PTAB

IPR2014-00339

CustomPlay LLC v. ClearPlay Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Delivery Of Navigation Data For Playback Of Audio And Video Content
  • Brief Description: The ’784 patent relates to a client-server system for filtering undesirable multimedia content during playback. The system uses downloadable "navigation objects" which define specific portions of the multimedia content (e.g., by start and stop positions) and the filtering action to be performed on those portions.

3. Grounds for Unpatentability

Ground 1: Obviousness over Abecassis and Malkin - Claims 1-9 are obvious over Abecassis in view of Malkin.

  • Prior Art Relied Upon: Abecassis (Patent 6,408,128) and Malkin (Patent 6,317,795).
  • Core Argument for this Ground: Petitioner argued that the combination of Abecassis and Malkin teaches every limitation of the challenged claims. This argument parallels one that the Board previously found compelling in an inter partes review (IPR) for a related patent ('970 patent), which shares the same specification. Petitioner contended that the primary limitation of claim 1 not present in the challenged '970 patent claims—receiving a request for navigation objects identifying the multimedia content—is expressly disclosed in Abecassis.
    • Prior Art Mapping: Petitioner asserted that Abecassis discloses the overall client-server architecture for filtering video content using a downloadable "video map" that is analogous to the claimed "navigation objects." Abecassis’s video map defines segments to be edited out and can be retrieved from a remote source (server) upon request from a consumer device, such as in a video-on-demand context. Petitioner argued that Malkin remedies any perceived deficiency in Abecassis by teaching a "control specification" that explicitly defines a portion of content with a start position, stop position, and a specific filtering action (e.g., a "fuzz-ball" overlay to mask a portion of a video frame).
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine these references because both address the same problem of filtering media content. Malkin explicitly noted the need for more flexible content modification beyond what was available in prior art systems like Abecassis. A POSITA would thus be motivated to supplement Abecassis's segment-based filtering system with Malkin’s more granular "control specification" to provide users with more precise and varied filtering options, yielding a predictable result.
    • Expectation of Success: A POSITA would have a reasonable expectation of success, as combining Malkin’s data structure for filtering with Abecassis’s system for delivering that data is a straightforward integration of known technologies for a predictable purpose.

Ground 2: Obviousness over Abecassis and Ford - Claims 1-9 are obvious over Abecassis in view of Ford.

  • Prior Art Relied Upon: Abecassis (Patent 6,408,128) and Ford (Patent 6,181,364).

  • Core Argument for this Ground: As an alternative, Petitioner argued that if Abecassis’s "video map" were not considered to teach a specific filtering action, Ford’s disclosure of "substitution event codes" provides this missing element.

    • Prior Art Mapping: Abecassis was asserted to teach the foundational client-server system and the concept of downloadable filtering data. Ford was asserted to teach a system that filters objectionable content using embedded "substitution event codes." These codes identify the location and nature of an event and specify a distinct filtering operation, such as substituting silence for audio or a blank image for video. Petitioner argued that Ford’s substitution event codes, which contain location, duration, and a specified action (e.g., "NO AUDIO"), directly map to the claimed "navigation object" that defines a portion of content and specifies a filtering action.
    • Motivation to Combine: Petitioner contended that Ford itself provides the motivation to combine. Ford describes different embodiments, including high-end versions with more complex filtering actions. A POSITA seeking to enhance the filtering capabilities of the system in Abecassis would have been motivated to incorporate the more sophisticated and explicit filtering action data taught by Ford into Abecassis's downloadable map structure. This would allow for a more robust and versatile filtering system, a predictable improvement.
    • Expectation of Success: The combination involved applying Ford's well-defined data structure for filtering actions to Abecassis's known system for delivering filtering instructions, which a POSITA would expect to work for its intended purpose.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1-9 based on Abecassis alone, arguing its "video map" inherently discloses or suggests all claimed features.

4. Key Claim Construction Positions

Petitioner proposed constructions for several key terms, largely adopting those used by the Board in the IPR of the related ’970 patent.

  • "Navigation Object": Construed as "information that defines both (1) a portion of multimedia content to filter and (2) the filtering action to be taken on the defined portion of multimedia content." This construction was central, as Petitioner argued Malkin’s "control specification" and Ford’s "substitution event codes" met this definition.
  • "Filtering/Filter": Construed as "editing or rejecting some multimedia content while allowing other multimedia content to pass unchanged." This supported the argument that actions like muting audio or blanking video, as taught by the prior art, constituted filtering.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that a prior denial of a request for ex parte reexamination of the ’784 patent should not preclude institution of IPR. Petitioner asserted the denial was not binding because the Examiner only considered anticipation under 35 U.S.C. §102 and did not consider obviousness under §103. Furthermore, Petitioner argued the Examiner’s understanding of the Abecassis reference was flawed and incomplete.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-9 of the ’784 patent as unpatentable.