MV3 Partners LLC

Patent Trials and Appeals Board

Jul 6, 2020

IPR2019-00474 (P.T.A.B. Jul. 6, 2020)

Trials@uspto.gov Paper 50
571.272.7822 Date: July 6, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNIFIED PATENTS, INC.,
Petitioner,
v.
MV3 PARTNERS LLC,
Patent Owner.
____________

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____________

Before JEAN R. HOMERE, JUSTIN T. ARBES, and CHRISTOPHER M.
KAISER, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
Dismissing Petitioner’s Motion to Strike
35 U.S.C. § 318(a)

I. INTRODUCTION
Unified Patents, Inc. (“Petitioner”) filed a Petition requesting inter
partes review of claims 1–6, 8, 10–21, 23–38, 40, 42–53, and 55–61 (“the
challenged claims”) of U.S. Patent No. 8,863,223 B2 (Ex. 1001, “the ’223
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patent”). Paper 2 (“Pet.”). MV3 Partners LLC (“Patent Owner”) filed a
Preliminary Response. Paper 6. Upon consideration of the parties’
contentions and supporting evidence, we instituted an inter partes review
pursuant to 35 U.S.C. § 314, as to the challenged claims of the ’223 patent.
Paper 9 (“Inst. Dec.”).
After institution, Patent Owner filed a Response (Paper 27,
“PO Resp.”); Petitioner filed a Reply to Patent Owner’s Response (Paper 32,
“Pet. Reply”); and Patent Owner filed a Sur-Reply (Paper 37,
“PO Sur-Reply”). Petitioner filed a Motion to Strike (Paper 43), and Patent
Owner filed an Opposition to the Motion to Strike (Paper 44). See infra
§ III.E. An oral hearing was held on May 26, 2020. A transcript of the
hearing has been entered into the record. Paper 49 (“Tr.”).
This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
For the reasons that follow, we determine that Petitioner has not
demonstrated by a preponderance of the evidence that challenged claims
1–6, 8, 10–21, 23–38, 40, 42–53, and 55–61 of the ’223 patent are
unpatentable.
II. BACKGROUND
A. Real Parties-In-Interest
Petitioner identifies itself as the sole real party-in-interest in this
proceeding. Pet. 66. Petitioner asserts that “[n]o other party exercised
control or could exercise control over [its] participation in this proceeding,
the filing of this petition, or the conduct of any ensuing trial,” and provides
voluntary interrogatory responses in support of that certification. Id. (citing
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Ex. 1010). Patent Owner names itself as the real party-in-interest. Paper 4,
1.
B. Related Matters
The parties indicate that the ’223 patent is involved in MV3 Partners
LLC v. Roku, Inc., Civil Action No. 6:18-cv-00308 (W.D. Tex. Oct. 16,
2018); MV3 Partners LLC v. Kohl’s Corp., Civil Action No. 6:18-cv-00373
(W.D. Tex. Dec. 21, 2018); and MV3 Partners LLC v. Best Buy Co., Civil
Action No. 6:18-cv-00374 (W.D. Tex. Dec. 21, 2018). Pet. 66; Paper 4, 2.
C. The ’223 Patent
The ’223 patent relates to a mobile set top box (“STB”) for
forwarding and presenting on a large screen of an external display (e.g., high
definition television monitor) multimedia content including packets using
predefined protocols (e.g., MPEG, IP) transmitted from various networks
(e.g., 3G, satellite) via unicast or multicast broadcasts to a small screen of an
authenticated user’s mobile computing device. Ex. 1001, Abstract, 1:11–13,
2:58–61, 3:39–41, 4:5–8, 4:56–66, 5:15–17, 6:11–12.
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Figure 2 below is illustrative.

Figure 2, reproduced above, depicts mobile STB (10) facilitating the
display in standard television (14) of data broadcast in unicast or multicast to
mobile computing device (20). Ex. 1001, 4:47–51.
In particular, as shown in Figure 2 above, the ’223 patent describes
that mobile device (20) provides received multimedia content to mobile STB
(10) via a docking port of docking station (22). Id. at 4:47–60. Upon
receiving the multimedia content, mobile STB (10) authenticates mobile
device (20), and determines (based on the authentication) that the user
associated therewith is permitted to transmit the multimedia content to
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external display (14). Id. at 8:47–51. Subsequently, upon determining the
native size format of the multimedia content received from mobile
device (20), mobile STB (10) determines the size format capable of being
displayed by external display (14), and upconverts the multimedia content
from a small size format to a larger size format for display on external
display (14). Id. at 4:15–27, 4:33–39, 5:35–43.
D. Illustrative Claim
Of the challenged claims, claims 1, 30, and 32 are independent.
Claim 1 is illustrative and is reproduced below with disputed limitations
emphasized:
1. A mobile set top box comprising:
a docking port configured to accept a mobile computing
device that has a native resolution of a first size format and
receives media content from at least two different types of
communications networks;
a mobile device input that receives media content from the
mobile computing device accepted in the docking port;
a television signal input that receives at least one type of
television signal;
a video processor configured to receive and process the
media content from the mobile device input, the video processor
including adaptive circuitry to process the media content
transmitted from unicast and multicast broadcasts, and the video
processor including circuitry and instructions operable to process
a predefined protocol stack of video packets forming at least a
portion of the media content;
a processor coupled to an electronic storage, the electronic
storage comprising instructions that, when executed, cause the
processor to:
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execute an upconversion process by processing first media
content from the mobile computing device, wherein the first
media content includes digital video image information
comprising a series of digital video frames, and is modified for
display on a display device that is separate from the mobile set
top box, the display device having a native display resolution of
a second size format that is larger than the first size format of the
mobile computing device, the upconversion process further
comprising:
receiving the first media content in the first size
format from the mobile device input,
querying the mobile computing device to determine
the first size format,
querying the display device,
determining the native display resolution of the
second size format of the display device based on a
response resulting from the query of the display device,
authenticating the validity of a user associated with
the mobile computing device,
determining, based on the validity of the user, that
the received first media content is permitted to be
provided to the display device, and
upscaling the received first media content from the
first size format to the second size format to generate
upconverted first media content, wherein upscaling
includes increasing a total number of horizontal and
vertical pixels in each video frame of the series of
digital video frames so that pixel dimensions in each
video frame match the native display resolution of the
second size format of the display device; and
render a television signal into second media content for
display on the display device, comprising:
receiving the television signal from the television
input;
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decoding the television signal into second media
content; and
rendering the second media content based on the
native display resolution of the display device to
generate rendered second media content; and
an output configured to deliver the upconverted first media
content and the rendered second media content from the mobile
set top box to the display device.

Ex. 1001, 8:9–9:3 (emphases added).

E. Asserted Prior Art
Reference Date Exhibit
Wang US 7,957,733 B2
June 7, 2011
(filed May 22,
2007)
1004
Balram US 2008/0198264 A1 Aug. 21, 2008 1006
Bennett US 2006/0031889 A1 Feb. 9, 2006 1005

F. Asserted Grounds of Unpatentability
Petitioner asserts the challenged claims are unpatentable on the
following grounds:
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Claims Challenged 35 U.S.C. § Reference(s)/Basis
1–6, 8, 10–21, 23–38,
40, 42–53, 55–61
103(a)1 Wang
1–6, 8, 10–21, 23–38,
40, 42–53, 55–61
103(a) Wang, Balram, Bennett
III. DISCUSSION
A. Claim Construction
Petitioner filed the Petition in this inter partes review on December
31, 2018. Because the Petition was filed after November 13, 2018,2 we
construe each claim “using the same claim construction standard that would
be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See
Changes to the Claim Construction Standard for Interpreting Claims in Trial
Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340,
51,358 (Oct. 11, 2018). Under this standard, a claim is construed “in
1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
2013. Given that the application from which the ’223 patent issued was
filed before this date, the pre-AIA version of § 103 applies.
2 On October 11, 2018, the USPTO revised its rules to harmonize the
Board’s claim construction standard with that used in federal district
court. Changes to the Claim Construction Standard for Interpreting Claims
in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
51,340 (Oct. 11, 2018) (now codified at 37 C.F.R. pt. 42 (2019)). This rule
change applies to petitions filed on or after November 13, 2018. Id. at
51,340.
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accordance with the ordinary and customary meaning of such claim as
understood by one of ordinary skill in the art and the prosecution history
pertaining to the patent.” Id. at 51,358; see also Phillips v. AWH Corp., 415
F.3d 1303, 1321 (Fed. Cir. 2005) (en banc) (stating “the ‘ordinary meaning’
of a claim term is its meaning to the ordinary artisan after reading the entire
patent”). “There are only two exceptions to this general rule: 1) when a
patentee sets out a definition and acts as his own lexicographer, or 2) when
the patentee disavows the full scope of a claim term either in the
specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am.
LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
Petitioner proposes no express claim constructions of any of the terms
in the challenged claims of the ’223 patent. Pet. 5. Patent Owner proposes
that the Board adopt the claim constructions of the district court in MV3
Partners LLC v. Roku, Inc., No. 6:18-cv00308 (W.D. Tex. Oct. 16, 2018)
(Ex. 2011). PO Resp. 7. In particular, Patent Owner proposes that the step
of “determining, based on the validity of the user, that the received first
media content is permitted to be provided to the display device” in claims 1,
30, and 32 be construed according to its “[p]lain and ordinary meaning.” Id.
at 8 (citing Ex. 2011, 6). Petitioner argues that because Patent Owner
provides no argument or evidence as to why those claim constructions
should be adopted, the Board should decline Patent Owner’s proposition to
adopt them. Pet. Reply 1.
We determine that no explicit construction of any term is necessary to
resolve the issues before us. See Nidec Motor Corp. v. Zhongshan Broad
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Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need
only construe terms ‘that are in controversy, and only to the extent necessary
to resolve the controversy,’ . . . we need not construe [a particular claim
limitation] . . . where the construction is not ‘material to the . . . dispute.’”
(citations omitted)).
B. Level of Ordinary Skill in the Art
In determining the level of ordinary skill in the art, various factors
may be considered, including the “type of problems encountered in the art;
prior art solutions to those problems; rapidity with which innovations are
made; sophistication of the technology; and educational level of active
workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
(internal quotation and citation omitted). In that regard, Petitioner’s
declarant, Anthony Wechselberger, testifies that a person having ordinary
skill in the art (“PHOSITA”) at the time of the invention
would have been a person having . . . (i) at least an undergraduate
degree in electrical engineering, computer science, computer
engineering, or a similar technical field; and (ii) two years of
experience in analysis, design, or development related to digital
video processing systems, distribution networks and
communications protocols, and signal formatting, with
additional education substituting for less experience and vice
versa.
Ex. 1003 ¶ 31. Patent Owner does not dispute Petitioner’s suggested
definition of the ordinarily skilled artisan in its Response. PO Resp. 6.
On this record, we observe that Petitioner’s proffered undisputed
assessment of a person of ordinary skill in the art appears to be consistent
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with the level of ordinary skill in the art at the time of the invention as
reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau,
261 F.3d 1350, 1355 (Fed. Cir. 2001). Therefore, for purposes of this
Decision, we adopt Petitioner’s assessment.
C. Obviousness over Wang
Petitioner asserts that claims 1–6, 8, 10–21, 23–38, 40, 42–53, and
55–61 are unpatentable under 35 U.S.C. § 103(a) as obvious over Wang.
Pet. 11–63. Patent Owner opposes. PO Resp. 18–33.
Based on the evidence in this record, we find that Petitioner has not
shown by a preponderance of the evidence that Wang teaches or suggests
each limitation of independent claims 1, 30, and 32, or the challenged claims
depending therefrom. For the reasons explained below, Patent Owner’s
arguments undermine Petitioner’s showing.
1. Principles of Law
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said subject matter
pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
The question of obviousness is resolved on the basis of underlying factual
determinations, including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of skill in the art; and (4) where in evidence, so-called secondary
considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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We also recognize that prior art references must be “considered together
with the knowledge of one of ordinary skill in the pertinent art.” In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour, 571
F.2d 559, 562 (CCPA 1978)). We analyze Petitioner’s obviousness grounds
with the principles identified above in mind.
2. Overview of Wang
Wang describes a method and system for displaying on an external
large screen display multimedia content originally destined for the smaller
screen of a mobile terminal display. Ex. 1004, 3:21–32. In particular, Wang
describes a set top box, upon receiving the multimedia content from the
mobile computing device, converting the multimedia data to suit the format
size of the larger external display. Id. at 14:43–49, 26:10–17. As shown in
Figure 9 below, Wang discloses that mobile terminal signal conversion
module (MTSCM) 912, upon receiving multimedia content transmitted to
mobile device (908) by service providers (902) through network (904),
reformats the multimedia content to display it on external display system
(914). Id. at 14:50–15:3, 15:19–31, 15:52–55, 15:65–16:2, 18:32–37. Wang
discloses upconverting the signal from mobile device (908) for display to
larger external device (914). Id. at 17:43–54, 17:63–18:6. Wang describes
that multimedia data are broadcast to the mobile device via multicast and
unicast. Id. at 8:45–48, 19:46–49. Figure 9 of Wang, reproduced below, is a
depiction of a mobile terminal signal conversion system.

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Figure 9, reproduced above, depicts a system with mobile terminal
signal conversion. Ex. 1004, 14:43–49.

3. Obviousness Analysis
Petitioner provides explanations for the claim limitations required by
claims 1–6, 8, 10–21, 23–38, 40, 42–53, and 55–61, and reasons for
modifying the teachings of Wang, citing Mr. Wechselberger’s Declaration
for support. Pet. 11–47; Ex. 1003 ¶¶ 41, 42, 73. Claim 1 recites a mobile
set top box comprising a processor coupled to electronic storage with
instructions that, when executed, cause the processor to “execute an
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upconversion process” comprising “authenticating the validity of a user
associated with the mobile computing device” and “determining, based on
the validity of the user, that the received first media content is permitted to
be provided to the display device.” Ex. 1001, 8:9–51. We focus on these
limitations, as they are dispositive.
a. Petitioner’s Contentions
Petitioner contends that the ’223 patent indicates that the mobile STB
is capable of “authenticating a user so that the user can receive media
service.” Pet. 39 (citing Ex. 1001, 3:11–13, 6:11–12). Likewise, Petitioner
contends that Wang’s disclosure of authenticating a user during a purchase
request (e.g., using a mobile device to download media content from the
Internet) based upon a mobile device Tag ID and a password associated with
the user to validate the user teaches or suggests the cited claim limitations.
Id. at 39–40 (citing 10:31–11:27, 27:48–28:10). According to Petitioner,
although Wang’s disclosed authentication serves to authenticate the user,
and does not address the access rights of the individual, Wang, nonetheless,
teaches using the authentication information “to access an online account.”
Id. (citing Ex. 1004, 11:4–27, 27:49–51). Further, Petitioner contends that
Wang teaches that its authentication server may reside within a wireless hub
(WHUB), which may be integrated into the MTSCM STB. Id. at 40 (citing
Ex. 1004, 9:36–38). Therefore, Petitioner submits that a PHOSITA would
have been motivated to perform the multimedia purchase authentication by
using Wang’s MTSCM STB having a WHUB integrated therein to verify the
user’s authenticity before converting the mobile device’s multimedia content
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for display on the external display device. Id. at 40–41 (citing Ex. 1003
¶ 73). Additionally, Petitioner contends that a PHOSITA would have been
further motivated to combine Wang’s purchase authentication with Wang’s
MTSCM STB because “it was a common feature of STBs to perform
authentication prior to allowing media content to be displayed, such [as] to
implement parental controls to restrict access to content or to facilitate
pay-per-view or video-on-demand programming.” Id. (citing Ex. 1003
¶¶ 41, 42, 73; Exs. 1005 (“Bennett”), 1023 (“Romano”), 1024
(“Herrington”)).
b. Patent Owner’s Response
Patent Owner argues that Wang does not teach “authenticating the
validity of a user associated with the mobile computing device” and
“determining, based on the validity of the user, that the received first media
content is permitted to be provided to the display device.” PO Resp. 23. In
particular, Patent Owner argues that, in addition to authenticating the user
associated with the mobile device, the claim also requires the further and
separate step of determining whether the user is permitted to provide (or
transmit) to the display device a specific media content received at the
mobile device. Id. at 25 (citing Ex. 2013 ¶ 13). More particularly, Patent
Owner asserts that the “claim limitations at issue are about whether the
specific content that is already available on the user’s ‘mobile computing
device’ is permitted to be provided (transmitted) to the display device.” Id.
Patent Owner asserts that Wang’s disclosure of authenticating a user
during a purchase request, including purchasing a download of Internet
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content made available immediately to a cellular phone, relates solely to
content purchase authentication, and not to device access authentication. Id.
at 25. According to Patent Owner, although Wang discloses that the WHUB
may be integrated in the MTSCM STB to perform purchase authentication,
the proposed modification to Wang still falls short of addressing the claimed
solution of authenticating a user associated with a mobile computing device
and determining that the authenticated user is permitted to provide a
particular content to an external display device. Id. at 27. Further, Patent
Owner argues that Petitioner’s contention that “a [PHOSITA] would have
been motivated to combine Wang’s purchase authentication with Wang’s
MTSCM STB because ‘it was a common feature of STBs to perform
authentication prior to allowing media content to be displayed’” is
conclusory. Id. at 27–28 (emphasis omitted). In particular, Patent Owner
contends that none of the cited supporting references (Romano, Herrington,
and Bennett) cures the noted deficiencies of Wang to teach the additional
and separate step of determining whether an authenticated user associated
with a mobile device is permitted to transfer or display a particular content
on the external device. Id. (citing Ex. 1005 ¶¶ 42, 77; Ex. 2013 ¶¶ 17–20;
Ex. 1023 ¶¶ 101–104; Ex. 1024, 16:23–55; Ex. 2001 ¶¶ 57–60).
c. Our Review
1. Claim 1
Patent Owner’s arguments are persuasive based on the record before
us. As an initial matter, we note it is undisputed that, in addition to
authenticating the validity of the user associated with the mobile device,
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independent claim 1 also requires that the STB separately determine whether
the user is permitted to provide to the external display device a specific
media content received at the mobile device. Ex. 1001, 8:47–51. That is,
the claim recites a further determining step that is an additional limitation,
which implies that in some instances, the STB permits certain authenticated
users to provide a specific media content to the external device, whereas in
other instances, the STB does not permit other authenticated users to display
the specific media content on the external display device. See Tr. 20:14–16
(Petitioner acknowledging that the claim recites “a separate determining step
that’s determining based on validity, . . . determining whether, based on if
they are valid or invalid, that the media content is permitted to be provided
to the display device”). Also, according to the plain language of the claim,
it is the “mobile set top box” that performs the authenticating and
determining steps, not any other device, such as the “mobile computing
device.” Id. at 8:9, 8:26–38, 8:47–51.
Petitioner provides evidence that Wang discloses an authentication
server, which may reside within the WHUB, and which may be integrated
into the MTSCM STB to authenticate a user during a purchase of media
content before converting a mobile device’s media content for display on the
external display device. See Pet. 40–41 (citing Ex. 1003 ¶ 73; Ex. 1004,
9:36–38). Petitioner also provides evidence that authenticating a user before
providing the user access to media content was a well-known feature of
STBs to restrict access or to deliver multimedia content to authorized users
only. See id. (citing Exs. 1003, 1005, 1023, 1024). Additionally, Petitioner
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provides evidence that STBs were known to perform authentication prior to
allowing media content to be displayed, as well as to “implement parental
controls to restrict access to content or to facilitate pay-per-view or
video-on-demand programming.” Id. at 41 (citing Ex. 1003 ¶¶ 41, 42, 73;
Exs. 1005, 1023, 1024). Therefore, evidence of record indicates that a
PHOSITA, being apprised of Wang’s teaching to integrate the authentication
feature into the STB, would have understood that the resulting STB would
authenticate mobile users to access multimedia content.
However, Petitioner has not provided evidence that in the proposed
modified system of Wang, the STB would also perform the separate,
additional step of determining that the user is permitted to transmit a
particular content to the external display device. Indeed, Petitioner in its
Petition, and Mr. Wechselberger in his Declaration, address both limitations
together, without sufficiently differentiating between the two distinct steps.
See Pet. 39–41; Ex. 1003 ¶ 73. According to the claim, the determining step
must be “based on” the validity of the user, but it is an additional claim
requirement separate from the authenticating step. Ex. 1001, 8:47–51.
Petitioner has not sufficiently addressed the determining step on the record
before us. Instead, Petitioner’s theory is that the determining step
“automatically” occurs by virtue of the authenticating step, thereby
rendering the latter step meaningless (i.e., reading the latter step out of the
claim). See Tr. 22:18–23:21 (arguing that “it flows as an automatic result of
the successful authentication”), 24:22–25:15, 26:13–27:12 (arguing that “the
determination flows as an automatic and natural consequence of the
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authentication step”), 32:5–15, 73:16–74:12; Reply 17 (arguing that “if the
user has been authenticated as valid and can receive media service, then the
determination has been made that received media content is permitted to be
provided to the display”). Notwithstanding that the determining step is
performed “based on” the validity of the user, Petitioner has not shown, on
this record, that Wang performs any additional determination beyond
authenticating the user, let alone verifying that the user is permitted to
transmit particular received content to another device, namely the external
display device, as required by the disputed claim language. Further, to the
extent that Petitioner’s arguments are premised on authenticating a user
during a purchase request, that purchase only enables the user to download
media content to the mobile device—it says nothing about permission to
provide the “received” content to another device (e.g., the “display device”),
as required by claim 1. See Ex. 1004, 10:31–11:27 (explaining that
authentication in connection with a purchase “indicates whether the
individual is who he or she claims to be, but does not address the access
rights of the individual”). We credit the testimony of Patent Owner’s
declarant, Dan Schonfeld, Ph.D., on these points because it clarifies that the
authenticating and determining steps are distinct claims limitations, and is
consistent with and supported by the cited disclosures of Wang. See Ex.
2013 ¶¶ 13–15, 20.
With respect to Petitioner’s arguments regarding modifying the
functionality of Wang, Petitioner asserts that STBs were known to perform
authentication prior to allowing media content to be displayed, as well as to
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implement parental controls to restrict access to content or to facilitate
pay-per-view or video-on-demand programming. Pet. 40–41. However,
Petitioner has not sufficiently explained any particular modification of
Wang’s system (based on the teachings of Wang alone or any of the other
cited references, Romano, Herrington, and Bennett) on the record before us
to sufficiently account for the determining step. That is, the notion of using
parental control to determine whether an authenticated user is permitted to
transmit a particular content to an external display device is wholly
unsupported by the record before us. See id.; Ex. 2013 ¶¶ 16–19.
We have considered all of the arguments and evidence submitted by
Petitioner and Patent Owner. We determine that at least one of Patent
Owner’s arguments undermines Petitioner’s showing that Wang teaches or
suggests the authenticating and determining limitations of claim 1.
Accordingly, based on the complete record now before us, we determine that
Petitioner has not demonstrated by a preponderance of the evidence that
claim 1 would have been obvious over Wang.
2. Claims 2–6, 8, 10–21, 23–38, 40, 42–53, and 55–61
We have reviewed Petitioner’s explanations and supporting evidence
regarding claims 2–6, 8, 10–21, 23–38, 40, 42–53, and 55–61, and we do not
find them persuasive. Pet. 48–63. In addressing these claims, Petitioner
builds upon its analysis for claim 1 and further relies upon Wang to explain
why the additional claims also would have been obvious over Wang. Id.
Petitioner does not provide any additional argument or evidence overcoming
the deficiencies we noted above as to claim 1. Id. Similar to claim 1,
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independent claim 30 recites “authenticating the validity of a user associated
with the mobile computing device” and “determining, based on the validity
of the user, that the received first media content is permitted to be provided
to the display device.” Ex. 1001, 10:66–11:3. Independent claim 32 recites
a mobile set top box comprising a processor coupled to electronic storage
with instructions that, when executed, cause the processor to “execute an
upconversion process” comprising “authenticating the validity of a user
associated with the mobile computing device” and “determining, based on
the validity of the user, that the received first media content is permitted to
be provided to the display device.” Id. at 11:24–12:3. Petitioner and Patent
Owner rely on the same arguments discussed above for claim 1 (as also
applied to the same authenticating and determining limitations in
independent claims 30 and 32). See Pet. 60–62; PO Resp. 32, 33.
Accordingly, for the reasons given above in our analysis of claim 1, based
on the complete record now before us, we determine that Petitioner has not
demonstrated by a preponderance of the evidence that claims 2–6, 8, 10–21,
23–38, 40, 42–53, and 55–61 would have been obvious over Wang.
3. Conclusion
In view of the foregoing, we determine that Petitioner has not
demonstrated by a preponderance of the evidence that claims 1–6, 8, 10–21,
23–38, 40, 42–53, and 55–61 are unpatentable as obvious under § 103(a)
over Wang.
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D. Obviousness over Wang, Balram, and Bennett
Petitioner asserts that claims 1–6, 8, 10–21, 23–38, 40, 42–53, and
55–61 are unpatentable under 35 U.S.C. § 103(a) as obvious over the
combination of Wang, Balram, and Bennett. Pet. 11–63. Patent Owner
opposes. PO Resp. 33–35.
Based on the evidence in this record, we find that Petitioner has not
shown by a preponderance of the evidence that the proposed combination of
Wang, Balram, and Bennett teaches or suggests each limitation of
independent claims 1, 30, and 32, or the challenged claims depending
therefrom. We determine that at least one of Patent Owner’s arguments
undermines Petitioner’s showing.
1. Overview of Balram
Balram relates to a video format converter for improving the visual
quality of a low resolution and low frame rate video signal from a portable
device by converting the quality and size format of the signal content for
display in a higher resolution device. Ex. 1006 ¶¶ 11, 12, 61. Figure 4 of
Balram, reproduced below, illustrates the video format converter system.

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Fig. 4
Figure 4, reproduced above, depicts video format converter (410)
facilitating the display in standard television (104) of data broadcast to
mobile computing device (208). Ex. 1006 ¶ 61.
As depicted in Figure 4 above, Balram discloses placing portable
media device (208) into docking station (408) including video format
converter (410) which, upon receiving low-resolution media content from
mobile device (208), increases the horizontal and vertical pixels thereof for
upscaling the signal from low resolution to high resolution. Id. ¶¶ 46, 58,
84. Further, Balram discloses an upconversion process to reformat the
smaller size format of multimedia content received from mobile
device (208) into a corresponding larger size format for display on display
device (104). Id. ¶¶ 84–88.
2. Overview of Bennett
Bennett relates to a video processing system (VPS) in a set top box
that receives an input video signal and produces a plurality of video output
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video signals having video with characteristics in formats suitable for each
of a plurality of video devices. Ex. 1005 ¶ 14. Figure 1 of Bennett,
reproduced below, illustrates the VPS.

Figure 1, reproduced above, illustrates VPS (143) facilitating the
display of broadcast data in the unique video formats suitable for various
user devices via communications network (107). Ex. 1005 ¶ 27.
As depicted in Figure 1 above, Bennett discloses that VPS (143)
incorporated in set top box (113) converts a received video input signal (e.g.,
TV program/broadcast) in formats suitable for display in various user
devices (109, 117, 119, 125, 127), including television (121). Id. In
particular, upon receiving the video input signal, VPS (143) queries the user
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devices and obtains their audio/video format requirements to determine how
to reformat the video input signal, which it converts and broadcasts in
formats suitable to each of the user devices. Id. ¶¶ 14, 51–53. Bennett also
discloses an authentication process during which an Internet-based vendor or
cable/satellite verifies the authenticity of a user’s credentials before being
allowed to view a TV program on a pay-per-view basis. Id. ¶ 42.
3. Obviousness Analysis
Petitioner provides explanations for the claim limitations required by
claims 1–6, 8, 10–21, 23–38, 40, 42–53, and 55–61, and reasons for
modifying the teachings of Wang based on Balram and Bennett, citing
Mr. Wechselberger’s Declaration for support. Pet. 11–47; Ex. 1003 ¶¶ 41,
42, 73. Again, we focus on independent claim 1’s limitations of
“authenticating the validity of a user associated with the mobile computing
device” and “determining, based on the validity of the user, that the received
first media content is permitted to be provided to the display device.”
Ex. 1001, 8:47–51.
a. Claim 1
Petitioner argues that Wang alone teaches the authenticating and
determining limitations of claim 1 as set forth in our discussion of claim 1 in
section III.C above. Pet. 39–41.
Patent Owner reiterates the same arguments discussed above in
section III.C addressing the obviousness ground based on Wang alone,
regarding alleged deficiencies in Wang, namely, Petitioner’s showing for the
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authenticating and determining limitations of claim 1. PO Resp. 33–35.
Petitioner does not rely upon Balram or Bennett to cure the deficiencies in
Wang explained in our analysis of the ground based on Wang alone. See
Pet. 6–11, 39–41; Reply 12–18. In light of the foregoing, we determine that
Petitioner has not shown by a preponderance of the evidence that the cited
teachings of Wang, Balram, and Bennett teach or suggest the
aforementioned disputed limitations of claim 1. Therefore, based on the
complete record now before us, we determine that Petitioner has not
established by a preponderance of the evidence that claim 1 would have
been obvious over the combination of Wang, Balram, and Bennett.
b. Claims 2–6, 8, 10–21, 23–38, 40, 42–53, and 55–61
We have reviewed Petitioner’s explanations and supporting evidence
regarding claims 2–6, 8, 10–21, 23–38, 40, 42–53, and 55–61, and we do not
find them persuasive. Pet. 48–63. In addressing these claims, Petitioner
builds upon its analysis for claim 1 and further relies upon the combination
of Wang, Balram, and Bennett to explain why the additional limitations also
would have been obvious over the three references. Id. Petitioner and
Patent Owner rely on the same arguments discussed above for claim 1 (as
also applied to the same authenticating and determining limitations in
independent claims 30 and 32). See Pet. 60–62; PO Resp. 35–37. Based on
the record before us, for the reasons given above in our analysis of claim 1,
Petitioner has not shown by a preponderance of the evidence that claims 2–
6, 8, 10–21, 23–38, 40, 42–53, and 55–61 would have been obvious over the
combination of Wang, Balram, and Bennett.
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c. Conclusion
In view of the foregoing, we determine that Petitioner has not
demonstrated by a preponderance of the evidence that claims 1–6, 8, 10–21,
23–38, 40, 42–53, and 55–61 are unpatentable as obvious under § 103(a)
over the combination of Wang, Balram, and Bennett.
E. Dismissing Petitioner’s Motion to Strike
Petitioner asserts that we should strike “Exhibit 2015 and the portion
of Patent Owner’s Sur-Reply on pages 12–13 that relies on this new
evidence and raises a new argument regarding ‘adaptivity.’”3 Paper 43, 1
(citing Ex. 1035 (annotated version of Sur-Reply containing allegedly
improper new argument)). Petitioner asserts that “Patent Owner’s new
evidence and new ‘adaptivity’ argument violate the Trial Practice Guide
(‘TPG’) prohibitions regarding new evidence and new issues in sur-replies.”
Id. (citing Patent Trial and Appeal Board Consolidated Trial Practice Guide
(Nov. 2019), available at https://www.uspto.gov/
TrialPracticeGuideConsolidated; 37 C.F.R. § 42.12 (2018)).
Because our ultimate decision turns on a narrow issue, which does not
involve the allegedly improper new evidence and argument submitted in
Patent Owner’s Sur-Reply, we dismiss Petitioner’s Motion to Strike as moot.

3 Petitioner notes that Exhibit 2015 is an excerpt of an expert report from
Alan Bovik, Ph.D., retained by a different party in a related district court
proceeding that involves the ’223 patent. Paper 43, 2.
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IV. CONCLUSION
In summary:
Claims 35 U.S.C. §
Reference(s)/
Basis
Claims
Shown
Unpatent-
able
Claims Not
Shown
Unpatent-
able
1–6, 8, 10–21,
23–38, 40,
42–53, 55–61
§ 103(a) Wang
1–6, 8, 10–
21, 23–38,
40, 42–53,
55–61
1–6, 8, 10–21,
23–38, 40,
42–53, 55–61
§ 103(a)
Wang,
Balram,
Bennett
1–6, 8, 10–
21, 23–38,
40, 42–53,
55–61
Overall
Outcome
1–6, 8, 10–
21, 23–38,
40, 42–53,
55–61

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V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–6, 8, 10–21, 23–38, 40, 42–53, and 55–61
of the ’223 patent have not been proven to be unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Strike is
dismissed; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Jason Mudd
Eric Buresh
Kelly Hughes
ERISE IP, PA
jason.mudd@eriseip.com
eric.buresh@eriseip.com
kelly.hughes@eriseip.com

Roshan Mansinghani
Jonathan Stroud
Alyssa Holtslander
UNIFIED PATENTS INC.
roshan@unifiedpatents.com
jonathan@unifiedpatents.com
alyssa@unifiedpatents.com

For PATENT OWNER:

Jonathan Waldrop
Rodney Miller
John Downing
KASOWITZ BENSON TORRES LLP
jwaldrop@kasowitz.com
rmiller@kasowitz.com
jdowning@kasowitz.com