WOWZA MEDIA SYSTEMS, LLC and COFFEE CUP PARTNERS, INC.v.ADOBE SYSTEMS INCORPORATED

Patent Trial and Appeal Board

Jul 13, 2013

12252357 (P.T.A.B. Jul. 13, 2013)

Trials@uspto.gov Paper No. 16
571-272-7822 Date Entered: July 13, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

WOWZA MEDIA SYSTEMS, LLC
and COFFEE CUP PARTNERS, INC.
Petitioner

v.

ADOBE SYSTEMS INCORPORATED
Patent Owner
____________

Case IPR2013-00054
Patent 8,051,287 B2
____________

Before HOWARD B. BLANKENSHIP, THOMAS L. GIANNETTI, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION
Request for Rehearing
37 C.F.R. § 42.71(d)

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INTRODUCTION
Petitioner (Wowza Media Systems, LLC and Coffee Cup Partners, Inc.)
requests rehearing (Paper 15, “Req. Reh‟g”) of the Decision entered April 8, 2013
(Paper 12, “Decision”) denying Petitioner‟s request for inter partes review of
claims 1-3, 5, 6, 10, 12-14, 16, 17, 21, 23-26, 28, 29, and 33 of U.S. Patent
8,051,287 B2. A request for rehearing must be in the form of a motion. 37 C.F.R.
§ 42.20(a). The request must specifically identify all matters the party believes the
Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a
decision on petition, a panel will review the decision for an abuse of discretion. 37
C.F.R. § 42.71(c). The request for rehearing is denied.

DISCUSSION
1. Incomplete Petition
First, Petitioner argues that because the Board found that some of
Petitioner‟s allegations in the Petition did not comply with 37 C.F.R.
§ 42.104(b)(4)
1
, we should treat the Petition as incomplete under § 42.106(a)(1),
issue a Notice of Incomplete Petition under § 42.106(b), and provide one month to
correct the deficiency. Req. Reh‟g 1-2. We are not persuaded by the argument that
Petitioner, having failed to meet its statutory burden of proof initially, should now
be given a second opportunity on the merits based on supposed procedural
deficiencies in the petition, as filed. Petitioner‟s argument confuses minimum
procedural compliance with 35 U.S.C. § 312(a), necessary to obtain a filing date,
with the statutory threshold requirements of § 314(a). Under the statute, the

1
The subsection requires in part that: “The petition must specify where each
element of the claim is found in the prior art patents or printed publications relied
upon.”
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Petitioner has the burden of proving unpatentability by a preponderance of the
evidence. 35 U.S.C. § 316(e). However, the USPTO determines whether a
petition for inter partes review meets the minimum procedural requirements of the
statute without regard to the substance or merits of the challenge.
1. Filing date – Minimum Procedural Compliance: To obtain a
filing date, the petition must meet certain minimum standards. See,
e.g., § 42.106. Generally, the standards required for a petition are
those set by statute for the proceeding requested. See, e.g., 35 U.S.C.
312(a). For example, an IPR requires that a complete petition be filed
with the required fee, and include a certificate of service for the
petition, fee, and evidence relied upon. § 42.106. A complete petition
for IPR requires that the petitioner certify that the patent is eligible for
IPR and that the petitioner is not barred or estopped from requesting
the review, and that the petitioner identify the claims being challenged
and the specific basis for the challenge. § 42.104.

Office Patent Trial Practice Guide, 77 Fed. Reg.48756, 48763 (Aug. 14, 2012).
Pointing out where each element of a challenged claim is found in the prior
art (37 C.F.R. § 41.104(b)(4)) may be necessary to demonstrate that the statutory
threshold for inter partes review has been met. However, failure to point out
where each element is found in the prior art is a deficiency in the substantive
requirements of the petition, as opposed to the minimum procedural requirements
of a petition for inter partes review.
Moreover, Petitioner requests the relief that we treat the Petition as
incomplete and provide one month to correct the deficiency, as permitted by 37
C.F.R. § 42.106(b). This rule does not apply to a failure to meet substantive
statutory requirements. Under § 42.106(b), where a party files an incomplete
petition (i.e., fails to meet the minimum procedural requirements), “no filing date
will be accorded, and the Office will dismiss the petition if the deficiency in the
petition is not corrected within one month from the notice of an incomplete
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petition.” In short, we are not persuaded that it is an abuse of discretion not to
permit Petitioner to submit a “corrected” petition.
2. Sherman Declaration
Petitioner also alleges that we “refused to consider” the Sherman
Declaration (Ex. 1002) because it was 100 pages in length and because the Petition
supposedly referred to the Declaration in general, without pointing to specific
testimony in the Declaration that may relate to specific claim limitations. Req.
Reh‟g 2-3.
Although Petitioner in the Request repeatedly alleges that we “refused to
consider” the Declaration, that was not the case, and nowhere in the Decision did
we so state or indicate. We did state that we did not find the Declaration helpful as
support for Petitioner‟s assertions. Decision 12. We are not persuaded that this
was an abuse of discretion. As we noted in the Decision, the Declaration appeared,
for the most part, simply to track and repeat the arguments for unpatentability
presented in the Petition. Id.
Expert testimony that does not disclose the underlying facts or data on which
the opinion is based is entitled to little or no weight. 37 C.F.R. § 41.65(a). The
U.S. Court of Appeals for the Federal Circuit discounts expert testimony that is not
based on the underlying facts or data:
The expert failed to explain how specific references could be
combined, which combination(s) of elements in specific references
would yield a predictable result, or how any specific combination
would operate or read on the asserted claims. Rather, the expert‟s
testimony on obviousness was essentially a conclusory statement that
a person of ordinary skill in the art would have known, based on the
“modular” nature of the claimed components, how to combine any of
a number of references to achieve the claimed inventions. This is not
sufficient and is fraught with hindsight bias.

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ActiveVideo Networks, Inc. v. Verizon Communications, Inc., 694 F.3d 1312, 1327
(Fed. Cir. 2012) (holding that district court did not err in granting JMOL of no
invalidity). The Sherman Declaration likewise failed to meet the minimum
requirements for expert testimony. As a consequence, the Board gave it little
weight. This was not an abuse of discretion.
Petitioner in the Request (at 10-11) points to the following portion of the
“KSR” section of the Sherman Declaration as supporting obviousness, which we
provide as one example of conclusory statements:
The design need and market pressure here was adding encryption to
communications, such as RTMP communications, in a way that
avoided reverse engineering of the protocol and was backward
compatible. Only a few options, at best, could meet this need; one
predictable solution was putting cryptographic keys in the preexisting
random data section of a network communications. (See supra
Section III.A.1.d.) A person of ordinary skill in the art would have
anticipated success with this approach, and doing so would have been
obvious to try.

Sherman Decl. 51. Notably absent from the testimony is an explanation of how
specific references might be combined to arrive at the claimed invention; e.g., by
combining and applying specific teachings in the references to a claim. See
ActiveVideo Networks, 694 F.3d at 1328 (“This testimony is generic and bears no
relation to any specific combination of prior art elements. It also fails to explain
why a person of ordinary skill in the art would have combined elements from
specific references in the way the claimed invention does.”).
Further, Petitioner refers to exemplary testimony in the Sherman Declaration
(Section III.B) that supposedly established the obviousness of the claimed
invention in view of Hellman and the so-called RTMP references (Edelman and
Toth). Req. Reh‟g 4-6. We are not persuaded that anything was misapprehended
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or overlooked in considering this testimony. Even assuming, as alleged, that
design considerations and demands known in the marketplace would prompt a
person of ordinary skill to modify the RTMP references in light of the teachings of
Hellman, more is required to show obviousness. As we indicated, the conclusory
statements fail to identify any teaching in the applied prior art of establishing an
encrypted RTMP session by inserting cryptographic information in a pre-defined,
or even preexisting, random data section of the RTMP handshake. Nor do the
conclusory statements provide any convincing rationale as to why one of ordinary
skill in the art would have chosen to do so. Decision 15.
Petitioner also faults the Board for not quoting accurately from the Petition,
omitting some text and a citation to the Sherman Declaration. Req. Reh‟g 3, 6.
We reproduce below the omitted text, which consists of general allegations relating
to the proffered combination of Edelman, Toth, and Hellman.
Also, the teachings of the references described above, as well as
design considerations and the demands known in the marketplace
would prompt a person of ordinary skill to modify RTMP, as set forth
in the RTMP References, when combined with Hellman in the fashion
claimed. Doing so would have eliminated the need for additional
handshake messages — which slow the process and expend
processing power — and would have the additional benefit of
obfuscating the cryptographic information, all of which were known
design objectives and goals for computer systems and encryption
systems. (See Ex. 1002, Sherman Declaration, Section III.B.)

Pet. 34-35. We remain of the view, as indicated in the Decision (at 12), that the
Petition does not refer to any specific testimony set forth in the Declaration that
may relate to specific claim limitations. “The Board may exclude or give no
weight to the evidence where a party has failed to state its relevance or to identify
specific portions of the evidence that support the challenge.” 37 C.F.R.
§ 42.104(b)(5).
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3. Meaning of “Pre-Defined”
Further, as noted in the Decision (at 13), the Petition consistently refers to
placing cryptographic information in a “preexisting” portion of a handshake
network communication, while the challenged claims specify a “pre-defined”
portion of the handshake. In that regard, the Request misquotes the Sherman
Declaration as stating that the SSL protocol “„places cryptographic information in
the predefined portion of the handshake reserved for the random data.‟” Req.
Reh‟g 12 (emphasis added).
2
The Declaration refers to placing such information in
a “header field” that is padded by randomly generated bytes. Sherman Decl. 18.
There is no reference there to a “predefined” handshake portion as in Petitioner‟s
quote. Petitioner now asserts, however, that the Petition uses the term
“preexisting” interchangeably for the term “pre-defined,” even though
acknowledging that “preexisting” has a broader meaning than “pre-defined.” Req.
Reh‟g 13. In any event, Petitioner does not appear to challenge our interpretation
of “pre-defined” in accordance with its plain and ordinary meaning (Decision 6-7).
It is thus unclear why Petitioner requests rehearing on the matter, or why it did not
use the term that appears in the claim if they are equivalent.
4. Information Hiding References
Petitioner further alleges that, contrary to the Decision (at 10-11), the
Petition provided sufficient analysis of the so-called Information Hiding
References (Cole, Giffin, Lucena, Rowland, and Zander). Petitioner points to
pages 45 through 46 of the Petition. Req. Reh‟g 12-13.
On those two pages of the Petition, in two paragraphs under the heading
“Additional Combinations,” Petitioner alleges existence of isolated teachings in ten

2
Petitioner also relies on non-existent Sections IV.A1.c and IV.A.1.d of the
Sherman Declaration. Id.
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different references. See also Req. Reh‟g 8-9, quoting Sherman Decl. at 45-46. As
we indicated in the Decision (at 11), there is insufficient analysis in the Petition of
Cole, Giffin, Lucena, Rowland, and Zander as applied to the specific limitations of
the claims. There was nothing misapprehended or overlooked by the Board in
evaluating these assertions. In reaching our decision not to institute, we concluded
that a combination of two or more of the ten references that might establish a
reasonable likelihood of prevailing on the issue of unpatentability was not properly
set forth in the Petition. The arguments duly were considered. The threshold
question for instituting inter partes review does not relate to whether the Board
would have known something was obvious to one of ordinary skill in the art (see
Req. Reh‟g 13), or whether the Board can show that some invention would have
been obvious based on evidence submitted by a challenger. Rather, the threshold
question is whether the information presented in the petition filed under 35 U.S.C.
§ 311 and any response filed under § 313 shows that there is “a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the claims
challenged in the petition.” 35 U.S.C. § 314(a) (emphasis added).

CONCLUSION
In view of the foregoing, Petitioner has not carried its burden of
demonstrating that the Board‟s Decision misapprehended or overlooked any
matters. 37 C.F.R. § 42.71(d). The Motion is DENIED.
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For Patent Owner:
Lissi Mojica
Kevin Greenleaf
SCHWEGMAN, LUNDBERG & WOESSNER, P.A.
Lmojica@slwip.com
Kgreenleaf@slwip.com

For Petitioner:

Barry F. Irwin
Brent Ray
KIRKLAND & ELLIS, LLP
barry.irwin@kirkland.com
brent.ray@kirkland.com