PTAB

IPR2016-01524

Samsung Electronics Co Ltd v. TiVo Inc

Key Events

Petition

petition Intelligence

Case #: IPR2016-01524
Patent #: 6,233,389
Filed: August 2, 2016
Petitioner(s): Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
Challenged Claims: 31 and 61

Title: Multimedia Time Warping System
Brief Description: The ’389 patent relates to a system for the real-time capture, storage, and display of multimedia data, such as television broadcast signals. The system architecture is described using conceptual software components: "source objects," "transform objects," and "sink objects" that work together to manage data flow through a pipeline.

Prior Art Relied Upon: Sampat (Patent 5,557,724).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that the client-side architecture of the Sampat reference disclosed every element of claims 31 and 61. Sampat’s client (104) was alleged to include a "source object" (the network I/O driver) that extracts data from a physical source (Sampat's server), a "transform object" (the Media Services Manager or "MSM") that performs a temporal transform by storing data to and retrieving it from a mass storage device, and a "sink object" (the sink Media Service Providers or "MSPs") that outputs data streams to decoders. The MSM was argued to provide the claimed "automatic flow control" by managing buffer passing between the source and sink objects, making the pipeline "self-regulating" as required.
- Key Aspects: This ground asserted that Sampat's MSM performs the intelligent, centralized flow control that was the basis for patentability in a prior reexamination of the ’389 patent, and that Sampat was never previously considered by the USPTO.

Prior Art Relied Upon: Sampat (Patent 5,557,724), VfW (Programmer’s Guide, Microsoft Video for Windows Development Kit (Feb. 1993)), and SoundBlaster (Sound Blaster Pro User Reference Manual (1991)).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that to the extent Sampat was found not to explicitly disclose a video and audio decoder within its client-side system, VfW and SoundBlaster supplied these missing elements. VfW, a guide for Microsoft Video for Windows, explicitly taught video decompression drivers (decoders). SoundBlaster, a user manual, taught audio decompression and digital-to-analog conversion (decoding).
- Motivation to Combine: A POSITA would combine these references because Sampat itself identified "Microsoft Video for Windows" and "SoundBlaster Pro" as preferred components for its system. Therefore, a POSITA would have been directly motivated to implement the known features of these specific components, including their decoding capabilities, into the Sampat system to achieve a fully functional multimedia device.
- Expectation of Success: Success would be expected because the combination involved implementing well-known, commercially available components for their intended and described purposes within the system that expressly preferred them, representing a predictable application of known techniques.

Prior Art Relied Upon: Sampat (Patent 5,557,724).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner presented a parallel argument to Ground 1, contending that Sampat's server-side architecture (server 102) also anticipated all limitations of claims 31 and 61. In this configuration, the "source object" was the source MSPs that receive data from a physical data source (e.g., a tuner or video codec). The "transform object" was again the MSM, managing data flow and storage. The "sink object" was the server's sink MSPs used for local monitoring. Petitioner argued that Sampat explicitly stated that "each server has all the functionality of a client," making the server's components analogous to the client's for the purpose of the claimed invention.
Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) alleging claims 31 and 61 are obvious over Sampat (server-side) in view of VfW, SoundBlaster, and Gerber (Patent 5,710,895). This ground relied on theories similar to Ground 2 to supply any potentially missing elements for temporary data storage and decoding in Sampat's server architecture.

Petitioner argued for applying the Broadest Reasonable Interpretation (BRI) standard. For several key terms, Petitioner adopted constructions proposed by the Patent Owner and adopted in prior district court litigation, asserting they were at least as broad as the BRI.
"source object": Construed as a collection of data and operations that extracts video/audio data from a physical source, obtains a buffer from a transform object, converts data into streams, and fills the buffer.
"transform object": Construed as a collection of data and operations that transforms the form of data.
"sink object": Construed as a collection of data and operations that obtains data stream buffers from a transform object and outputs streams to a video and audio decoder.
"automatically flow controlled": Construed as "self-regulated," arguing this covers systems where the transform object controls the flow of data, rather than the source and sink objects being merely reactive to it. This construction was central to mapping Sampat's MSM to the claims.

Petitioner requested institution of an inter partes review and cancellation of claims 31 and 61 of the ’389 patent as unpatentable.