PTAB

IPR2014-00430

CustomPlay LLC v. ClearPlay Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and Apparatus for Modifying a Multimedia Presentation
  • Brief Description: The ’282 patent discloses a system for filtering undesirable content from a multimedia presentation (e.g., a movie on a DVD). The system uses a media player that retrieves filter information from a separate storage source, which specifies portions of the media to modify (e.g., skip or mute) during playback.

3. Grounds for Unpatentability

Ground 1: Obviousness over Abecassis and Malkin - Claims 1-25 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 disclosed the core system of the ’282 patent: a multimedia player that plays content from a primary source (like a DVD) while using a separate "video map" to customize playback. This video map, retrieved from a floppy disk or website, defines segments of the video for editing. However, Petitioner contended Abecassis did not explicitly detail the specific filtering actions within its map. Malkin was alleged to supply this missing element by teaching a "control specification" (or mask) for filtering multimedia content. This control specification explicitly defines a start frame, a stop frame, and a specific filtering action (e.g., blocking, omitting, overlays) to be performed on the identified segment. Petitioner asserted that combining Abecassis's system for retrieving external filter data with Malkin's detailed filter data structure renders the challenged claims obvious. Dependent claims were argued to be obvious as they recited conventional features like flash memory or specific movie formats (DVD), all disclosed or suggested by the prior art.
    • Motivation to Combine: Petitioner asserted that Abecassis and Malkin were in the same field of endeavor—filtering multimedia content—and addressed related problems. A POSITA would combine Abecassis's system with Malkin's more specific filtering instructions to create a more robust and flexible filtering product. Malkin itself identified the need for a system to flexibly modify specific objects within media, providing a clear reason to apply its teachings to Abecassis's framework. Petitioner also noted that in a related case (IPR2013-00484), the Board had already instituted review of a related patent based on the same Abecassis and Malkin combination.
    • Expectation of Success: A POSITA would have a high expectation of success, as combining the two software-based filtering techniques was a predictable integration of known elements to achieve a known goal.

Ground 2: Obviousness over Abecassis and General Knowledge - Claims 1-25 are obvious over Abecassis in view of the official notice of the general knowledge of the skilled artisan.

  • Prior Art Relied Upon: Abecassis (Patent 6,408,128) and the general knowledge of a POSITA, as evidenced by Patent 7,577,970 (the ’970 patent).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative theory where Abecassis again provided the foundational system for retrieving external "video maps" to modify playback. Petitioner argued that the key claimed elements of the ’282 patent—namely, filter information containing a start time, end time, and a specific filtering action—were part of the general knowledge of a POSITA at the time of the invention. To evidence this knowledge, Petitioner cited the commonly assigned ’970 patent (which is prior art) as an example of filter technologies available at the time. The ’970 patent taught using "navigation objects" that define a start position, a stop position, and a specific filtering action (e.g., skip, mute) for a portion of multimedia content.
    • Motivation to Combine: The motivation was to improve the functionality of Abecassis's system by incorporating well-understood and readily available filtering techniques. A POSITA seeking to implement the filtering system of Abecassis would naturally and obviously look to known methods for defining filter parameters, such as the start/stop times and specific actions taught in the art and exemplified by the ’970 patent. This would be a simple application of known techniques to a known system to yield predictable results.
    • Expectation of Success: As this combination involved applying conventional filtering definitions to an existing system, a POSITA would have a high expectation of success.

4. Key Claim Construction Positions

  • analyzing a status of a first memory reader: Petitioner argued for the construction "analyzing whether a first memory reader detects the presence of a removable non-transitory storage medium." This construction was asserted to be consistent with the prosecution history and specification and describes an inherent function of any media player (e.g., a DVD player detecting a disc), which Petitioner argued was taught by the prior art.
  • identification of a start time and end time: Petitioner proposed this be construed as "hours, minutes, and seconds identifying a start, and hours, minutes, and seconds identifying an end." This construction was based on the specification's use of the term "time" rather than the more restrictive "time code," which Petitioner argued was critical for mapping the prior art, which teaches identifying segments by frame numbers that can be converted to time.
  • filtering: Petitioner adopted the construction from a related IPR decision: "editing or rejecting some multimedia content while allowing other multimedia content to pass unchanged." This consistent definition was central to applying the teachings of Abecassis and Malkin.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-25 of the ’282 patent as unpatentable under 35 U.S.C. §103.