PTAB

IPR2014-00383

CustomPlay LLC v. ClearPlay Inc

Log In
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 ’318 patent describes systems and methods for automatically filtering portions of multimedia content during playback. The technology uses a "navigation object" containing data such as start/end indicators and content descriptors to execute filtering actions, like skipping objectionable segments.

3. Grounds for Unpatentability

Ground 1: Obviousness over Abecassis and Malkin - Claims 1-29 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:
    • Prior Art Mapping: Petitioner argued that Abecassis discloses the core computing system for filtering content. Abecassis teaches a "multimedia player" that uses a "video map" to define segments of a video with beginning/end frames and content descriptors (e.g., for violence or profanity) to enable "editing-out" or "omitting" segments. However, Petitioner contended that Malkin explicitly teaches the claimed "skip filtering action." Malkin discloses a "control specification" that acts as a navigation object, defining start/stop positions and a specific filtering action, including the "omissions" of video frames, to satisfy viewer specifications. The combination of Abecassis's system and map with Malkin's explicit filtering instructions was alleged to render all challenged claims obvious.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Abecassis and Malkin because both references are in the same field of filtering multimedia content and address the same problem. Petitioner asserted that Malkin itself provides the motivation by referencing technology related to Abecassis and identifying a need for more flexible content modification. Furthermore, Petitioner highlighted that the Board had already instituted an inter partes review (IPR) on a related patent (the ’970 patent) based on the same prior art combination, finding a reasonable likelihood of prevailing.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in combining the references. Integrating Malkin’s explicit filtering actions into Abecassis’s content mapping system was presented as a predictable combination of known elements to achieve the desired result of improved content filtering.

Ground 2: Obviousness over Abecassis and Ford - Claims 1-29 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:

    • Prior Art Mapping: This ground again used Abecassis as the primary reference for the base system. Petitioner argued that Ford provides an alternative or supplemental teaching for an explicit filtering operation. Ford discloses a system that filters objectionable content using embedded "substitution event codes" which identify the location, nature, and duration of the content to be filtered. Ford's teaching of blocking an audio or video signal for the duration of an undesired event was argued to be a clear disclosure of a "skip filtering action."
    • Motivation to Combine: A POSITA would combine Abecassis and Ford to improve the functionality of Abecassis's video map system. Ford’s use of embedded substitution event information offers a direct and efficient way to specify a distinct filtering operation. Petitioner argued it would have been obvious to supplement Abecassis's segment descriptors with Ford’s more detailed substitution event information to create a more robust and explicit filtering system.
    • Expectation of Success: Combining Ford's method of encoding filtering events with Abecassis's system for processing content maps would have been straightforward for a POSITA, yielding the predictable result of a system capable of executing specific skip actions based on encoded data.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1-29 based on Abecassis alone. This argument contended that Abecassis's disclosure of "editing-out," "omitting segments," and "skipping of the playing of a segment" on random-access media like DVDs inherently teaches the claimed "skip filtering action" and the necessary discontinuation of decoding.

4. Key Claim Construction Positions

  • Navigation Object: Citing the Board's construction in a related IPR, Petitioner proposed this term means "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 to the argument that Abecassis's "video map" (defining the portion) combined with Malkin's "control specification" (defining the action) meets the claim limitation.
  • Filtering: Construed as "editing or rejecting some multimedia content while allowing other multimedia content to pass unchanged." This broad construction allowed Petitioner to map filtering actions from the prior art, such as "omissions" (Malkin) or "blocking" (Ford), to the claimed term.
  • Start/End Indicator: Responsive to the Board’s construction of "position code," Petitioner defined "start indicator" as "information that identifies a beginning" and "end indicator" as "information that identifies an ending." This supported mapping frame numbers or time codes from the prior art to these limitations.

5. Key Technical Contentions (Beyond Claim Construction)

  • A central technical argument was that for random-access media like DVDs (disclosed in Abecassis), the act of "skipping" or "omitting" a segment necessarily requires the system to not retrieve or read that segment from the disc. Petitioner contended this inherent function of selective retrieval on random-access media is technically equivalent to the claim limitation of "discontinu[ing] decoding the multimedia content between the start indicator and the end indicator." This distinguished Abecassis from older, linear media technologies (like VCRs) that could only fast-forward through content, not truly skip it.

6. Arguments Regarding Prior Office Proceedings

  • Petitioner argued that a prior denial of a request for ex parte reexamination of the ’318 patent should be given no weight. The petition asserted that the examiner's denial was based on a flawed and incomplete understanding of the Abecassis reference and was predicated on different grounds. Petitioner noted that the Board is not bound by a prior reexamination decision and conducts a de novo review in an IPR proceeding.

7. Relief Requested

  • Petitioner requested the institution of an IPR and cancellation of all challenged claims, 1-29, of the ’318 patent as unpatentable.