Virentem Ventures, LLC d/b/a Enounce

Patent Trials and Appeals Board

Jan 13, 2021

IPR2019-01239 (P.T.A.B. Jan. 13, 2021)

Trials@uspto.gov Paper 39
571-272-7822 Date: January 13, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

GOOGLE LLC,
Petitioner,
v.
VIRENTEM VENTURES, LLC,
Patent Owner.

IPR2019-01239
Patent 8,068,108 B2

Before MEREDITH C. PETRAVICK, JENNIFER MEYER CHAGNON,
and TERRENCE W. McMILLIN, Administrative Patent Judges.
PETRAVICK, Administrative Patent Judge.

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

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I. INTRODUCTION
A. Background and Summary
Google LLC (“Petitioner”)1 filed a petition to institute an inter partes
review of claims 1, 3, 5, and 7 of U.S. Patent No. 8,068,108 B2 (Ex. 1001,
the “’108 patent”) pursuant to 35 U.S.C. § 311 et seq. Paper 1 (“Petition” or
“Pet.”). Virentem Ventures, LLC (“Patent Owner”) filed a Preliminary
Response to the Petition. Paper 11 (“Prelim. Resp.”). On January 15, 2020,
we instituted trial. Paper 16 (“Inst. Dec.”). Patent Owner filed a Response.
Paper 27 (“PO Resp.”). Petitioner filed a Reply. Paper 29 (“Pet. Reply”).
Patent Owner filed a Sur-reply. Paper 32 (“PO Sur-reply”). An oral
argument was held on November 18, 2020, and a transcript was entered into
the record. Paper 38 (“Tr.”).
We have jurisdiction to conduct this inter partes review under
35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C.
§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein, we
determine that Petitioner has shown, by a preponderance of the evidence,
that claims 1, 3, 5, and 7 of the ’108 patent are unpatentable.
B. Related Matters
The parties indicate that the ’108 patent has been asserted in the
following case filed in the United States District Court for the District of
Delaware on November 9, 2018: Virentem Ventures, LLC v. YouTube, LLC,
Case No. 1:18-cv-00917. Pet. 1; Paper 3, 1. The District Court case has
been stayed through the issuance of final written decisions by the Board.
Ex. 2004, 1.

1 Petitioner identifies Google LLC and YouTube LLC as the real parties-in-
interest to this proceeding. Pet. 1.
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C. The ’108 Patent
The ’108 patent is titled “Management of Presentation Time in a
Digital Media Presentation System with Variable Rate Representation
Capabilities.” Ex. 1001, code (54).
By way of background, the ’108 patent explains that traditional digital
rendering systems, such as RealNetworks RealPlayer digital media players,
maintain an internal variable during playback of media content that reflects a
current presentation time, which is referred to as “Current Time.” Id. at
1:28–32. Current Time reflects a current position in the media content,
starting at zero at the beginning of the media content. Id. at 1:32–34. The
’108 patent explains that Current Time conflates two different properties of
media playback: (1) “Presentation Time,” which is the time elapsed since the
beginning of the media content presentation; and (2) “Content Time,” which
is the location in the media content stream that is currently being played. Id.
at 1:55–2:12. The ’108 patent also describes that “Data Time” is a time
value associated with each content element “specifying how long it would
take to reach that location, starting from the beginning of the media content,
and playing at normal rate.” Id. at 1:55–2:5. The ’108 patent explains that
“Presentation Time and Data Time are identical in traditional players,
because traditional players can only present media content at a fixed
‘normal’ rate.” Id. at 2:13–15. In the case of media players enhanced with
Time-Scale Modification (TSM) capability, the player can present media
content at various rates, and thus Presentation Time and Data Time may
diverge. Id. at 2:15–19. For example, a player with TSM functionality
could play a 60 second clip in only 30 seconds if the content is presented at a
fixed rate that is twice the normal rate. Id. at 2:19–23.
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The ’108 patent describes two problems resulting from the possible
disparity between Presentation Time and Data Time in media players with
TSM functionality. Id. at 2:24–25. A first problem is that “the significance
of the time value distributed to multiple objects is, in general, ambiguous.”
Id. at 2:31–34. A second problem “is that Data Time does not, in general,
equal Presentation Time, and the calculation, storage, and distribution of a
single time value is inadequate to specify both values.” Id. at 2:34–39. In
particular, the ’108 patent explains that it is common for media players to
rely on an audio renderer to calculate and update the Current Time value.
Id. at 2:40–52. When “a media player does in fact acquire the Current Time
value from the audio renderer, the value that the audio renderer will return to
the system will typically be the Presentation Time.” Id. at 2:53–56. This
creates a problem in media players with TSM functionality because “most of
the rest of the system needs Data Time,” and thus “most of the rest of the
system can no longer employ the value returned by the audio renderer
object.” Id. at 2:56–58.
The invention manages “Presentation Time in a digital rendering
system for presentation of temporally-ordered data when the digital
rendering system includes a Variable Rate Presentation capability.” Id. at
2:65–3:1. Figure 1 of the ’108 patent is reproduced below.
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Figure 1, above, depicts “a block diagram of a Presentation System
embodied as a RealNetworks RealPlayer application running on a
computer.” Id. at 5:31–33. Presentation System 100 includes an application
module 110 which communicates control and status messages (e.g., Play,
Pause, Stop), to Player Core object 120. Id. at 6:2–11. “Temporal Sequence
Presentation Data” or “Presentation Data” are embodied as streaming media
content and are delivered to the RealPlayer application. Id. at 6:11–17.
Presentation Data are received by media content source module(s) 130, and
are placed in audio media data buffers 140. Id. at 6:18–22.
TSMAudioDevice object 150 combines functions of the Renderer for audio
data (TSMAudioDevice Audio Renderer 160) and a Variable Rate
Presentation Module. Id. at 6:53–58. The ’108 patent notes that although
the RealNetworks RealPlayer application does not natively include support
for variable rate playback, plug-in 180 adds variable rate playback capability
to the RealPlayer application. Id. at 6:62–66. Plug-in 180 communicates
with TSMAudioDevice object 150 by sending messages that specify a
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desired playback or presentation rate through an object called State
Information Exchange Server 190 (“SIX Server 190”). Id. at 7:5–8.
TSMAudioDevice object 150 accepts messages from SIX Server 190that
specify a desired playback or presentation rate. Id. at 7:9–11. The ’108
patent notes that Player Core object 120 of the RealPlayer application
includes methods to query the Current Time, and Player Core object 120
interprets all returned times as Data Times. Id. at 7:53–65. In order to
support the concept of Presentation Times that are different than Data
Times, according to one embodiment of the ’108 patent, TSMAudioDevice
object 150 performs conversion of Presentation Time into Data Time (as
needed by Player Core object 120). Id. at 7:65–8:3.
D. Challenged Claims
Petitioner challenges claims 1, 3, 5, and 7 of the ’108 patent. Pet. 2–3.
All of the challenged claims are independent method claims. Ex. 1001,
23:6–25:17. Claims 1 and 3 are illustrative. Claim 1 recites:
1. A method, performed by at least one machine, for use in a
rendering system for rendering temporal sequence presentation
data in a machine-implemented rendering system, the temporal
sequence presentation data being tangibly stored in a first
computer-readable medium, the method comprising steps of:
(A) maintaining a value of a presentation time parameter
tangibly stored in a second computer-readable medium and
representing an amount of time elapsed during rendering of a
portion of the temporal sequence presentation data;
(B) maintaining a value of a data time parameter tangibly
stored in a third computer-readable medium and representing an
amount of time required by the rendering system to render the
portion of the temporal sequence presentation data at a default
presentation rate;
(C) receiving requests for the value of the presentation
time parameter: and
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(D) returning the value of the presentation time
parameter to a first component of the rendering system in
response to the request;
wherein the value of the presentation time parameter is
not equal to the value of the data time parameter.

Id. at 23:6–28. Claim 3 recites:
3. A method, performed by at least one machine, for use in a
rendering system for rendering temporal sequence presentation
data in a machine-implemented rendering system, the temporal
sequence presentation data being tangibly stored in a first
computer-readable medium, the method comprising steps of:
(A) maintaining a value of a presentation time parameter
tangibly stored in a second computer-readable medium and
representing an amount of time elapsed during rendering of a
portion of the temporal sequence presentation data;
(B) maintaining a value of a data time parameter tangibly
stored in a third computer-readable medium and representing an
amount of time required by the rendering system to render the
portion of the temporal sequence presentation data at a default
presentation rate;
(C) receiving requests for the value of the data time
parameter: and
(D) returning the value of the data time parameter to a
first component of the rendering system in response to the
request;
wherein the value of the presentation time parameter is
not equal to the value of the data time parameter.

Id. at 23:50–24:5. Claim 5 is similar to claim 3, but claim 5 omits
claim 3’s step “(C) receiving requests for the value of the data time
parameter.” Id. at 24:27–45. Claim 7 is similar to claim 1, but claim 7
omits claim 1’s step “(C) receiving requests for the value of the
presentation time parameter.” Id. at 24:65–25:17.
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E. The Asserted Ground
Petitioner challenges claims 1, 3, 5, and 7 of the ’108 patent on the
following ground:
Claims Challenged 35 U.S.C. §2 Reference(s)/Basis
1, 3, 5, and 7 103(a) Nelson3
Pet. 2.

II. ANALYSIS
A. Legal Standards
A patent 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. 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 ordinary skill in the art; and (4), where in evidence, objective
evidence of nonobviousness.4 Graham v. John Deere Co., 383 U.S. 1, 17–
18 (1966). Consideration of the Graham factors “helps inform the ultimate

2 Because the application leading to the ’108 patent was filed before
March 16, 2013, patentability is governed by the version of 35 U.S.C. § 103
preceding the Leahy-Smith America Invents Act (“AIA”), Pub L. No. 112–
29, 125 Stat. 284 (2011).
3 US Patent No. 5,719,786 (Ex. 1006) filed Feb. 3, 1993.
4 Neither party presents any argument relating to objective evidence of
nonobviousness.
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obviousness determination.” Apple Inc. v. Samsung Elecs. Co., 839 F.3d
1034, 1048 (Fed. Cir. 2016) (en banc).
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)). This burden of persuasion never
shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
inter partes review).
B. Level of Ordinary Skill in the Art
With regard to the level of ordinary skill in the art, Petitioner contends
that a person of ordinary skill would have either “(a) a Master’s or doctoral
degree in computer science, electrical engineering, or a similar discipline” or
“(b) a Bachelor’s degree in computer science, electrical engineering, or a
similar discipline and at least two years of work experience in content
presentation systems, or a related area.” Pet. 3–4 (citing Ex. 1002
(Schonfeld Decl.) ¶¶ 19–20). “Patent Owner accepts Petitioner’s proffered
level of ordinary skill in the art in analyzing Petitioner’s allegations of
obviousness.” PO Resp. 25 (citing Ex. 2016 (Boncelet Decl.) ¶¶ 30–32).
We find Petitioner’s undisputed contention to be reasonable and we adopt
the level of ordinary skill in the art as proposed by Petitioner.
C. Claim Construction
“[I]n an inter partes review proceeding, a claim of a patent . . . shall
be construed 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), including
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construing the claim in 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.”5 37 C.F.R. § 42.100(b). In
applying a district court-type claim construction, we are guided by the
principle that the words of a claim “are generally given their ordinary and
customary meaning,” as understood by a person of ordinary skill in the art at
the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13
(Fed. Cir. 2005) (en banc) (citation omitted). “In determining the meaning
of the disputed claim limitation, we look principally to the intrinsic evidence
of record, examining the claim language itself, the written description, and
the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
415 F.3d at 1312–17). There is a “heavy presumption,” however, that a
claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted).
We are also guided by the principle that we only construe claim terms
if, and to the extent that, it is necessary for the purpose of the proceeding.
See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed.
Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary
to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. &
Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).

5 37 C.F.R. § 42.100(b) also states that “Any prior claim construction
determination concerning a term of the claim in a civil action, or a
proceeding before the International Trade Commission, that is timely made
of record in the inter partes review proceeding will be considered.” The
District Court claim construction is of record in this proceeding. See
Ex. 2005.
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1. Petitioner’s Proposed Constructions
Petitioner provides proposed constructions of the following claim
terms: “temporal sequence presentation data,” “rendering system,” and
“tangibly stored in a . . . computer-readable medium”/“a computer-readable
medium tangibly storing.” Pet. 11–17. Patent Owner contends that
Petitioner’s constructions are not proper or necessary and should not be
adopted. PO Resp. 36–37.6 There is no dispute that requires that we
construe “temporal sequence presentation data,” “rendering system,” or
“tangibly stored in a . . . computer-readable medium”/“a computer-readable
medium tangibly storing.” Patent Owner does not dispute that the cited art
teaches these elements in the context of the challenged claims. See
generally PO Resp. Thus, we need not construe these terms for purposes of
this Decision.
2. Patent Owner’s Proposed Constructions
In the “Claim Construction” section of its Response, Patent Owner
addresses the following terms:
“maintaining a value of a presentation time parameter . . .
representing an amount of time elapsed during rendering of the
portion of the temporal sequence presentation data”

“maintaining” and “providing”

“a portion of the temporal sequence presentation data”

“presentation rate”

6 In its Preliminary Response, Patent Owner also argued Petitioner’s
constructions were unnecessary and did not propose any constructions.
Prelim Resp. 25–27. We determined that no explicit construction of any
claim term was necessary in order to make the determination to institute
inter partes review. Inst. Dec. 10.
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“time-scale modification (TSM)”7

PO Resp. 25–36. Petitioner asks us to reject Patent Owner’s proposed
constructions. Pet. Reply 1. After considering the presentations of the
parties, and as discussed in more detail below, we determine that it is
appropriate to use the plain and ordinary meanings of the first four terms in
construing the challenged claims and that “time-scale modification (TSM)”
should be construed as “speeding up or slowing down the playback rate.”
“maintaining a value of a presentation time parameter . . .
representing an amount of time elapsed during rendering of the
portion of the temporal sequence presentation data”
This term is recited in the challenged claims. Ex. 1001, 23:12–16, 23:
56–60, 24:32–36, 25:3–7. Patent Owner requests that we give this term its
plain meaning. PO Resp. 25 (“Patent Owner does not believe that this
limitation requires construction apart from the plain meaning of the words of
the claim.”). Patent Owner states that it raised this term as a claim
construction issue because it believed the Board misconstrued it in the
Decision on Institution in this proceeding (Paper 16) and in IPR2019-01237
(Ex. 2012). PO Resp. 25–27. Patent Owner focuses its argument on the
“during rendering” portion of the term and argues that the Board has read the
term as if it said “during [and after] rendering.” Id. at 27 (“[I]f the
‘presentation time parameter’ can represent time elapsed ‘during [and after]
rendering’ instead of ‘during rendering’ as claimed, the ‘during rendering’

7 As discussed infra, “time-scale modification (TSM)” is not a term recited
in any of the claims of the ’108 patent. See Ex. 1001, 23:6–26:17. Patent
Owner asks us to construe “[t]he term [time-scale modification] TSM
[because it] is incorporated in all of the claims challenged here by virtue of
the definition of presentation rate.” PO Resp. 34.
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limitation is effectively read out of the claim.”). Petitioner responds that
Patent Owner’s argument is based on a false premise and that the Board did
not interpret the claims as suggested by Patent Owner. Pet. Reply 1
(“[N]either [Petitioner] nor the Board has interpreted the claim in this way.
Rather, the real dispute centers on what ‘during rendering’ means.”).
Petitioner argues that, to the extent there is a dispute regarding the
interpretation of this term, the dispute can be resolved by looking at the
definition of “Presentation Time” as set forth in the Specification of the ’108
patent. Id. at 1–2. We agree with Petitioner.
At column 1, lines 57–62, the ’108 patent defines “Presentation Time”
as “time elapsed since the beginning of the media content presentation” and
provides this example: “if the media has been playing for one minute, the
value of Presentation Time is 60,000 milliseconds.” And, the ’108 patent
provides this further example in order to highlight the difference between
“Presentation Time” and “Data Time:”
Presentation Time and Data Time are identical in
traditional players, because traditional players can only present
media content at a fixed “normal” rate. However, when a
player is enhanced with a Time-Scale Modification (TSM)
capability, it can present media content at various rates.
Because of this, Presentation Time and Data Time are no longer
the same. For example, if a 60-second clip of media content is
presented at a fixed rate that is twice normal rate, at the end of
the clip the Data Time is 60,000 milliseconds, but the
Presentation Time is 30,000 milliseconds. This is because it
only takes 30 seconds to play the 60-second clip.

Ex. 1001, 2:13–23. In accordance with these passages, the District Court in
the related district court proceeding, determined “[t]he specification [ ]
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defines presentation time as ‘time elapsed since the beginning of the media
content presentation.’” Ex. 2003, 12.8
As requested by Patent Owner and not disputed by Petitioner, we give
the term “a value of a presentation time parameter . . . representing an
amount of time elapsed during rendering of the portion of the temporal
sequence presentation data” its ordinary and customary meaning.9 However,
contrary to Patent Owner’s interpretation, we determine that in the context
of the claims and the ’108 patent, the plain meaning of “during rendering” is
the “time elapsed since the beginning of the presentation” of the portion or
element of interest.
“maintaining” & “providing”
The term “maintaining” is recited in each of claims 1, 3, 5, and 7.
Ex. 1001, 23:6–28, 23:50–24:5, 24:27–45, 24:65–17. The term “providing”
is recited in claims 5 and 7. Id. at 23:50–24:5, 24:65–17. Patent Owner asks
that these two terms be accorded their plain meaning. PO Resp. 31–32.
(“The ’108 specification does not accord any special meaning to the word
‘maintaining,’ nor does it have a particular meaning in the art. Thus, Patent
Owner contends it should be accorded its plain meaning: “to keep in

8 The District Court cites the US Patent No. 7,683,903 which is in the same
patent family as the ’108 patent (Ex. 1001, code (60)) and shares the same
specification. The quoted passage appears at column 1, lines 59–60, of the
’108 patent. During oral argument, Patent Owner acknowledged that the
quoted passage was a definition of “presentation time” “in the context of
each of these patents.” Tr. 45:8–13.
9 In its Response, Patent Owner describes “presentation time” as “the length
of time of the actual presentation.” PO Resp. 3; see also Prelim. Resp. 8
(“‘presentation time’. . . tracks the elapsed rendering time of [a] media
presentation”), 12 (“the time elapsed during rendering the content [is] called
‘Presentation Time.’”).
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existence or continuance.”). Petitioner argues construing these terms is
unnecessary. Pet. Reply 5–6 (“In any event, construing these two terms is
unnecessary and only introduces ambiguity. For instance, while [Patent
Owner] challenges whether the prior art teaches these . . . , it never applies
its own constructions to do so.”). We agree with Petitioner. We discern no
dispute relating to the meaning of “maintaining” and “providing” as used in
the challenged claims and determine it is not necessary to construe explicitly
these terms.
“a portion of the temporal sequence presentation data”
The term “a portion of the temporal sequence presentation data” is
recited in the challenged claims. Ex. 1001, 23:6–21, 23:50–65, 24:27–41,
24:65–25:13. Patent Owner contends:
Elements 1(A), 3(A), 5(A), and 7(A) recite “maintaining
a value of a presentation time parameter . . . representing an
amount of time elapsed during rendering of a portion of the
temporal sequence presentation data,” and Elements 1(B), 3(B),
5(B), and 7(B) recite “maintaining a value of a data time
parameter . . . representing an amount of time required by the
rendering system to render the portion of the temporal sequence
presentation data at a default presentation rate.”
PO Resp. 32. Petitioner argues “such a construction is unnecessary as
[Petitioner’s] mapping does not differ from [Patent Owner’s] proposal.” Pet.
Reply 6. We agree with Petitioner. We discern no dispute relating to this
term as used in the challenged claims and we determine it is not necessary to
construe explicitly this term.10

10 Although not referenced by either party with regard to construction of the
term “a portion of the temporal sequence presentation data,” we note that the
District Court in the related proceeding construed “portion(s)” to mean “a
part of any whole, either separated from or integrated with it.” Ex. 2003, 3,
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“presentation rate” & “time-scale modification (TSM)”
We analyze the terms “presentation rate” and “time-scale modification
(TSM)” together. The term “presentation rate” is recited in the challenged
claims. Ex. 1001, 23:21, 23:65, 24:41, 25:13. The term “time-scale
modification (TSM)” is not recited in any of the claims of the ’108 patent.
See id. at 23:6–26:17. As noted previously, Patent Owner asks us to
construe “[t]he term [time-scale modification] [because it] is incorporated in
all of the claims challenged here by virtue of the definition of presentation
rate.” PO Resp. 34.
Patent Owner contends that “presentation rate” means “the speed at
which media is played back in a time-scale modification system” and that
“time-scale modification (TSM)” means “speeding up and slowing down the
perceived rate of speech while substantially preserving both intelligibility
and the perceived pitch for audio and audio-visual media.” PO Resp. 34–35.
Petitioner argues that neither of Patent Owner’s proposed constructions
should be adopted. Pet. Reply 6–10.
Patent Owner argues that its proposed construction of “presentation
rate” was agreed to by the parties in the District Court litigation11 and

13. Patent Owner proposed this definition in the District Court as the plain
and ordinary meaning of “portion(s).” See id. at 13.
11 Petitioner argues that it did not agree to construction of “presentation rate”
as “the speed at which media is played back in a time-scale modification
system.” Pet. Reply 6 (“[A]s the district court observed, there was simply a
lack of ‘dispute’ on the term in light of the court’s construction of
‘time-scale-modification.’”). However, at the claim construction hearing,
the District Court asked Petitioner’s counsel if there was an agreement or a
dispute as to the construction of “presentation rate.” See Ex. 1018, 109:3–
110:10. Although reluctant to agree to inclusion of “in a time-scale
modification system” in the construction, Petitioner’s counsel consented to
the District Court construing “presentation rate” as “the speed at which
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adopted by the District Court and “[t]herefore, the Board should construe the
term ‘presentation rate’ here consistently with the parties’ agreed-upon
construction in the district court.” PO Resp. 33–34. Patent Owner provides
no additional reasoning or argument in support of its construction of
“presentation rate.” Id.
With regard to “time-scale modification (TSM),” Patent Owner
proposes the same construction that it proposed in the District Court and that
was rejected by the District Court. See Ex. 2003, 8–10. The District Court
construed “time-scale modification/time-scale modified” as meaning
“speeding up or slowing down the playback rate.” Id. at 2. Patent Owner
does not explain why we should adopt the District Court’s construction of
“presentation rate” and at the same time incorporate into the challenged
claims a definition of “time-scale modification (TSM)” that the District
Court rejected. Adopting the District Court’s construction of “presentation
rate,” but also incorporating a definition of “time-scale modification (TSM)”
that was rejected by the District Court into the challenged claims, would
result in a construction inconsistent with the District Court.12
Petitioner’s position on construction of “presentation rate” is
inconsistent with the position taken by it before the District Court. In this

media is played back in a time-scale modification system.” Id. In light of
this exchange with the District Court, we determine Petitioner agreed to the
construction of “presentation rate” in the District Court case.
12 Patent Owner argues that the District Court’s claim construction is not
determinative and that the District Court “has already agreed that claim
construction may need to be revisited to arrive at the correct construction
following the IPR proceedings.” PO Sur-reply 13 (citing Ex. 2032, 1–2).
Exhibit 2032 is an Order issued by the District Court that indicates that the
litigation is stayed through issuance of final written decisions by the Board.
Ex. 2032, 1.
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proceeding, Petitioner argues, “[Patent Owner’s] construction improperly
incorporates limitations into the claims by requiring playback to occur ‘in a
timescale modification system.’ Nothing in the [] record supports reading
‘timescale modification system’ into the claims.” Pet. Reply 6–7. Despite
the inconsistencies in Petitioner’s position, we agree with Petitioner that
“time-scale modification” should not be read into the challenged claims
through construction of “presentation rate.”
We determine that “presentation rate” should be interpreted according
to its ordinary and customary meaning of “the speed of presentation.” This
meaning is consistent with that portion of the District Court’s construction of
“presentation rate” as “the speed at which media is played back.” As cited
previously, there is a heavy presumption that a claim term has its ordinary
and customary meaning. CCS Fitness, 288 F.3d at 1366. We have not been
presented with any evidence to overcome that heavy presumption. Neither
party directs our attention to any intrinsic or extrinsic evidence to support
incorporating “in a time-scale modification system” into the construction of
“presentation rate.”13,14 And, we determine that the ordinary and customary

13 The only support Patent Owner cites in its Response for its construction of
“presentation rate” besides the District Court’s claim construction order
(Ex. 2003, 2, 10) is paragraphs 60–61 of the Boncelet Declaration. PO
Resp. 34. In paragraph 60 of his Declaration (Ex. 2016), Dr. Boncelet does
not refer to any intrinsic or extrinsic evidence in support of this construction
but, instead, merely cites the District Court’s claim construction order
(Ex. 2003, 2, 10) and states, “I agree with this construction and have applied
it in my analysis and opinions herein.”
14 Based on our independent analysis of the ’108 patent and its file history,
we do not discern any support for incorporating “in a timescale modification
system” into the meaning of “presentation rate” as recited in the claims of
the ’108 patent or otherwise limiting the construction of “presentation rate”
from its ordinary and customary meaning.
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meaning of the term “presentation rate” is consistent with its use in the
claims of the ’108 patent. The term “presentation rate” is recited once in
each of challenged claim, which recite, “maintaining a value of a data time
parameter . . . representing an amount of time required by the rendering
system to render a portion of the temporal sequence presentation data at a
default presentation rate.”15 Ex. 1001, Ex. 1001, 23:17–21, 23:61–65,
24:38–41, 25:9–13 (emphasis added). As defined in the Specification, the
“default rate” is the “normal” rate of presentation and does not involve
“time-scale modification” or varying the rate of the presentation.16 See

15 Patent Owner never explains how its construction of “presentation rate”
with its incorporated construction of “time-scale modification” should be
interpreted in the phrase “default presentation rate” or in the greater context
of the “maintaining” limitation (A) of the challenged claims. If we construe
“presentation rate” as proposed by Patent Owner and place it into limitation
(A), the limitation becomes “maintaining a value of a data time parameter
. . . representing an amount of time required by the rendering system to
render a portion of the temporal sequence presentation data at a default
speed at which media is played back in a system speeding up or slowing
down the perceived rate of speech while preserving both intelligibility and
the perceived pitch for audio and audio-visual media.” Patent Owner’s
construction which adds “speeding up or slowing down” conflicts with
“default speed” and, thus, the recitation of “default presentation rate.” The
recitation of a “default presentation rate” does not require “speeding up or
slowing down.” Thus, Patent Owner’s construction renders the challenged
claims inconsistent and confusing and is, at best, superfluous in the context
of the challenged claims.
16 In a related proceeding, Patent Owner acknowledges that “[a] presentation
rate or playback rate can include playing at 1[X] or normal, while a TSM
rate involves speeding up or slowing down the audio or audio visual work
using Time-Scale Modification” (IPR2019-01244, Paper 25 (Patent Owner’s
Response), 32) and “[p]laying at normal does not qualify as Time-Scale
Modifying—it is normal” (id. at 55). See also IPR2019-01244, Paper 29
(Patent Owner’s Sur-reply), 18 (“The parties agree that normal (1x) is a
presentation rate.”).
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Ex. 1001, 9:55–56. Stated differently, the “default presentation rate” is the
speed at which systems (including prior art systems such as the Real-
Networks Real Player (see Ex. 1001, 1:28–37)) play back media without
“time-scale modification.” Adding “in a time-scale modification system” to
the construction of “presentation rate” conflicts with the broader use of the
term “presentation rate” in the challenged claims and the Specification of the
’108 patent. We reject Patent Owner’s proposed construction of
“presentation rate,” because it is not supported by the language of the claims
or the Specification of the ’108 patent. Thus, we construe the term
“presentation rate” differently than the District Court, because the records in
the District Court case and in this proceeding relating to construction of
“presentation rate” are different. In the District Court proceeding, there was
a construction of “presentation rate” that was agreed to by the parties. See
Ex. 1018, 109:3–110:10. In this proceeding, there is a dispute between the
parties as to the construction of “presentation rate.” Compare PO Resp. 33–
34, with Pet. Reply 6–7. However, our conclusion that the challenged
claims of the ’108 patent would have been unpatentable in view of the
asserted art would not be different under either our construction or the
District Court’s construction of “presentation rate.”
In any event, we also reject Patent Owner’s proposed construction of
“time-scale modification system,” because we discern no basis for limiting
the claims of the ’108 patent to “speeding up and slowing down the
perceived rate of speech while substantially preserving both intelligibility
and the perceived pitch for audio and audio-visual media” through recitation
of “presentation rate” as requested by Patent Owner. See PO Resp. 34–36.
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As in the District Court, “[t]he dispute here is over [Patent Owner’s]
attempt to read in ‘preserving both intelligibility and the perceived pitch.’”17
Ex. 2003, 8. However, as the District Court noted, “[t]he terms
‘intelligibility’ and ‘pitch’ do not appear in either the ’903[18] or ’228 patent
family. In fact, the term ‘pitch’ does not appear in any of the asserted patent
families.” Id. The District Court said:
I find that the construction of time-scale modification
that does not require preservation of intelligibility and pitch is
supported by the intrinsic evidence of the asserted patents here.
For example, the description of “time-scale modification”
at column 2, lines 24 through 28 of the ’050 specification [in
the ’903 patent family] states that “Presentation Time and Data
Time are identical in traditional players, because traditional
players can only present media content at a fixed ‘normal’ rate.
However, when a player is enhanced with a Time-Scale
Modification (TSM) capability, it can present media content at
various rates.”[19]

* * *
None of these descriptions of time-scale modification
mentions preservation of pitch or intelligibility.

* * *

17 Petitioner contends, “[t]o the extent [“time-scale modification”] is
construed, . . . it should be construed to mean ‘playback rate modification.’
This is consistent with the specification, which explains that . . . ‘when a
player is enhanced with a Time-Scale Modification (TSM) capability, it can
present media content at various rates.” Pet. Reply 6 (citing Ex. 1001, 2:1–
17).
18 The ’108 patent is in the ’903 patent (U.S. Patent No. 7,683,903) family.
Ex. 1001, code (60).
19 The quoted ’050 patent (US Patent No. 8,345,050) has the same
Specification as the ’108 patent. The quoted description appears at column
2, lines 13–17, of the ’108 patent.
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Finally, I note that [Patent Owner’s] construction is
problematic insofar as it requires “substantially preserving
pitch.” It is wholly unclear what “substantially” means in the
context of these patents.

Ex. 2003, 9–10 (first bracketed material in original).
In support of its position, Patent Owner cites the following passage
from the Specification of the ’108 patent:
TSMAudioDevice VRP Module 170 processes buffers 200
through a library of signal processing routines, for example, a
suitable library of signal processing routines called the Time
Scale Tailor package is available from Enounce, Incorporated
of Palo Alto, Calif. In accordance with this embodiment, this
library carries out digital signal processing procedures on
buffers 200 of audio samples that has the effect of reducing the
number of samples in the buffer (when playing faster than real
time) or increasing the number of samples in the buffer (when
playing slower than real time), thereby effectively changing the
playback rate. For example, in accordance with this
embodiment, processing the buffer using the library decreases
or increases the samples in a particular way so as to leave the
perceptual and linguistic information in the buffers
unchanged, but to change the duration of the buffers.

PO Resp. 36 (citing Ex. 1001, 7:24–39). However, this passage is explicitly
designated as an example and as related to a commercial embodiment. And,
the ’108 patent states that the embodiments described in the Specification
are not limiting. Ex. 1001, 22:15–18 (“It is to be understood that although
the invention has been described above in terms of particular embodiments,
the foregoing embodiments are provided as illustrative only, and do not limit
[ ] the scope of the invention.”); see Openwave Sys., Inc. v. Apple, Inc.,
808 F.3d 509, 514 (Fed. Cir. 2015) (“[I]t is improper to read limitations from
a preferred embodiment described in the specification—even if it is the only
embodiment—into the claims absent a clear indication in the intrinsic record
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that the patentee intended the claims to be so limited.”) (quoting Liebel-
Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004)).
Furthermore, this passage does not specifically refer to “speeding up and
slowing down the perceived rate of speech while substantially preserving
both intelligibility and the perceived pitch for audio and audio-visual media”
and Patent Owner does not persuasively explain how or why this passage
supports its proposed construction. See PO Resp. 35–36.
Accordingly, we determine that Patent Owner’s proposed construction
of “time-scale modification” is not supported. We agree with and adopt the
District Court’s reasoning and decision that the term “time-scale
modification” means “speeding up or slowing down the playback rate” and
does not include “preserving both intelligibility and the perceived pitch.”
See Ex. 2003, 2, 8–10. To the extent appropriate to support our analysis of
the unpatentability of the challenged claims in view of the asserted art,20 we
construe “time-scale modification” as “speeding up or slowing down the
playback rate.”21 If we combine the District Court’s constructions of

20 Patent Owner asserts that “resolution of the dispute regarding preservation
of pitch need not be resolved,” because “Petitioner’s alleged grounds for
obviousness fail even under Petitioner’s own proposed construction of the
term” “time-scale modification.” PO Resp. 35 n.9. And, the Patent Owner
Response states: “none of Patent Owner’s [] arguments depend on Patent
Owner’s construction of time-scale modification, and instead adopt the
district court’s construction of speeding up and slowing down playback rate,
which Patent Owner understands to be consistent with Petitioner’s
construction here, which is ‘playback rate modification.’” Id. at 4–5.
21 Except for those sections of its Response arguing the construction of
“time-scale modification” and whether Nelson teaches “time-scale
modification,” Patent Owner adopts and uses this same construction of
“time-scale modification” in its Response. PO Resp. 5 (“Thus, other than as
discussed in Sections IV.E. and V.G. below, time-scale modification as set
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“presentation rate” as “the speed at which media is played back in a time-
scale modification system” and of “time-scale modification” as “speeding up
or slowing down the playback rate,” the combination yields a construction of
“presentation rate” as “the speed at which media is played back in a system
for speeding up or slowing down the playback rate.”
D. Ground Based on Nelson
Petitioner contends that claims 1, 3, 5, and 7 would have been obvious
in view of Nelson. Pet. 2, 17–56.
1. Nelson (Ex. 1006)
Nelson was filed on February 3, 1993, and issued on February 17,
1998. Ex. 1006, codes (22), (45). Nelson is prior art to the ’108 patent
under 35 U.S.C. § 102(b). See Pet. 3. Patent Owner does not contest the
prior art status of Nelson. See generally PO Resp.
Nelson is titled, “Digital Media Data Stream Network Management
System.” Ex. 1006, code (54). Nelson is directed to a “computer-based
media data processor for controlling transmission of digitized media data in
a packet switching network.” Id. at code (57) (Abstract). Nelson “relates to
the management of digitized media stream data, e.g., digitized video, and
particularly relates to the capture, storage, distribution, access and
presentation of digital video within a network computing environment.” Id.
at 1:7–10. Nelson discloses a digital video management system (DVMS)
that provides the ability to capture, store, transmit, access, process and
present live or stored media stream data, independent of its capture or

forth herein should be read to mean speeding up or slowing down
(modifying) the playback rate.”).
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storage location, in either a stand-alone or a network environment. Id. at
5:45–50.
Figure 4 of Nelson is reproduced below.

Figure 4 of Nelson (above) is a schematic diagram of a network
implementation of the DVMS. Id. at 5:4–6. The description of Figure 4
states:
[T]he local DVMS manager 20 consists of three modules: the
stream controller 24, stream input/output (I/O) manager 26, and
the stream interpreter 28. This modularity is exploited in the
DVMS design to separate the flow of data in a media data
streams from the flow of control information for that media
stream through the system. Based on this data and control
separation, streams data and stream control information are
each treated as producing distinct interactions among the three
manager modules, which operate as independent agents.
Id. at 7:57–66. The description of Figure 4 further states:

The stream interpreter module 28 is responsible for
managing the dynamic computer-based representation of audio
and video as that representation is manipulated in a standalone
computer or a computer linked into a packet network. This
dynamic management includes synchronization of retrieved
audio and video streams, and control of the rate at which the
audio and video information is presented during a presentation
sequence.
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Id. at 8:25–32. Figure 5 of Nelson is reproduced below.

Figure 5 of Nelson (above) depicts a stream flow when the DVMS requests
access to audio or video streams. Id. at 9:62–63. The description of
Figure 5 states:
The stream I/O manager 26 module retrieves the requested
streams from a stream input 30; this stream input comprises a
storage access point, e.g., a computer file or analog video
source. The stream I/O manager then separates the retrieved
streams according to the specified file format of each stream. If
two streams, e.g., audio and video streams, which are accessed
were interleaved in storage, the stream I/O manager
dynamically separates the streams to then transform them to
distinct internal representations, each comprising a descriptor
which is defined based on their type (i.e. audio or video). Once
separated, the audio and video stream data are handled both by
the stream I/O manager and the stream interpreter as distinct
constituent streams within a stream group. The stream I/O
manager 26 then exchanges the stream data, comprising
sequences of presentation units, with the stream interpreter 28
via a separate queue of presentation units called a stream pipe
32, for each constituent stream; an audio stream pipe 33 is thus
created for the audio presentation units, and a video stream pipe
31 is created for the video presentation units. Each audio
stream (of a group of audio streams) has its own pipe, and each
video stream has its own pipe. During playback of streams, the
stream I/O manager continually retrieves and produces
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presentation units from storage and the stream interpreter
continuously consumes them, via the stream pipes, and delivers
them to a digital media data subsystem for, e.g., presentation to
a user.
Id. at 9:63–10:22. “[T]he digital video management system of the invention
provides synchronization of audio to video, and in general, synchronization
between any two or more dynamic stream[s] being presented.” Id. at 12:16–
21.
Figure 6 of Nelson is reproduced below.

Figure 6 of Nelson (above) depicts “a schematic flow chart illustrating
presentation and capture scenarios carried out by the local digital video
management system manager of FIG. 4.” Id. at 5:13–15. The description of
Figure 6 states:
[T]he synchronization of streams within a stream group is the
responsibility of the stream interpreter module during a scaling
process. The streams may be self-synchronized using either an
implicit timing scheme or an explicit timing scheme. Implicit
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timing is based on the fixed periodicity of the presentation units
in the constituent streams of a stream group to be synchronized.
In this scheme, each presentation unit is assumed to be of a
fixed duration and the presentation time corresponding to each
presentation unit is derived relative to a reference presentation
starting time. This reference starting time must be common to
all of the constituent streams. Explicit timing is based on
embedding of presentation time stamps and optionally,
presentation duration stamps, within each of the constituent
streams themselves and retrieving the stamps during translation
of streams from the storage format to the token format. The
embedded time stamps are then used explicitly for
synchronization of the streams relative to a chosen reference
time base.
Using either the implicit or explicit timing self-
synchronization schemes, a reference time base is obtained
from a reference clock, which advances at a rate termed the
reference clock rate. This rate is determined by the reference
[cl]ock[22] period, which is the granularity of the reference clock
ticks.
The DVMS of the invention supports two levels of self-
synchronization control, namely, a base level and a flow control
level. Base level synchronization is applicable to stream
process scenarios in which the stream I/O manager is able to
continuously feed stream data to the stream interpreter, without
interruption, and in which each presentation unit is available
before it is to be consumed. In this scenario, then, the stream
I/O manager maintains a process rate and a process work load
that guarantees that the stream I/O manager stays ahead of the
stream interpreter.

Id. at 13:19–53. Figure 10 of Nelson is reproduced below.

22 Elsewhere in the Specification, “dock” was changed to “clock.” See
Ex. 1006 at p. 58 (Certificate of Correction) (“each occurrence of the word
‘dock’ should read --clock--”).
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Figure 10 of Nelson (above) depicts “a schematic diagram illustrating the
flow of media stream data between the remote and local digital video
management manager modules.” Id. at 5:29–31. The description of
Figure 10 states:
Upon initialization from the request, and based on the network
servers’ stream group advertisements, the appropriate remote
stream I/O manager 86 retrieves stored streams, e.g., audio and
video streams, from the appropriate file storage 30 containing
the requested stream group. The manager then separates the
retrieved streams, if necessary, thereby producing separate
audio and video presentation unit streams, and enqueues
corresponding stream descriptor tokens in separate stream pipes
87, one pipe for each presentation unit token stream.
The remote network stream I/O manager 88 consumes
the presentation unit tokens from each of the stream pipes,
assembles transmission packets based on the streams, and
releases them for transmission across the network 80 directly to
the corresponding local network stream I/O manager 90, based
on the DVMS stream data transport protocols; the particular
transport protocol used is set by the network environment.
Id. at 20:21–38.
2. Analysis
Petitioner relies upon Nelson as disclosing most of the claim elements
as arranged in the claims and teaching that it would have been obvious to
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store data in a tangible computer-readable medium. See, e.g., Pet. 41–42,
46–47. Petitioner provides citations to the disclosure of Nelson (Ex. 1006)
and the Declaration of Dr. Schonfeld (Ex. 1002) in support of its
contentions. See id.
3. Claim 1
“A method, performed by at least one machine, for use in
a rendering system for rendering temporal sequence
presentation data in a machine-implemented rendering system,
the temporal sequence presentation data being tangibly stored
in a first computer-readable medium, the method comprising
steps of:”
Parsing the preamble,23 it recites, (1) “[a] method, performed by at
least one machine;” (2) “rendering temporal sequence presentation data in a
machine-implemented rendering system”; and (3) tangibly storing the
temporal sequence presentation data in a computer-readable medium. The
Petition states, “Nelson discloses ‘a computer-based media data processor
for controlling the computer presentation of digitized continuous time-
based media data composed of a sequence of presentation units’” and
“Nelson discloses a DVMS [Digital Video Management System], which
‘provides the ability to capture, store, transmit, access, process and present
live or stored media streams data.’” Pet. 17–18 (citing Ex. 1006, 2:10–13,

23 Neither party takes a position as to whether the preamble of claim 1 is
limiting. Pet. 17 (“To the extent that the preamble of claim 1 is limiting,
Nelson discloses the limitations therein.”); see generally PO Resp. “[W]here
a patentee defines a structurally complete invention in the claim body and
uses the preamble only to state a purpose or intended use for the invention,
the preamble is not a claim limitation.” Rowe v. Dror, 112 F.3d 473, 478
(Fed. Cir. 1997). We need not determine whether the preamble is limiting,
because Petitioner shows that the subject matter of the preamble is taught by
Nelson.
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5:45–50). The Petition further states that, “Nelson discloses that a stream
includes ‘dynamic information . . . with temporal predictability’ and ‘a
succession of sequences . . . in turn, each sequence contains a succession of
segments’” and “each stream contains a presentation unit being ‘a unit of
continuous, temporally-based data to be presented,’ which ‘has an
associated presentation time and presentation duration.’” Id. at 19
(citing Ex. 1006, 6:10–26, 6:44–47).
Figure 2 of Nelson is reproduced below.

Figure 2 of Nelson depicts, “a stand-alone implementation of the digital
video management system [DVMS].” Ex. 1006, 5:1–2. The detailed
description of Figure 2 in Nelson states:
[T]he DVMS may be implemented in a stand-alone computer
system or a computer-based, packet switched network.
Referring to FIG. 2, in a stand-alone computer system
implementation 12, live or stored media streams are accessed
and captured for presentation and editing on the stand-alone
computer 14. The captured, and optionally edited media
streams may then be delivered to a presentation monitor or to a
VCR tape printer utility.
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Id. at 6:57–64. Figure 3 of Nelson is reproduced below.

Figure 3 of Nelson depicts, “a network implementation of the digital video
management system [DVMS].” Id. at 5:4–5. The detailed description of
Figure 3 in Nelson states:
Referring to FIG. 3, a packet switching network in which
the DVMS is implemented comprises desktop computer
systems 18 which are linked via a packet switching network 80,
which is controlled by the DVMS network implementation 16.
The network 80 may comprise a local area network (LAN) or a
wide area network (WAN), or a combination of one or more
LANs and WANs. The DVMS provides access to and capture
of media streams from live analog video capture, e.g., a VCR or
camcorder, a network, storage or PBX server, or one of the
desktop computers, and in turn manages the transmission of the
media stream data across the network back to any of the access
points.

Id. at 6:65–7:9.
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Petitioner has shown that Nelson teaches a “rendering system” as
recited in the context of the preamble and Patent Owner does not argue to
the contrary (see generally PO Resp.).
We find that the preamble of claim 1 is taught by Nelson.
“(A) maintaining a value of a presentation time
parameter tangibly stored in a second computer-readable
medium and representing an amount of time elapsed during
rendering of a portion of the temporal sequence presentation
data”
Petitioner contends that Nelson’s description of a “reference time
base” that is maintained and used in synchronization of media streams
discloses the “presentation time parameter” as recited in this limitation.
Pet. 39 (citing Ex. 1002 (Schonfeld Decl.) ¶¶ 57–63). The Petition states:
Nelson discloses maintaining a value of a reference time base
(“a value of a presentation time”), which is stored in a
computer-readable medium of the DVMS (“stored in a second
computer-readable medium”), where the value represents an
amount of time elapsed during rendering of a portion of the
media stream (“representing an amount of time elapsed during
rendering of a portion of the temporal sequence presentation
data”). ([Ex. 1002] ¶57.)
Pet. 39. And, “[i]n either the implicit timing scheme or the explicit timing
scheme, ‘a reference time base’ obtained from a reference clock ([Ex. 1006],
13:38-43) is used to control synchronization. (See, e.g., [Ex. 1006,] 14:44-
48, 15:20-25.)” Id. at 22. With regard to the use of the “reference time
base” in synchronization, the Petition states:
Nelson explains that synchronization amongst media streams is
“inherently required for the coordinated presentation.”
(Ex. 1006, 12:17-29; Ex. 1002, ¶58.) Synchronization of the
streams may be achieved by maintaining “a common reference
time base” in the disclosed synchronization schemes, including
an implicit timing scheme and an explicit timing scheme.
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(Ex. 1006, 12:49-51 (disclosing that “independent constituent
streams may . . . be stored in separate file containers and be
synchronized, before presentation, with a common reference
time base”), 13:38-43 (disclosing that in either synchronization
scheme “a reference time base is obtained from a reference
clock”), 13:22-26 (disclosing that synchronization of stream
may be achieved using implicit or explicit timing scheme).)
The implicit timing scheme is “based on the fixed periodicity of
the presentation units in the constituent streams of a stream
group to be synchronized.” (Id., 13:24-26; see also id., 13:26-
31.) The explicit timing scheme is based on embedded
presentation time stamps (and optionally presentation duration
stamps) within each of the streams. (Id., 13:31–35; see also id.,
13:35–37.)
Id. at 39–40.
Patent Owner disputes whether Nelson discloses “maintaining a value
of a presentation time parameter . . . representing an amount of time elapsed
during rendering of the portion of the temporal sequence presentation data.”
PO Resp. 46–48. First, Patent Owner argues that the “reference time base”
that Petitioner relies on as teaching the “presentation time parameter” is not
maintained. Id. at 47 (“[W]hat Petitioner identifies as the presentation time
parameter is not maintained anywhere — it is, according to Petitioner and its
expert, merely obtained at the point at which it is required for comparison by
the stream interpreter.”). This argument is contradicted by Patent Owner’s
own statements and by the disclosure of Nelson cited by Patent Owner.
Patent Owner acknowledges that the reference time “clock value is always
available” (id. at 49) and “an external clock time is maintained (id. at 40).
Patent Owner’s Preliminary Response states the “‘[r]eference time base’ is
also referred to as the ‘current presentation time’ ([Ex. 1006], 14:53-58,
15:20-22) and the ‘currently maintained time count’ (id., 14:25-29)” and
“[t]o be clear, Nelson also refers to the external clock time as the current
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reference time, and also as the currently maintained time count. Ex1006,
13:38-41, 14:26-29, 15:29-32, 58 (CoC, Feb. 17, 1998).” Prelim. Resp. 21
n.3, 24. Based on this record, we find that Nelson teaches maintaining the
reference time base (external clock).
Second, Patent Owner argues that “Nelson does not teach or suggest
the claimed ‘presentation time parameter.’” PO Resp. 38. This argument is
based on Patent Owner’s claim construction argument relating to this
limitation, particularly “during rendering.” Id. at 38–41. Specifically,
Patent Owner argues, “based on the plain meaning of the claim language,
this presentation time parameter must represent ‘an amount of time elapsed
during rendering’ of the relevant portion of presentation data.” Id. at 38. As
discussed above (supra Section II.C.2.), we construe “presentation time” as
“time elapsed since the beginning of the media content presentation.” As
acknowledged by Patent Owner, “[t]he Petition relies on Nelson’s disclosure
that the reference clock ‘indicates the current real time relative to the start
time of the presentation unit consumption process for the corresponding
stream.’ E.g., Petition, 41 (citing EX1006, 14:27-29).” PO Resp. 39. We,
thus, do not find this argument persuasive.
With regard to the portion of Element (A) relating to storing the
presentation time parameter (“maintaining a value of a presentation time
parameter tangibly stored in a second computer-readable medium”),
Petitioner provides a well-supported showing that Nelson meets this
limitation. See Pet. 43–44. The Petition states:
Moreover, this value is “tangibly stored in a second
computer-readable medium,” as claimed. (Ex. 1002, ¶60.) For
example, as discussed above, Nelson discloses that the DVMS
utilizes the reference time base (the claimed “value of a
presentation time parameter”) to compare it with a calculated
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product. (Ex. 1006, 14:34-36.) Thus, the disclosed “value” is
at least temporarily stored on the DVMS. Furthermore, as
discussed above in claim 1 preamble, a POSITA would have
found it obvious to store data, program instructions, and other
parameters in non-volatile storage elements. (See supra Section
IX.A.1.pre.) Accordingly, for similar reasons discussed therein,
a POSITA would have would found it obvious to store the
disclosed “value of a presentation time parameter” in non-
volatile storage elements (the claimed “second computer-
readable medium”). (Ex. 1002, ¶60; Section VIII.C.)
Id. at 41. Patent Owner does not address this storing limitation or dispute
Petitioner’s showing that Nelson teaches or suggests it.24
We find that Nelson teaches or suggests limitation (A) of claim 1.
“(B) maintaining a value of a data time parameter
tangibly stored in a third computer-readable medium and
representing an amount of time required by the rendering
system to render the portion of the temporal sequence
presentation data at a default presentation rate”
Petitioner relies on Nelson’s description of calculated and embedded
presentation times as disclosing the “data time parameter” of this limitation.
Pet. 44. Petitioner argues:
Nelson discloses maintaining a value of a calculated or an
embedded presentation time (“maintaining a value of a data
time parameter”), which is stored in a computer-readable
medium of the DVMS (“stored in a third computer-readable
medium”), where the value represents an amount of time
required by the DVMS to render a portion of the media stream
at the original presentation rate (“representing an amount of
time required by the rendering system to render the portion of

24 Patent Owner does not dispute that the storing limitations of the
challenged claims (“tangibly stored”/”tangibly storing”) would have been
obvious to a skilled artisan. See generally PO Resp; see also In re
NuVasive, 841 F.3d 966, 974 (Fed. Cir. 2016) (explaining that the Board
need not make specific findings as to claim limitations that Patent Owner
does not dispute are disclosed in the prior art).
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the temporal sequence presentation data at a default
presentation rate”).
Id. Petitioner asserts that Nelson discloses this limitation in two distinct
ways. Id. First, the Petition states:
Nelson discloses in the implicit timing scheme that the DVMS
“maintains a separate presentation unit counter” for each audio
and video stream pipe (Ex. 1006, 14:8-17, 14:18-21), where the
unit counter “indicates the number of already consumed
presentation units in the corresponding stream” (id., 14:29-32).
(Supra Section IX.A.1.a; Ex. 1002, ¶65.) The scheme then
calculates a product between the presentation unit count and the
fixed presentation duration of each presentation unit. (Ex.
1006, 14:32-34; see also id., 13:26-27.) Nelson explains that
the calculated product “specifies the real time which has
elapsed to present the counted units.” (Id., 14:32-34
(emphasis added).)
Id. at 44–45. Petitioner contends “this product represents ‘an amount of
time required by the rendering system to render the portion of the temporal
sequence presentation data at a default presentation rate,’ as claimed,
[because] it is the same time requirement regardless of the presentation
rate.” Id. at 45. The cited portions of Nelson support this contention by
Petitioner.
Second, the Petition states:
Nelson discloses in the explicit timing scheme that the DVMS
“reads the embedded time stamp of each presentation token . . .
to determine presentation time and duration for each
presentation unit in the sequence.” (Ex. 1006, 15:10-13; supra
Section IX.A.1.a.) The scheme then compares “a reference
time base with the presentation time and presentation duration
stamp embedded in each presentation unit” to determine
whether a presentation unit should be released for presentation.
([Ex.1006], 15:20-25.) The embedded presentation time
discloses “a value of a data time parameter . . . representing an
amount of time required by the rendering system to render the
portion of the temporal sequence presentation data at a default
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presentation rate,” as claimed at least because it is equivalent to
the calculated presentation time (the presentation unit-duration
product), as discussed above in the first way of disclosing the
claimed “value of a data time parameter.” (Id., 14:67-15:3
(“The stream interpreter does not maintain a presentation unit
counter in [the explicit timing] scheme, as it does in the implicit
timing scheme. Rather, the embedded time stamps in the
streams provide equivalent information.”); Ex. 1002, ¶67.)
Id. at 47. The cited portions of Nelson support this contention by Petitioner.
Thus, Petitioner shows Nelson’s disclosure of “presentation time”
(calculated or embedded) teaches the “value of a data time parameter” as
recited in the claims.25
Nelson also provides this further description of the presentation of
streams of time-based media data using its digital video management system
(DVMS):
Segments of streams contains presentation units. A
presentation unit is a unit of continuous, temporally-based data
to be presented, and accordingly, has an associated presentation
time and presentation duration. A presentation time indicates
the appropriate point in the sequence of a presentation at which
the associated presentation unit is to be played, relative to the
time base for the ongoing presentation. A presentation duration
indicates the appropriate interval of time over which the
associated presentation unit is to be played in the ongoing
presentation.
Ex. 1006, 6:44–53. This passage also supports Petitioner’s contention that
Nelson teaches “maintaining a value of a data time parameter . . .

25 Patent Owner recognizes that the differences in the terminology used in
the ’108 patent and Nelson could cause confusion and explains, “[w]hat
Nelson calls ‘presentation time’ is not equivalent to the challenged claims’
‘presentation time,’ and Petitioner does not rely on what Nelson calls
‘presentation time’ as the ‘presentation time’ of the challenged claims.” PO
Resp. 38 n.10.
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representing an amount of time required by the rendering system to render
the portion of the temporal sequence presentation data at a default
presentation rate” as recited in the claim.
The Petition also references the following passages in Nelson as
disclosing “data time”:
“[e]ach presentation unit is characterized by a prespecified
presentation time during a computer presentation of the media
data.” (Ex. 1006, 2:14-17; see also id., 6:44-56 (disclosing that
“[a] presentation time indicates the appropriate point in the
sequence of a presentation at which the associated presentation
unit is to be played, relative to a time base for the ongoing
presentation”), 11:7-11 (disclosing “retriev[ing] the time stamp
information from the corresponding [audio and video] frames”),
14:8-48 (describing use of presentation time), 15:10-40 (same),
15:66-16:19 (same), 16:21-53 (same).)
Pet. 28–29 (bracketed material in original).
Patent Owner does not contest that Nelson discloses “a data time
parameter” that “represents an amount of time required by the rendering
system to render a portion of the temporal sequence presentation data at a
default presentation rate.” Indeed, Patent Owner appears to acknowledge
that Nelson teaches “maintaining a value of a data time parameter.” In its
Response, Patent Owner acknowledges that “Nelson . . . mak[es] the
decision on when to render a unit based on a comparison of the unit’s time
stamp to a single reference time base.” PO Resp. 52 (emphasis added). The
Preliminary Response states that “‘[d]ata [t]ime’ can be regarded as a time
value (e.g., timestamp) that specifies ‘how long it would take to reach that
location, starting from the beginning of the media content, and playing at [a]
normal rate.’” Prelim. Resp. 12 (citing Ex. 1001, 2:7–12). With regard to
Nelson, the Preliminary Response states:
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In Nelson, presentation time indicates the appropriate time at
which the unit is to be played, relative to a reference time base.
[Ex. 1006], 6:47-50. Presentation times are either explicit time
stamps or the implicit calculated equivalent.
* * *
The token for each unit [as shown in Figure 7] represents an
audio or video presentation unit (114) and a time stamp for that
unit (116). Id., 11:11-14.
* * *
Explicit timing synchronization is based on the time
stamps that are embedded in the stream tokens. Id., 14:50-52.

Prelim. Resp. 16–19. Cook Group Inc. v. Boston Sci. Scimed, Inc., 809 Fed.
App’x. 990, 1000 (Fed. Cir. 2020) (“[A]n admission in a preliminary patent
owner response, just like an admission in any other context, is evidence
appropriately considered by a factfinder.”).
With regard to the portion of this limitation relating to storing the data
time parameter (“maintaining a value of a data time parameter tangibly
stored in a third computer-readable medium”), Petitioner provides a
well-supported showing that Nelson meets this limitation. See Pet. 49–50.
The Petition states:
Moreover, this value is “tangibly stored in a third
computer-readable medium,” as claimed. (Ex. 1002, ¶69.) For
example, as discussed above, Nelson discloses that the DVMS
utilizes the calculated product (the claimed “value of a data
time parameter”) to compare it with the reference time base.
(Ex. 1006, 14:34-36.) Thus, the disclosed “value” is at least
temporarily stored on the DVMS. Furthermore, as discussed
above in claim 1 preamble, a POSITA would have found it
obvious to store data, program instructions, and other
parameters in non-volatile storage elements. (See supra Section
IX.A.1.pre.) Accordingly, for similar reasons discussed therein,
a POSITA would have [ ] found it obvious to store the
disclosed “value of a data time parameter” in non-volatile
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storage elements (the claimed “third computer-readable
medium”). (Ex. 1002, ¶66; Section VIII.C.)
Id. at 46. Patent Owner does not address this storing limitation or dispute
Petitioner’s showing that Nelson teaches or suggests it.
We find that Nelson teaches or suggests limitation (B) of claim 1.
“(C) receiving requests for the value of the presentation
time parameter” and “(D) returning the value of the
presentation time parameter to a first component of the
rendering system in response to the request”
With regard to these limitations, Petitioner argues, “Nelson discloses
that the disclosed ‘value of the presentation time parameter’ . . . is provided
in response to a request from the stream interpreter of the DVMS.” Pet. 48.
Petitioner also argues, “Nelson discloses returning the value of the reference
time base (‘the value of the presentation time parameter’) to the stream
interpreter of the DVMS [Digital Video Management System] (‘a first
component of the rendering system’).” Pet. 49. Petitioner contends,
“Nelson discloses that the stream interpreter module is responsible for
synchronizing streams using either the implicit or explicit timing scheme”
and “the stream interpreter module uses the value of the reference time base
to determine whether to release a presentation unit for synchronization
purposes.” Id. Nelson supports Petitioner’s argument. Nelson states:
[T]he synchronization of streams within a stream group is the
responsibility of the stream interpreter module during a scaling
process. . . . The embedded time stamps are then used
explicitly for synchronization of the streams relative to a chosen
reference time base.
Using either the implicit or explicit timing self-
synchronization schemes, a reference time base is obtained
from a reference clock, which advances at a rate termed the
reference clock rate. This rate is determined by the reference
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[cl]ock period, which is the granularity of the reference clock
ticks.
Ex. 1006, 13:19–43.
Patent Owner argues, “the stream interpreter does not return or
provide the reference time base (the alleged ’value of a presentation time
parameter’) to any component of the rendering system, — as the Challenged
Claims explicitly require.” PO Resp. 48. Patent Owner’s argument is not
responsive to Petitioner’s showing with regard to this limitation. Again,
Petitioner argues “Nelson discloses [providing] the value of the reference
time base (‘the value of the presentation time parameter’) to the stream
interpreter of the DVMS [Digital Video Management System] (‘a first
component of the rendering system’).” Pet. 49. And, as the above-quoted
passage states, Nelson discloses that the “reference time base is obtained
from a reference clock” and provided to the stream interpreter. Patent
Owner’s argument is not persuasive.
We find that Nelson teaches these limitations.
“wherein the value of the presentation time parameter is
not equal to the value of the data time parameter”
Petitioner contends, “Nelson discloses that the value of the calculated
or embedded presentation time (‘the value of the data time parameter’), and
the value of the reference time base (‘the value of the presentation time
parameter’) are not equal.” Pet. 50–51. Petitioner argues:
Nelson discloses controlling the synchronization of media
streams based on these values not being equal. As discussed in
claim elements 1(a) and (b), these two values are compared to
determine whether a presentation unit should be released for
presentation. (See supra Sections IX.A.1.(a)-(b).) Only when
these two values match, a presentation unit will be released.
(Ex. 1006, 14:34-48, 15:20-25.) Indeed, Nelson discloses that
“if the appropriate release time for those [presentation] units
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has passed,” i.e., if the two times values are not equal, both the
implicit and explicit schemes delete those units. (Id., 15:26-40.)

Id. at 51. Within the cited portions, Nelson states:
In addition to determining the appropriate time for
releasing presentation units in the sequence, both the implicit
and explicit timing schemes delete presentation units if the
appropriate release time for those units has passed. For
example, in the implicit timing scheme, when the product of
processed units and unit duration exceeds the currently
maintained time count, the next sequential unit is deleted, rather
than presented. Similarly, in the explicit timing scheme,
[w]hen the current presentation time exceeds the time stamp
presentation time of a presentation unit, that unit is deleted,
rather than presented. In this way, synchronization of streams
is maintained, even if units arrive for presentation at a later time
than expected.

Ex. 1006, 15:26–38. This passage in Nelson support Petitioner’s contention.
Patent Owner argues that “Nelson does not teach or suggest the ‘not
equal’ limitation of the challenged claims.” PO Resp. 41. Notwithstanding
Patent Owner’s argument, Patent Owner appears to acknowledge this
limitation is taught by Nelson. In its Response with regard to the claimed
invention, Patent Owner states, “in the context of the invention . . . portions
of the temporal sequence presentation data are rendered at a rate other than
the default rate (potentially more than one rate) and rendering time
(‘presentation time’) will not be the same as the time it would take to render
the same content at a default rate (‘data time’)” (id. at 42) and “the two
values will only be equal when media is presented at a ‘normal’ or default
rate. When at least a portion of the data being rendered is presented at a rate
other than the default rate, then the two will not be equal as required in every
challenged claim” (id. at 13–14). With regard to Nelson, Patent Owner
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states, “[t]he Nelson system can operate at a speed other than the default
rate; it does so by speeding up or slowing down the reference time base.
EX1006, 17:43-50; EX2016, ¶103.” Id. at 22.
We find that Nelson teaches this limitation.
Summary as to Claim 1
Petitioner’s showing that claim 1 of the ’108 patent would have been
obvious in view of Nelson is well-supported. In contrast, we do not find
Patent Owner’s arguments regarding claim 1 to be convincing. We conclude
that Petitioner has shown by a preponderance of the evidence that claim 1
would have been obvious in view of Nelson.
4. Claim 3
With regard to claim 3, Petitioner makes a showing that all the
limitations are taught by Nelson. See Pet. 51–55. Claim 3 differs from
claim 1 only in Elements (C) and (D). Claim 3 recites:
(C) receiving requests for the value of the data time
parameter: and
(D) returning the value of the data time parameter to a first
component of the rendering system in response to the request.

Ex. 1001, 23:66–24:3.
Petitioner contends that Nelson discloses these limitations. Pet. 52–54
(citing Ex. 1002 (Schonfeld Decl.) ¶¶ 78–82). Petitioner argues, “Nelson
discloses that the disclosed ‘value of the data time parameter’ . . . is provided
in response to a request from the stream interpreter of the DVMS.” Id. at 52
(citing Ex. 1002 ¶ 78; Ex. 1006, 12:4–15, 14:37–48, 15:10–25). Petitioner
also argues, “Nelson discloses returning the value of the calculated or
embedded presentation time (‘the value of a data time parameter’) of the
stream interpreter of the DVMS (‘a first component of the rendering
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system’) in response to the request.” Id. at 53 (citing Ex. 1002 ¶¶ 79–82;
Ex. 1006, 12:4–13:19–26, 14:37–48, 15:10–25, FIG. 6).
Nelson supports Petitioner’s argument. We determine that Nelson
teaches providing the calculated or embedded presentation time to the
stream interpreter. Patent Owner does not dispute Petitioner’s showing with
regard to these limitations or argue that Nelson fails to teach or suggest these
limitations. See generally PO Resp.
We find that Nelson teaches these limitations, and has shown by a
preponderance of the evidence that claim 3 would have been obvious.
5. Claims 5 and 7
Petitioner relies on its showing as to the identical elements in claims 1
and 3 to show that claims 5 and 7 are obvious. See Pet. 55–58. We
determine that Petitioner has shown by a preponderance of the evidence that
all the limitations of claims 5 and 7 are taught by the cited art. Patent Owner
relies on the same arguments presented with regards to all the challenged
claims. See generally PO Resp. We do not find Patent Owner’s arguments
convincing for the reasons stated previously. We determine that Petitioner
has shown by a preponderance of the evidence that claims 5 and 7 of the
’108 patent would have been obvious.

III. CONCLUSION26
For the foregoing reasons, we conclude that Petitioner has established
by a preponderance of the evidence that claims 1, 3, 5, and 7 would have
been obvious in view of Nelson.

26 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 3, 5, and 7 of the ’108 patent are
unpatentable.
In summary:

Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims

35
U.S.C.
§
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 3, 5, 7 103 Nelson 1, 3, 5, 7
Overall
Outcome
1, 3, 5, 7
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FOR PETITIONER:
Naveen Modi
Joseph Palys
Daniel Zeilberger
naveenmodi@paulhastings.com
josephpalys@paulhastings.com
danielzeilberger@paulhastings.com

FOR PATENT OWNER:
Lauren Robinson
Christina Finn
lrobinson@bdiplaw.com
cfinn@bdiplaw.com