Apple Inc v. Nonend Inventions NV

1. Case Identification

• Case #: IPR2016-00302
• Patent #: 8,090,862
• Filed: December 9, 2015
• Petitioner(s): Apple Inc.
• Patent Owner(s): Nonend Inventions N.V.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Methods and Devices for Receiving Streaming Content
• Brief Description: The ’862 patent discloses methods and devices for receiving streaming content at a client device over at least two communication channels. The core invention addresses the problem of a deteriorating connection by initiating a request to receive the content over a second communication channel when the quality of the first channel becomes insufficient.

3. Grounds for Unpatentability

Ground 1: Claims 1-19 are obvious over Goldszmidt in view of Kiraly

• Prior Art Relied Upon: Goldszmidt (Patent 6,195,680) and Kiraly (Patent 6,249,810).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Goldszmidt taught a fault-tolerant, client-based system for streaming multimedia content. In Goldszmidt, a client device receives a stream from a primary server over a first communication link and automatically initiates a request to switch to a secondary server over a second link upon detecting a failure, such as the bit rate dropping below a predetermined threshold. Petitioner asserted this disclosed the core limitations of independent claims 1, 12, and 18, including receiving content over a first channel and initiating a request for content over a second channel after determining the first channel’s quality is deteriorating. To address the limitation of simultaneously rendering content received from the first channel while receiving new content over the second, Petitioner relied on Kiraly. Kiraly was argued to teach a content buffering technique for streaming clients that allows a device to continue rendering previously received content from its buffer while it begins receiving another part of the content over a new link, thus ensuring a seamless transition.
  • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine Kiraly’s buffering technique with Goldszmidt’s fault-tolerant switching system. The primary motivation was to achieve Goldszmidt’s explicit goal of "receiving a multimedia stream in an uninterrupted fashion." Kiraly provided a known, predictable, and beneficial solution to the problem of maintaining smooth playback during a communication link switch, which was inherent in Goldszmidt's system.
  • Expectation of Success: A POSITA would have a high expectation of success because Goldszmidt’s client already included a buffer, making the modification to perform Kiraly's more advanced buffering technique straightforward. Both references disclosed client-based, fault-tolerant streaming systems, and applying Kiraly's software-based technique to the standard components of Goldszmidt’s system would have been a simple design choice.

Ground 2: Claim 20 is obvious over Goldszmidt in view of Kiraly and in further view of Jahn

• Prior Art Relied Upon: Goldszmidt (Patent 6,195,680), Kiraly (Patent 6,249,810), and Jahn (Patent 6,263,203).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground specifically addressed claim 20, which depends from claim 18 and adds the limitation that the device autonomously switches "based on evaluation of a sufficiency of the first communication channel and the second communication channel." Petitioner argued that the Goldszmidt/Kiraly combination taught switching based on an evaluation of the first channel's quality (i.e., bit rate drop). To meet the limitation of evaluating the second channel, Petitioner introduced Jahn. Jahn was argued to teach a method for controlling the handover of mobile terminals between base stations by evaluating the connection quality of a potential new base station before triggering the handover. This pre-evaluation prevents switching to a connection of worse quality.
  • Motivation to Combine: Petitioner argued that a POSITA seeking to improve the reliability of the Goldszmidt/Kiraly system would recognize that its goal of "uninterrupted" streaming could be defeated if the system switched to a second server with a poor-quality link. This was a known problem in fail-over systems. A POSITA would have looked to related fields, such as mobile telecommunications, and found Jahn’s technique of evaluating a potential new connection before switching. Applying this technique would predictably improve the robustness of Goldszmidt’s system by ensuring the new channel is sufficient.
  • Expectation of Success: Success would be expected because implementing Jahn's connection evaluation technique was a known method for improving handover reliability in client-server systems. The technique of evaluating a potential new connection was well-understood and could be readily implemented in Goldszmidt's system.

4. Key Claim Construction Positions

• "initiating a [first/second] request for [receiving] at least a part of the item of content over a [first/second] communication channel": Petitioner proposed this term should be construed as "performing one or more steps that result in a request for at least a part of the item of content, where the content will be received over the [first/second] communication channel." This construction was argued to be broad enough to cover the ’862 patent’s specification, where a client first asks a portal for an IP address and then uses that address to request content from a new node.
• "streaming / streamed": Petitioner proposed this term be construed to mean "the transmission of content that is able to be played before the entirety of the content is received." This construction aligns with the general understanding in the art at the time of the invention.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. § 325(d) in view of a co-pending inter partes review (IPR), IPR2016-00174, filed by a different party. Petitioner asserted that this petition presented substantially new prior art and arguments, relying on different secondary references (Kiraly and Jahn), different arguments regarding the prior art, and different expert testimony than the co-pending IPR.

6. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-20 of the ’862 patent as unpatentable.