IML SLU v. WAG Acquisition LLC

1. Case Identification

• Case #: IPR2016-01657
• Patent #: 8,185,611
• Filed: August 23, 2016
• Petitioner(s): IML. SLU
• Patent Owner(s): WAG Acquisition, LLC
• Challenged Claims: 1-18

2. Patent Overview

• Title: STREAMING MEDIA DELIVERY SYSTEM
• Brief Description: The ’611 patent is directed to methods and systems for streaming time-sequenced media data, such as audio or video, from a server to a user computer over a network. The invention purports to improve upon prior art by transmitting data from the server at a rate more rapid than the playback rate when the user's buffer is not full, thereby reducing initial latency and interruptions.

3. Grounds for Unpatentability

Ground 1: Claims 1-18 are obvious over Chen in view of Chen File History and Willebeek.

• Prior Art Relied Upon: Chen (Patent 5,822,524), Chen File History (prosecution documents for the Chen patent), and Willebeek (an IBM Journal article published in March 1998).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chen taught a streaming media system with a client and server, each with buffers, for transmitting multimedia files. Chen disclosed multiple transmission modes, including a "NORMAL" mode at the playback rate and a "RUSH" mode at an increased transmission rate, which is triggered when the client buffer level falls below a low "water mark." Petitioner contended this core system met most limitations of independent claims 1, 8, and 14, including sending initial media elements at a rate more rapid than the playback rate to fill the user buffer.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the Chen patent with its own File History, as the File History documented the reduction to practice of the Chen system and explicitly disclosed starting transmissions in RUSH mode. A POSITA would combine Willebeek because it taught that immediate playback was a known goal, achievable if the initial data transmission rate exceeded the playback rate. Willebeek also disclosed using a constant fill rate for a server buffer in live-streaming scenarios, motivating a POSITA to adapt the Chen system for live broadcasts, a known market demand.
  • Expectation of Success: Combining these known techniques for streaming media would have yielded the predictable result of a system with reduced startup latency.

Ground 2: Claims 1-18 are obvious over Chen, Chen File History, Willebeek, and Lin.

• Prior Art Relied Upon: Chen (Patent 5,822,524), Chen File History, Willebeek (IBM Journal, Mar. 1998), and Lin (Patent 6,405,256).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground incorporated the arguments from Ground 1 and added Lin to address the claim limitation requiring that media data be sent at a rate that "matches the constant fill rate of a server buffer." Petitioner asserted that Lin disclosed a system of caching servers where, during steady-state operation, media is streamed at a constant rate that is also the playback rate. In Lin's system, the server buffer fill rate matches this constant sending rate.
  • Motivation to Combine: A POSITA would combine Lin's teachings with the Chen/Willebeek system to improve performance and better avoid client buffer depletion, a well-known problem in the field. Petitioner argued that implementing Lin’s constant-rate streaming was an obvious way to achieve the constant server buffer fill rate suggested by Willebeek, making the systems compatible and the combination logical.
  • Expectation of Success: Applying Lin's established caching and constant-rate streaming techniques to the Chen system would predictably enhance its buffering performance and reliability.

Ground 3: Claims 1-18 are obvious over Chen, Chen File History, Willebeek, and Zheng.

• Prior Art Relied Upon: Chen (Patent 5,822,524), Chen File History, Willebeek (IBM Journal, Mar. 1998), and Zheng (a 1998 IEEE publication).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented Zheng as an alternative reference for teaching key limitations. Petitioner argued that Zheng disclosed a "Fast Buffer Fillup" scheme that explicitly used maximum available bandwidth to rapidly fill a client buffer to a minimum threshold, allowing playback to start immediately. After playback began, the transmission rate was throttled back to the average playback rate. This directly taught sending initial data at a rate more rapid than the playback rate to enable playback while the buffer continues to fill.
  • Motivation to Combine: Zheng and Chen addressed the identical problem of minimizing startup latency in streaming video. A POSITA would combine the teachings because applying Zheng’s well-defined "Fast Buffer Fillup" method to the Chen system was a known technique to improve a known device. Both systems operated in the same technical field using similar buffering concepts.
  • Expectation of Success: The combination would predictably result in an improved streaming system that achieved the known goal of near-immediate playback.

4. Key Claim Construction Positions

• Petitioner asserted that the challenged claims were invalid under either their plain and ordinary meaning or under the constructions adopted by the Patent Trial and Appeal Board in a prior proceeding (IPR2015-01035) for the same ’611 patent.
• Key terms previously construed by the Board included "playback rate," "constant fill rate of a server buffer," and "configuring the initial streaming media elements...so that the user system to begin playing back...while the user buffer continues to fill." Petitioner integrated these constructions into its invalidity arguments.

5. Arguments Regarding Discretionary Denial

• 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 inter partes review (IPR).
• Petitioner contended that denial was inappropriate because it relied on different combinations of prior art than the earlier petition. Furthermore, Petitioner was not the same party or a real party-in-interest to the prior proceeding.
• Finally, Petitioner argued it would face significant prejudice if the petition were denied, as its statutory deadline to file under 35 U.S.C. § 315(b) was the day after the petition was filed.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-18 of the ’611 patent as unpatentable under 35 U.S.C. § 103.