Virentem Ventures, LLC d/b/a Enounce

Patent Trials and Appeals Board

Jan 26, 2021

IPR2019-01245 (P.T.A.B. Jan. 26, 2021)

Trials@uspto.gov Paper 41
571-272-7822 Date: January 26, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

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

IPR2019-01245
Patent 7,100,188 B2

Before MEREDITH C. PETRAVICK, TERRENCE W. McMILLIN, and
GARTH D. BAER, Administrative Patent Judges.
McMILLIN, 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, 2, 4, and 7 of U.S. Patent No. 7,100,188 B2 (Ex. 1001,
the “’188 patent”) pursuant to 35 U.S.C. § 311 et seq. Paper 2 (“Petition” or
“Pet.”). Virentem Ventures, LLC (“Patent Owner”) filed a Preliminary
Response to the Petition. Paper 10 (“Prelim. Resp.”). On February 4, 2020,
we instituted trial. Paper 14 (“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 31 (“PO Sur-reply”). An oral
argument was held on November 9, 2020, and a transcript was entered into
the record. Paper 40 (“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, 2, 4, and 7 of the ’188 patent are unpatentable.
B. Related Matters
The parties indicate that the ’188 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 4, 1. The District Court case has
been stayed through the issuance of final written decisions by the Board.
Ex. 2044, 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 ’188 Patent
The ’188 patent is titled, “Method and Apparatus for Controlling
Time-Scale Modification During Multi-Media Broadcasts.” Ex. 1001, code
(54). By way of background, the ’188 patent explains that digitally encoded
audio and audio-visual works are stored as data on servers (such as file
servers or streaming media servers) that are accessible via the Internet for
users to download. Id. at 1:30–33. The ’188 patent further explains that
streaming is a multimedia playback technique that involves downloading
data and initiating playback before the entire work has been received. Id. at
1:50–52. Streaming is advantageous because the viewer/listener does not
need to wait for the entire work to be downloaded before any portion of the
work may be played. Id. at 1:54–62. The ’188 patent identifies two
disadvantages of streaming: (1) playback is often interrupted when the flow
of data is interrupted due to network traffic, congestion, transmission errors,
and the like; and (2) a user or client is required to poll for additional data
according to its rate of use of the data, and thus a user or client using data at
a rapid rate has to make additional requests for data at a higher rate than a
user or client using the data at a slower rate. Id. at 1:62–2:8. The ’188
patent describes two prior art methods for broadcasting a work from a media
server to multiple clients requesting data at arbitrary times. Id. at 2:9–13. A
first prior art approach is to re-broadcast the work at regular intervals, which
is problematic because clients must join a re-broadcast in the middle of the
audio or audio-visual work currently being broadcast, or wait for the next re-
broadcast to begin. Id. at 2:14–22. A second prior art method initiates a re-
broadcast of the audio or audio-visual work each time a client requests to
view the audio or audio-visual work, so clients don’t have to wait to view
the start of the work. Id. at 2:24–28. A problem with the second method is
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that the media server must monitor, track and fulfill the request of each
client requesting data individually, which causes a dramatic increase in
server load and limits the media server’s capacity. Id. at 2:28–35. The ’188
patent further describes a need in the art for control of presentation rates of
broadcast multi-media. Id. at 2:46–48. As an example, users may wish to
have important public service or emergency broadcasts played at playback
rates below the normal playback rate to aid in comprehension. Id. at 2:48–
54. The ’188 patent further describes a need in the art for providing
different delivery times for specific types of content, such as commercial
advertisements, station identification, violence, nudity, adult language,
program schedule information, and program information pertaining to
audience suitability or content. Id. at 2:60–67.
One embodiment of the ’188 patent is a method for presenting
broadcast information comprising steps of (a) receiving broadcast
information; (b) receiving guidance information relating to presentation of
the broadcast information; (c) paying for a capability to alter or override at
least a portion of the guidance information; (d) receiving user input to alter
or override at least some of the guidance information; (e) analyzing the
guidance information, the capability, and the user input to provide one or
more presentation rates; and (f) presenting the information at the one or
more presentation rates. Id. at 3:7–17. Figure 2 of the ’188 patent is
reproduced below.
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Figure 2, above, depicts “a block diagram of an embodiment of the present
invention, which provides substantially continuous playback of an audio or
audio-visual work received from a source having non-deterministic delays
such as a server (for example, a file server or a streaming media server)
broadcasting data via the Internet.” Id. at 3:25–30. Streaming data source
100 provides data representing an audio or audio-visual work through
network 200 to User System 300 (US 300), which data is received at a non-
deterministic rate by US 300 as input to Capture Buffer 400. Id. at 4:48–52.
Capture Buffer 400 may be a FIFO (First In First Out) buffer existing, for
example, in a general purpose memory store of US 300. Id. at 4:53–56.
Data input to Capture Buffer 400 is buffered for a predetermined amount of
time, for example, from one second to several seconds. Id. at 5:9–13. Then,
Time-Scale Modification (TSM) methods are used to slow the playback rate
of the audio or audio-visual work to substantially match a data drain rate
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required by Playback System 500 with a streaming data rate of the arriving
data representing the audio or audio-visual work. Id. at 5:13–17. If a delay
occurs during transmission of the audio or audio-visual work from network
200 to US 300 the playback rate is automatically slowed to reduce the
amount of data drained from Capture Buffer 400 per unit time. Id. at 5:25–
33. This technique advantageously provides more time for data to arrive at
US 300 before the data in Capture Buffer 400 is exhausted, which would
cause Playback System 500 to pause. Id. at 5:33–38.
Capture Buffer 400 receives media data input from network 200 and
media stream data requests from TSM System 800. Id. at 5:39–43. Capture
Buffer 400 outputs, to TSM System 800, a stream of data representing
portions of an audio or audiovisual work and a stream of location
information used to identify the position in the stream of data. Id. at 5:44–
48. Capture Buffer 400 also receives requests for information about the
amount of data stored therein from Capture Buffer Monitor 600 and
responds with the amount of data stored therein. Id. at 5:39–50.
TSM Rate Determiner 700 receives a signal from Capture Buffer
Monitor 600 that represents the amount of data present in Capture Buffer
400. Id. at 5:60–64. TSM Rate Determiner 700 produces as output a rate
signal representing a TSM rate, or playback rate, which can help better
balance the data consumption rate of Playback System 500 with an arrival
rate of data at Capture Buffer 400. Id. at 6:6–10. TSM System 800 modifies
the input stream of data in accordance with well-known TSM methods to
produce, as output, a stream of samples that represents a Time-Scale
Modified signal. Id. at 6:46–49.
The ’188 patent further describes the use of Presentation Rate
Guidance Information (“PRGI”) that is broadcast in conjunction with an
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audio or audio-visual work from a broadcast server to restrict, or direct,
playback rates at a client device receiving the audio or audio-visual work.
Id. at 28:10–14. PRGI is information that is used to communicate a play-
back rate for an entire media work or one or more specific portions of the
media work. Id. at 28:63–65. PRGI may include “presentation rate
insistence information” that specifies the importance of utilizing the
“presentation rate information” contained in the PRGI. Id. at 29:43–45. For
example, “presentation rate insistence information” may comprise codes that
indicate distinct levels such as, “mandatory,” “strongly-encouraged,”
“suggested,” and “optional.” Id. at 29:45–49. As other examples, the
“presentation rate insistence information” may comprise a number on a
standard scale known to all recipient devices or a number, representing an
increment, decrement, or scale factor that is applied to the current insistence
level and that should take effect immediately upon receipt. Id. at 29:49–57.
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Figure 14 of the ’188 patent is reproduced below.

Figure 14, above, depicts a system 21000 including TSM Control Source
21150, which receives PRGI information and outputs PRGI information to
identified client devices. Id. at 32:50–33:1. User System 21300 accesses
Network 21200 and receives information containing media data and the
PRGI from Streaming Data Source 21100 and TSM Control Source 21150,
respectively, via Network 21200. Id. at 33:53–57. In one embodiment of
the ’188 patent, the number 3 represents “mandatory,” the number 2
represents “strongly-encouraged,” the number 1 represents “suggested,” and
the number 0 represents “optional.” In this embodiment, User System
213000 allows playback rate values with accompanying insistence values
less than 3 to be overridden by user input, whereas playback rate values that
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have an accompanying insistence value of 3 would not be alterable either by
user input, or apparatus in User System 21300 since these values are deemed
mandatory. Id. at 36:36–43. The ’188 patent further describes that users
may pay to change the state of their User Systems and thus obtain the ability
to alter or override the suggested guidance information provided by TSM
Control Source 21150. Id. at 36:48–51. For example, User System 21300
may employ a time-base service in which the user of the recipient device
must pay for the ability to override the guidance information provided by
TSM Control Source for a fixed amount of time. Id. at 36:59–63.
D. Challenged Claims
Petitioner challenges claims 1, 2, 4, and 7 of the ’188 patent. Pet. 2–3.
Of the challenged claims, claim 1 is the only independent claim. Ex. 1001,
43:6–43:38. Claim 1 recites:
1. A method for presentating [sic] information received from a
broadcaster by a client device, which client device utilizes
presentation rates to present information at various presentation
rates, and which method comprises steps of:
receiving broadcast information;
receiving guidance information relating to presentation of
the broadcast information;
analyzing the guidance information and state values
accessed by the client device to provide one or more presentation
rates, which state values may be used to alter or override at least
a portion of the guidance information; and
presenting the information at the one or more presentation
rates.

Id. at 43:6–19. Claims 2 and 4 depend directly from claim 1 and claim 7
depends from claim 2. Id. at 43:20–38.
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E. Prior Art and Asserted Grounds
Petitioner asserts that claims 1, 2, 4, and 7 would have been
unpatentable on the following grounds:
Claim(s) Challenged 35 U.S.C. §2 Reference(s)/Basis
1, 2, 7 102 Logan3
4 103 Logan
1, 2, 4, 7 103 Logan, De Lang4

II. ANALYSIS
A. Legal Standards
In order for a prior art reference to anticipate an invention, it must
disclose every limitation of the claimed invention, either explicitly or
inherently. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Anticipation “requires that every element and limitation of the claim was
previously described in a single prior art reference, either expressly or
inherently, so as to place a person of ordinary skill in possession of the
invention.” Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed.
Cir. 2008) (citing Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373,
1379 (Fed. Cir. 2003); Cont'l Can Co. USA v. Monsanto Co., 948 F.2d 1264,
1267–69 (Fed. Cir. 1991)). “[U]nless a reference discloses within the four
corners of the document not only all of the limitations claimed but also all of

2 Because the application leading to the ’188 patent was filed before
March 16, 2013, patentability is governed by the versions of 35 U.S.C. §§
102 and 103 preceding the Leahy-Smith America Invents Act (“AIA”), Pub
L. No. 112–29, 125 Stat. 284 (2011).
3 US Patent No. 7,055,166 B1 filed Jan. 27, 1999 (Ex. 1005).
4 International Patent Application Publication No. WO 97/03521 published
Jan. 30, 1997 (Ex. 1006).
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the limitations arranged or combined in the same way as recited in the claim,
it cannot be said to prove prior invention of the thing claimed and, thus,
cannot anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign,
Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
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.5 Graham v. John Deere Co., 383 U.S. 1, 17–
18 (1966). Consideration of the Graham factors “helps inform the ultimate
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,

5 Neither party presents any argument relating to objective evidence of
nonobviousness.
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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
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, or a related area.” Pet. 3–4
(citing Ex. 1002 (Schonfeld Decl.) ¶¶ 19–20). Patent Owner does not
dispute Petitioner’s proffer regarding the level of skill in the art. PO Resp.
13 (“Patent Owner accepts Petitioner’s proferred level of ordinary skill in
the art in analyzing Petitioner’s allegations of anticipation and
obviousness.”). We adopt Petitioner’s undisputed contention regarding the
level of ordinary skill in the art. Further, we find that the prior art of record
reflects the level of skill in the art at the time of the invention. See Okajima
v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
C. Claim Construction
In an inter partes review proceeding, claim terms
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 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.

Changes to the Claim Construction Standard for Interpreting Claims in Trial
Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340,
51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).
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Further, “[a]ny 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.”6 Id.
Under the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303,
1312–19 (Fed. Cir. 2005) (en banc), claim terms are given their ordinary and
customary meaning, as would have been understood by a person of ordinary
skill in the art at the time of the invention, in light of the language of the
claims, the specification, and the prosecution history of record. See Thorner
v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012).
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)).
Petitioner proposes constructions for “broadcast information,”
“guidance information,” and “state value.”7 Pet. 8–10. Patent Owner

6 The District Court presiding over the litigation between the parties
involving the ’188 patent issued an order construing certain claim terms
(Ex. 2012), which we have considered.
7 As discussed infra, there is no dispute between the parties as to the
constructions of “guidance information” and “state value.” PO Resp. 35–36;
Pet. Reply 13.
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contends construction of “broadcast information” is unnecessary; contends
the preamble of challenged, independent claim 1 is limiting; and proposes a
construction for “presentation rate.” PO Resp. 13–35. And, Patent Owner
proposes a construction for “time-scale modification,” a term that is not
recited in any claim of the ’188 patent, because, Patent Owner argues, “[t]he
term ‘time-scale modification’ is incorporated in all of the claims by virtue
of the definition of ‘presentation rate.’” Id. at 24.
“broadcast information”
The term “broadcast information” is recited in challenged,
independent claim 1. Ex. 1001, 43:6–19. Petitioner contends: “[t]he Board
should apply the ordinary and customary meaning in view of the
specification—i.e., ‘information received from a broadcaster.’” Pet. 9.
Petitioner provides no reasoning or argument in support of its proposed
ordinary and customary meaning (id.) that we determine departs from the
ordinary and customary meaning because it limits the term to information
that is received. But, there is no dispute between the parties relating to the
meaning or construction of “broadcast information.” See PO Resp. 13–14
(“Patent Owner contends that construction of ‘Broadcast Information’ is not
necessary for the final determination of anticipation and obviousness as
alleged in the Petition.”).8 Although we disagree with Petitioner and
determine that the ordinary and customary meaning is not limited to
information that is received,9 we agree with Patent Owner that there is no
dispute that requires us to further construe “broadcast information.”

8 The District court did not construe “broadcast information.” See
Ex. 2012, 2–4.
9 If we were to incorporate Petitioner’s proposed construction (“information
received from a broadcaster” into the limitation of challenged, independent
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“guidance information”
The term “guidance information” is recited in challenged, independent
claim 1. Ex. 1001, 43:6–19. Petitioner contends “guidance information”
means “information broadcast in conjunction with an audio or audio-visual
work from a broadcast server to restrict, or direct, playback rates at a client
device receiving the audio or audiovisual work.” Pet. 10. Petitioner
proposed this same construction in the litigation involving the ’188 patent
and the District Court rejected it. Ex. 2012, 11–12. The District Court said:
The fifth term is “guidance information” found in the
’228 patent family. [Patent Owner] proposes “information that
is broadcast to restrict or direct presentation rates.” [Petitioner]
propose[s] “information broadcast in conjunction with
broadcast information from a broadcast server to restrict, or
direct, playback rates at a client device receiving the broadcast
information.”
The parties agree that the term includes information
broadcast to restrict or direct playback or presentation rates.
They disagree as to whether that information must be
“broadcast in conjunction with broadcast information from a
broadcast server” to a “client device receiving the broadcast
information.”
[Petitioner] take[s] [its] language from column 27 of the
’228 patent. That, however, is not a clear definition – it refers
to “an aspect” of the invention. That does not clearly limit it to
all aspects of the invention.
In any event, the parties agree that “guidance
information” is synonymous with “Presentation Rate Guidance
Information” or “PRGI” in the patents. At column 28, lines 42
to 44, the ’228 patent states that “PRGI is information that is
used to communicate a playback rate for an entire media work
or one or more specific portions of the media work.” It then
goes on to specify embodiments of what the presentation

claim 1 reciting “receiving broadcast information,” it would read, “receiving
information received from a broadcaster,” and, thus, become redundant and
confusing.
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information may be comprised of. The language stating what
PRGI is, however, is not an embodiment. It is a definition, and
I will adopt it.
Id. (footnote omitted). We find this reasoning persuasive and adopt the
construction of “guidance information” that the District Court adopted. See
id. at 2. “Patent Owner agrees with the Board’s[10] [and the District Court’s]
construction.” PO Resp. 35. In its Reply, Petitioner consents to the Board’s
(and the District Court’s) construction. Pet. Reply 13 (“While [Petitioner]
believes its construction of ‘guidance information’ as discussed in the
Petition is correct (Pet., 10), [Petitioner] consents to the Board’s [and the
District Court’s] construction of the same term.”). Accordingly, we construe
“guidance information” as “information that is used to communicate a
playback rate for an entire media work or one or more specific portions of
the media work.”
“state values”
The term “state values” is recited in challenged claims 1, 2, and 4.
Ex. 1001, 43:6–22, 43:25–29. With regard to “state value,” the parties
propose the Board adopt the following construction: “a value that represents
a level of service the user has purchased, or the feature set or model of user
system purchased by the user.” Pet. 10; PO Resp. 36. This proposed
construction is supported by the Specification of the ’188 patent, which
states: “state values . . . represent a level of service the user has purchased,
or the feature set or model of User System 21300 purchased by the user.”
Ex. 1001, 36:24–27. In addition, this construction was agreed to by the
parties in the District Court litigation between them involving the ’188

10 The Board adopted the District Court’s reasoning and construction in the
Institution Decision. Inst. Dec. 16.
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patent and has been adopted by the District Court. See Ex. 2012, 1–2. For
purposes of this institution decision, we adopt this construction.
“presentation rate” and “time-scale modification”
We analyze the terms “presentation rate” and “time-scale
modification” together. The term “presentation rate” is recited in challenged
claims 1 and 7. Ex. 1001, 43:6–19, 43:36–38. “Time-scale modification” is
not recited in any claim of the ’188 patent. Id. at 43:6–44:38. However,
Patent Owner argues that “[t]he term ‘time-scale modification’ is
incorporated in all the claims by virtue of the definition of ‘presentation
rate.’” PO Resp. 23–24. 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” 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.” Id.
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

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. 1025, 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
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
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adopted by the District Court. PO Resp. 23. Patent Owner provides no
additional reasoning or argument in support of its construction of
“presentation rate.”12 Id.
With regard to “time-scale modification,” Patent Owner proposes a
construction that it proposed in the District Court and that was rejected by
the District Court. Ex. 2012, 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” that the District Court rejected. By incorporating a
definition of “time-scale modification” that was rejected by the District
Court into the challenged claims by adopting the District Court’s

construction of “presentation rate” in the District Court case. Prior to the
hearing, Petitioner argued that “presentation rate” needed no construction as
“[i]t is simply the rate of presentation of information.” Ex. 2011, 8; see also
PO Resp. 27.
12 Patent Owner does point out that the Board adopted the District Court’s
rationale and construction of “presentation rate” in its Decision on
Institution in another IPR. PO Resp. 23 (citing IPR2019-01246, Paper 14
(Ex. 2015), 11). However, in that case, there was no dispute between the
parties as to the construction of “presentation rate” (see Ex. 2015, 11) and
the Board relied on the District Court’s construction only in making its
preliminary decision as to whether to institute trial. In its Decision on
Institution, the Board noted that the case was in a preliminary stage and “the
Board has not made a final determination with respect to . . . any . . . factual
and legal issues” including claim construction. Id. at 38. IPR2019-01246
was terminated because the Patent Owner abandoned the contest prior to the
Board entering a final written decision (IPR2019-01246, Paper 30) and no
final determination as to claim construction was made.
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construction of “presentation rate,” we would be construing the claims in a
manner inconsistent with the District Court.13
Petitioner’s position on construction of “presentation rate” is
inconsistent with the position it took before the District Court. In this
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 intrinsic or extrinsic 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.” We
believe this meaning is consistent with the 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. Patent Owner cites no intrinsic or extrinsic evidence in
support of its proposed construction but instead relies entirely on the
agreement of the parties in District Court. PO Resp. 23. Based on our

13 Patent Owner argues that the District Court’s claim construction is not
controlling. PO Sur-reply 13 (“The Delaware district court’s ruling should
not control because the district court has already agreed that claim
construction may need to be revisited to arrive at the correct construction
following the IPR proceedings, suggesting that the Board may likely reach a
different conclusion.”) (citing Ex. 2044, 1–2).
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independent analysis of the ’188 patent and its file history, we do not discern
any support for incorporating “in a time-scale modification system” into the
meaning of “presentation rate” as recited in the claims of the ’188 patent or
otherwise limiting the construction of “presentation rate” from its ordinary
and customary meaning. Indeed, construing “presentation rate” to include
“in a time-scale modification system” would be contrary to the passage in
the Specification of the ’188 patent that states:
Although the detailed description used the terms
playback rate[14] and TSM rate, and the terms playback and
playback apparatus, these terms should be understood to
include any type of presentation rate (i.e., a rate of
presentation of information) and any type of presentation
apparatus. As such, these terms are to be understood as being
used in the broadest sense.

Ex. 1001, 42:60–66 (emphasis added). And, finally, while Patent Owner
does not explicitly abandon its argument from its Response that the
construction of “presentation rate” includes “in a time-scale modification
system,” Patent Owner states in its Sur-reply that “at a minimum,
‘presentation rate’ should be construed as ‘the speed at which media is
played back’ in accord with portion [sic] of the agreed construction that
Petitioner does not challenge here.” PO Sur-reply 10.
Thus, we construe the term “presentation rate” differently than the
District Court, because the records in the District Court case and in this

14 Patent Owner acknowledges that “[p]layback rate and presentation rate are
synonymous.” PO Resp. 35 n.9. We agree. And, determine that according
“playback rate” and “presentation rate” the same meaning supports our
conclusion that “presentation rate” should be construed as having its
ordinary and common meaning of “the speed of presentation” (i.e., not
including “in a time-scale modification system”).
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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. 1025, 109:3–110:10. In this
proceeding, there is a dispute between the parties as to the construction of
“presentation rate.” Compare PO Resp. 23, with Pet. Reply 6–7. However,
our conclusion that the challenged claims of the ’188 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.”
Having determined that the proper construction of “presentation rate”
in the challenged claims of the ’188 patent does not include “in a time-scale
modification system,” we nonetheless construe “time-scale modification” in
light of Petitioner’s agreement before the District Court to the construction
of “presentation rate” as “the speed at which media is played back in a time-
scale modification system.” We reject Patent Owner’s proposed
construction of “time-scale modification system,” because we discern no
basis for limiting the claims of the ’188 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. 24–27.
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.’”
Ex. 2012, 8. However, as the District Court noted, “[t]he terms
‘intelligibility’ and ‘pitch’ do not appear in either the ’903 or ’228 patent
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family.[15] In fact, the term ‘pitch’ does not appear in any of the asserted
patent families.” Id. The District Court said:
[Patent Owner] attempts to read those terms into time-
scale modification through the ’769 patent, an earlier patent
unrelated to the asserted patents but incorporated by reference
in an example in the specification. The ’769 patent is about an
improvement to prior art time-scale modification methods. That
it was an improvement on time-scale modification methods
sheds light on what time-scale modification means generally to
a person of ordinary skill. For example, the ’769 patent states
that “[t]he present invention relates to a method of time-scale
modification (‘TSM’), i.e., changing the rate of reproduction of
a signal” before going on to explain the improvement with
more particularity.
In litigation involving the ’769 patent in California, the
term “time-scale modification” was disputed. [Patent Owner’s]
predecessor argued that the definition of “time-scale
modification” in that patent did not include preserving pitch and
argued that the specification of the ’769 patent provided a
“clear statement” of a definition – one that did not include
anything about pitch. It did so in order to argue that the
invention in the ’769 patent was a specific type of time-scale
modification that preserves pitch.
The court in California agreed with the plaintiff in that
case and did not read pitch into the meaning of the general term
“timescale modification” and construed the term to mean
“speeding up or slowing down the playback rate.” The plaintiff
in the California case stated that it “proposed a clear definition
[[16] i.e., the definition [Petitioners] here propose][17] drawn
directly from the patent specification. . . . In fact the
specification [[17] of the ’769 patent] [17] very clearly uses the
term ‘time-scale modification’ to refer only to the speeding up
or slowing down playback of a signal.” The court in California
concluded that that construction was supported by the use of the

15 The ’188 patent is in the ’228 patent (US Patent No. 6,598,228) family.
See Ex. 1001, code (63).
16 Bracket in original.
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term in the claims and the specification.
I find that Court’s reasoning persuasive. In addition, 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 [[17] in
the ’903 patent family] [17] 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.”
Similarly, at column 5, lines 12 to 21, the ’885
specification [in the ’228 patent family] [17] states: “Time-Scale
Modification (TSM) methods are used to slow the playback rate
of the audio or audiovisual work to substantially match a data
drain rate required by Playback System 500 with a streaming
data rate of the arriving data representing the audio or audio-
visual work. As is well known to those of ordinary skill in the
art, presently known methods for TimeScale Modification
(‘TSM’) enable digitally recorded audio to be modified so that
a perceived articulation rate of spoken passages, i.e., a speaking
rate, can be modified dynamically during playback.”[17]
None of these descriptions of time-scale modification
mentions preservation of pitch or intelligibility.
That patents in the ’888 family[18] refer to intelligibility
does not change the result. In the background of the invention
of the ’888 patent, it states that “[p]resently known methods for
Time-Scale Modification (‘TSM’) enable digitally recorded
audio to be modified so that a perceived articulation rate of
spoken passages, i.e., a speaking rate, can be modified
dynamically during playback.” It then goes on to discuss

17 The quoted passage appears at column 5, lines 13–22, of the ’188 patent.
18 The ’888 patent family includes four patents asserted by the Patent Owner
in the District Court case. See Ex. 2012, 7 n.4 (“The ʼ888 patent family
includes U.S. Patent Nos. 6,801,888 (‘the ʼ888 Patent’), 7,299,184 (‘the ʼ184
Patent’), 7,043,433 (‘the ʼ433 Patent’) and 9,185,380 (‘the ʼ380 Patent’).”).
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listener directed TSM [or LD-TSM] in which the intelligibility
is preserved. That a version of TSM preserves intelligibility
does not, however, mean that TSM in general also must.
Similarly, that the ’888 patent refers to it being well-
known that “presently known methods for Time-Scale
Modification (‘TSM’)” enable modification of articulation rate
does not change the analysis. That refers to articulation rate.
It’s a rate – which refers to speed. And that is consistent with
how that term is used in the ’888 specification, which refers to
articulation rate as, “i.e., a speaking rate, can be modified
dynamically during playback.”
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. 2012, 8–10 (footnotes omitted). We find the District Court’s reasoning
persuasive and we adopt it and the District Court’s construction of “time-
scale modification” as “speeding up or slowing down the playback rate.” Id.
at 8.
Patent Owner also argues that skipping is not within the scope of
“presentation rate.” PO Resp. 27–35. Patent Owner contends, “the ’188
Patent specification does not disclose that ‘skipping’ is a ‘presentation
rate.’” Id. at 31. This is incorrect. In Figure 16 of the ’188 patent,19 “skip”
is a rate or “speed value” shown under the headings “ABSOLUTE [playback
rate values” and “INCREMENTAL [playback rate values]” in table 30100.
See Ex. 1001, 35:9–11 (“As further shown in FIG. 16, Playback Rate Look-
up Table 30100 comprises absolute playback rate values and incremental

19 Figure 16 relates to the embodiment shown in Figure 14 of the ’188
patent. Ex. 1001, 4:24–27. Figure 14 is the embodiment in the ’188 patent
that Patent Owner argues relates to the challenged claims. See, e.g., PO
Resp. 20 n.4 (“[I]t is Figure 14 that relates to the challenged claims.”).
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playback rate values.”) In addition, the Specification of the ’188 patent
describes methods of “playback rate adjustment for an audio-visual work” in
which “frames are skipped.” Id. at 7:37–48. This passage from the
Specification of the ’188 patent provides:
As one of ordinary skill in the art can readily appreciate,
whenever embodiment 1000 provides playback rate
adjustments for an audio-visual work, TSM System 800 speeds
up or slows down visual information to match the audio in the
audio-visual work. To do this in a preferred embodiment, the
video signal is "Frame-subsampled" or "Frame-replicated" in
accordance with any one of the many methods known to those
of ordinary skill in the prior art to maintain synchronization
between the audio and visual portions of the audio-visual work.
Thus, if one speeds up the audio and samples are requested at a
faster rate, the frame stream is subsampled, i.e. frames are
skipped.

Id. (emphasis added); see also id. at 6:46–52 (“In accordance with the
present invention . . . . The Time-Scale modified output signal contains
fewer samples per block of input data if Time-Scale Compression is
applied.”). In addition, the Specification of the ’188 patent describes
skipping as an alternative to fast-forwarding. See id. at 31:16–21 (“If the
presentation of a media work occurs after the expiration date contained in
the ‘time-stamp information,’ the outdated ‘playback rate insistence
information’ may be ignored, overridden, or altered to allow users to skip or
fast-forward through that portion of the work.”) (emphasis added). Thus,
Patent Owner’s contention that the Specification of the ’188 patent does not
disclose that skipping is a “presentation rate” is contradicted by passages in
the Specification that do so. Based on these passages in the Specification of
the ’188 patent, we determine that it would be inappropriate to exclude
skipping from the ordinary and customary meaning of “presentation rate.”
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Although it does not appear that the issue of whether the term
“presentation rate” as recited in the claims of the ’188 patent excludes
skipping was considered by the District Court, the District Court did
construe “rate which causes a portion to be skipped” from the claims of the
’433 patent20 (US Patent No. 7,043,433) as “a rate of infinity or other
indicium that will be similarly translated which directs the presentation
system to skip a portion” at the request of Patent Owner. See Ex. 2012, 14–
15.21 Patent Owner argues that it is improper to rely on the “unrelated” ’433
patent “to construe the scope of the ’188 patent.” PO Resp. 30–31.
However, we determine that, along with the Specification of the ’188 patent,
the District Court’s construction supports our conclusion that the ordinary
and customary meaning of “presentation rate” as recited in the claims of the
’228 patent should not be limited so as to exclude a rate of infinity or
skipping.
Preamble of Claim 1
Patent Owner contends that the preamble of challenged, independent
claim 1 is limiting. PO Resp. 14–23. The preamble of claim 1 recites:
A method for presentation of information received from a
broadcaster by a client device, which client device utilizes
presentation rates to present information at various
presentation rates, and which method comprises steps of:

20 The ’433 patent (US Patent No. 7,043,433) is a patent asserted in the
District Court litigation but contains a different disclosure than the ’188
patent and is not in the ’228 patent family. See Ex. 2012, 7 n.4.
21 Before the District Court, Patent Owner agreed to a construction of
“presentation rate” that did not specifically address whether the term should
exclude skipping. Ex. 1025, 109: 3–13.
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Ex. 1001, 43:6–9 (emphasis added). Patent Owner’s argument focuses on
the highlighted language in the preamble of claim 1. See PO Resp. 14.
Patent Owner presented the same or a similar argument in its
Preliminary Response. See, e.g., Prelim. Resp. 21 (characterizing the
language in the preamble as the “‘smart client’ limitation”). In the
Institution Decision, the Board considered this argument and preliminarily
rejected it. Inst. Dec. 20 (“At least at this stage of this proceeding, we do not
find the preambles of the claims limit the invention to ‘smart devices.’”).22
In response to this argument, Petitioner argues:
In addressing the preamble of claim 1, [Patent Owner]
muddies two separate issues and attempts to portray them as
one. (Resp., 14-23.) The first is whether the preambles are
limiting at all. The second is whether the preambles’ recitation
that the client device “utilizes presentation rates to present
information at various presentation rates” should be further
narrowed to require the client device to be capable of
performing time-scale modification by itself to implement these
various presentation rates. The former is irrelevant, as
[Petitioner’s] petition addressed the preambles, and the latter is
incorrect.

Pet. Reply 3. We agree with Petitioner. As discussed below, Petitioner has
established that all the elements of the preamble of challenged, independent
claim 1 are disclosed in the cited art. And, it would be contrary to ordinary
and customary meaning of the language of the preamble and the disclosure
in the Specification to limit the claims to systems in which the client device

22 It does not appear that the Patent Owner raised this claim construction
issue before the District Court and it does not appear that the District Court
considered this issue or made any related rulings. See generally Ex. 2012
(District Court’s claim construction order).
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is capable of performing time-scale modification by itself to implement
various presentation rates (i.e., smart devices).
The relevant language in the preamble recites that a “client device
utilizes presentation rates to present information at various presentation
rates.” Ex. 1001, 43:7–9. Considering and incorporating the ordinary and
common meaning of “presentation rate” as “the speed of presentation,” the
preamble language becomes a “client device that utilizes the speeds of
presentation to present information at various speeds of presentations.”
Based on this interpretation, we determine that the preamble language, if
limiting, only requires that the client device be capable of using the speeds at
which information is presented to present the information at various speeds.
Accordingly, we reject Patent Owner’s contention that the preamble limits
the scope of the claims to client devices that are capable of performing time-
scale modification (“speeding up or slowing down the playback rate”)
wherein the modification is performed by the client device itself. See PO
Resp. 14–23. A client device that is capable of receiving information at
various speeds and presenting at various speeds meets this preamble
language, even if the client device itself cannot modify the playback rate
(i.e., the client device is “dumb” (can only present the information at the
speeds at which it is received)).
We also reject Patent Owner’s contention that the intrinsic evidence
(the Specification and file history) supports limiting the claims to “smart
devices”—a client device that can perform time-scale modification. See PO
Resp. 17–23. First and foremost, the Specification of the ’188 patent
directly contradicts this contention. The Specification of the ’188 provides:
It is within the spirit of the present invention that embodiments
of the present invention include embodiments where the
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playback system is replaced by a distribution system, which
distribution system is any device that can receive digital audio
or audio-visual works and redistribute them to one or more
other systems that replay or redistribute audio or audio-visual
works. In such embodiments, the playback system is replaced
by any one of a number of distribution applications and systems
which are well known to those of ordinary skill in the art that
further distribute the audio or audio-visual work. It should be
understood that the devices that ultimately receive the re-
distributed data can be “dumb” devices that lack the ability to
perform Time-Scale modification or “smart” devices that can
perform Time-Scale Modification.

Ex. 1001, 26:51–65 (emphasis added). Patent Owner, in reliance on “the
limiting nature of the preamble,” argues that this portion of the Specification
should not be used to construe claim 1, because it relates to embodiments in
the Specification in which “time-scale modification is performed at the
server, and then time-scale modified versions of content are transmitted to a
client device.” PO Resp. 19. As discussed above, we determine that the
language of the preamble does not limit claim 1 to time-scale modification at
the client device. And, “there is strong presumption against a claim
construction that excludes a disclosed embodiment.” Nobel Biocare Servs.
AG v. Instradent USA, Inc., 903 F.3d 1365, 1381 (Fed. Cir. 2018) (quoting
In re Katz Call Processing Pat. Litig., 639 F.3d 1303,1324 (Fed. Cir. 2011).
Patent Owner has not overcome this presumption.
Moreover, the description of the Figure 14 embodiment that Patent
Owner relies upon (see PO Resp. 18–19) also contradicts this argument.
The description of Figure 14 in the Specification provides:
FIG. 14 shows a block diagram of embodiment 21000 of the
present invention which transmits PRGI in an “out of band”
mode to client devices receiving the media data.

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* * *
Note that all or some components of embodiment 21000 may
exist in separate locations, which components are connected to
one another via a network or any other communication means
(where the use of the term means is used in the broadest sense
possible.)

* * *

TSM Rate Determiner 21700 [as shown in Figure 14 (Ex. 1001,
38:13–14)] may process the PRGI from TSM Control Decoder
21450 according to rule-sets or other algorithms specified by
. . . (iii) a device programmed by the broadcaster which may
exist in the client apparatus or elsewhere.

* * *

Conversely, components of embodiment 21000 may exist in
separate locations connected to one another via a network or
any other communication means (where the use of the term
means is used in the broadest sense possible).

Ex. 1001, 32:8–10, 32:26–31, 38:50–55, 39:47–50 (emphasis added).
Although these passages are sufficient to show the claims should not be
limited as Patent Owner contends, there are multiple other passages in the
Specification that contradict Patent Owner’s proposed construction.
With regard to Patent Owner’s argument that the prosecution history
supports its proposed, limiting construction (see PO Resp. 21–23), the Board
considered this contention in its Institution Decision and determined
otherwise. Inst. Dec. 17–19. We have considered the additional arguments
and evidence in Patent Owner’s Response relating to this contention
showing the Applicant’s reliance on the preamble to distinguish the
invention from the art cited during prosecution (see PO Resp. 21–23), but
determine it does not dictate a different result. The intrinsic evidence as a
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whole, the ordinary and customary meaning of the language in the preamble,
and the repeated statements in the Specification not to limit the invention as
argued by Patent Owner substantially outweigh the evidentiary value of
these statements by Applicant during prosecution. This is particularly true
in this case because, as pointed out in the Institution Decision (see Inst. Dec.
17), the Examiner relied on language outside the preamble in allowing the
independent claims. See Ex. 1004, 15 (Examiner’s statement of reasons for
allowance).
For these reasons, we determine that the preamble does not limit the
scope of challenged, independent claim 1 to “smart devices”— client
devices that are capable of performing time-scale modification (“speeding
up or slowing down the playback rate”) wherein the modification is
performed by the client device itself.
D. Asserted Anticipation of Claims 1, 2, and 7 Based on Logan
Petitioner challenges claims 1, 2, and 7 as anticipated by Logan.
Pet. 2, 11–25.
1. Logan (Ex. 1005)
Logan was filed on January 27, 1999, and issued on May 30, 2006.
Ex. 1005, codes (22), (45). The earliest priority date claimed for the ’188
patent is based on a filing date of May 26, 1999. Ex. 1001, code (63).
Therefore, Logan is prior art to the ’188 patent under at least 35 U.S.C.
§ 102(e)(2). See Pet. 3. Logan was not considered by the Office during
prosecution of the ’188 patent. Ex. 1001, code (56); see Pet. 3. Patent
Owner does not contest the prior art status of Logan. See generally PO
Resp.
Logan is titled, “Apparatus and Methods for Broadcast Monitoring.”
Ex. 1005, code (54). Logan is directed to “editing the content of a broadcast
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programming signal to provide a proprietary program signal that has been
tailored to the preferences of an individual monitoring the broadcast
programming signal.” Id. at code (57) (Abstract). Logan “relates to systems
and methods for monitoring broadcast programming and, more particularly,
to systems and methods that can integrate broadcast programming signals
with selected additional programming signals, and that can further edit the
integrated signals to provide a user with a proprietary program signal.” Id.
at 1:13–18. Logan discloses “a system for monitoring a video broadcast
programming signal, such as a television program, and for editing the
monitored program to generate a proprietary program signal having features
and information tailored to the preferences of a particular audience
member.” Id. at 7:51–56. Figure 1 of Logan is reproduced below.

Figure 1 of Logan (above) depicts a system 10 according to the invention for
providing computer-enhanced broadcast monitoring. Id. at 7:49–50. As
shown in Figure 1, system 10 includes a receiver 12, an antenna 14, a
compressor 16, a memory system 18, a dual port ram 20, a persistent
memory device 22, a time stamp unit 28, a decompressor 30, a video
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monitor 32, a processor 34, a local communication system 38, a remote
communication system 40, an editing unit 42, a remote time stamp 48, and a
monitor 44. Id. at 7:64–8:3. Memory system 18 acts as a buffer memory for
storing a compressed video signal generated by the compressor 16. Id. at
8:65–67. Memory system 18 includes high-speed random access electronic
memory 20 depicted as a dual-port ram, and a slower persistent memory 22.
Id. at 8:67–9:3. Logan describes that time stamp unit 28 generates a time
stamp at set intervals, such as every five seconds, and the time stamp is
multiplexed with the compressed broadcast signal and the multiplexed signal
is stored by memory system 18 thereby providing a time based index into the
compressed programming data stored in the memory system 18. Id. at 9:11–
21. Editing unit 42 can generate, in response to the monitored broadcast
programming signal, a marking signal that can provide instructions for
modifying the broadcast programming signal. Id. at 10:16–19. A marking
signal can be any signal that provides information supplemental to the
broadcast programming signal. Id. at 11:49–51. Marking signals can carry
information on content, to allow screening of violent scenes, to allow
deleting of time-outs in sport shows, or to allow editing of shows to show
only highlights. Id. at 11:54–57. Logan discloses that a broadcaster may not
wish commercials to be deleted or skipped in the viewing process and may
embed marking signals representative of information that prevents portions
of the broadcast programming signal from being skipped or deleted. Id. at
13:11–16.
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2. Analysis of Independent Claim 1
A method for presentating [sic] information received
from a broadcaster by a client device, which client device
utilizes presentation rates to present information at various
presentation rates, and which method comprises steps of:
Petitioner asserts Logan discloses the preamble of claim 1.
Pet. 11–12. In particular, Petitioner points to Logan’s “broadcast
programming signal,” which according to Petitioner is “transmitted from a
broadcaster to a user’s device [and] reads on the claimed ‘information
received from a broadcaster by a client device.’” Id. at 11–12 (citing
Ex. 1005, 2:26–47, 5:15–23, 5:59–6:25, 8:5–10, 8:27–47, 12:61–13:10;
Ex. 1002 ¶¶ 49–51). Petitioner further asserts, “while a user [of Logan’s
system] has the ability to fast forward, pause, etc., using local controls,
marking signals may be employed to restrict or direct playback rates, thus
the presentation rate (e.g., whether normal speed or fast forward),” and thus
a person of ordinary skill in the art “would have understood Logan to
disclose a ‘client device [that] utilizes presentation rates to present
information at various presentation rates,’ as recited in the preamble” of
claim 1. Id. at 12 (citing Ex. 1005, 2:7–14, 2:26–47, 2:63–3:3, 5:59–6:25,
8:18–26, 11:51–54, 12:61–13:42; Ex. 1002 ¶¶ 50–64).
Patent Owner argues that Petitioner has failed to show that Logan
discloses “a client device, which client device utilizes presentation rates to
present information at various presentation rates” as recited in the preamble
of claim 1. PO Resp. 37–46. Specifically, Patent Owner argues that the
disclosure in Logan that discloses fast forwarding relates to an embodiment
in which “the client does not utilize presentation rates to present
information at various presentation rates—it simply plays what it gets at the
speed it gets it.” Id. at 38–39. Patent Owner argues that “Logan discloses
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‘fast-forward’ only in the context of the embodiment of Logan that does not
have local storage” and “[i]n these video-on-demand systems (‘VoD’),
modification to the broadcast programming signal, including fast forward,
deleting or skipping, are implemented at the server, after being requested by
the user via local controls.” Id. at 38. This argument is based on Patent
Owner’s claim construction contention that the preamble limits the scope of
the claims to systems in which the client device is a “smart” device that
performs time-scale modification (changes the presentation rate) without the
aid of any other component of the system. As discussed above (supra
Section II.C.), we have rejected this claim construction contention.
The paragraph from Logan that refers to fast forwarding states:
The depicted receiver unit 12 couples to the antenna 14
to receive a broadcast programming signal. A broadcast
programming signal includes television programs, including
traditional broadcast television, satellite television and cable
television programs, radio programs, Internet broadcast
programs, or any other type of program that is transmitted for
reception by an audience. This term also includes
programming content that is already stored and that could be
viewed at any time, such as Internet downloads or other forms
of video-on-demand, as well as material stored on DVD, CD, or
video tape and distributed physically through stores or the mail.
In the case of Internet downloads, or other forms of video-on-
demand, there is no local storage of content. The storage takes
place at a commonly-shared server, which then "dishes" out the
content on demand. Typically, these systems allow the user to
fast forward, pause, etc., using local controls. A marking
signal of the invention is used to personalize such server-stored
content in the same manner as it is used to personalize locally-
stored content. The marking signal allows a user to personalize
server-stored content by using the supplied marking signal in
conjunction with the local controls supplied by the video-on-
demand service provider.

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Ex. 1005, 8:4–26 (emphasis added). According the ordinary and customary
meaning of the language in the preamble of claim 1, we find that this
paragraph discloses all elements of the preamble. As disclosed in this
paragraph in Logan and shown by Petitioner, the client device utilizes the
normal rate of presentation and fast forwarding to present broadcast
information at these two rates. Thus, this paragraph of Logan maps to the
preamble without need to rely on any other embodiment or portion of its
disclosure.
We find that the preponderance of the evidence establishes that Logan
discloses the preamble of claim 1.
receiving broadcast information
Petitioner shows Logan discloses this limitation in the same paragraph
quoted above in discussing the preamble. Pet. 13 (citing Ex. 1005, 8:4–5
(“receiver unit 12 couple[d] to the antenna 14 to receive a broadcast
programming signal”) (depicted in Fig. 1). Patent Owner does not argue this
limitation. See generally PO Resp. We find Logan discloses this limitation.
receiving guidance information relating to presentation of the
broadcast information
Petitioner shows Logan discloses this limitation. Pet. 13–17.
Petitioner relies on Logan’s disclosure relating to “marking signals” in the
paragraph quoted above in discussing the preamble. Id. at 13 (“Logan
discloses a ‘marking signal’ that may be received by a client device and ‘is
used to personalize . . . server-stored content.’”). As shown in the Petition
(see id. at 13–14), Logan further states with regard to “marking signals” that,
“[t]he marking signal can, therefore, be any signal that provides information
supplemental to the broadcast programming signal” (Ex. 1005, 11:49–51)
and, “[m]arking signals can carry information on content, to allow screening
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of violent scenes, to allow deleting of time-outs in sport shows, or to allow
editing of shows to show only highlights” (id. at 11:54–57). “Marking
signals” can also “provide additional information . . . to be used for
selectively deleting the commercial sequence.” Id. at 11:22–24.
If a broadcaster does not wish to have commercials deleted or
skipped, Logan discloses that marking signals can be embedded, which
prevents portions of the broadcast programming signal from being skipped
or deleted. Id. at 13:11–19. In this instance, “the marking signal may
include a blocking signal,” which may “prevent a user from proceeding to
the next portion of the broadcast programming signal until after a predefined
segment of the broadcast programming signal has been viewed.” Id. at
13:16–22. “Alternatively, the broadcaster may mark the broadcast
programming signal so that the user cannot skip to another marked segment
of the broadcast programming signal until after a commercial has been
viewed.” Id. at 13:27–30. As indicated above (supra Section II.C.), we
have construed “guidance information” to mean “information that is used to
communicate a playback rate for an entire media work or one or more
specific portions of the media work.” We find Logan discloses “guidance
information” as construed.
With regard to the “receiving” portion of this limitation, Logan states:
These marking signals may be embedded in the programming
signal itself either by using unused bandwidths, such as the
vertical blanking channel in the case of a TV broadcast, or by
overlaying the marking signal data directly on the programming
signal. The processor 34 would be able to decouple the
marking signals from the programming signal, thereby allowing
the marking signal to be used in the same way as if they had
been communicated from the editing unit 42. Alternatively, the
broadcaster may send the marking signals to the user in a
different broadcast, on a different channel, over the Internet or
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in a number of different manners and provide a means to
synchronize the marking signals with the associated broadcast.
Ex. 1005, 12:64–13:10.
Patent Owner argues this claim limitation on the basis that the
construction of “presentation rate” excludes skipping and “in the VoD
embodiment, without local storage, marking signals are not received at the
client device.” PO Resp. 46–47. Both these arguments rely on limiting
claim constructions that we have not adopted. Accordingly, these arguments
do not undermine Petitioner’s persuasive showing.
We find Logan discloses this limitation.
analyzing the guidance information and state values accessed
by the client device to provide one or more presentation
rates, which state values may be used to alter or override at
least a portion of the guidance information;23
Petitioner contends that Logan’s description of a “user’s device,
which is capable of analyzing the marking signal and information regarding
the level of service the user has purchased, and performing the altering or
overriding function . . . teach[es] the ‘analyzing the guidance information
and state values accessed by the client device’ as recited in claim 1.” Pet.
19. And, Petitioner contends:
Logan’s disclosure of keeping or removing a blocking signal
from a marking signal based on a level of service the user has
purchased, or the feature set or model of user system purchased

23 In our analysis of this limitation, we rely on the constructions of the terms
“guidance information” and “state values” set forth above (supra
Section II.C.). “Guidance information” was construed to mean “information
that is used to communicate a playback rate for an entire media work or one
or more specific portions of the media work.” “State value” was construed
to mean “a value that represents a level of service the user has purchased, or
the feature set or model of user system purchased by the user.”

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by the user as teaching the feature of using ‘state values’ ‘to
alter or override at least a portion of the guidance information’
as recited in claim 1.

Id. Petitioner cites to passages in Logan to support these contentions. See
id. at 17–20.
As discussed with regard to the previous limitation, Logan discloses
the use of marking signals that are “guidance information” as recited in
claim 1. These marking signals can be used to skip or delete commercial
sequences and violent scenes, delete time-outs in sport shows, or edit shows
to show only highlights. See Ex. 1005, 11:15–28, 11:54–57. And the
marking signals can include blocking signals to prevent a user from skipping
commercials or to require a user to view a commercial before skipping to
another segment. See id. at 13:11–30. Thus, the marking signals can be
used to direct the presentation rate of the broadcast information.
With regard to “state values,” Logan discloses that “the broadcaster
[may] allow[] users to pay to skip or delete portions of the broadcast
programming signal, such as commercials, for example” and “[u]pon such
payment, the user’s processor is adapted to remove the blocking signal from
the marking signal so as to allow for the skipping and deletion of a segment
of the broadcast programming signal denoted by the blocking signal, such as
a commercial, for example.” Id. at 13:31–38. We determine that these
passages in Logan disclose “state values [which are accessed and analyzed
by the client device and which] may be used to alter or override at least a
portion of the guidance information” as recited in claim 1.
With regard to “analyzing the guidance information” as recited in this
limitation, Patent Owner presents the same or similar arguments as presented
for the preceding “receiving guidance information” limitation. See PO
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Resp. 47 (“Because ‘marking signals’ are not guidance information as
discussed above, Logan does not meet disclose [sic] this limitation”), 48
(“[I]n the VoD embodiment, without local storage, marking signals are not
received at the client device and state values cannot be accessed by the client
device.”). As discussed above, these arguments are based on claim
constructions that we have not adopted, and thus do not undermine
Petitioner’s persuasive showing.
In addition, Patent Owner argues that, “[a]lthough Logan does not
disclose allowing a purchaser to pay to skip or delete, it does not disclose a
‘value.’” PO Resp. 47–48. This conclusory statement is not supported by
any explanation or reasoning. Id. In the Reply, Petitioner responds, “[a]s
discussed in the Petition, Logan teaches that a user’s processor would
analyze the level of service the user has purchased, or the feature set or
model of user system purchased by the user, and thus such would necessarily
be reflected by a ‘value.’” Pet. Reply 18–19. We agree with Petitioner and
reject this argument by Patent Owner.
We determine that Logan discloses this limitation.
presenting the information at the one or more presentation
rates.
Petitioner contends that Logan discloses this limitation in the
following two passages (Pet. 20–22):
The depicted decompressor 30 couples via a transmission
path to the memory system 18 and can receive the stored
compressed programming data. The decompressor 30 can be an
electrical circuit card assembly that includes a CODEC chip set
that implements the MPEG decoding process for
decompressing MPEG motion video into a format suitable for
display on a conventional video monitor, such as the video
monitor 32 depicted in FIG. 1.
* * *
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The depicted monitor 44 [in Figure 1] can include an RF
tuner for receiving the broadcast programming signal, which in
this example is a television program. The monitor 44 can
further include a video display element that can display to an
operator at the editing unit 42 the television program being
broadcast. In one embodiment, the monitor 44 is a
conventional television receiver set that includes an RF tuner
capable of receiving broadcast television programming signals,
and a monitor element capable of displaying the television
being broadcast.

Ex. 1005, 9:22–29, 10:20–29.
Patent Owner contends “the claimed device must have the ability to
present at multiple rates.” PO Resp. 48. However, this limitation recites
“presenting the information at the one or more presentation rates” (emphasis
added). It is therefore met if the information is presented at one presentation
rate. In addition, as noted previously, Logan discloses the user can “fast
forward, pause, etc., using local controls.” Ex. 1005, 8:19–20.
We find Logan discloses this limitation.
Conclusion as to Claim 1
For the reasons discussed above, we find Petitioner has shown that
claim 1 of the ’188 patent is anticipated by Logan.
3. Analysis of Claim 2
Claim 2 recites:
The method of claim 1 which further comprises a step of
the user paying for predetermined values of the state values.

Ex. 1001, 43:20–22. With regard to claim 2, the Petition states:
Logan discloses a system that may “allow[] users to pay to skip
or delete portions of the broadcast programming signal, such as
commercials,” and when a user makes “such payments, the
user’s processor is adapted to remove the blocking signal from
the marking signal so as to allow for the skipping and deletion
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of a segment of the broadcast programming signal denoted by
the blocking signal, such as a commercial, for example.”
(Ex. 1005, 13:31–38.) Logan also discloses another example
where the users may “pay additional fees to receive premium
program content” and describes that “[t]he processor of a user
who does not pay fees for the premium program” would make
“the program skip over the premium segments,” but “the
processor is adapted, upon of [sic] a fee, to . . . allow[] viewing
of the segments.” (Id., 13:43–44, 13:48–53.) In another
example, Logan describes that upon earning credits by
watching commercials, the user may use those credits “to buy
the ability to remove blocking signals” so that the user can
subsequently skip commercials. (Id., 13:41–42.)

Pet. 22–23. Patent Owner does not specifically discuss claim 2 or challenge
Petitioner’s showing with regard to claim 2. See generally PO Resp.
Based on this record, we find Logan discloses the limitation set forth
claim 2. Logan anticipates claim 2.
4. Analysis of Claim 7
Claim 7 recites:
The method of claim 2 wherein the predetermined values
enable user input to specify an enhanced presentation rate for
commercials.

Ex. 1001, 43:36–38. With regard to claim 7, the Petition states:
Logan discloses, for example, that based on the user’s payment
status, the user may be allowed to “skip or delete portions of the
broadcast programming signal, such as commercials, for
example.” (Ex. 1005, 13:32–33.) Logan also discloses that the
user receives credits for watching commercials and that credits
can “be used to buy the ability to remove blocking signals
received in connection with subsequent programs,” which
allows the user to skip commercials in subsequent programs.
(Id., 13:41–42.)

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Pet. 24. Patent Owner does not specifically discuss claim 7 or challenge
Petitioner’s showing with regard to claim 7. See generally PO Resp.
Based on this record, we find Logan discloses the limitation set forth
claim 7. Logan anticipates claim 7.
Summary
For these reasons, we find that the preponderance of the evidence
establishes that Logan anticipates claims 1, 2, and 7 of ’188 patent.
E. Asserted Obviousness of Claim 4 in View of Logan
Petitioner asserts that Logan renders obvious claim 4. Pet. 25–26.
Claim 4 recites:
The method of claim 1which further comprises a step of
the user paying for predetermined values of the state values,
which predetermined values are effective for a predetermined
period of time or for a predetermined number of presentations.

Ex. 1001, 43:25–29. With regard to claim 4, Petitioner contends that
“Logan discloses allowing the user to pay for certain predetermined viewing
abilities in personalizing broadcast programming signals.” Pet. 25 (citing
Ex. 1005, 13:31–38, 13:41–42, 13:48–53; Ex. 1002 ¶¶ 71–73). The Petition
further states:
Logan describes a system in which a user “receives credits for
watching and not skipping commercials” and that “[s]uch
credits could, for example, then be used to buy the ability to
remove blocking signals received in connection with
subsequent programs.” (Ex. 1005, 13:39–42.) In other words,
Logan suggests that credits can be used up to provide this
enhanced ability for a certain number of subsequent programs.
(Ex. 1002, ¶¶72–73.) Moreover, a POSA would have
recognized that it would have been typical, and indeed
expected, to limit any purchased ability to a certain period of
time or number of presentations. (Ex. 1002, ¶¶72–73.) For
instance, a POSA would have recognized that subscription-
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based services and/or limited-duration services were common at
the time, and that such services would have limited any
purchased ability to a certain period of time or number of
presentations. (Id.)
Furthermore, a POSA would have recognized that
modifying Logan’s system to limit any purchased ability to a
certain period of time or number of presentations would have
involved routine and predictable implementations, namely, the
system would simply revert back to the state it was in prior to
the purchase (e.g., precluding a user from skipping commercials
through the use of blocking signals). (Id.) This would have
been an obvious design choice, and indeed a POSA would have
been motivated to modify Logan to improve the payment-for-
credit system disclosed in Logan. (Id.) See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007).

Id. at 26. Petitioner’s showing with regard to claim 4 is well-supported and
persuasive.
Patent Owner’s entire presentation with regard to this ground and
claim 4 is, “[f]or the same reasons set forth . . . above [with regard to claim
1], Logan fails to disclose or render obvious the other elements of dependent
claim 4.” PO Resp. 48. Patent Owner provides no additional reasoning or
argument in support of this conclusory statement. This statement is
unsupported and does not undermine Petitioner’s persuasive showing.
The preponderance of the evidence establishes that claim 4 would
have been obvious in view of Logan.
F. Asserted Obviousness of Claims 1, 2, 4, and 7 over Logan and De Lang
Petitioner contends claims 1, 2, 4, and 7 of the ’188 patent would have
been obvious in view of Logan and De Lang. Pet. 3, 27–36.
1. De Lang (Ex. 1006)
De Lang was published on January 30, 1997. Ex. 1006, code (43).
The earliest priority date claimed for the ’188 patent is based on a filing date
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of May 26, 1999. Ex. 1001, code (63). Therefore, De Lang is prior art to
the ’188 patent under at least 35 U.S.C. § 102(b). See Pet. 3. De Lang was
not considered by the Office during prosecution of the ’188 patent.
Ex. 1001, code (56); see Pet. 3. Patent Owner does not contest the prior art
status of De Lang. See generally PO Resp.
De Lang relates to “a video-on-demand system, comprising a video
server for transmitting a selected television signal and provided with means
for playing back the television signal in one of a plurality of playback modi
defined by operating signals” and “a user station for receiving and
displaying the television signal, and provided with an operating circuit for
generating and transmitting said operating signals to the server.” Ex. 1006,
1:1–5. Figure 3 of De Lang is reproduced below.

Figure 3 of De Lang (above) depicts a menu of possibilities for selecting
operating data. Id. at 2:30. The menu in Figure 3 includes three selection
possibilities: selection A has only two operating facilities “play” and “stop”
denoted by pictograms 30 and 31; selection B is more expensive and also
provides the possibility of still pictures (pictogram 32) and display at
threefold speed (pictogram 33); and selection C is the most expensive and
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provides further functions such as display at a sevenfold speed (pictogram
34) and reverse display (pictogram 35). Id. at 4:10–18.
2. Analysis of Independent Claim 1
Petitioner contends that “[t]o the extent that Logan is not found to
disclose the claimed ‘guidance information’ and/or ‘state values,’ it would
have been obvious to combine the teachings of Logan and De Lang to
implement this feature.” Pet. 27 (citing Ex. 1002 (Schonfeld Decl.) ¶¶ 46,
49–64, 75–82). As discussed above, we find that Logan discloses “guidance
information” and “state values” as recited in the challenged claims and that
Logan anticipates claims 1, 2, and 7 and renders obvious claim 4 of the ’188
patent. However, for completeness, here we consider all grounds of
unpatentability presented in the Petition.
In opposing this ground of unpatentability, Patent Owner relies on its
claim construction argument that independent claim 1 is limited by the
preamble to “a client device which itself ‘utilizes presentation rates to
present information at various presentation rates.’” PO Resp. 49, see also id.
at 51–52. As noted above (supra Section II.C.), we are not persuaded by
this claim construction argument and do not construe the preambles of the
independent claims as requiring that the client device be capable of
performing time-scale modification by itself to implement various
presentation rates (i.e., smart devices). And, Patent Owner acknowledges
that De Lang teaches a system in which the server alters the presentation rate
of a media work (“normal, fast display, slow display, winding, rewinding,
pause, etc.”) “in response to a presentation rate change request by a user at
the client device,” and “[t]he De Lang client device presents the broadcast
information it receives at the rate at which it was encoded at the server and
received by the client.” Id. at 51.
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With regard to “guidance information” and “state values,”
independent claim 1 recites:
receiving guidance information relating to presentation of the
broadcast information;
analyzing the guidance information and state values accessed
by the client device to provide one or more presentation
rates, which state values may be used to alter or override at
least a portion of the guidance information.

Ex. 1001, 43:11–17 (emphasis added). With regard to whether De Lang
teaches “guidance information” and “state values,” Petitioner relies on
De Lang’s disclosure of a menu in which a user may choose one of three
options for playback (see Ex. 1006, Fig. 3) and the teachings that “the video
server is therefore adapted to transmit operating data to the user station for
defining the available playback modi. The operating circuit in the user
station is adapted to receive and store the operating data and to generate the
corresponding operating signals” (see id. at 1:23–26). Pet. 27–28. The
Petition provides the following explanation as to how De Lang processes the
user’s menu choice to play back the media work:
De Lang further explains that “[t]he selection made by
the user is transmitted to the server as a control signal C (see
Fig. 1),” which is then “received by the server in a step 21,” and
“[i]n response . . . , the server performs a step 22 in which it
transmits operating data corresponding to the selection made to
the user station as an operating signal D (see Fig. 1).” (Id.,
4:18-22.) This selection allows for a subsequent operation in
which “playback of the selected television program is started in
a step 24 and the supervisor waits, in a step 25, for an operating
signal from the user station. When such an operating signal is
received, for example a ‘fast display’ signal, the relevant
playback mode is performed in a step 26.” (Id., 4:29- 5:7.)
The end result in De Lang is similar to that in Logan.
That is, the user is provided certain viewing abilities based, for
example, on the user’s payment of fees. According to De Lang,
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“a television program interrupted by commercials may be
transmitted with operating data rendering only the playback
functions ‘play’ and ‘pause’ possible. Alternatively, a
television program may be transmitted with operating data
rendering fast display possible. The latter television program
may also comprise commercials, but these can now be skipped
by the user or displayed fast.” (Id., 1:27-2:5.) In other words,
De Lang not only allows for commercials to be skipped, but
also expressly allows for commercials to be displayed at a
higher presentation rate.

Id. at 28–29. Petitioner contends that “[a] POSA [person of ordinary skill in
the art] would have understood De Lang’s disclosures of Selections A, B,
and C as teaching a specific indication of user’s viewing authority, or ‘state
values’ as recited in the claims.” Id. at 29. We have construed “guidance
information” as “information that is used to communicate a playback rate for
an entire media work or one or more specific portions of a media work” and
“state values” as “a value that represents a level of service the user has
purchased, or the feature set or model of user system purchased by the user.”
Supra Section II.C. We find De Logan teaches “guidance information” and
“state values” as recited in the challenged claims.
With regard to how the relevant teachings of Logan and De Lang are
combined, Petitioner states, “[b]oth Logan and De Lang relate to video
playback systems that allow personalization, and in viewing Logan, a POSA
would have had a reason to look to De Lang to, for example, to [sic] provide
users particular playback rate options and implement more detailed levels of
user authority that allow personalizing playback” and “a POSA would have
appreciated that De Lang’s teaching of multiple levels of viewing authority
corresponding to differing payment amounts and differing playback rate
options (e.g., fast forward by (x3), fast forward by (x7), reverse) would
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provide the system in Logan with the additional benefit of providing the user
express selections of playback options.” Pet. 29–30 (citing Ex. 1002
(Schonfeld Decl.) ¶¶ 76–82). With further regard to the motivation to
combine the relevant teachings of Logan and De Lang, Petitioner provides
that “to combine the teachings of Logan and De Lang [would have]
improve[d] the playback system disclosed in Logan” by allowing the user
“to select a specific level of authorization and a suite of playback options,
including specific presentation rates” and “[a] POSA would have understood
De Lang as furthering the goal of Logan as De Lang also discloses the
guidance information that explicitly restricts or directs the playback rates at
the client device.” Id. at 30–31.
Patent Owner argues that “Petitioner fails to explain how the proposed
guidance information of De Lang would be applied in each instance in
which appears [sic] in the challenged claims.” PO Resp. 49. Specifically,
Patent Owner faults Petitioner for failing to explain how the menu of
De Lang would be implemented in the system of Logan to meet the
“guidance information” limitations of claim 1. Id. at 49–51. However, the
Petition provides:
[A] POSA would have recognized that in view of De Lang, it
would have been a predictable and simple modification of
Logan’s system to have the user select a specific level of
authorization and a suite of playback options, including specific
presentation rates, and accordingly determine whether and to
what extent the user can alter its viewing abilities, such as
skipping or fast forwarding commercials. (Id.) For instance, a
POSA would have appreciated that since the marking signal in
Logan already includes data as to how a video should be played
that is sent to the user’s device, and since De Lang discloses
that the express levels of authorized presentation rates are
likewise transmitted to the user’s device, it would have been a
straightforward modification to include levels of authorized
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presentation rates, like those described in De Lang, in the
marking signal of Logan. (Id.) A POSA would have
recognized this to be a combination of known prior art
elements, according to known methods, to yield predictable
results. (Id.) See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 2007.

Pet. 30–31. We find Petitioner’s reasoning and explanation persuasive and
sufficient to explain how a skilled artisan would have combined the
teachings of the cited references. Accordingly, we do not find Patent
Owner’s contrary arguments sufficient to undermine Petitioner’s persuasive
showing.
3. Analysis of Dependent Claims 2, 4, and 7
With regard to the challenged, dependent claims, Petitioner relies on
Logan for teaching or suggesting all the features of these claims; shows that
De Lang provides further teachings that relate to the limitations of these
claims; and provides argument and evidence to show how and why the
relevant teachings of Logan and De Lang would be combined as recited in
these claims. See Pet. 32–36. Patent Owner does not specifically challenge
Petitioner’s showing with regard to the challenged, dependent claims and the
combination of Logan and De Lang. See PO Resp. 48–52.
4. Summary as to Asserted Obviousness of Claims 1, 2, 4, and 7 in View of
Logan and De Lang
Having considered the arguments and evidence of the parties, we
conclude that claims 1, 2, 4, and 7 would have been obvious in view of
Logan and De Lang.
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III. CONCLUSION24
For the foregoing reasons, we conclude that Petitioner has established
that claims 1, 2, and 7 are anticipated by Logan, claim 4 would have been
obvious in light of Logan, and claims 1, 2, 4, and 7 would have been obvious
in light of Logan and De Lang.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 2, 4, and 7 of the ’188 patent are
unpatentable.
In summary:

24 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
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, 2, 7 102 Logan 1, 2, 7
4 103 Logan 4
1, 2, 4, 7 103 Logan, De Lang 1, 2, 4, 7
Overall
Outcome
1, 2, 4, 7
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FOR PETITIONER:
Naveen Modi
Joseph E. Palys
Daniel Zeilberger
Emily Lee
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
josesphpalys@paulhastings.com
danielzeilberger@paulhastings.com
emilylee@paulhastings.com

FOR PATENT OWNER:
Lauren N. Robinson
Christina M. Finn
BUNSOW DE MORY LLP
lrobinson@bdiplaw.com
cfinn@bdiplaw.com