PTAB

IPR2016-01655

IML SLU v. WAG Acquisition LLC

Key Events

Petition

petition

Title: STREAMING MEDIA BUFFERING SYSTEM
Brief Description: The ’011 patent describes methods and systems for streaming media, such as audio or video files composed of time-sequenced data elements, from a server to a user computer. The technology addresses buffering issues by transmitting data from the server at a rate "more rapidly than it is played out" by the user's system, particularly when the user's buffer is not full, to prevent playback interruptions.

Prior Art Relied Upon: Chen (Patent 5,822,524).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Chen, which was not cited during the original prosecution, discloses every element of claims 1, 2, and 4. Chen describes a client-server system for streaming multimedia files using digital data packets with unique sequence numbers. Petitioner asserted that Chen's system performs the key functions of the ’011 patent, including a client machine (media player) that requests data, a server that transmits it over a network, and a buffer on the client machine to store the data for playback. Crucially, Petitioner contended that Chen's "RUSH mode" anticipates the ’011 patent's core limitation of transmitting data faster than the playback rate. Chen's system enters RUSH mode when the client's buffer level falls below a low "water mark," causing the server to transmit data "as fast as possible" to refill the buffer, which is inherently more rapid than the standard playback rate of its "NORMAL mode." Dependent claim 2, reciting a computer as the media player, was allegedly met by Chen's disclosure of a PC. Dependent claim 4, which explicitly requires receiving data at a rate more rapid than the playback rate, was also argued to be anticipated by Chen's RUSH mode functionality.

Prior Art Relied Upon: Chen (Patent 5,822,524) and Chen File History (Ex. 1008).
Core Argument for this Ground:
- Prior Art Mapping: As an alternative to anticipation, Petitioner argued that if Chen alone is not found to explicitly disclose the faster-than-playback-rate limitation of claim 4, this feature would have been obvious in view of Chen's own prosecution file history. The file history includes documentation of a commercial embodiment of the Chen invention, the "QVS [Quick Video Server]," which explicitly states that upon opening a file, data is "rush[ed]" to the client agent. This RUSH mode is distinct from the NORMAL mode, where the server "transmit[s] data according to time and player's playout rate." This documentation makes explicit that RUSH mode transmission is faster than the normal playback rate.
- Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the teachings of Chen with its own file history because the file history documents the system's reduction to practice. The combination represents a known, predictable, and intended implementation of the invention disclosed in the Chen patent.
- Expectation of Success: A POSITA would have a high expectation of success, as the file history describes the actual, successfully implemented commercial version of the Chen system.

Prior Art Relied Upon: Chen (Patent 5,822,524), Galensky (Patent 6,845,398), and White (Patent 7,187,947).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that claim 3, which adds the limitation that the media player is a "wireless phone," is obvious over the combination of Chen with Galensky and/or White. While Chen discloses the core streaming and buffering system on a personal computer, it does not teach a wireless phone implementation. Galensky discloses a system for receiving and playing multimedia files streamed to a "wireless device," and White explicitly discloses using a "cellular communication device" for accessing a streaming media source. Together, Galensky and White teach applying streaming media technology to wireless phones.
- Motivation to Combine: A POSITA would combine Chen's buffering system with the wireless devices of Galensky and White to increase mobility and expand the system's practical applications. Applying internet-based technologies to the growing market of mobile and wireless devices was a well-known and powerful trend at the time. This represented a simple substitution of one known user platform (a PC) for another (a wireless phone).
- Expectation of Success: A POSITA would have a high expectation of success in implementing Chen's system on the wireless devices disclosed in Galensky and White, as it would not require any significant modification or undue experimentation.

Petitioner argued that the Board should not exercise its discretion to deny the petition under 35 U.S.C. § 325(d) as duplicative of a prior-filed, pending IPR against the ’011 patent. Petitioner asserted that this review is appropriate because its obviousness grounds (Grounds 2 and 3) rely on different prior art combinations than the earlier petition. Furthermore, Petitioner is not a party to the prior action, and denial would cause great prejudice as its statutory bar date under § 315(b) was imminent, making this petition its final opportunity for relief at the PTAB.

Petitioner requested institution of an inter partes review and cancellation of claims 1-4 of the ’011 patent as unpatentable.