IML SLU v. WAG Acquisition LLC

1. Case Identification

• Case #: IPR2016-01658
• Patent #: 8,364,839
• Filed: August 23, 2016
• Petitioner(s): IML. SLU
• Patent Owner(s): WAG Acquisition, LLC
• Challenged Claims: 1-21

2. Patent Overview

• Title: Streaming Media Delivery System
• Brief Description: The ’839 patent describes methods and systems for sending streaming media, composed of time-sequenced data elements, from a server to a user computer. The invention purports to solve issues of network latency and buffer depletion by initially sending data at a rate more rapid than the playback rate to fill a user buffer, allowing playback to begin while the buffer continues to fill.

3. Grounds for Unpatentability

Ground 1: Obviousness over Chen and Chen File History - Claims 1-2, 4, 6-9, 11, 13-16, 18, 20-21 are obvious over Chen in view of Chen File History

• Prior Art Relied Upon: Chen (Patent 5,822,524) and Chen File History.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chen disclosed the core features of the challenged claims, including a client-server system for streaming multimedia files using client and server buffers. Chen taught three transmission modes based on the fullness of the client buffer: NORMAL (at playback rate), RUSH (an increased rate), and PAUSE. The key limitation of sending data at an "initial sending rate more rapid than the playback rate" was explicitly disclosed by the combination. Chen taught switching to RUSH mode when the client buffer level fell below a "low water mark." The Chen File History, documenting the commercial embodiment of Chen's system, confirmed that upon opening a file (when the client buffer is empty), the system initiates transmission in RUSH mode, where data is sent "as fast as possible."
  • Motivation to Combine: The Chen File History included a declaration from Chen’s inventor and documentation of the system's reduction to practice. A person of ordinary skill in the art (POSITA) would combine the teachings of the Chen patent with its own file history to understand the intended and actual operation of the system, including the specific implementation of the RUSH and NORMAL modes. This was presented not as combining disparate references, but as understanding a single system through its primary disclosure and its implementation documents.
  • Expectation of Success: A POSITA would have a high expectation of success, as the Chen File History simply clarified the operational details of the system disclosed in the Chen patent.

Ground 2: Obviousness for Constant Bit Rate Claims - Claims 3, 10, and 17 are obvious over Chen, Chen File History, and ISO-11172

• Prior Art Relied Upon: Chen (Patent 5,822,524), Chen File History, and ISO-11172 (the MPEG-1 standard).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the base system disclosed in Chen and Chen File History. The dependent claims at issue added the limitation that the media data elements are "encoded at a constant bit rate." Petitioner asserted that ISO-11172, the well-known MPEG-1 standard, explicitly taught encoding video at either a constant bit rate or a variable bit rate.
  • Motivation to Combine: Petitioner argued that Chen itself identified MPEG-1 as a relevant standard for multimedia data. A POSITA seeking to implement the Chen system would have been motivated to consult the ISO-11172 standard and would have recognized constant bit rate encoding as a well-known, available design choice. Using a constant bit rate was a simple and obvious variation to support different, widely used media formats.
  • Expectation of Success: Implementing a known encoding standard like MPEG-1's constant bit rate option within the Chen streaming framework would have been a routine task for a POSITA with a predictable outcome.

Ground 3: Obviousness for Live Broadcast Claims - Claims 5, 12, and 19 are obvious over Chen, Chen File History, and Willebeek

• Prior Art Relied Upon: Chen (Patent 5,822,524), Chen File History, and Willebeek (a 1998 IBM Journal article).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground also used the Chen/Chen File History combination as the base system, which streamed stored files. The dependent claims at issue added the limitation that the media is "provided from a live broadcast." Willebeek was cited for its disclosure of a system for streaming live audio and video using a "capture station" and a server (a "reflector") with a circular buffer queue to manage the live feed.
  • Motivation to Combine: The ’839 patent acknowledged that live streaming was known in the prior art. Petitioner argued that a POSITA would have been motivated to combine Willebeek’s live-feed capabilities with Chen’s efficient buffer management system to expand the utility of Chen's system to the known and growing market for live broadcasts. This was characterized as the predictable application of a known technique (live capture from Willebeek) to improve a similar system (streaming from Chen).
  • Expectation of Success: The systems were compatible, as both utilized packetized data. A POSITA would expect that integrating Willebeek's live capture front-end with Chen's back-end streaming architecture would successfully result in a system capable of live streaming.

• Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 5, 12, and 19 based on Chen, Chen File History, and Carmel (Patent 6,389,473), which also disclosed streaming real-time media from live sources like cameras.

4. Key Claim Construction Positions

• Petitioner asserted that while no specific constructions were necessary, its arguments were valid under either the ordinary and customary meaning of the terms or under prior constructions adopted by the Board in a related IPR (IPR2015-01036). Key terms previously construed included:
  • "playback rate": "a data rate for which the data is encoded to be played out"
  • "sending rate more rapid than the playback rate": "at least some of the unsent data in the server buffer is sent at a sending rate more rapid than the playback rate"

5. Key Technical Contentions

• Petitioner's central technical argument was that the '839 patent was based on the "faulty premise" that prior art systems could only transmit streaming data at the same rate as playback. Petitioner contended that the Chen patent, particularly when viewed with its file history, directly contradicted this premise by teaching a "RUSH mode" specifically designed to transmit data faster than the playback rate to quickly fill a client buffer.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate despite prior IPRs filed by other parties against the ’839 patent. The primary reasons given were:
  • The grounds based on Willebeek and Carmel introduced new prior art combinations for claims that had not previously been subject to an instituted IPR.
  • Petitioner was not the same party or a real-party-in-interest to the previously filed actions.
  • Petitioner faced significant prejudice from an impending statutory bar date, making this petition its only opportunity for relief at the PTAB.

7. Relief Requested

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