PTAB

IPR2013-00484

CustomPlay LLC v. ClearPlay Inc

Key Events

Petition

petition Intelligence

Title: Multimedia Content Navigation and Playback
Brief Description: The ’970 patent discloses a system for filtering multimedia content using separate data structures called "navigation objects." These objects define portions of content to be modified (e.g., skipped or muted) by specifying a start position, a duration, and a filtering action to be performed during playback.

Prior Art Relied Upon: Abecassis (Patent 6,408,128).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Abecassis disclosed every limitation of the challenged claims. Abecassis taught a system for filtering multimedia using a "video map," which Petitioner equated to the claimed "navigation objects" and "object store." This video map defines segments with beginning and ending frames (start/stop positions) and assigns "content category codes" (e.g., for violence, profanity) that define the filtering action. The system plays back a modified video consistent with viewer preferences, thereby anticipating the core filtering method of independent claims 1, 16, 17, and 27. Petitioner further argued Abecassis disclosed the claimed "disabling" step by teaching that a supervisor can preview flagged segments and make an "include" decision to override the filtering action.

Prior Art Relied Upon: Abecassis (Patent 6,408,128) and Ottesen (Patent 5,778,135).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that to the extent Abecassis did not teach every limitation, the remaining features were rendered obvious by Ottesen. Ottesen taught a filtering system that uses "tags" to identify objectionable segments based on ratings. Crucially, Ottesen explicitly disclosed that filtering occurs before the content is sent to the MPEG decoder, meaning undesirable segments are discarded and not decoded. This directly taught the limitations of dependent claims 5, 20, and 33, which require terminating decoding for skipped content. Ottesen also taught using separate audio tags to mute objectionable language while leaving the video intact, teaching the audio-muting limitations.
- Motivation to Combine: A POSITA would combine these references as both address the same problem of filtering multimedia content and are in the same field of endeavor. A POSITA would have found it obvious to apply the specific, efficient technique of pre-decoding filtering from Ottesen to the content filtering framework disclosed by Abecassis to create a more efficient system.
- Expectation of Success: Combining Ottesen’s known tagging and pre-decoding filtering methods with Abecassis's video map system was a predictable design choice that would have yielded the claimed invention with a high expectation of success.

Prior Art Relied Upon: Abecassis (Patent 6,408,128) and Malkin (Patent 6,317,795).
Core Argument for this Ground:
- Prior Art Mapping: Malkin described a content filtering system using a "control specification" with "fuzz-ball tracks" that, like the claimed navigation objects, define a start position, duration, and filtering action (e.g., "blocking, omissions, and overlays"). Malkin explicitly taught skipping video frames ("omissions") and explained that a frame not sent to the client is not decoded, thereby inherently teaching the limitation of terminating and resuming decoding around a skipped segment.
- Motivation to Combine: A POSITA would combine these references as both teach methods for the automated, selective editing of video during playback. Malkin provided well-understood techniques for modifying video streams (frame skipping, masking) that a POSITA would have naturally applied to implement the filtering system described in Abecassis.
Additional Grounds: Petitioner asserted an additional obviousness challenge against various claims based on Abecassis in view of Fujinami (Patent 5,737,479), which taught a "program stream map" with a "rating code" to skip "risque" parts of a program during playback.

navigation object: Petitioner proposed the construction "information that defines a portion of multimedia content to filter." This broad construction was central to arguing that the "video map" taught by Abecassis and the "control specification" taught by Malkin met this claim limitation.
duration from the start position: Petitioner proposed this term be construed as "a stop position that, in combination with a start position, defines a portion of multimedia content." This construction, based on the specification and dependent claims, was critical for mapping prior art references that taught filtering based on defined start and stop points (e.g., frame numbers) rather than an explicitly recited "duration."

Petitioner dedicated significant argument to addressing prior ex parte reexamination denials of related patents, contending the examiner's findings were erroneous. Petitioner argued the examiner wrongly concluded Abecassis was limited to non-linear "variable content video" and did not apply to conventional linear video (e.g., DVDs), a position Petitioner claimed was directly contradicted by the Abecassis specification. Petitioner also argued the examiner incorrectly found that Abecassis’s "video maps" did not define specific filtering actions, whereas the use of content codes (e.g., for profanity or violence) inherently defines the action of filtering that content.

Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-43 of Patent 7,577,970 as unpatentable.