WebPower Inc v. WAG Acquisition LLC

1. Case Identification

• Case #: IPR2016-01239
• Patent #: 8,364,839
• Filed: June 21, 2016
• Petitioner(s): WebPower, Inc.
• Patent Owner(s): WAG Acquisition, LLC
• Challenged Claims: 1-21

2. Patent Overview

• Title: Streaming Media Delivery System
• Brief Description: The ’839 patent discloses systems and methods for delivering streaming media over a network. The core technique involves an initial, rapid transmission of media elements to fill a user's playback buffer at a rate faster than the playback rate, followed by a subsequent transmission at about the playback rate to maintain the buffer.

3. Grounds for Unpatentability

Ground 1: Anticipation over Chen - Claims 1-2, 4, 6-9, 11, 13-16, 18, and 20-21 are anticipated under 35 U.S.C. § 102 by Chen.

• Prior Art Relied Upon: Chen (Patent 5,822,524).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chen discloses every limitation of the challenged claims. Chen teaches a client-server streaming system with three transmission modes: RUSH, NORMAL, and PAUSE. Petitioner asserted that Chen’s RUSH mode, used when the client buffer is low (such as at the start of a stream), corresponds to the claimed initial sending rate that is more rapid than the playback rate. Chen’s NORMAL mode, used after the buffer is sufficiently filled, sends data at the playback rate, corresponding to the claimed subsequent sending rate. Petitioner also contended that Chen discloses detecting interruptions, such as when the client buffer level drops, and responding by re-entering RUSH mode to refill it.
  • Key Aspects: The argument hinges on the assertion that a Person of Ordinary Skill in the Art (POSITA) would understand that Chen's system must necessarily start in RUSH mode because the client buffer would be empty, thus anticipating the two-phase transmission method.

Ground 2: Obviousness over Chen and Willebeek - Claims 5, 12, and 19 are obvious over Chen in view of Willebeek.

• Prior Art Relied Upon: Chen (Patent 5,822,524) and Willebeek ("Bamba--Audio and video streaming over the Internet," IBM Journal of Research and Development, Nov. 1998).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed dependent claims requiring that media data be "provided from a live broadcast." Petitioner argued Chen primarily describes streaming stored files, but Willebeek explicitly teaches a system for streaming live audio and video. Willebeek describes a "capture station" that digitizes, compresses, and packetizes a live feed, sending the data to a server with a circular buffer.
  • Motivation to Combine: A POSITA would combine Willebeek’s live-feed capture system with Chen’s streaming architecture to enhance Chen's system with the known and desirable capability of handling live sources. The petitioner asserted this would be a predictable combination of a known technique (live capture) with a similar system (Chen's streaming server) to achieve a predictable result. The two systems were argued to be compatible as both utilize packetized data.
  • Expectation of Success: Success would be expected because the integration was straightforward: Willebeek’s live-feed buffer would simply serve as the source for Chen's server buffer, with the rest of Chen’s transmission protocol (RUSH followed by NORMAL mode) functioning as disclosed.

Ground 3: Obviousness over Chen, Willebeek, and Chen File History - Claims 5, 12, and 19 are obvious over Chen in view of Willebeek and further in view of Chen File History.

• Prior Art Relied Upon: Chen (Patent 5,822,524), Willebeek (IBM Journal of Research and Development, Nov. 1998), and Chen File History (File History of Patent 5,822,524).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground was presented as an alternative to Ground 2. It argued that to the extent the Patent Trial and Appeal Board found Chen did not explicitly disclose starting in RUSH mode, the Chen File History cures this deficiency. The file history contains documents related to a "Quick Video Server" (QVS), described as a reduction to practice of Chen's invention. These documents explicitly state that in "Rush mode," the server transmits data "as fast as possible" and that data is "rushed to the client upon opening of a multimedia file."
  • Motivation to Combine: A POSITA would be motivated to look to the Chen File History to better understand the operation of the Chen patent. The combination of Chen and Willebeek would provide the live broadcast capability, and the Chen File History would provide additional, explicit evidence for implementing the initial fast-transmission step to minimize start-up delay, a known goal in streaming media.
  • Expectation of Success: Petitioner argued a POSITA would have a high expectation of success as the Chen File History simply clarifies an operational mode of the primary reference, Chen, making its combination with Willebeek’s live-feed technology predictable.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 3, 10, and 17 are obvious over Chen and the ISO-11172 standard (MPEG-1) for adding a constant bit rate, which is a known design choice. Petitioner also presented grounds combining Chen with Cannon (Patent 6,014,706) and the Chen File History to teach the "live broadcast" limitation, relying on similar combination rationales as those involving Willebeek.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. § 325(d), contending this petition was not duplicative of a prior IPR (IPR2015-01036) filed by another party. Petitioner asserted it was presenting the primary reference, Chen, in a new light, particularly regarding its interruption response mechanisms. It also noted that it was combining Chen with new references (Willebeek and Cannon) not used in the prior IPR and that Petitioner was not a party to the prior proceeding.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-21 of the ’839 patent as unpatentable.