DivX, LLC

Patent Trials and Appeals Board

Sep 27, 2021

IPR2020-00648 (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
____________
NETFLIX, INC. and HULU, LLC,
Petitioner,
v.
DIVX, LLC,
Patent Owner.
____________

IPR2020-00648
Patent 9,998,515 B2
____________

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

GERSTENBLITH, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining Some Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
Background
Netflix, Inc. and Hulu, LLC (collectively “Petitioner”) filed a Petition
(Paper 3, “Pet.”) requesting institution of inter partes review of claims 1–6,
8–10, 13, 14, 16, 17, and 19 (“the Challenged Claims”) of U.S. Patent
No. 9,998,515 B2 (Ex. 1001, “the ’515 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 IPR2020-00647 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 shown, by a preponderance of the evidence, that
claims 16, 17, and 19 are unpatentable, but has not shown, by a
preponderance of the evidence, that claims 1–6, 8–10, 13, and 14 of the
’515 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 1–6, 8–10, 13, 14, 16,
17, and 19 of the ’515 patent on the following grounds:
Claim(s) Challenged 35 U.S.C. §2 Reference(s)/Basis
1, 4, 5, 8–10, 14, 16, 17, 19 103(a) Pyle,3 Marusi4
1–6, 8–10, 13 103(a) Lewis,5 Marusi
Pet. 7. Petitioner supports its challenge with a Declaration by Clifford
Reader, Ph.D. (Ex. 1003, “the Reader Declaration”). Patent Owner supports
its arguments with a Declaration by Kenneth A. Zeger, Ph.D. (Ex. 2016).
The ’515 Patent
The ’515 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, 1:20–22. In its Background section, the ’515 patent
explains that “[a]daptive bit rate streaming or adaptive streaming involves
detecting the present streaming conditions (e.g. the playback device’s

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
’515 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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networking bandwidth and video decoding capacity) in real time and
adjusting the quality of the streamed media accordingly.” Id. at 1:34–38.
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 1:60–64. The
’515 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 6:50–57.
Figure 1 of the ’515 patent is reproduced below:

Figure 1 “is a network diagram of a streaming system including a playback
server.” Ex. 1001, 6:13–15. The ’515 patent explains:
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streaming system 10 includes a number of playback devices 12
configured to request streaming of content from remote servers
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 7:33–49.
Figure 4 of the ’515 patent is reproduced below:

Figure 4 “is a flow chart illustrating a process for automatically generating a
top level index file.” Ex. 1001, 6:22–24. The ’515 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 11:62–65. 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 12:4–7.
The ’515 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, 12:8–23. The ’515 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 8:2–7.
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Illustrative Claims
Claims 1 and 16, the independent claims challenged in this
proceeding, are illustrative of the claimed subject matter and are reproduced
below, with Petitioner’s bracketing added for reference:
1. [a] A method for authorizing playback of content,
comprising:
[b] receiving a request for content from a playback
device at a playback server, where the request includes a
product identifier that identifies a device configuration;
[c] identifying, using the playback server, based on the
product identifier, a plurality of device capabilities including a
device type and a device software version indicating a version
number for an adaptive streaming software component
implemented on the playback device;
[d] retrieving, using the playback server, a list of assets
associated with the identified piece of content, wherein each
asset is a different stream associated with the piece of content;
[e] filtering, using the playback server, the list of assets
based on the plurality of device capabilities;
[f] generating, using the playback server, a top level
index file describing each asset in the filtered list of assets,
[g] wherein the top level index file identifies locations and
bitrates of a plurality of alternative streams capable of being
used to perform adaptive streaming of the content; and
[h] sending the top level index file from the playback
server to the playback device.

16. [a] A playback device, comprising:
[b] memory containing information used to identify
capabilities of the playback device; and
a processor configured by a client application;
[c] wherein the client application configures the
processor to:
request, using the playback device, a top level index file
from a playback server, where the request identifies a piece of
content and includes a software version indicating a version
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number for an adaptive streaming software component
implemented on the device;
[d] receive, using the playback device, a top level index
file from the playback server, where the top level index file
identifies locations and bitrates of a plurality of different
alternative streams capable of being used to perform adaptive
streaming of the identified piece of content and accessible to the
playback device;
[e] select, using the playback device, an initial stream
from the plurality of different alternative streams;
[f] retrieve, using the playback device, at least a portion
of the initial stream from the locations identified in the top level
index file; and
play back, using the playback device, the portion of the
initial stream.
Ex. 1001, 20:43–67 (claim 1), 22:4–26 (claim 16).
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
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
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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. 2016 ¶ 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
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,
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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. 8–9
(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
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
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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 term—“top level index file”—
for construction. Pet. 19. Patent Owner’s Preliminary Response did not
contest Petitioner’s proposed construction. Inst. Dec. 11 (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.
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.”
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“a list of assets”; “the list of assets”; “the filtered list of
assets”
Limitation 1[d] recites, inter alia, “retrieving . . . (i) a list of assets
associated with the identified piece of content”; limitation 1[e] recites, inter
alia, “filtering . . . the list of assets”; and limitation 1[f] recites, inter alia,
“generating . . . a top level index file describing each asset in the filtered list
of assets.” Ex. 1001, 20:54–61 (emphasis added). Although neither party
initially requested that we construe the phrases “a list of assets,” “the list of
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. 31–32 (citations omitted), Pet. Reply 13), whereas Patent
Owner contends “a” means only one (see PO Resp. 12). 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. 31–32 (citing Ex. 1003 ¶ 171).
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. 12 (citing Ex. 2016 ¶ 38). 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
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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. 2016 ¶ 40).
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
decades of precedent finding that ‘a’ means ‘one or more’ except in limited
circumstances that are not present here.” Pet. Reply 13 (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 12–13 (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. 31–32
(citing Ex. 1003 ¶ 171). In other words, that “a list of assets” can include
one or more lists of assets.
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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 of 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
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 ’515 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 12–13 (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 ’515 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
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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 ’515 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.”
Considering next the phrase “the list of assets” recited in
limitation 1[e], 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[d] and discussed above. See PO Resp. 1–2; 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.,
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might be utilized to give light to the circumstances surrounding
the origin of the subject matter sought to be patented.6
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
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)).

6 Neither party presents evidence of objective considerations of
nonobviousness.
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Obviousness over Pyle and Marusi
Petitioner asserts that the combination of Pyle and Marusi would have
rendered the subject matter of claims 1, 4, 5, 8–10, 14, 16, 17, and 19
obvious to one of ordinary skill in the art at the time of the invention.
Pet. 19–51. Patent Owner raises several arguments in response.
With respect to independent claim 1, one argument asserted by Patent
Owner is that the Petition fails to show that the combination of Pyle and
Marusi teaches limitation 1[f]—“generating . . . a top level index file
describing each asset in the filtered list of assets.” PO Resp. 19–21. As
discussed further below, Petitioner’s analysis of limitation 1[f] suffers from
a deficiency in that neither the Petition nor Dr. Reader sets forth any reason
or explanation why one of ordinary skill in the art would have understood
Pyle to generate a manifest file simply by placing the manifest file in a
memory for transmission to a client device. Pet. 35 (citing Ex. 1003 ¶ 184).
Additionally, this deficiency affects claims 4, 5, 8–10 and 14, which depend
from claim 1. Accordingly, we focus our analysis of claim 1 on this issue
after describing Pyle and Marusi.
With respect to independent claim 16, Patent Owner raises only a
single issue—that Petitioner fails to show the combination of Pyle and
Marusi includes the functionality of limitation 16[c]. PO Resp. 27 (referring
to § II.D of Patent Owner’s Response, which is directed to limitation 1[c]).
Patent Owner relies entirely on its arguments directed to limitation 1[c] in
challenging Petitioner’s analysis of limitation 16[c]. Id. Thus, our
discussion below considers the arguments and evidence directed to
limitations 1[c] and 16[c]. For the reasons explained below, we find, by a
preponderance of the evidence, that Petitioner’s analysis is supported on the
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record and sufficient to show that the subject matter of claim 16 would have
been obvious to one of ordinary skill in the art at the time of the invention.
Further, Petitioner’s analysis of claims 17 and 19, to which Patent Owner
does not raise additional argument, is similarly supported on the record.
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.
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 shown 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.
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Pyle explains:
In general, system 200 can include manifest component 202
that can be configured to maintain multiple manifests 2041-204N
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.”
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Id. at 8:9–12. “As a result, conventional streaming systems are subject to
the combinatorial complexity problem, and moreover do not provide for
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. 19–22
(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 19–20 (citing
Ex. 1003 ¶ 144).
Petitioner asserts that “Pyle teaches common multimedia streaming
techniques that were widely known in the art, including 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 that filters asset data
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in order to provide a manifest file specific to a client device by using a
variety of parameters, including 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. Marusi, however, expressly
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 by looking up the device’s capabilities in a
database that correlates device capabilities with the identifying
information (such as a model number). Ex. 1005, [0085-0089].
Marusi then uses the capabilities to identify a subset of the
multimedia content appropriate for the requesting client device.
Ex. 1005, [0091]. Ex. 1003 ¶146.
Pet. 20–21.
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
and parameters.” Id. (citing Ex. 1004, 10:57–11:10; Ex. 1003 ¶ 147).
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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 by the client
device.” Pet. 21. 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. (citing Ex. 1003 ¶ 148).
Third, with respect to Marusi’s databases, Petitioner contends “[t]he
combination of Marusi’s databases to manage the data in Pyle’s system uses
a known technique to improve similar systems.” Pet. 21. 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. at 21–22 (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 databases.” Id. at 22 (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
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 analysis of each claim or claim
limitation includes a discussion of the specific teachings of each reference,
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or modifications thereof, that are relied upon for each claim or claim
limitation. See, e.g., Pet. 24–27 (addressing limitation 1[b]). With this
understanding, we turn our attention to Petitioner’s analysis of
limitation 1[f].
b. Claim 1 – Limitation 1[f]
Limitation 1[f] recites “generating, using the playback server, a top
level index file describing each asset in the filtered list of assets.” Ex. 1001,
20:60–61. The Petition addresses limitations 1[f], 1[g], and 1[h] in a
combined section. See Pet. 34–36 (addressing all three limitations). With
respect to limitation 1[f], the Petition consists of a single paragraph:
As explained for [limitations] 1(d) and 1(e), Pyle teaches
filtering the list of assets in response to a request for content.
Pyle further teaches transmitting a manifest file to the
requesting device in response to the request for content.
Ex. 1004, FIG. 4, 10:22–56 (selecting and transmitting manifest
files to the requesting device), 10:57–11:10 (transmitting a new
manifest file). A [person of ordinary skill in the art] would
have understood that the manifest file sent in response to a
request for content is generated because the manifest file must
be placed in a memory for transmission to a client device.
Ex. 1003 ¶184.
Pet. 34–35 (citations included in block quote). Although the Petition
contends “[t]hese limitations are rendered obvious by the combination of
Pyle and Marusi,” see id. at 34 (citing Ex. 1003 ¶ 183), Dr. Reader opines
that these limitations are “rendered obvious by Pyle,” see Ex. 1003 ¶ 183
(addressing limitations 1[f], 1[g], and 1[h] together as one “claim
limitation”). Paragraph 184 of Dr. Reader’s Declaration is essentially
identical to the single paragraph quoted above from the Petition. Ex. 1003
¶ 184.
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Patent Owner asserts that “the Petition fails to explain why a [person
of ordinary skill in the art] would think that the claim requirement of
‘generating a top level index file’ could be met simply by storing a file in
memory.” PO Resp. 19 (referring to § II.C.1 of the Patent Owner
Response). Patent Owner contends that “Petitioner provides no explanation
or support for this apparent construction—the Petition’s only cite for this
statement is to one paragraph of Dr. Reader’s testimony which merely
repeats the Petition’s assertion verbatim.” Id. at 20. Patent Owner argues
that “little weight” should be accorded to “such conclusory arguments.” Id.
(citation omitted). Further, Patent Owner asserts that “[a]s the Petition
offers no other argument for why the Pyle combination teaches ‘generating a
top level index file,’ the Petition fails to meet its burden to show that the
limitation is met.” Id. at 21.
In its Reply, Petitioner asserts that Patent Owner “ignores that Pyle
teaches generating a top level index in two ways.” Pet. Reply 15. “First,
Pyle teaches generating a top level index file by creating a new manifest file
in response to the request for content that is transmitted to the requester.”
Id. (citing Pet. 34–35; Ex. 1003 ¶ 184; Pet. Reply § IV.A). Petitioner asserts
that Patent Owner “does not address that evidence or explain how creating a
new manifest in response to a request for content does not teach
‘generating.’” Id. “Second, Dr. Reader identifies another way that Pyle
teaches the generating limitation – when Pyle transmits either a new
manifest file or a selected manifest file (one that existed before the request
for content), a copy of the new or selected manifest file is placed in memory
for transmission.” Id. (citing Pet. 35; Ex. 1003 ¶ 184). On this second point,
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Petitioner notes that Dr. Zeger did not attempt to disagree with Dr. Reader’s
opinion. Id.
In its Sur-reply, Patent Owner contends that Petitioner’s alleged first
“argument is not in the Petition, which merely argues that ‘the manifest file
sent . . . is generated because the manifest file must be placed in a memory
for transmission to a client device.” PO Sur-reply 13–14 (citing Pet. 34–35).
Patent Owner asserts that this new argument by Petitioner is untimely and
should be ignored. Id. at 14 (citations omitted). Additionally, Patent Owner
notes that Petitioner’s Reply does not provide any further details to explain
why one of ordinary skill in the art would understand placing a manifest file
in memory for transmission as teaching generating a top level index file. Id.
(citing Pet. Reply 15; PO Resp. 20).
We agree with Patent Owner that the Petition sets forth only one
position as to how Pyle teaches limitation 1[f]. That position is reproduced
above, quoted in full, from the one paragraph discussing limitation 1[f] in
the Petition. Pet. 34–35. As reflected there, the only argument set forth in
the Petition on this limitation is that one of ordinary skill in the art would
have understood that “the manifest file sent in response to a request for
content is generated because the manifest file must be placed in a memory
for transmission to a client device.” Id. at 35. The relevant paragraph of the
Petition begins by reiterating Petitioner’s arguments regarding
limitations 1[d] and 1[e]. Id. at 34. The next sentence specifically states that
Pyle teaches “transmitting a manifest file” and is followed by three citations
to Pyle—Figure 4; column 10, lines 22–56; and column 10, line 57 through
column 11, line 10. Id. at 34–35. Citations, such as these, placed after a
statement are intended to show support for that statement. Here, they do just
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that with respect to showing that Pyle transmits a manifest file to a client
device. Figure 4 of Pyle shows, inter alia, Pyle’s transmission of selected
manifest 418 or new manifest 422. Ex. 1004, Fig. 4. And, Petitioner’s
parentheticals following the citations to columns 10 and 11 explain the
purpose or import of the citations thereto. In each instance, Petitioner’s
parentheticals state that they are specifically directed to the transmitting
aspects of Pyle: “selecting and transmitting manifest files to the requesting
device” and “transmitting a new manifest file.” Pet. 34–45 (emphasis
added).7 In other words, Petitioner’s explanatory parentheticals explain the
purpose(s) of the citations. And, in each instance, the parenthetical is
directed to transmission of a manifest file to the client device by either
selecting and transmitting an existing manifest or transmitting a new
manifest. Neither the citations nor the parentheticals would have reasonably
led Patent Owner or the Board to understand that Petitioner intended to
assert an argument that is not stated, let alone stated clearly, in the Petition.
Accordingly, we disagree with Petitioner’s Reply position that the Petition
also raises the argument that Pyle’s creation of a new manifest (as opposed
to its transmission) teaches “generating . . . a top level index file,” as recited
in limitation 1[f]. That argument, simply put, is not there.
Additionally, a comparison of Petitioner’s discussion of a similar
limitation in related case IPR2020-00647, confirms that Petitioner knew how
to raise the argument (that creating a new manifest teaches generating a top

7 Paragraph 184 of the Reader Declaration contains the same citations to
Pyle and same explanatory parentheticals. Ex. 1003 ¶ 184.
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level index file) if Petitioner chose to do so.8 In IPR2020-00647, Petitioner
asserted 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 filtered list of assets because as explained for limitations 1[c] and 1[d],
Pyle teaches . . . creating new manifest files.” IPR2020-00647, Paper 3 at 42
(addressing claim 1, specifically limitation 1[e], of related U.S. Patent
No. 9,270,720 B2, which recites “generating a top level index file describing
each asset in the filtered list of assets using the playback server system”).
That argument, however, is not asserted in the Petition in this proceeding.9
Conversely, the argument raised by Petitioner here—that placing a manifest
file in memory for transmission to a client device teaches generating a top
level index file—is not asserted by Petitioner in IPR2020-00647. See id. at
42–44. Thus, Petitioner chose to assert different positions regarding
“generating.” Accordingly, Petitioner knew how to raise the argument that
Pyle’s creation of a new manifest teaches the generating of limitation 1[f],

8 Although this proceeding and IPR2020-00647 are related and the oral
hearings were held together, the cases are not consolidated and the
arguments and evidence submitted in each proceeding controls for that
particular case.
9 The difference between the two petitions was discussed during the oral
hearing. See Tr. 45:12–47:17. Petitioner’s counsel asserted that because
column 10, line 57 through column 11, line 10 of Pyle was cited in both
proceedings, it should have been understood that Petitioner was relying on
the creation of a new manifest, in addition to the placement of the new
manifest in memory for transmission, to teach the generating aspect of
limitation 1[f]. Id. at 47:9–17. For the reasons discussed above, particularly
in light of Petitioner’s parentheticals that explain the significance of the cited
material, we do not agree that Petitioner raised this argument in the Petition
in this proceeding.
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but chose not to do so. Thus, because Petitioner did not raise this argument
here, it is not in the record before us.10
Turning to the argument that is raised in the Petition, we agree with
Patent Owner that Petitioner and Dr. Reader fail to explain why one of
ordinary skill in the art would have understood that Pyle generates a top
level index file by placing a manifest file in memory for transmission to a
client device. Pet. 35; see Ex. 1003 ¶ 184. “Opinions expressed without
disclosing the underlying facts or data may be given little or no weight.”
Patent Trial and Appeal Board Consolidated Trial Practice Guide
(Nov. 2019) (“Consolidated TPG”), 40–41, available at
https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (citing
Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)).
Here, there is no explanation or reason given for Petitioner’s assertion or
Dr. Reader’s testimony and the connection, if any, is not otherwise apparent.
Further, aside from Dr. Reader’s unexplained position, Petitioner has not
pointed us to any evidence of record supporting the argument that one of
ordinary skill in the art would have understood that placement of a file in
memory for transmission teaches generating the file as recited in
limitation 1[f]. Accordingly, without any explanation whatsoever, the
record is without a sufficiently supported basis upon which to make that
finding, resulting in a failure of proof by Petitioner with respect to claim 1.11

10 We also note that Petitioner’s Reply does not seek to add a new argument
for our consideration; rather, Petitioner’s Reply asserts, albeit incorrectly,
that the argument was raised in the Petition. See Pet. Reply 15.
11 Although Petitioner’s Reply sets forth several arguments in response to
other arguments raised in Patent Owner’s Response, those additional
arguments do not address to this aspect of limitation 1[f]. See, e.g., Pet.
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c. Dependent Claims 4, 5, 8–10, and 14
Petitioner contends that the combination of Pyle and Marusi would
have rendered the subject matter of claims 4, 5, 8–10, and 14 obvious to one
of ordinary skill in the art. Pet. 36–41. Claims 4, 5, 8–10, and 14 depend
from claim 1 and, therefore, include limitation 1[f], 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. Independent Claim 16
Petitioner contends that the combination of Pyle and Marusi would
have rendered the subject matter of claim 16 obvious to one of ordinary skill
in the art. Pet. 41–49; see also id. at 19–22 (discussing the combination of
“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”). Claim 16, reproduced above in full,
generally is directed to a “playback device” comprising a memory and a
processor, where the processor is configured to request a top level index file,
receive a top level index file that identifies locations and bitrates of a
plurality of different alternative streams, select an initial stream from the
plurality of different alternative streams, retrieve at least a portion of the
initial stream, and play back the portion of the initial stream. See Ex. 1001,
22:4–27 (claim 16). Petitioner sets forth a detailed discussion of claim 16
with citations to the evidentiary record. Pet. 41–49.

Reply 9–11 (asserting that Patent Owner’s arguments directed to
limitations 1[d] (retrieving) and 1[e] (filtering) attack the references
individually).
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Patent Owner’s Response challenges only a single aspect of
Petitioner’s analysis of claim 16—limitation 16[c]. PO Resp. 27.
Specifically, Patent Owner contends that “[t]he Petition fails to show how
Pyle’s modified playback device includes the functionality of
[limitation] 16[c] for the reasons discussed supra, Section II.D.” Id.
Section II.D of Patent Owner’s Response is directed to arguing that the
combination of Pyle and Marusi fails to teach limitation 1[c]. Id. at 22–27.
We have reviewed the Petition’s discussion of claim 16 and the
evidentiary citations therein. Because we find that Petitioner’s arguments
directed to claim 16, in general, are supported sufficiently on the record
before us, we direct our focus to Patent Owner’s challenge to
limitation 16[c]. We begin by setting forth limitations 1[c] and 16[c] and
then we walk through the parties’ arguments directed thereto.
The similarities between limitations 1[c] and 16[c] are shown in the
chart below:
Limitation 1[c] Limitation 16[c]
identifying, using the playback
server, based on the product
identifier, a plurality of device
capabilities including a device type
and a device software version
indicating a version number for an
adaptive streaming software
component implemented on the
playback device
wherein the client application
configures the processor to:
request, using the playback device,
a top level index file from a
playback server, where the request
identifies a piece of content and
includes a software version
indicating a version number for an
adaptive streaming software
component implemented on the
device
Ex. 1001, 20:48–53, 22:8–13 (emphasis added).
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With respect to limitation 16[c], Petitioner contends “[t]he
combination of Pyle and Marusi renders this additional limitation obvious.”
Pet. 44 (citing Ex. 1003 ¶ 212). In particular, Petitioner asserts, “Pyle
teaches that a manifest file, i.e., a top level index file, is provided to the
application on the playback device in response to a request.” Id. (citing
Ex. 1004, 32:51–54). Petitioner contends that one of ordinary skill in the art
“would have understood from Pyle’s description of an HD television and a
smart phone that requests each include a client application because Pyle’s
description describes a viewer that is able to choose among content and
input preferences into the devices.” Id. at 44–45. Petitioner argues that it
would have been obvious “that the application running on the TV or smart
phone makes a request to identify a piece of content, as discussed above
regarding claim limitation 1[b], based on the input from the viewer.” Id. at
45. And, Petitioner asserts that “it would have been obvious for the request
to include a software version indicating a version number for an adaptive
streaming software component implemented on the playback device, as
discussed above regarding claim limitation 1[c].” Id. (citing Ex. 1003
¶ 213).
Petitioner’s discussion of the “software version” aspect of
limitation 1[c] sets forth two alternative positions as to why that recitation
would have been obvious—(1) based on Pyle, and (2) based on Pyle in
combination with Marusi. See Pet. 28–29 (discussing both). We discuss
each, starting with Petitioner’s first alternative and the parties’ arguments
directed to the specific position.
With respect to Petitioner’s first alternative, Petitioner contends that
one of ordinary skill in the art
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would have found it obvious to determine “a device software
version indicating a version number for an adaptive streaming
software component implemented on the playback device” as
that would have been a relevant consideration for Pyle’s
adaptive streaming system because the adaptive streaming
software component is software that decodes and plays the
requested content.
Id. at 28 (citing Ex. 1003 ¶ 166). Petitioner asserts that “[i]t was
well-known at the relevant time that the version of such software is an
important consideration because different versions of such software (e.g.,
Flash and QuickTime) supported different formats over time.” Id. (citing
Ex. 1003 ¶ 166).
As discussed above, in response to Petitioner’s contentions regarding
claim 16, Patent Owner refers to its arguments directed to limitation 1[c].
PO Resp. 27. With respect to limitation 1[c], Patent Owner argues that the
Petition fails to prove that it would have been obvious to “modify Pyle to
include a product identifier and then use that product identifier to identify ‘a
device software version’” as recited in the claim and that the Petition “fails
to prove that Marusi fills this gap.” Id. at 22–23.
In response to Petitioner’s first alternative, based on obviousness in
light of Pyle, Patent Owner contends that “the Petition does not cite any
support for [the] contention [that the version of such software was an
important consideration because different versions of such software (e.g.,
Flash and QuickTime) supported different formats over time] aside from the
one paragraph in Dr. Reader’s declaration.” PO Resp. 23 (citing Pet. 28;
Prelim. Resp. 30). Patent Owner asserts that “as discussed in the [Patent
Owner Preliminary Response], Pyle’s express disclosure of its manifest files,
and the commercial implementation of Pyle’s technology, demonstrate that
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‘software version indicating a version number of an adaptive streaming
component’ was not a concern for Pyle’s technology.” Id. at 24 (citing
Prelim. Resp. 30; Ex. 2016 ¶ 51).
Patent Owner argues, in its Preliminary Response, that “Pyle provides
full schemas for all manifests implemented by the client and server.”12
Prelim. Resp. 30 (citing Ex. 1004, Tables I–IV, Fig. 8). Patent Owner
contends that “Pyle indicates nothing concerning how its server would have
accounted for different client software versions, even assuming it received
this information, which it does not. And there is no indication the
commercial embodiment of the IIS server identified a version number for the
client’s adaptive streaming software.” Id. (citing Ex. 2007 (IIS Smooth
Streaming), 28–30). Because this argument was directed to limitation 1[c],
Patent Owner asserts that “even if different software versions were
implemented in Pyle, why would it have been obvious for the playback
server to identify the software version based on the product identifier, as
recited in claim 1, as opposed to having the playback device send it directly?
The Petition offers no answer.”13 Id. at 31.
Petitioner’s Reply only addresses Petitioner’s second alternative
(based on Pyle and Marusi) as to why this limitation would have been

12 We consider Patent Owner’s Preliminary Response because Patent Owner
raised the same argument in the Patent Owner Response.
13 Although claim 1 recites a “product identifier,” claim 16 does not. Thus,
this argument by Patent Owner does not apply to the discussion of
limitation 16[c]. In fact, Patent Owner’s proposed option of having the
playback device send the software version directly appears to align with the
language of claim 16, which uses a playback device’s processor to request a
top level index file and includes the software version number for an adaptive
streaming software component in the request.
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obvious, not Petitioner’s first alternative (based on Pyle alone). See Pet.
Reply 16–18; see also PO Sur-reply 14–15 (noting that Petitioner’s Reply
does not address Petitioner’s first alternative). With respect to Petitioner’s
second alternative, Petitioner contends “it would have been obvious to
identify the version number for an adaptive streaming software component
based on Marusi.” Pet. 29. In particular, Petitioner asserts that “Marusi also
teaches that determining the model or type of a client device (from the
terminal identifier) alone does not solve all multimedia compatibility
concerns because ‘the formats supported sometimes vary for the same
[phone] model according to the version, i.e. the last software upgrade of the
actual phone.’” Id. (quoting Ex. 1005 ¶ 6) (citing Ex. 1003 ¶ 168) (alteration
in original). Petitioner contends that “Marusi teaches that the terminal
identification information commonly used by mobile phones include
information called a ‘Type Allocation Code’ [(TAC)] that includes a
software version number of the phone.” Id. (citing Ex. 1005 ¶ 113).
Petitioner also asserts that Marusi teaches that “this information can be used
to retrieve capability information for the client device.” Id. (citing Ex. 1005
¶ 119; Ex. 1003 ¶ 168).
In response to this alternative, Patent Owner contends that Petitioner’s
argument fails “because Marusi’s Type Allocation Code does not include a
software version number.” PO Resp. 25. Patent Owner asserts that “a TAC
does not indicate a software version, but instead demonstrates the model of
the device as well as the type of wireless network.” Id.; see id. at 25–27
(discussing Dr. Zeger’s testimony regarding the components of a TAC)
(citing Ex. 2016 ¶ 55).
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In its Reply, Petitioner reiterates that Marusi states “[t]he TAC code is
a portion of the 15-digit international mobile equipment identity (IMEI)
code or the 17-digit international mobile equipment identity and Software
Version (IMEISV) code used to uniquely identify wireless devices.” Pet.
Reply 16 (quoting Ex. 1005 ¶ 113) (citing Ex. 1005 ¶¶ 17–20; Pet. 26–27,
29). Petitioner explains that Marusi “teaches that the IMEI or IMEISV code
is the terminal identification information transmitted by the mobile device.”
Id. (citing Ex. 1005 ¶ 114). Petitioner contends that “whether Marusi
correctly describes IMEISV and TAC codes is irrelevant because Marusi
expressly teaches a [person of ordinary skill in the art] to use terminal
identification information that includes a software version.” Id. (citing In re
Clark, 420 F. App’x 994, 998 (Fed. Cir. 2011)). And, Petitioner asserts that
“the rationale for considering a device type and software version is expressly
taught by Marusi’s paragraph 6”:
Content providers . . . used to give a list of mobile phones
which support the proposed content. . . . This does not solve the
problem of incompatibility and not all users know the exact
model they have, because the formats supported sometimes
vary for the same model according to the version, i.e., the last
software upgrade of the actual phone.
Id. (quoting Ex. 1005 ¶ 6).
Additionally, Petitioner asserts that Dr. Zeger’s testimony regarding
whether the software version of a media player is a relevant concern when
choosing media for playback, either “demonstrates his lack of knowledge in
this field” or is “a false statement.” Pet. Reply 17 (citing Ex. 1010, 234:14–
235:1). Petitioner further points to a new reference, Exhibit 1009, arguing
that it describes providing different versions of video content depending
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upon the version of the media player (i.e., an adaptive streaming software
component). Id. at 17–18 & n.2 (citations omitted).
In its Sur-reply, Patent Owner acknowledges that Marusi’s teaching is
specifically about the last software upgrade of the actual phone, but argues
that is not the same as an adaptive streaming component. PO Sur-reply 15
(citing and incorporating Prelim. Resp. 31). Additionally, Patent Owner
disagrees with Petitioner’s characterization of Dr. Zeger’s testimony,
contending that Petitioner’s criticisms should be disregarded. Id. (citing
Ex. 1010, 234:14–17, 234:23–235:1, 236:6–10). Further, Patent Owner
contends that Petitioner’s submission of a new reference, that does not form
part of the asserted combination and was not presented in the Petition,
should be discounted as untimely. Id. at 16 (citing Pet. Reply 17).
We determine that Petitioner’s second alternative, relying on Pyle and
Marusi, is persuasive to show that one of ordinary skill in the art would have
found it obvious that the software version of the adaptive streaming software
component implemented on a playback device is a relevant consideration in
the context of the combined teachings of the references, and, thus, it would
have been obvious to include the software version in the request identifying
a piece of content. In particular, Marusi specifically teaches that the
software version of a phone (i.e., client device) is a relevant consideration
when determining compatibility issues between multi-media content and a
playback device. See Ex. 1005 ¶ 6. One example of a client device in Pyle
is a smart phone, which one of ordinary skill in the art would have
understood to contain a memory with information that describes the device’s
capabilities. Pet. 43–44 (citing Ex. 1004, 35:58–59, 10:22–56; Ex. 1003
¶ 210). We credit Dr. Reader’s testimony that “the adaptive streaming
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software component is software that decodes and plays the requested
content.” Ex. 1003 ¶ 166. Thus, in light of Marusi’s teaching regarding the
importance of the software version of a client device and the combination
proposed by Petitioner, which includes the example of a smart phone as a
client device, we determine that the software version of the adaptive
streaming software component would have been a relevant concern to one of
ordinary skill in art at the time of the invention. Accordingly, we determine
that Petitioner has shown sufficiently that it would have been obvious to one
of ordinary skill in the art to include a “software version indicating a version
number for an adaptive streaming software component implemented on the
device” in the request as recited in limitation 16[c].14
As noted previously, Petitioner sets forth a detailed discussion of
claim 16 with citations to the evidentiary record. Pet. 41–49; see id. at
19–22 (discussing motivation to combine the teachings of Pyle and Marusi).
Above, our discussion focused on limitation 16[c] as that was only limitation
for which Patent Owner raised an argument, and any other responsive
argument is now waived. See Paper 10 (“Scheduling Order”), 8 (“Patent
Owner is cautioned that any arguments not raised in the response may be
deemed waived.”). We have reviewed Petitioner’s arguments and evidence
with respect to the other limitations of claim 16 and the reasons as to why
one of ordinary skill in the art would have been motivated to combine the

14 In reaching this determination we find little, if any, relevance in Patent
Owner’s argument regarding the alleged commercial implementation of Pyle
because what is ultimately commercialized does not set the boundaries for
what would have been obvious to one of ordinary skill in the art. See PO
Resp. 24 (discussing an alleged commercial implementation of Pyle’s
technology).
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teachings of Pyle and Marusi as proposed, and we find them sufficiently
supported on the record before us. Therefore, we affirmatively adopt
Petitioner’s analysis of the other limitations of claim 16 and motivation to
combine the teachings of Pyle and Marusi as our own. Pet. 41–44
(addressing limitations 16[a] and 16[b]), 45–49 (addressing
limitations 16[d]–[f]); see id. at 19–22 (addressing motivation to combine
the teachings of Pyle and Marusi).
e. Dependent Claims 17 and 19
Claims 17 and 19 depend from claim 16. Ex. 1001, 22:28 (claim 17),
22:35 (claim 19). Petitioner sets forth a detailed discussion of claims 17 and
19 with citations to the evidentiary record. See Pet. 50–51 (citing Ex. 1004,
8:3–6, 8:28–33, 8:43–54, 10:57–11:10, 10:22–39, 10:40–56; Ex. 1003
¶¶ 227–231); see also Pet. 19–22 (addressing motivation to combine the
teachings of Pyle and Marusi). Patent Owner does not raise an additional
argument (aside from the argument directed to claim 16) specific to these
dependent claims. See PO Resp. 27 (arguing claims 16, 17, and 19
together). We have reviewed Petitioner’s arguments and evidence with
respect to claims 17 and 19 and the reasons as to why one of ordinary skill in
the art would have been motivated to combine the teachings of Pyle and
Marusi as proposed, and we find them sufficiently supported on the record
before us. Therefore, we affirmatively adopt Petitioner’s analysis as our
own. Pet. 50–51; see id. at 19–22.
f. 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.”
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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
subject matter of claims 1–6, 8–10, 13, and 14 of the ’515 patent would have
been obvious, but has shown, by a preponderance of the evidence, that the
subject matter of claims 16, 17, and 19 would have been obvious to one of
ordinary skill in the art at the time of the invention.
Obviousness over Lewis and Marusi
Petitioner contends that the combined teachings of Lewis and Marusi
would have rendered the subject matter of claims 1–6, 8–10, and 13 obvious
to one of ordinary skill in the art at the time of the invention. Pet. 51–76.
Patent Owner raises several arguments in response, including that Petitioner
asserts limitation 1[d] 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. 30–33. 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 claims. See Pet. 51–53
(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 19–22. In particular, Petitioner contends that one of
ordinary skill in the art would have found the subject matter of claims 1–6,
8–10, and 13 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 51 (citing Ex. 1003 ¶ 233). 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 includes a discussion of the
specific teachings of each reference, or modifications thereof, that are relied
upon for each claim or claim limitation. See, e.g., Pet. 55–57 (addressing
limitation 1[b]). With this understanding, we turn our attention to
Petitioner’s analysis of limitation 1[d].
b. Claim 1 – Limitation 1[d]
Limitation 1[d] recites “retrieving, using the playback server, a list of
assets associated with the identified piece of content, wherein each asset is a
different stream associated with the piece of content.” Ex. 1001, 20:54–57.
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. 60–62.
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,” 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. (citing Ex. 1003 ¶ 267).
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) depending upon the platform type.”
Pet. 61 (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 ¶ 268). 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 ’515 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 ¶ 269).
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 generate 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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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 ¶270.
Pet. 62.
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. 31. 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, however, fails to provide evidence
or argument concerning that crucial ‘if,’ for it provides no rationale to
modify Lewis to retrieve a list of assets.”15 Id.

15 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
Resp. 35 (citing Ex. 2016 ¶ 80). 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 20 (citing Ex. 1003
¶¶ 267–268; Ex. 1006 ¶¶ 27–29, Fig. 3; Pet. 61). 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. 61–62. Petitioner’s attempt to assert, for the first
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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 is 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 20 (citing Pet. 62; Ex. 1003
¶¶ 260–270, 235). 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 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

time, in its Reply that processed video segments 375 also teach the recited
“assets” is an improper reply argument. See, e.g., Consolidated TPG at 74
(“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 16–17 (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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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.16 Further,

16 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. 51–53), that portion of the Petition does
not provide an additional reason why retrieving a list of assets as recited in
limitation 1[d] 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 is an example of a
reference that does describe such techniques.
Id. at 52 (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
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although Petitioner cites to Dr. Reader’s declaration (Ex. 1003 ¶ 270), Dr.
Reader’s testimony does not provide any further explanation or reason as to
why this aspect of limitation 1[d] would have been obvious. Dr. Reader
mentions that Lewis’s rule resolution server may include a rule that rewrites
the URLs within a manifest file to point to the content delivery network in
closest proximity to the client device, but this statement appears to support
the position that a manifest file contains a list of URLs. Ex. 1003 ¶ 270.
That example, however, does not provide a reason why it would have been
obvious to retrieve a list of assets, wherein each asset is a different stream
associated with the piece of content, as recited by limitation 1[d]. 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 2–6, 8–10, and 13
Petitioner contends that the combination of Lewis and Marusi would
have rendered the subject matter of claims 2–6, 8–10, and 13 obvious to one
of ordinary skill in the art. Pet. 69–76. Claims 2–6, 8–10, and 13 depend
from claim 1 and, therefore, include limitation 1[d], 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.”

Marusi’s alleged use of lists impacts the analysis of limitation 1[d]
(especially when Petitioner’s discussion of limitation 1[d] fails to rely upon
or cite Marusi).
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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
subject matter of claims 1–6, 8–10, and 13 would have been 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
’515 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. 60–62. 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 62–63. We also decline
to address Patent Owner’s constitutional challenge except to note that the
constitutionality of the appointments of the Administrative Patent Judges
was addressed by the U.S. Supreme Court in United States v. Arthrex, Inc.,
141 S. Ct. 1970, 1986–87, 1997 (2021).
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Patent 9,998,515 B2

57
V. SUMMARY
For the reasons discussed above, Petitioner has demonstrated, by a
preponderance of the evidence, that claims 16, 17, and 19 are unpatentable,
but Petitioner has not demonstrated, by a preponderance of the evidence, that
claims 1–6, 8–10, 13, and 14 of the ’515 patent 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, 4, 5, 8–
10, 14, 16,
17, 19
103(a) Pyle, Marusi 16, 17, 19 1, 4, 5, 8–10, 14
1–6, 8–10,
13 103(a)
Lewis,
Marusi 1–6, 8–10, 13
Overall
Outcome 16, 17, 19
1–6, 8–10, 13,
14
VI. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 16, 17, and 19 of U.S. Patent
No. 9,998,515 B2 (“the ’515 patent”) are determined to be unpatentable;
FURTHER ORDERED that claims 1–6, 8–10, 13, and 14 of U.S.
Patent No. 9,998,515 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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Patent 9,998,515 B2

58
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