CustomPlay, LLCv.Clearplay, Inc.

Patent Trial and Appeal Board

Nov 5, 2014

11074908 (P.T.A.B. Nov. 5, 2014)

Trials@uspto.gov Paper 29
Tel: 571-272-7822 Entered: November 5, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
CUSTOMPLAY, LLC,
Petitioner,

v.
CLEARPLAY, INC.,
Patent Owner.
_______________

Case IPR2013-00484
Patent 7,577,970 B2
_______________

Before KARL D. EASTHOM, JUSTIN T. ARBES, and
BARRY L. GROSSMAN, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

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

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I. INTRODUCTION
CustomPlay, LLC (“Petitioner”) filed a Petition requesting an inter partes
review of claims 1–43 (all of the claims) of U.S. Patent No. 7,577,970 B2 (“the
’970 patent”) on multiple grounds. Paper 4 (“Pet.”). On November 26, 2013, we
instituted an inter partes review of claims 16, 27, 28, 30–34, and 40 on a single
ground of unpatentability under 35 U.S.C. § 103 based on a proposed combination
of Abecassis (Ex. 1002) and Malkin (Ex. 1004). Paper 10 (“Dec. on Inst.”).
ClearPlay, Inc. (“Patent Owner”) filed a Patent Owner Response (Paper 17, “PO
Resp.”), and Petitioner filed a Supplemental Reply (Paper 22, “Reply”).
Patent Owner did not file a motion to amend the claims.
An oral hearing was held on August 27, 2014, and a transcript of the hearing
is included in the record. Paper 28 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This final written decision is
issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine Petitioner has not shown by a
preponderance of the evidence that claims 16, 27, 28, 30–34, and 40 are
unpatentable.
A. The ’970 Patent
The ’970 patent relates generally to filtering multimedia content, such as
scenes or language unsuitable for viewers of some ages. Ex. 1001, col. 1, ll. 16–
17, 22–23. More specifically, the invention claimed in the ’970 patent relates to a
computerized system for identifying and filtering automatically portions of
multimedia content during the decoding process. Id. at col. 1, ll. 17–20. The
decoding process creates various continuous multimedia streams by identifying,
selecting, retrieving, and transmitting content segments from a number of available
segments stored on a content source, such as a DVD. Id. at col. 2, ll. 3–6. The
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system disclosed in the ’970 patent permits filtering multimedia content at the
output side of a decoder rather than at the input or source side of the decoder. Id.
at col. 4, ll. 41–44.
The ’970 patent system creates “navigation objects” to define portions of the
multimedia content that should be filtered. Id. at col. 4, ll. 47–49. As required in
the challenged claims, each navigation object defines a start position, a stop
position, and a filtering action for the portion of the multimedia content defined by
the start position and stop position. Id. at col. 4, ll. 49–52. The Specification of
the ’970 patent discloses several filtering actions: “skip” (Ex. 1001, col. 6, ll. 1–
13); “mute” (id. at col. 5, ll. 21–32); and “reframe” (id. at col. 5, ll. 38–52). The
’970 patent also refers to these filtering actions as “editing actions.” Id. at col. 5,
ll. 53–67. As disclosed, at least a “reframe navigation object” may be
implemented “on a frame-by-frame basis.” Id. at col. 15, ll. 48–50.
The navigation objects are placed in an “object store.” The object store may
be a file, such as a database, and the navigation objects may be records within the
database. Id. at col. 11, ll. 52–62.
Figure 2 from the ’970 patent, shown below, is a block diagram showing the
basic components of a system embodying the claimed invention.

Figure 2 from the ’970 patent.
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Figure 3a from the ’970 patent, shown below, is an enhanced diagram that
provides additional details for the basic components shown in Figure 2.

Figure 3a is annotated to highlight corresponding components in Figure 2.
B. Illustrative Claim
We instituted inter partes review of independent claims 16 and 27, and
dependent claims 28, 30–34, and 40. Illustrative claim 16 follows:
16. In a computerized system for enabling a consumer to
filter multimedia content that is comprised of video content,
audio content, or both, and wherein a consumer computer system
includes a processor, a memory, a decoder, and an output device
for playing the multimedia content, a method for assisting the
consumer to identify portions of the multimedia content that are
to be filtered and to thereafter filter the identified portions, the
method comprising the acts of:
loading a plurality of navigation objects into the memory of
the consumer computer system, each of which defines a portion
of the multimedia content that is to be filtered by defining a start
position and a stop position and a specific filtering action to be
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performed on the portion of the multimedia content defined by
the start and stop positions for that portion;
updating a position code in association with decoding the
multimedia content on the consumer computer system;
comparing the position code with a navigation object to
determine whether the position code corresponding to the
multimedia content falls within start and stop positions defined
by one of the navigation objects;
when the position code is determined to fall within the start
and stop position defined by a particular navigation object,
activating the filtering action assigned to the particular
navigation object in order to filter the multimedia content for that
portion of the multimedia content defined by the particular
navigation object;
transferring the multimedia content to an output device,
whereby the multimedia content is played at the output device
excluding each portion thereof which is filtered in accordance
with the plurality of navigation objects;
assigning a configuration identifier to the decoder;
comparing the configuration identifier of the particular
navigation object with the configuration identifier of the decoder
to determine if the particular navigation object applies to the
decoder; and
determining that the particular navigation object applies to
the decoder based on the configuration identifier of the particular
navigation object matching the configuration identifier of the
decoder.
C. References Relied Upon
The ground of unpatentability in this inter partes review is based on the
following references:

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Reference Pat. Number Date Exhibit Number
Abecassis U.S. 6,408,128 B1 June 18, 2002
(filed Nov. 12,
1998)
Ex. 1002
Malkin U.S. 6,317,795 B1 Nov. 13, 2001
(filed July 22,
1997)
Ex. 1004

D. Ground of Unpatentability
This inter partes review addresses the issue of whether claims 16, 27, 28,
30–34, and 40 would have been obvious under 35 USC § 103(a) based on
Abecassis and Malkin.
II. ANALYSIS
A. Claim Interpretation
In the Decision on Institution, we used the broadest reasonable claim
interpretation standard and interpreted various claim terms of the ’970 patent as
follows:
Term or Phrase Construction
Filtering/Filter Editing or rejecting some multimedia
content while allowing other multimedia
content to pass unchanged.
Defining a Filtering Action Describing or specifying a distinct
filtering operation.
Navigation Object Information that defines both (1) a
portion of multimedia content to filter
and (2) the filtering action to be taken on
the defined portion of multimedia
content.
Position Code Information that identifies a location in
the multimedia content.
Start Position Information that defines a beginning of a
portion of multimedia content
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Term or Phrase Construction
Duration from the Start
Position
A continuance in time from the start
position.
See Dec. on Inst. 14–15.
Patent Owner indicates that our construction of the claim term “navigation
object” in our Decision on Institution is correct “as long as it encompasses the
requirement that a navigation object must define when to start applying the
filtering action and when to stop applying the filtering action.” PO Resp. 4.
Because we base our Final Decision on other claim limitations, however, we need
not reach this claim interpretation.
The parties otherwise do not dispute the interpretations set forth in our
Decision on Institution, and we discern no reason based on the record before us to
change them for purposes of the Final Decision. Accordingly, to the extent
necessary to reach this Final Decision, we adopt our claim constructions from the
Decision on Institution.
B. Asserted Ground of Unpatentability
1. Obviousness Based on Abecassis and Malkin
a. Configuration Identifier
In claim 16, a “configuration identifier” determines when a particular
navigation object is applied. Claim 16 is the only claim before us that includes a
configuration identifier.
Claim 16 requires the step of assigning a configuration identifier to the
decoder. Ex. 1001, col. 21, l. 53. Claim 16 also requires the step of comparing
“the configuration identifier of the particular navigation object” with the
configuration identifier of the decoder to determine if “the particular navigation
object” applies to the decoder. Id. at col. 21, ll. 54–57. Claim 16 also requires the
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step of determining whether “the particular navigation object” applies to the
decoder based on the configuration identifier of “the particular navigation object”
matching the configuration identifier of the decoder. Id. at col. 21, ll. 58–61.
Claim 16 requires the step of “comparing the configuration identifier of the
particular navigation object” to the configuration identifier of the decoder
(emphasis added). Therefore, claim 16 inferentially claims that the particular
navigation object has a “configuration identifier.” Additionally, claim 16 requires
the step of determining whether the configuration identifier of the particular
navigation object matches the configuration identifier of the decoder.
As explained in the Specification of the ’970 patent with reference to Figure
3A, the configuration identifier “is an identifier (329a) used to determine if
navigation object 320a applies to a particular consumer system.” Ex. 1001,
col. 12, ll. 2–5. Figure 3A shows that configuration identifier 329a is included
within navigation object 320a. The configuration identifier identifies the hardware
and software configuration of a consumer system to which the navigation object
applies. Id. at col. 14, ll. 7–8; see also id. at col. 14, ll. 13–17 (“The motivation
behind configuration 499 [in Figure 4B] is that different consumer systems may
introduce variations in how navigation objects are processed. As those variations
are identified, navigation objects may be customized for a particular consumer
system without impacting other consumer systems.”).
In its Patent Owner Response, Patent Owner asserts that because neither
Abecassis nor Malkin discloses a navigation object, these references also cannot
teach or suggest a navigation object with a configuration identifier or the steps of
selectively applying navigation objects based on the configuration identifier of the
decoder, as required in claim 16. PO Resp. 11. Patent Owner also asserts that
Abecassis does not disclose a configuration identifier. Id.
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Petitioner has not directed us to any evidence that Malkin discloses or
suggests a “configuration identifier” as part of a navigation object. Petitioner relies
on the disclosure in Abecassis for evidentiary support that Abecassis discloses the
claimed steps involving the “configuration identifier.” Petitioner asserts that
Abecassis recognizes that different multimedia players have different
configurations. Pet. 38 (citing Ex. 1002, col. 27, ll. 25–28). The mere fact that a
system has different potential configurations, however, does not mean that it
performs the specific “assigning,” “comparing,” and “determining” steps as recited
in claim 16 pertaining to the “configuration identifier.”
Petitioner also asserts that Abecassis discloses the correlation of a video-
map configuration and a multimedia-player configuration. Id. (citing Ex. 1002,
col. 23, ll. 48–52 (“When completed, the map may be automatically keyed or
configured to accommodate the requirements of the particular device to which the
video is to be downloaded.”)). The portion of Petitioner’s Reply addressing the
“configuration identifier” also focuses exclusively on the disclosure in Abecassis.
Reply 11–13. The cited portion in Abecassis applies to a completed video map,
not to particular navigation objects. In our Decision on Institution, we determined
that the video map in Abecassis was not a navigation object, as required by the
claims of the ’970 patent. Dec. on Inst. 19.
Petitioner maintains that Abecassis discloses a variety of video map
configurations and that it would be illogical to key or configure a video map “and
then exclude the configuration identification.” See Reply 13. Petitioner points out
that Abecassis’s video maps are automatically “‘configured or keyed to
accommodate the requirements of [a] particular device.’” See id. at 12 (quoting
Ex. 1002, col. 23, ll. 48–52). This disclosure shows that each map does not
necessarily need to carry a configuration identifier, because in Abecassis, each map
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has been designed to correspond to a specific device. Petitioner has not provided
any persuasive evidence or argument that shows that the combination of Abecassis
and Malkin discloses or suggests the “configuration identifier” limitations recited
in claim 16.
Petitioner cites the Declaration of Dr. Robert Louis Stevenson for
evidentiary support that Abecassis discloses the claimed steps involving the
“configuration identifier.” Pet. 38 (citing Ex. 1006 ¶ 57). Dr. Stevenson cites
substantially the same passages from Abecassis as cited by Petitioner and
concludes that Abecassis discloses a configuration identifier, as claimed in claim
16. Ex. 1006 ¶ 57.
Petitioner also has not directed us to any persuasive evidence or argument
that it would have been obvious to modify the configuration technology used for
completed video maps in Abecassis to provide configurable navigation objects,
each with configuration identifiers, as required in claim 16. Moreover, Petitioner
has not provided any persuasive evidence or argument that it would have been
obvious to compare each navigation object’s configuration identifier to a decoder’s
configuration identifier, as claim 16 also requires. No apparent need would exist
for this type of comparison step in the system of Abecassis, because each video
map is configured to a specific device. Accordingly, the preponderance of the
evidence does not establish that the combination of Abecassis and Malkin, on
which this inter partes review is based, discloses or suggests the “configuration
identifier” limitations recited in claim 16. Accordingly, Petitioner has not
demonstrated by a preponderance of the evidence that claim 16 is unpatentable
over Abecassis and Malkin.
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b. Disabling a Navigation Object
Claim 27 requires the step of “providing for disabling of one or more of the
navigation objects such that the specific filtering action specified by the disabled
navigation object is ignored.” Ex. 1001, col. 23, ll. 41–43. The Specification
states that “[n]avigation objects may be disabled by including an indication within
the navigation objects that they should not be part of the filtering process.” Id. at
col. 18, ll. 64–66. The Specification also states that the step of retrieving
navigation objects may ignore navigation objects that have been marked as
disabled so they are not retrieved, or, alternatively, a separate step could be
performed to eliminate disabled navigation objects from being used in filtering
multimedia content. Id. at col. 18, l. 66–col. 19, l. 4.
In its Patent Owner Response, Patent Owner asserts that “because neither
Abecassis nor Malkin teaches or suggests a navigation object, these references also
cannot teach or suggest the disabling of a navigation object.” PO Resp. 12. Patent
Owner also asserts that the “supervisor preview” in Abecassis, on which Petitioner
relies for disclosing the “providing for disabling” step, is performed during the
creation of the video map and is therefore irrelevant to the process of employing
navigation objects during the process of outputting multimedia content. Id.
In its Petition, Petitioner asserts that Abecassis discloses the claimed
“providing for disabling” step in the context of the asserted ground of anticipation
based on Abecassis alone. Pet. 40. The Petition did not address the “disabling”
step in the context of the asserted ground of obviousness based on Abecassis and
Malkin. Petitioner asserts that Abecassis discloses “a supervisor’s previewing
flagged segments and making individualized determinations to skip or include the
segments, where an ‘include’ decision entails disabling the segment information
(or navigation object).” Id. (citing Ex. 1006 ¶¶ 37–38). Petitioner also asserts that
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when a viewer establishes content preferences in the Abecassis video map system,
the result is “ignoring the segment information for segments that are deemed
acceptable under the viewer’s preferences.” Id. (citing Ex. 1006 ¶¶ 74–75).
Neither of these assertions establishes that a navigation object can be disabled, as
required in claim 27. A viewer’s content preferences, which define which
segments are played and which are not, do not disable a navigation object, as
required by claim 27. Claim 27 specifically requires “playing the multimedia
content at the output device excluding the portion thereof which is filtered in
accordance with the corresponding navigation object and ignoring the filtering
action specified by any disabled navigation objects.” Ex. 1001, col. 23, ll. 54–58
(emphasis added). Thus, in claim 27, the disabling step ignores a specified
filtering action during playback, not at some earlier time as in Abecassis.
Dr. Stevenson’s Declaration, on which Petitioner relies for evidentiary
support, repeats Petitioners assertions in the context of the ground of anticipation
based on Abecassis alone. We also find Dr. Stevenson’s conclusions unpersuasive.
Petitioner has not directed us to any persuasive evidence or argument that
creating a video map with viewer content preferences, as disclosed in Abecassis,
discloses or suggests the steps of “providing for disabling” a navigation object and
“ignoring the filtering action specified by any disabled navigation objects,” as
required in claim 27. Moreover, Petitioner has not provided any persuasive
evidence or argument that it would have been obvious to include the asserted video
map “disabling” technology disclosed in Abecassis to provide for disabling one or
more of the navigation objects of Malkin. Accordingly, the preponderance of the
evidence does not establish that the combination of Abecassis and Malkin, on
which this inter partes review is based, discloses or suggests providing for
disabling a navigation object and ignoring filtering actions specified by any
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disabled navigation objects, as required in claim 27. Accordingly, Petitioner has
not demonstrated by a preponderance of the evidence that claim 27 is unpatentable
over Abecassis and Malkin.
d. Dependent Claims 28, 30–34, and 40
Dependent claims 28, 30–34, and 40 depend, directly or indirectly, from
claim 27, and thus include all its elements and limitations. 37 C.F.R. § 1.75(c)
(“One or more claims may be presented in dependent form, referring back to and
further limiting another claim or claims in the same application” (emphasis
added)). Accordingly, for the same reasons as discussed above for claim 27,
Petitioner has not demonstrated by a preponderance of evidence that claims 28,
30–34, and 40 are unpatentable over Abecassis and Malkin.
III. CONCLUSION
Based on the evidence and arguments, Petitioner has not demonstrated by a
preponderance of the evidence that claims 16, 27, 28, 30–34, and 40 of the ’970
patent are unpatentable under 35 U.S.C. § 103(a) based on Abecassis and Malkin.
IV. ORDER
In consideration of the foregoing, it is hereby
ORDERED that claims 16, 27, 28, 30–34, and 40 of the ʼ970 patent have not
been shown, by a preponderance of the evidence, to be unpatentable.
This is a final decision. Parties to the proceeding seeking judicial review of
the decision must comply with the notice and service requirements of 37 C.F.R.
§ 90.2.

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For Petitioner:

Steven Greenberg
Kara Brotman
CRGOLaw
sgreenberg@crgolaw.com
kbrotman@crgolaw.com

John Carey
CAREY RODRIGUEZ GREENBERG O’KEEFE, LLP
jcarey@careyrodriguez.com

For Patent Owner:

Brian Tucker
Joshua Rupp
KIRTON McCONKIE PC
btucker@kmclaw.com
jrupp@kmclaw.com

kis