PTAB

IPR2014-00783

CustomPlay LLC v. ClearPlay Inc

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Multimedia Content Navigation and Playback
  • Brief Description: The ’970 patent discloses a system for automatically filtering portions of multimedia content during the decoding process. The system uses "navigation objects," which define a start position, a stop position, and a specific "filtering action" (e.g., skip, mute, reframe) to be performed on the identified content segment.

3. Grounds for Unpatentability

Ground 1: Obviousness over Abecassis and Malkin - Claims 1-43

  • 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 functionality of the claimed invention, including a system for filtering multimedia content using a "video map" that defines segments with beginning and ending frames. Abecassis’s system enables filtering actions like "editing-out" or "skipping" segments based on viewer preferences. However, in a prior proceeding, the Board found that Abecassis’s content descriptors (e.g., "bloodshed") did not explicitly specify a distinct filtering action. Petitioner contended that Malkin remedies this alleged deficiency. Malkin teaches a "control specification" that explicitly defines filtering actions—such as "blocking, omissions, and overlays"—to be performed on identified "groups of frames" of a multimedia stream. By combining Malkin's explicit filtering actions with Abecassis's segment-defining video maps, a POSITA would arrive at the claimed "navigation object," which requires both a defined portion of content and a defined filtering action.
    • Motivation to Combine: A POSITA would combine Abecassis and Malkin because both references address the same problem: filtering undesirable content from multimedia during playback. A POSITA would have been motivated to supplement Abecassis’s system with Malkin’s explicit filtering action codes to provide a more robust and clearly defined filtering system. The combination would have been a predictable implementation of known filtering techniques to improve an existing system.
    • Expectation of Success: A POSITA would have had a high expectation of success, as combining Malkin's control specifications with Abecassis's video map architecture involves applying known data structures and software logic to achieve the predictable result of more precise content filtering.

Ground 2: Obviousness over Abecassis, Malkin, and Aras - Claims 1-43

  • Prior Art Relied Upon: Abecassis (Patent 6,408,128), Malkin (Patent 6,317,795), and Aras (Patent 5,757,417).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the combination of Abecassis and Malkin and adds Aras to address limitations related to displaying a representation of the filtering options and enabling a user to disable them. While Abecassis and Malkin provide the core navigation object, Petitioner argued Aras discloses a user interface for managing filtering rules. Aras teaches "behavior collection tables" (BCTs) that display a list of content segments with associated start times, end times, and specific "manipulation commands" (i.e., filtering actions). Crucially, Aras's BCTs also show that a filtering action can be disabled (e.g., an entry for "No Suppression"), allowing playback of content that would otherwise be filtered. This directly maps to claim limitations requiring a system to provide for displaying a representation of the navigation objects and receiving a user response to disable the specified filtering action.
    • Motivation to Combine: A POSITA would be motivated to add the teachings of Aras to the Abecassis/Malkin system to provide users with direct control over the filtering process. The goal of allowing a user (such as a parent) to review and override default filtering settings is a logical and desirable feature for any content filtering system. Aras provides a straightforward implementation for such a user interface, making its integration into the base system an obvious improvement.
    • Expectation of Success: Integrating Aras's user-configurable tables with the filtering system of Abecassis and Malkin would be a routine design choice with a high expectation of success, yielding the predictable result of a more flexible and user-friendly content filtering product.

4. Key Claim Construction Positions

  • Petitioner's arguments relied heavily on claim constructions adopted by the Board in an institution decision for a related IPR (IPR2013-00484). The most critical construction was for "navigation object," which the Board 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 two-part definition was central to Petitioner's strategy of combining Abecassis (for element 1) with Malkin (for element 2). Petitioner adopted this construction and others from the prior decision, arguing they should be applied consistently.

5. Key Technical Contentions (Beyond Claim Construction)

  • A central technical contention was that Abecassis's system, which uses "video map descriptors" to flag objectionable content for "editing-out," inherently specifies a distinct filtering operation (i.e., skipping or omitting the content). Petitioner argued that in a system designed solely for filtering, flagging a segment as containing "explicit bloodshed" inherently implies the action to be taken is to remove it from playback. Therefore, even without Malkin, Abecassis taught the complete navigation object. Malkin was presented as making explicit what was already inherent and obvious in Abecassis.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-43 of the ’970 patent as unpatentable.