Google Inc v. Koninklijke Philips NV

1. Case Identification

• Case #: IPR2017-00447
• Patent #: 7,529,806
• Filed: December 9, 2016
• Petitioner(s): Google Inc.
• Patent Owner(s): Koninklijke Philips N.V.
• Challenged Claims: 1-16

2. Patent Overview

• Title: Partitioning Of MP3 Content File For Emulating Streaming
• Brief Description: The ’806 patent describes methods for reducing latency when downloading large multimedia files. The invention proposes using an XML-based control file to specify how a media presentation is partitioned into multiple segments, allowing a client device to begin playing the first segment while subsequent segments are downloaded.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-7 and 9-13 by SMIL 1.0

• Prior Art Relied Upon: Synchronized Multimedia Integration Language (SMIL) 1.0 Specification (June 15, 1998) (“SMIL 1.0”).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that SMIL 1.0, an XML-based specification for describing multimedia presentations, inherently discloses every limitation of the challenged claims. A SMIL file functions as the claimed "control information file," which is downloaded and parsed by a client device (a SMIL player). SMIL 1.0’s <switch> element expressly teaches identifying and selecting from "multiple alternative files" corresponding to a media segment based on "system restraints" (e.g., system-bitrate or system-screen-size). This maps directly to the core functionality recited in independent claims 1, 9, and 12.
  • Key Aspects: Petitioner contended that the conditional limitations in claims 1 and 12 (beginning with "wherein if the determined file is one of a plurality of files...") are optional elements that do not need to be present in the prior art for anticipation. Because a presentation in SMIL 1.0 could consist of a single file (rendering the condition false), the subsequent steps for concurrent retrieval are not required limitations of the claim.

Ground 2: Obviousness of Claims 1-16 over SMIL 1.0

• Prior Art Relied Upon: SMIL 1.0, supplemented by the general knowledge of a person of ordinary skill in the art (POSA), including knowledge of techniques like "pipelining" as described in Hua (“2PSM: An Efficient Framework for Searching Video Information in a Limited-Bandwidth Environment,” Sept. 1999).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that, for the same reasons SMIL 1.0 anticipates claims 1-7 and 9-13, it also renders them obvious. For remaining claims, and as an alternative argument for the conditional limitations of claims 1 and 12, Petitioner mapped SMIL 1.0’s features to the claims and argued that any remaining gaps would have been obvious to a POSA. Specifically, SMIL 1.0’s <seq> (sequential) element teaches playing media files in succession. The patent’s limitation of concurrently retrieving a next file while a current file is playing was argued to be an obvious implementation detail. Dependent claims adding limitations for MP3 files (claims 8 and 14) were obvious because SMIL 1.0 is format-agnostic, and MP3 was a widely used format. Claims requiring an XML parser and interpreter (claim 16) were obvious because a POSA would have understood that a parser is needed to read a SMIL file and an interpreter (e.g., a media player) is needed to act on its contents.
  • Motivation to Combine: A POSA would have been motivated to implement the sequential playback taught by SMIL 1.0’s <seq> element using the well-known "pipelining" technique to minimize user wait times. This would involve downloading the next file segment while the current one plays, directly achieving the functionality of the patent's conditional clauses. The motivation was to solve the known problem of undesirable latency in media playback, a primary goal of both the patent and prior art streaming techniques.
  • Expectation of Success: A POSA would have had a high expectation of success in applying pipelining to SMIL 1.0 presentations. The patent itself noted that implementing concurrent processes using multithreading was a "skill common for software engineers," confirming that the necessary tools and techniques were well-established and predictable.

4. Key Claim Construction Positions

• "[a/the] given segment of the media presentation": Petitioner argued for a construction of "part or all of the media presentation." This construction was asserted to be necessary to preserve the meaning of the conditional clauses in claims 1 and 12 ("wherein if the determined file is one of a plurality of files..."). If a segment could only be a part of the whole, the condition would always be met, rendering the word "if" superfluous.
• "means for parsing a control information file": For this means-plus-function term in claim 12, Petitioner proposed the construction "software for parsing a control information file, including an XML parser." This was based on explicit statements in the ’806 patent’s specification that an XML parser is required to practice the invention.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-16 of the ’806 patent as unpatentable.