001, 2:23–34, 3:1–5, 4:21–23, 12:60–67, 17:59–
66).
First, although Petitioner did not propose an explicit construction for
the phrase “a list of assets” in the Petition, it is clear from the arguments and
analysis in the Petition that Petitioner applied the meaning of “one or more”
to the term “a.” As indicated above, Petitioner’s second option as to how
Pyle teaches “a list of assets,” is based on the interpretation that all of the
manifests associated with a piece of content form a list of assets. Pet. 31
(citing Ex. 1003 ¶ 166). In other words, that “a list of assets” can include
one or more lists of assets.
Second, Patent Owner had an opportunity to respond, which it did in
its Response and, even more particularly, in its Sur-reply, as discussed
above. Accordingly, we do not find Petitioner’s argument untimely.
Turning to the meaning the term “a” in the phrase “a list of assets,”
the case law makes clear that “an indefinite article ‘a’ or ‘an’ in patent
parlance carries the meaning of ‘one or more’ in open-ended claims
containing the transitional phrase ‘comprising’” unless an “extremely
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limited” exception applies. See Convolve, Inc. v. Compaq Computer Corp.,
812 F.3d 1313, 1321 (Fed. Cir. 2016) (quoting KCJ Corp., 223 F.3d at 1356;
Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir.
2008)). Here, claim 1 recites the transitional phrase “comprising,” meaning
it is open-ended, and, therefore, the usual meaning of “a” as “one or more”
would have been expected absent an extremely limited exception. In
considering whether an exception applies, our review of the ’720 patent fails
to indicate that the patentee intended the phrase to mean anything other than
the usual meaning of “one or more.” Patent Owner asserts that “‘[t]he plain
language of the claim clearly indicates only a single [list] is used’ to list
multiple assets” and quotes two portions of the Specification, which state “a
list of assets that satisfies criteria” and “a list of assets to which a . . . device
is granted access.” PO Sur-reply 15 (quoting Ex. 1001, 12:60–67) (citing
Ex. 1001, 2:23–34, 3:1–5, 4:21–23, 17:59–66). Although claim 1 of the
’720 patent recites “assets” in the plural, we fail to see how that conveys that
the term “a” would have been understood as limited to “one.” Notably,
neither party has identified any inconsistency, in the claims or other portions
of the Specification (including the portions quoted and/or cited by Patent
Owner), resulting from construing “a” as “one or more.” And, we find that
there is no reason why the claims could not be met under the construction of
“a” as “one or more.” Thus, we find that the ’720 patent does not “evince [ ]
a clear intent to limit a or an to one.” See Convolve, 812 F.3d at 1321
(internal quotations omitted). Accordingly, we construe the term “a” in “a
list of assets” as “one or more” such that the phrase “a list of assets” means
“one or more list of assets.”
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Considering next the phrase “the list of assets” recited in
limitation 1[d], the parties do not dispute that the use of the term “the”
means that “the list of assets” refers back to the one or more list of assets
retrieved in limitation 1[c] and discussed above. See PO Resp. 3–4; see
generally Pet. Reply; PO Sur-reply 5. Similarly, the parties do not dispute
that the phrase “the filtered list of assets,” recited in limitation 1[e], refers
back to the list of assets resulting from the filtering step of limitation 1[d].
See PO Resp. 3–4; see generally Pet. Reply; PO Sur-reply 5. We agree with
the parties that each of these phrases refers back to the previous instance of
the recited terms.
III. ANALYSIS
Legal Standards – Obviousness
The U.S. Supreme Court set forth the framework for applying the
statutory language of 35 U.S.C. § 103 in Graham v. John Deere Co. of
Kansas City, 383 U.S. 1, 17–18 (1966) (footnote added):
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the
obviousness or nonobviousness of the subject matter is
determined. Such secondary considerations as commercial
success, long felt but unsolved needs, failure of others, etc.,
might be utilized to give light to the circumstances surrounding
the origin of the subject matter sought to be patented.7
The Supreme Court explained in KSR International Co. v. Teleflex Inc. that
[o]ften, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to

7 Neither party presents evidence of objective considerations of
nonobviousness.
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the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this
analysis should be made explicit.
550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”)).
“Whether an ordinarily skilled artisan would have been motivated to
modify the teachings of a reference is a question of fact.” WBIP, LLC v.
Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (citations omitted).
“[W]here a party argues a skilled artisan would have been motivated to
combine references, it must show the artisan ‘would have had a reasonable
expectation of success from doing so.’” Arctic Cat Inc. v. Bombardier
Recreational Prods. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (quoting
In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
Litig., 676 F.3d 1063, 1068–69 (Fed. Cir. 2012)).
Obviousness over Pyle and Marusi
Petitioner asserts that the combination of Pyle and Marusi would have
rendered the subject matter of claims 1–5 and 12 obvious to one of ordinary
skill in the art at the time of the invention. Pet. 20–54. Patent Owner raises
several arguments in response, including that the Petition fails to show that
the combination of Pyle and Marusi teaches limitation 1[e]—“generating a
top level index describing each asset in the filtered list of assets using the
playback server system.” PO Resp. 19–28 (emphasis added). As explained
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above, the phrase “the filtered list of assets” in limitation 1[e] indicates that
“the filtered list of assets” is the list that results from the filtering step of
limitation 1[d]. Petitioner’s analysis of limitations 1[d] and 1[e], however,
suffers from a deficiency in that the top level index file generated in
Petitioner’s analysis of limitation 1[e] does not describe each asset in the
filtered list of assets as applied by Petitioner. Because this issue is
dispositive, we focus our analysis and discussion there after describing Pyle
and Marusi.
Level of Ordinary Skill in the Art
As discussed above, we adopt Petitioner’s unopposed position as to
the level of ordinary skill in the art. See supra § I.G.
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Scope and Content of the Prior Art
a. Pyle
Pyle is directed to “dynamic composition of media for streaming to
consuming devices.” Ex. 1004, 1:14–15. Figure 2 of Pyle is reproduced
below:

Figure 2 “illustrates a block diagram of . . . system [200] that can facilitate
hypertext transfer protocol (HTTP) delivery of streaming media.” Id. at
3:21–23, 7:45–47.
Pyle explains:
In general, system 200 can include manifest component 202
that can be configured to maintain multiple manifests 2041-204N
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for a single item of content 206. By way of example,
content 206 can be substantially any type of content, such as a
movie, song, or another media production, that is suitable for
delivery to or presentation at endpoints of a streaming network.
As illustrated, content 206 can be associated with various
representations 2081-208M of that content 206, such as, e.g.,
different representations based upon different bitrates,
resolutions, languages, or even an original theatrical version
versus a PG-13 version, or substantially any other suitable
attribute. Accordingly, it is to be understood that while only a
single item of content 206 (e.g., a single movie or song) is
depicted, other content 206 could exist, and each item of
content 206 can have multiple representations 2081-208M as
well as multiple manifests 2041-204N, where M and N can be
any substantially positive integer. Moreover, it is to be
understood that representations 2081-208M and
manifests 2041-204N can be referred to herein, either
collectively or individually as representation(s) 208 or
manifest(s) 204, respectively, with appropriate subscripts
employed generally only when instructive or convenient to
highlight various distinctions or to better impart the disclosed
concepts.
Ex. 1004, 7:47–8:2.
Pyle states that “[t]ypically, a given manifest 204 will be an extensible
markup language (XML) document that describe[s] at least one location of
one or more content segment associated with one or more representation 208
of content 206.” Ex. 1004, 8:3–6. Additionally, Pyle explains that
“manifest 204 can further include other data such as attributes associated
with content 206 or various representations 208 thereof.” Id. at 8:6–9. Pyle
distinguishes itself from “conventional streaming systems” that “maintain
only a single manifest, that typically only describes locations of stored files.”
Id. at 8:9–12. “As a result, conventional streaming systems are subject to
the combinatorial complexity problem, and moreover do not provide for
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individual track addressability, are generally more limited by the file system
format, as well as a host of other shortcomings.” Id. at 8:12–16.
Additionally, Pyle explains that “manifest 204 can describe the locations of
various content segments, which can appear to a presentation device as a
large set of small-interval content files, say 5 seconds or so. Nevertheless,
the actual storage of content 206 can be in much larger files that are
cross-indexed into chunks . . . .” Id. at 8:17–23.
Pyle further describes composition component 210, a component of
system 200, explaining that “[c]omposition component 210 can be
configured to organize the multiple manifests 204 in accordance with
descriptions of the multiple manifests 204. For example, the multiple
manifests 204 can be described based upon a set of attributes associated with
one or more representation 208 and/or content 206.” Ex. 1004, 8:28–35.
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Pyle’s Figure 4 is reproduced below:

Figure 4 is a “block diagram of . . . [a] system that illustrates additional
features or aspect[s] in connection with HTTP delivery of streaming
content.” Ex. 1004, 3:26–28; see id. at 9:45–47 (same). Pyle explains that
system 400 can include “track set component 402 that can be configured to
identify track sets 404 available as alternative representations 208 of
content 206 or content segments thereof.” Id. at 9:54–57. Pyle teaches that
a particular track set 404 “can relate to a single content type such as, e.g.,
audio, video, subtitles or other text, or an enhanced layer of video or audio.”
Id. at 9:59–61.
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Pyle further describes that composition component 210, in
system 400, can be “configured to select a particular selected manifest 418
from the set of available manifests 204 based upon data included in a
request 420 for content 206.” Ex. 1004, 10:23–25. Pyle distinguishes a
request from an HD television from a request from a smart phone,
explaining that “[a]lthough both requesting devices can request the very
same movie (e.g., same content 206), it is readily apparent that these two
distinct devices and/or configurations or preferences, will not demand the
same representation 208 of that movie.” Id. at 10:40–44. Because
“manifests 204 can be optimized to comport with different classes of media
consumers,” Pyle teaches that “selected manifest 418 will also differ in the
example scenario above when the HD television is the requesting device
than when the smart phone is the requesting device.” Id. at 10:48–53. Pyle
explains that “composition component 210 can examine data included in
request 420 and determine a suitable or optimal manifest, and select and
transmit that manifest to the requesting device.” Id. at 10:53–56.
Additionally, Pyle explains the following regarding composition
component 210:
Moreover, in one or more embodiment, composition
component 210 can be further configured to facilitate
composition of new manifest 422, which can be stored amongst
other manifests 204. Such new manifests 422 can be
composed, e.g., based upon a set of attributes that correspond to
features of one or more track sets identified by track set
component 402. For example, a content provider can compose
new manifest 422 specifically tailored to, e.g., track sets that
receive the most requests, deliveries, and/or presentations.
Furthermore, new manifest 422 can be optimized in connection
with delivery or presentation based upon at least one of (1) a
particular device or particular devices or capabilities thereof
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(e.g., optimized for presentation on tablets versus televisions
versus handhelds and so forth); (2) a particular form factor
(e.g., display size or other user interface or I/O features); (3) a
particular network or network conditions (e.g., bandwidth,
latency, quality of service, etc.); or (4) a particular setting or
preference or a particular set of settings or preferences (e.g.,
French-speaking, hearing impaired, ratings-based content
block . . .).
Ex. 1004, 10:57–11:9.
b. Marusi
Marusi is directed to “a system for providing multi-media content and
in particular to a system for accessing multi-media content, wherein the
system is accessible by a mobile terminal through a radio network and
provides a subset of the multi-media content which has a digital format
supported by the mobile terminal.” Ex. 1005 ¶ 1. Figure 1 of Marusi is
reproduced below:

Figure 1 shows “a simplified schematic diagram of the system.” Id. ¶ 60.
Marusi explains that “portal 100 comprises receiving and transmitting
means 170 via which a mobile terminal 110, such as a cellular phone . . .
etc., can access via a radio network 120 to the portal 100.” Id. ¶ 83. Marusi
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teaches that “mobile terminal characterizing unit 140 preferably provides
mobile terminal capabilities information which indicates at least one
capability of the mobile terminal 110.” Id. ¶ 85. “Preferably, the
information received from the mobile terminal 110 when connecting to
system 100 comprises data by which the model and/or type of the mobile
terminal can be identified.” Id.
Marusi explains that “mobile terminal 110 may be provided with an
identifier, which may be different for each communication standard so that
each identifier corresponds with a different communication standard.”
Ex. 1005 ¶ 86. The identifier “may be sent from the mobile terminal 110 to
the portal 100 when setting up a connection or/and during the connection
with the portal 100.” Id. ¶ 88. Marusi teaches that “mobile terminal
characterizing unit 140 is additionally connected to database 160 which
provides information regarding the capabilities of mobile terminals
according to their type and/or model.” Id. ¶ 89. “[M]obile terminal
characterizing unit 140 can retrieve information from database 160 about the
capabilities of the mobile terminal 110 based on the identifier or
identification code received from the mobile terminal 110.” Id.
Additionally, Marusi teaches that “mobile terminal characterizing
unit 140 is functionally connected to matching unit 150.” Ex. 1005 ¶ 90.
Matching unit 150 can identify a subset of the multi-media content files
having at least one specific digital format, wherein that specific digital
format is supported by the capability of the mobile terminal. Id. Marusi
explains the following regarding matching unit 150:
In order to identify the subset of multi-media content
files, the matching unit 150 is connected to storage means 130
which is preferably also a database. In this database, the multi-
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media content files are stored, preferably together with
information about the digital format of each of the multi-media
content files. This information can be retrieved by the
matching unit 150 from storage means 130. The information
from the storage means 130 regarding the digital format of the
multi-media content files can be matched with the information
regarding the capabilities of the mobile terminal 110. Thus, the
matching unit 150 can identify a subset of the multi-media
content file which is compatible with the capabilities of the
mobile terminal 110 and which also corresponds to the request
of the mobile terminal 110 for specific multi-media content.
Id. ¶ 91.
Differences Between the Prior Art and the Claims;
Motivation to Modify
a. The Proposed Combination
Petitioner’s discussion of this ground begins by addressing the general
combination of Pyle and Marusi and motivation to combine their teachings
before discussing the specific limitations of the claims. See Pet. 20–22
(addressing, in general, the combination of Pyle and Marusi). Specifically,
Petitioner asserts that it would have been obvious to one of ordinary skill in
the art to combine “Pyle’s server system for dynamically composing
manifest files with Marusi’s teachings for storing multimedia content in a
database, and Marusi’s teachings of using a database to correlate device
capabilities with device identification information.” Id. at 20 (citing
Ex. 1003 ¶ 144).
Petitioner asserts that “Pyle teaches common multimedia streaming
techniques that were widely known in the art, in particular using and
creating manifest files that would provide a client device with the location
and identification of different versions of a particular piece of stored
content.” Pet. 20. Petitioner contends that “Pyle teaches a server system
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that filters asset data in order to provide a manifest file specific to a client
device by using a variety of parameters, including based upon product type,
form factor, network conditions, and language, to select specific assets to
include in the manifest file.” Id. (citing Ex. 1003 ¶ 145). Petitioner asserts
that
[b]ecause storing and tracking different representations
of the same multimedia content using lists or a database was
well-known, Pyle assumes that a [person of ordinary skill in the
art] has such knowledge and does not explicitly describe these
basic implementation details. For examples, Marusi describes
such techniques. Marusi teaches storing a plurality of
representations of multimedia content in a database along with
a description of each representation’s format. Ex. 1005, [0091].
Marusi also teaches identifying the capabilities of the
requesting client device using the device’s identification
information, looking up the device’s capabilities in a database
that correlates device capabilities with the identifying
information (such as a model number). Id., [0085-0089].
Marusi then teaches using the capability information to identify
a subset of the multimedia content that is appropriate for the
requesting client device. Id., [0091]. Ex. 1003 ¶146.
Pet. 21.
Petitioner argues that one of ordinary skill in the art would have been
motivated to combine these teachings for several reasons. Pet. 21. First,
Petitioner contends “the combination is the use of a known technique to
improve similar devices because using the capabilities of a client device to
choose appropriately formatted content was a well-known technique.” Id.
Petitioner asserts that “implementing Marusi’s techniques for organizing
multiple representations and choosing among them based upon a client
device’s capabilities would predictably function in Pyle’s system, which
similarly seeks to target video content based on particular client device types
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and parameters.” Id. at 21–22 (citing Ex. 1004, 10:57–11:10; Ex. 1003
¶ 147).
Second, Petitioner argues that “detecting a client device’s capabilities
based upon client device identifiers was a common and known solution to
the problem of supplying information in a format usable to the client
device.” Pet. 22. Petitioner contends that one of ordinary skill in the art
“would have found it obvious to combine Marusi’s teachings with Pyle
because it is one solution, from a finite number of known, and predictable
solutions.” Id. Petitioner asserts that one of ordinary skill “would have a
reasonable expectation of success because detecting device capabilities
based upon client device identifiers was known for years in the computing
field, and as such is a predictable solution.” Id. (citing Ex. 1003 ¶ 148).
Third, with respect to Marusi’s databases, Petitioner contends “[t]he
combination of Marusi’s databases to manage the data created by Pyle’s
system is nothing more than the use of a known technique to improve similar
systems.” Pet. 22. In particular, Petitioner asserts that one of ordinary skill
“would have been motivated to combine Marusi’s database teachings with
Pyle because Pyle teaches storing the same content in multiple, different
representations.” Id. (citing Ex. 1004, 9:64–10:21). Further, Petitioner
argues that “[u]sing a database to store and manage multiple representations
of the same data, or even to simply store voluminous data for retrieval, was
an extremely well-known and common application of database technology.”
Id. (citing Ex. 1003 ¶ 149).
Additionally, Dr. Reader opines that one of ordinary skill in the art
“would have understood that the teachings of Pyle and Marusi were
complementary, and therefore would have been motivated to combine Pyle
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with Marusi to enhance the efficiency of generating, storing, and delivering
multimedia content tailored to the capabilities of particular playback
devices.” Ex. 1003 ¶ 150.
In addition to Petitioner’s general discussion of the combined
teachings, reproduced above, Petitioner’s discussion of each claim or claim
limitation begins with a sentence that, in most instances, reflects whether
Petitioner relies on Pyle, Marusi, or their combined teachings with respect to
each claim or limitation. See Pet. 23–54. For example, for limitation 1[a]
(which includes the preamble of the claim), Petitioner states, “[t]o the extent
[Patent Owner] argues that the preamble is limiting, this limitation is taught
by Pyle’s teaching of a system for adaptive bitrate streaming that generates
manifest files.” Id. at 23 (emphasis added). For limitation 1[b], Petitioner
states, “[t]he combination of Pyle and Marusi renders this limitation obvious
based on Pyle’s teachings.” Id. at 24 (emphasis added) (citing Ex. 1003
¶ 156). For limitations 1[c] and 1[d], Petitioner states, “[t]he combination of
Pyle and Marusi renders this limitation obvious.” See id. at 30 (emphasis
added) (limitation 1[c]), 37 (emphasis added) (limitation 1[d]). And, for
limitations 1[e] and 1[f], Petitioner states, “[t]his claim limitation is
rendered obvious by Pyle.” See id. at 42 (emphasis added) (limitation 1[e]),
44 (emphasis added) (limitation 1[f]). Each of the above sentences is
followed by a discussion of the specific teachings of each reference, or
modifications thereof, that are relied upon for each claim or claim limitation.
With this understanding, we turn our attention to Petitioner’s analysis of the
specific claim limitations.
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b. Claim 1 – Discussion
Limitation 1[c] recites, inter alia, “retrieving . . . (i) a list of assets
associated with the identified piece of content.” Ex. 1001, 20:20–21.
Petitioner presents two theories as to how Pyle teaches or renders obvious “a
list of assets”—(1) each manifest file “includes a list of assets for that piece
of content” and (2) “that all of the manifests associated with an identified
piece of content form a list of assets associated with the identified piece of
content.” Pet. 31.
Limitation 1[d] recites “filtering the list of assets using the at least one
device capability using the playback server system, wherein the playback
server system maintains a database of product identifiers and associated
device capabilities.” Ex. 1001, 20:25–29. Petitioner points to two aspects of
Pyle in relationship to limitation 1[d]. First, Petitioner contends Pyle
“teaches the use of new manifest files that can be created based upon
particular device(s) or capabilities,” and points to Pyle’s disclosure that
“[n]ew manifest 422 can be optimized in connection with delivery or
presentation based upon at least one of (1) a particular device or particular
devices or capabilities thereof (e.g., optimized for presentation on tablets
versus televisions versus handhelds and so forth) . . . .” Id. at 38 (quoting
Ex. 1004, 10:57–11:9) (citing Ex. 1003 ¶ 177).
Second, Petitioner asserts that Pyle keeps “sets of different manifests
files where each manifest file corresponds to a different representation of a
given piece of content.” Pet. 38. Petitioner contends that one of ordinary
skill in the art
would have understood that each of these manifest files is a list
of assets, that set of manifest files associated with a piece of
content also forms a list of assets associated with the given
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piece of content, and Pyle further explains that the composition
component 210 analyzes the playback device request and filters
lists of assets by selecting from the various manifests an
appropriate manifest to send to the requesting device based
upon the capability or characteristic information of the
requesting device.
Id. at 38–39 (emphasis added). Petitioner points to Pyle’s disclosure that
two distinct devices will usually request a different representation of the
same content and that “composition component 210 can examine data
included in request 420 and determine a suitable or optimal manifest, and
select and transmit that manifest to the requesting device.” Id. at 39 (quoting
Ex. 1004, 10:40–56) (citing Ex. 1003 ¶ 178) (emphasis omitted).
Additionally, Petitioner contends Pyle “teaches the structure of the
manifest files (that support filtering of content based on a variety of
criteria)” and that one of ordinary skill in the art “would have found it
obvious looking at the teachings of Pyle that the product identifiers and
associated device capabilities be maintained by the server, such as in a
database.” Pet. 39. Petitioner points to Pyle’s teaching that:
Typically, a given manifest 204 will be an extensible markup
language (XML) document that describe[s] at least one location
of one or more content segment associated with one or more
representation 208 of content 206 . . . . Furthermore, by
employing multiple manifests 204, individual manifests 204
can be optimized for particular delivery formats, wire formats,
endpoint profiles or configurations, client preferences, and so
forth, which are further discussed herein.
Id. at 39–40 (quoting Ex. 1004, 8:3–27) (citing Ex. 1003 ¶ 179).
Alternatively, Petitioner contends “[t]o the extent [Patent Owner]
argues that Pyle does not satisfy this limitation, it would have been obvious
to combine the teachings of Pyle with Marusi.” Pet. 40. Petitioner explains
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that Marusi “filters from a database that associates terminal identification
information with terminal capabilities information, i.e., a database of product
identifiers and associated device capabilities that is used to select the
appropriate stream to transmit.” Id. at 40–41 (citing Ex. 1005 ¶¶ 18, 22, 84–
85, 89–90, 113–114, 119–121, 123). Petitioner asserts that one of ordinary
skill in the art “would have been motivated to employ a known component
(Marusi’s database of identifiers and associated assets) in a predictable way
(for Pyle to filter the assets to obtain a subset in a format compatible with the
requesting device).” Id. at 41 (citing Ex. 1003 ¶ 181).
Limitation 1[e] recites “generating a top level index file describing
each asset in the filtered list of assets using the playback server system.”
Ex. 1001, 20:29–31. Petitioner contends that one of ordinary skill in the art
would have found it obvious to generate a top level index file
(e.g. manifest file), describing each asset in the filter [sic] list of
assets because . . . Pyle teaches both creating new manifest
files, as well as the use of a manifest component 202 that
includes a set of manifest files, each of which describes the
assets that are “selected” or “tailored to”, (filtered) for, specific
requesting playback devices.
Pet. 42–43 (citing Ex. 1004, 9:45–53, Fig. 4; Ex. 1003 ¶ 183).
Petitioner asserts that Pyle teaches “generating manifest files that are
optimized based upon various parameters and characteristics, including
different classes of devices such as televisions and smart phones, and using
the composition component 210 to create new manifests.” Id. at 43 (citing
Ex. 1004, 9:54–11:10; Ex. 1003 ¶ 184). Petitioner contends that one of
ordinary skill in the art “reading these portions of Pyle would understand
that Pyle is teaching the generating of new manifest files by filtering the
available list of assets to include only a subset of assets based upon the
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product identifier information, including for example the capabilities of the
device.” Id. at 44 (citing Ex. 1003 ¶ 185).
Patent Owner raises several arguments in response to Petitioner’s
challenge based on Pyle and Marusi, including that Petitioner fails to
connect limitations 1[d] and 1[e] such that the assets resulting from the
filtering step of limitation 1[d] are described in the top level index file
generated in limitation 1[e]. See PO Resp. 19–28. We address Patent
Owner’s argument in the context of discussing Petitioner’s analysis.
First, in addressing limitation 1[d] as discussed above, Petitioner
states that Pyle teaches “a new manifest file can be created based upon
particular device(s) or capabilities.” Pet. 38. Petitioner points to Pyle’s
teaching that “new manifest 422 can be optimized in connection with
delivery or presentation.” Id. (citing Ex. 1004, 10:57–11:9; Ex. 1003 ¶ 177).
In this single-paragraph discussion, Petitioner does not (a) expressly assert
that Pyle’s creation of a new manifest involves “filtering” or (b) explain
how Pyle’s new optimized manifest teaches filtering. See id. Rather, it is
not until Petitioner points to a different aspect of Pyle—Pyle’s selection of a
manifest—that Petitioner asserts Pyle teaches filtering. Id. (“A [person of
ordinary skill in the art] would have understood that each of these manifest
files is a list of assets, that [a] set of manifest files associated with a piece of
content associated with a piece of content also forms a list of assets
associated with the given piece of content, and Pyle further explains that the
composition component 210 analyzes the playback device request and filters
lists of assets by selecting from the various manifests an appropriate
manifest to send to the requesting device based upon the capability or
characteristic information of the requesting device . . . .” (emphasis added)).
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Second, Petitioner proposes an alternative theory that it would have
been obvious to combine the teachings of Pyle and Marusi to meet
limitation 1[d]. Pet. 40–41. This theory, although mentioning that Marusi
filters from a database (id. at 40 (citing Ex. 1005 ¶¶ 18, 22, 84, 85)),8
ultimately maintains reliance upon Pyle for filtering. Id. at 41 (“A [person
of ordinary skill in the art] would have been motivated to employ a known
component (Marusi’s database of identifiers and associated assets) in a
predictable way (for Pyle to filter the assets to obtain a subset in a format
compatible with the requesting device).” (emphasis added)). Thus, despite
proposing an alternative theory for this limitation based on the combination
of Pyle and Marusi, Petitioner maintains the assertion that Pyle teaches
filtering and the only teaching from Pyle clearly mapped by Petitioner to
filtering is Pyle’s selection of a manifest from existing manifests.
Third, turning to limitation 1[e], Petitioner asserts that this limitation
“is rendered obvious by Pyle.” Pet. 42 (citing Ex. 1003 ¶ 182). Petitioner
contends limitation 1[e] would have been obvious because “Pyle teaches
both creating new manifest files, as well as the use of a manifest
component 202 that includes a set of manifest files, each of which describes
the assets that are ‘selected’ or ‘tailored to’, (filtered) for, specific requesting
(playback) devices.” Id. (citing Ex. 1004, 9:45–53, Fig. 4). Petitioner then
points specifically to Pyle’s teaching of creating new, optimized,
manifest 422. Id. at 43 (citing Ex. 1004, 9:54–11:10; Ex. 1003 ¶ 184).
Petitioner follows by asserting that a person of ordinary skill in the art

8 Petitioner’s citations to, and quotations of, Marusi relate to “a database that
associates terminal identification information with terminal capabilities
information.” Pet. 40.
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“would understand that Pyle is teaching the generating of new manifest files
by filtering the available list of assets to include only a subset of assets based
upon the product identifier information, including for example the
capabilities of the device.” Id. at 44 (emphasis added) (citing Ex. 1003
¶ 185).
In this discussion of limitation 1[e], the only teaching of Pyle that
directly supports Petitioner’s argument that Pyle generates a top level index
file is Pyle’s teaching of creating new manifest 422. Petitioner has not
provided any explanation as to why one of ordinary skill in the art would
have understood Pyle’s selection of an existing manifest to teach or suggest
the generation of a manifest (i.e., a top level index file) or provided any
specific reason as to why the selection of an existing manifest would have
rendered the generation of a manifest obvious to one of ordinary skill in the
art.
As the above discussion reflects, Petitioner relies upon the selection of
a manifest from amongst all manifests associated with particular content to
meet the filtering aspect of limitation 1[d], which is based on Petitioner’s
theory that all manifests teach or render obvious a list of assets. But,
Petitioner relies on the creation of a new manifest for the generating
requirement of limitation 1[e]. This dichotomy creates a deficiency in
Petitioner’s analysis of the claim because the new manifest that is generated
would not describe each asset in the filtered list of assets as required by
limitation 1[e]. Thus, even if we were to accept Petitioner’s analysis of
limitation 1[d], Petitioner has not explained how the new manifest generated
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describes each asset in the selected manifest (i.e., the filtered list of assets),
and, hence, does not satisfy limitation 1[e].9
c. Dependent Claims 2–5 and 12
Petitioner contends that the combination of Pyle and Marusi would
have rendered the subject matter of claims 2–5 and 12 obvious to one of
ordinary skill in the art. Pet. 45–54. Claims 2–5 and 12 depend from
claim 1 and, therefore, include limitations 1[d] and 1[e] as discussed above.
Accordingly, for the same reasons discussed with respect to claim 1,
Petitioner’s analysis of these claims suffers from the same deficiency.
d. Weighing the Graham Factors
“Once all relevant facts are found, the ultimate legal determination [of
obviousness] involves the weighing of the fact findings to conclude whether
the claimed combination would have been obvious to an ordinary artisan.”
Arctic Cat, 876 F.3d at 1361. On balance, considering the record before us,
Petitioner has not shown, by a preponderance of the evidence, that the
combined teachings of Pyle and Marusi would have rendered the subject
matter of claims 1–5 and 12 obvious to one of ordinary skill in the art at the
time of the invention.

9 Petitioner’s Reply sets forth several arguments in response to arguments
raised in Patent Owner’s Response. Perhaps Petitioner’s most significant
argument is that Patent Owner does not address the combination as a whole.
See Pet. Reply 11–14 (arguing that Patent Owner attacks the references
individually). In our discussion above, we walk through, in detail, how
Petitioner addresses the specific limitations of claim 1. The other arguments
raised by Petitioner in the Reply do not appear to address directly the
deficiency, noted by Patent Owner (PO Resp. 19–28; see Tr. 86:15–87:13
(addressing the deficiency we discuss above), that forms the basis for our
discussion and findings above.
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Obviousness over Lewis and Marusi
Petitioner contends that the combined teachings of Lewis and Marusi
would have rendered the subject matter of claims 1–5 and 12 obvious to one
of ordinary skill in the art at the time of the invention. Pet. 54–76. Patent
Owner raises several arguments in response, including that Petitioner asserts
limitation 1[c] would have been obvious without providing a reason why one
of ordinary skill in the art would have modified Lewis to meet the language
of the claims. PO Resp. 34–36. For the reasons explained below, we agree
with Patent Owner. Further, because this issue is dispositive, we focus our
analysis there after discussing Lewis.
Level of Ordinary Skill in the Art
As discussed above, we adopt Petitioner’s unopposed position as to
the level of ordinary skill in the art. See supra § I.G.
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Scope and Content of the Prior Art
a. Lewis
Lewis is directed to “media playback using dynamic manifest files.”
Ex. 1006 ¶ 2. Figure 3 is reproduced below:

Figure 3 shows “a diagram of a system for using rule-based dynamic server-
side streaming manifest files to implement stream targeting for client
devices.” Id. ¶ 12; see also id. ¶ 25. Lewis explains that the system shown
in Figure 3 includes “rule resolution server 320, stored video segments 375,
dynamic manifest file server 310, processed video segments 315a through
315c, content delivery network 335, network 330, client devices 350a
through 350c, and displays 360a through 360c.” Id. ¶ 25. Lewis teaches
that “[d]ynamic manifest file server 310 includes processor 311 and manifest
files 357a through 357c.” Id.
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Lewis explains:
dynamic manifest file server 310 provides manifest files for a
diverse range of client device platforms, including Flash Player
plugin 356a at client device 350a, HTTP Live Streaming
client 356b at client device 350b, and native binary
application 356c at client device 356c. Platform rule set 322a
may include various rules as how to customize video content
based on the target device platform to be supported.
Additionally, displays 360a, 360b, and 360c each utilize
different screen resolutions to display video content, and
resolution rule set 322b may include various rules as how to
resize video content based on the target display resolution.
Ex. 1006 ¶ 26. Lewis teaches that for each of client devices 350a through
350c, platform rule set 322a may dictate that, if a request originates from a
particular client device, dynamic manifest file server 310 should preferably
generate a particular manifest file, 357a through 357c. See id. ¶¶ 27–29
(describing three exemplary client devices and the manifest file generated
for each). Lewis explains that each manifest file references processed video
segments 315a, 315b, or 315c. Id. Lewis states that “rule resolution
server 320 may also implement a wide variety of other rules to enhance,
target, and customize the video streaming experience for the end user,”
including a rule that may “rewrite the URLs within a manifest file to point to
the content delivery network in closest proximity to the client device,
providing improved network performance and responsiveness.” Id. ¶ 32.
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Figure 4 of Lewis is reproduced below:

Figure 4 “shows a flowchart describing the steps . . . by which rule-based
dynamic server-side streaming manifest files may be provided.” Ex. 1006
¶ 13; see also id. ¶ 35 (same). Lewis teaches that “step 410 . . . comprises
processor 111 of dynamic manifest file server 110 receiving, from media
player application 156 executing on processor 151 of client device 150, a
request to provide a first video content for playback.” Id. ¶ 36. Step 420
“comprises processor 111 of dynamic manifest file server 110 passing
parameters from the request received in step 410 to rule resolution
server 120, which may then evaluate a plurality of rules for the live event
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requested in step 410.” Id. ¶ 37. The parameters may include “device
identifiers.” Id. Further, Lewis states that “[a]dditional rules may further
customize the final manifest file, as for example platform rule set 322a and
resolution rule set 322b shown in FIG. 3, which may be used to optimize
video delivery for specific devices and display configurations.” Id.
Lewis teaches that step 430 “comprises processor 111 of dynamic
manifest file server 110 generating manifest file 157 referencing live video
segments 175 corresponding to the live event stream requested in step 410.”
Ex. 1006 ¶ 39. In step 440, processor 111 provides, in response to the
request received in step 410, “manifest file 157 to media player
application 156 executing on processor 151 of client device 150, thereby
enabling media player application 156 to playback the live event . . . by
interpreting manifest file 157.” Id. ¶ 40.
Differences Between the Prior Art and the Claims;
Motivation to Modify
a. The Proposed Combination
Petitioner’s discussion of this ground begins by addressing the general
combination of Lewis and Marusi and motivation to combine their teachings
before discussing the specific limitations of the claim. See Pet. 54–57
(addressing, in general, the combination of Lewis and Marusi). The
arguments are nearly identical to Petitioner’s arguments directed to the
general combination of Pyle and Marusi, presented in the first ground.
Compare id. with id. at 20–22. In particular, Petitioner contends that one of
ordinary skill in the art would have found the subject matter of claims 1–5
and 12 obvious over “the combination of Lewis’ server system for
dynamically generating manifest files with Marusi’s teachings for storing
multimedia content in a database, and Marusi’s teachings of using a database
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to correlate device capabilities with device identification information.” Id.
at 54–55 (citing Ex. 1003 ¶ 209). As with Petitioner’s first ground, in
addition to Petitioner’s general discussion of the combined teachings,
Petitioner’s analysis of each claim or claim limitation explains the basis for
Petitioner’s challenge to that specific limitation or claim. See, e.g., id. at 75
(contending, for claim 12, that “[t]his additional limitation is rendered
obvious by Lewis”). With this understanding, we turn our attention to
Petitioner’s analysis of the specific claim limitations.
b. Claim 1 – Limitation 1[c]
Limitation 1[c] recites “retrieving, using the playback server system,
(i) a list of assets associated with the identified piece of content and (ii) at
least one device capability based upon the product identifier, wherein each
asset is a different stream associated with the piece of content.” Ex. 1001,
20:20–24. Although Petitioner contends “[t]he combination of Lewis and
Marusi renders this limitation obvious,” Petitioner’s analysis of this
limitation relies entirely on Lewis. Pet. 61–63.
Petitioner asserts that Lewis “teaches maintaining assets associated
with the identified piece of content, wherein each asset is a different stream
associated with the piece of content.” Pet. 61. Specifically, Petitioner points
to Lewis’s Figure 3, contending that “Lewis teaches that stored video
segments 375 are associated with processed video segments 315a-c that are
each in different formats of the stored video segments 375,” and provides the
following chart:
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Processed Video
Segments
Format
315a “F4F Flash video files” (id., [0027])
315b “MPEG transport stream video files” (id., [0028])
315c “MPEG transport stream video files” (id., [0029])
Id. at 61–62 (citing Ex. 1003 ¶ 230).
Petitioner asserts, “Lewis explains that when each of the different
client devices ‘requests video content represented by stored video
segments 375,’ the dynamic manifest file server (with input from the rule
resolution server) includes references to the appropriate processed video
segments (i.e., 315a, 315b, or 315c).” Pet. 62 (citing Ex. 1006 ¶¶ 27–29).
Petitioner contends that one of ordinary skill in the art “would have
understood that manifest file server and rule resolution server associate the
different processed video segments with the original content requested.” Id.
(citing Ex. 1003 ¶ 231). Notably, Petitioner asserts that one of ordinary skill
in the art “would have understood that Lewis’ processed video segments are
each an ‘asset’ because the ’720 patent describes assets as ‘container files
containing streams of content associated with specific titles’ (Ex. 1001,
7[:]22–28), and MPEG transport stream video and F4F flash video files were
known types of container files.” Id. (emphasis added) (citing Ex. 1003
¶ 232).
With respect to retrieving a list of assets, Petitioner contends that one
of ordinary skill in the art
would have found it obvious to retrieve a list of assets using the
playback server system because Lewis teaches that the manifest
file server and rule resolution server generates a dynamic file
manifest, and Lewis teaches that a dynamic manifest file
contains a list of URLs to container files containing content.
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For example, Lewis teaches that the rule resolution server may
include a rule that “may rewrite the URLs within a manifest file
to point to the content delivery network in closest proximity to
the client device, providing improved network performance and
responsiveness.” Ex. 1006, [0032]. In other words, because a
manifest file is a file that contains a list of URLs that point to
container files, a [person of ordinary skill in the art] would have
found it obvious that the manifest file server and rule resolution
server retrieve a list of assets because the manifest file server
and rule resolution server ultimately produce a list of assets to
the client device in the form of a manifest file. Ex. 1003 ¶233.
Pet. 62–63. Petitioner additionally asserts that one of ordinary skill in the art
“would have found it obvious to retrieve, using the playback server system,
at least one device capability based upon the product identifier.” Id. at 63.
Patent Owner contends that this obviousness analysis “contravenes
obviousness law because it fails to identify a reason to modify Lewis to
arrive at the claimed invention.” PO Resp. 34. Patent Owner correctly notes
that Petitioner does not rely expressly on any specific teaching from Marusi
to modify Lewis; rather, Petitioner’s analysis is based upon Lewis alone.
See id. (“Importantly, Petitioner does not argue that ‘retrieving a list of
assets’ would have been obvious over Lewis in view of Marusi. Instead,
Petitioner propounds a single-reference obviousness theory, arguing the
missing limitation would have been obvious in view of Lewis alone.”).
Patent Owner asserts that “[t]he Petition fails to provide evidence or
argument concerning that crucial ‘if,’ for it provides no rationale to modify
Lewis to retrieve a list of assets.”10 Id.

10 Although Petitioner does not argue in the Petition that Lewis teaches
retrieving a list of assets, Patent Owner asserts that “no list of . . . processed
video segments 315a-c is taught to be retrieved in Lewis or reasonably
would be expected to be retrieved for Lewis to work as intended.” PO
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In its Reply, Petitioner contends that “[c]ontrary to [Patent Owner’s]
claim that Lewis does not teach a list and that there was no reason to modify
Lewis’ system ([PO Resp.] 30–32), the Petition and Dr. Reader clearly
explain why lists and database operations would have been obvious to a
[person of ordinary skill in the art].” Pet. Reply 19 (citing Pet. 62–63;
Ex. 1003 ¶¶ 237–239). Petitioner reiterates the position asserted in the
Petition—that it would have been obvious to retrieve a list of assets because
Lewis teaches that a dynamic manifest file contains a list of URLs to
container files containing content. Id. Petitioner also contends that “Lewis
itself explains that it was well-known that manifest files contain a list of
media assets to be played.” Id. (citing Ex. 1006 ¶ 20 (noting that “Manifest

Resp. 37–38 (citing Ex. 2010 ¶ 79). In its Reply, Petitioner responds to
Patent Owner’s assertion by pointing to stored video segments 375 as assets,
not just processed video segments 315a–c. Pet. Reply 19 (citing Ex. 1003
¶¶ 230–231). In the Petition, Petitioner did not assert or rely upon stored
video segments 375 as teaching the recited “assets” or “list of assets”; rather,
Petitioner relied upon processed video segments 315a–c. See Pet. 62.
Petitioner’s attempt to assert, for the first time, in its Reply that processed
video segments 375 also teach the recited “assets” is an improper reply
argument. See, e.g., Patent Trial and Appeal Board Consolidated Trial
Practice Guide (Nov. 2019), 74, available at https://www.uspto.gov/sites/
default/files/documents/tpgnov.pdf (“Generally, a reply . . . may only
respond to arguments raised in the preceding brief. . . . ‘Respond,’ in the
context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction
with a new approach as compared to the positions taken in a prior filing. . . .
Examples of indications that a new issue has been raised in a reply include
new evidence necessary to make out a prima facie case for the patentability
. . . of an original . . . claim . . . .”); see PO Sur-reply 16–18 (discussing
Petitioner’s new argument). Petitioner’s attempt to (1) rely upon stored
video segments 375 to teach the recited assets and (2) assert that Lewis
teaches, as opposed to rendering obvious, retrieving a list of assets are both
new arguments that are inappropriately raised for the first time in
Petitioner’s Reply and, therefore, we disregard them.
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file 257 includes entries 258a through 258f”), Fig. 2 (noting that Figure 2
shows entries pointing to video segments)).
Fundamentally, Petitioner fails to provide any reason in the Petition
as to why one of ordinary skill in the art would have found it obvious to
retrieve a list of assets based on Lewis. Instead of providing a reason as to
why retrieving a list of assets would have been obvious, Petitioner points to
a result achieved by Lewis—generating a dynamic manifest file that
contains a list of URLs to container files containing content. In the context
before us, pointing to a result to allege that a step in a process leading to the
result would have been obvious is insufficient without also providing a
reason with rational underpinning. See KSR, 550 U.S. at 418 (citing In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.”)). Here, Petitioner relies upon
the result of Lewis’s process—generating a dynamic manifest file containing
a list of URLs—as the only basis as to why a previous step in the claim
would have been obvious without providing any reason why the achieved
result means the previous step would have been obvious. Further, although
Petitioner cites to Dr. Reader’s declaration (Ex. 1003 ¶ 233), Dr. Reader’s
testimony does not provide any further explanation or reason as to why this
aspect of limitation 1[c] would have been obvious.11 Rather, the Petition’s

11 To the extent Petitioner relies upon its discussion of the combined
teachings of Lewis and Marusi as set forth at the beginning of Petitioner’s
discussion of this ground (see Pet. 54–57), that portion of the Petition does
not provide an additional reason why retrieving a list of assets as recited in
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discussion appears to be exactly the same as Dr. Reader’s testimony on this
point. Thus, Petitioner’s argument that it would have been obvious to
retrieve a list of assets in light of Lewis is not supported sufficiently on the
record before us.
c. Dependent Claims 2–5 and 12
Petitioner contends that the combination of Lewis and Marusi would
have rendered the subject matter of claims 2–5 and 12 obvious to one of
ordinary skill in the art. Pet. 72–76. Claims 2–5 and 12 depend from
claim 1 and, therefore, include limitation 1[c], discussed above.
Accordingly, for the same reasons discussed with respect to claim 1,
Petitioner’s analysis of these claims suffers from the same deficiency
d. Weighing the Graham Factors
“Once all relevant facts are found, the ultimate legal determination [of
obviousness] involves the weighing of the fact findings to conclude whether

limitation 1[c] would have been obvious simply because Lewis generates a
list of assets. In that discussion, Petitioner argues that
[b]ecause storing and tracking different representations
of the same multimedia content using lists or a database was
well-known, Lewis assumes that a [person of ordinary skill in
the art] has such knowledge and does not explicitly describe
these basic implementation details. Marusi provides examples
of such techniques and teaches storing a plurality of
representations of multimedia content in a database along with
a description of each representation’s format.
Id. at 55 (citing Ex. 1006 ¶ 14). As stated there, Petitioner acknowledges
that Lewis does not describe these details. Yet, despite seemingly turning to
Marusi for “such techniques” in that general discussion, Petitioner neither
expressly states how Marusi teaches using lists nor argues or explains how
Marusi’s alleged use of lists impacts the analysis of limitation 1[c]
(especially when Petitioner’s discussion of limitation 1[c] fails to rely upon
or cite Marusi).
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the claimed combination would have been obvious to an ordinary artisan.”
Arctic Cat, 876 F.3d at 1361. On balance, considering the record before us,
Petitioner has not shown, by a preponderance of the evidence, that the
combined teachings of Lewis and Marusi would have rendered the subject
matter of claims 1–5 and 12 obvious to one of ordinary skill in the art at the
time of the invention.
IV. SECRET PRIOR ART AND CONSTITUTIONALITY
Patent Owner raises several additional issues. First, Patent Owner
contends that neither Pyle nor Lewis was patented or published prior to the
’720 patent’s effective filing date and therefore neither reference should not
be considered “prior art consisting of patents or printed publications”
pursuant to 35 U.S.C. § 311(b). PO Resp. 59–61. This argument is akin to
arguing that Pyle and Lewis are secret prior art. The Board has recognized
that, under current precedent of the U.S. Court of Appeals for the Federal
Circuit, these references are considered prior art and we decline to address
the issue further. See, e.g., Lenovo Holding Co. v. DoDots Licensing Sols.
LLC, IPR2019-01279, Paper 37 at 33 (PTAB Jan. 5, 2021) (declining to
address patent owner’s argument on secret prior art).
Second, Patent Owner raises two Constitutional arguments relating to
the Board’s ability to render a decision in this proceeding including: (1) that
the Board’s organization, including its incentive and fee structure, violates
due process and the right to an impartial, disinterested tribunal; and (2) that
the Board was unconstitutionally appointed. Id. at 61–62. We also decline
to address Patent Owner’s constitutional challenge except to note that the
constitutionality of the appointments of the Administrative Patent Judges
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was addressed by the U.S. Supreme Court in United States v. Arthrex, Inc.,
141 S. Ct. 1970, 1986–87, 1997 (2021).
V. SUMMARY
For the reasons discussed above, Petitioner has not demonstrated, by a
preponderance of the evidence, that claims 1–5 and 12 are unpatentable.
Our conclusions regarding the Challenged Claims are summarized
below:
Claims
Challenged
35
U.S.C. §
Reference(s)
/Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–5, 12 103(a) Pyle, Marusi 1–5, 12
1–5, 12 103(a) Lewis, Marusi 1–5, 12
Overall
Outcome 1–5, 12
VI. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–5 and 12 of U.S. Patent No. 9,270,720 B2
are not determined to be unpatentable; and
FURTHER ORDERED that, because this a Final Written Decision,
parties to this proceeding seeking judicial review of this Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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For PETITIONER:

Harper Batts
Jeffrey Liang
Chris Ponder
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
HBatts@sheppardmullin.com
CPonder@sheppardmullin.com
JLiang@sheppardmullin.com

For PATENT OWNER:

Kenneth J. Weatherwax
Bridget Smith
Flavio Rose
Edward Hsieh
Parham Hendifar
Patrick Maloney
LOWENSTEIN & WEATHERWAX LLP
weatherwax@lowensteinweatherwax.com
smith@lowensteinweatherwax.com
rose@lowensteinweatherwax.com
hsieh@lowensteinweatherwax.com
hendifar@lowensteinweatherwax.com
maloney@lowensteinweatherwax.com