Unified Patents Inc v. Sound View Innovations LLC

1. Case Identification

• Case #: IPR2018-00599
• Patent #: 9,462,074
• Filed: February 8, 2018
• Petitioner(s): Unified Patents Inc.
• Patent Owner(s): Sound View Innovations, LLC
• Challenged Claims: 3 and 9

2. Patent Overview

• Title: Method for managing storage of a streaming media object in a network
• Brief Description: The ’074 patent relates to caching techniques for streaming media (SM) objects in a network. The claimed invention addresses situations where a server has insufficient disk space to store a new SM object by deleting only a portion of multiple SM objects already stored on the server to create sufficient space.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claim 9 over Acharya and Rejaie - Claim 9 is obvious over Acharya in view of Rejaie.

• Prior Art Relied Upon: Acharya (a 1999 doctoral dissertation titled "Techniques for Improving Multimedia Communication Over Wide Area Networks") and Rejaie (a 1999 academic paper titled "Proxy Caching Mechanism for Multimedia Playback Streams in the Internet").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Acharya, which describes a "MiddleMan" system of cooperating caching proxies, disclosed nearly all limitations of claim 9. This included managing SM object storage in a network with servers and clients, receiving an SM object, and determining if disk space is available. The key limitation not explicitly disclosed by Acharya was deleting portions from a plurality of stored objects. Acharya taught deleting the end portions of a single unpopular title to make space. Petitioner asserted that Rejaie explicitly taught this missing element by describing a cache replacement algorithm that, when space is exhausted, flushes segments from multiple stored streams (e.g., deleting portions of the base layers of multiple, less popular movies) while keeping the initial segments to reduce latency.
  • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine Acharya and Rejaie because they are analogous art addressing the same problem of delivering multimedia content over networks and reducing server load and startup latency. A POSITA implementing Acharya's system would have been motivated to incorporate Rejaie's more advanced, multi-object cache replacement technique—which considers object quality and popularity—as a direct improvement over Acharya's simpler, single-object approach.
  • Expectation of Success: The combination was presented as the application of a known technique (Rejaie's multi-object partial deletion) to a known system (Acharya's caching framework) to yield predictable results, ensuring a reasonable expectation of success.

Ground 2: Obviousness of Claim 9 over Acharya and Brubeck - Claim 9 is obvious over Acharya in view of Brubeck.

• Prior Art Relied Upon: Acharya (dissertation) and Brubeck (a 1996 article in IEEE MultiMedia titled "Hierarchical Storage Management in a Distributed VOD System").
• Core Argument for this Ground:
  • Prior Art Mapping: As in Ground 1, Petitioner relied on Acharya for most limitations of claim 9. The argument again focused on the limitation of deleting portions from a plurality of objects. While Acharya suggested deleting a portion of one unpopular title, Petitioner argued a POSITA would recognize this could be insufficient. Brubeck was introduced because it explicitly taught that removing multiple objects from a cache is sometimes necessary to make space for a new, higher-priority object. The combination of Acharya’s teaching to delete only portions with Brubeck’s teaching to act on multiple objects allegedly rendered the claimed step obvious.
  • Motivation to Combine: Petitioner argued a strong motivation to combine existed because Acharya explicitly cited Brubeck as "Related Work," noting the work was the "closest to ours." A POSITA reading Acharya would therefore be directed to Brubeck's teachings on cache management. Given Brubeck's disclosure that deleting multiple objects may be required, a POSITA would have been motivated to apply this principle to Acharya's system to handle scenarios where deleting a portion of a single object was insufficient, thus improving the robustness of Acharya's cache replacement strategy.

Ground 3: Obviousness of Claim 3 over Acharya, Rejaie, and Wolf - Claim 3 is obvious over Acharya in view of Rejaie further in view of Wolf.

• Prior Art Relied Upon: Acharya (dissertation), Rejaie (academic paper), and Wolf (Patent 6,463,508).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that claim 3, a method for storing an SM object, was obvious over the combination. Wolf was used to teach the preamble limitation of an SM object being comprised of "successive time-ordered chunks" which are further comprised of "segments." Acharya was mapped to the system architecture (helper servers, clients) and the basic caching steps. The core of the claim involved steps taken when disk space is insufficient: [a] composing a set of SM objects whose access time is least recent, and [b] replacing a portion of each of those objects with chunks of the new SM object. Wolf was argued to teach step [a] by disclosing an LRU (Least Recently Used) stack to identify objects for deletion. Rejaie was argued to teach step [b] by disclosing the deletion of portions from a plurality of objects, which, in combination with Acharya’s teaching of adding a new object "on a block by block basis," met the replacement limitation.
  • Motivation to Combine: The motivation to combine Acharya and Wolf was based on improving cache management effectiveness and reducing latency, goals common to both references. The motivation to further incorporate Rejaie was the same as in Ground 1—to provide a more sophisticated method for partial deletion across multiple files when space is needed.

• Additional Grounds: Petitioner asserted an additional obviousness challenge for Claim 9 over Acharya in view of Wolf but relied on a similar theory of combining Acharya's caching system with Wolf's LRU-based, multi-object replacement algorithm.

4. Key Claim Construction Positions

• "receiving said SM object": Petitioner argued this phrase, recited in claims 3 and 9, should be construed to be performed by either the "plurality of servers" (or "helper servers") or the "plurality of clients." This construction was based on the specification's disclosure and Figure 1, which depicted both helper servers and a receiver obtaining a data stream, and was allegedly necessary to map the teachings of Acharya, where proxy servers receive SM objects from a content server.
• "composing a set of SM objects": Recited in claim 3, Petitioner argued this should mean "composing a grouping or collection of one or more SM objects." This construction was important to counter potential arguments from prosecution history that the prior art was deficient for not teaching the composition of multiple objects, as Petitioner contended the term "set" does not inherently require a plurality.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. § 325(d) would be inappropriate for grounds relying on the Wolf patent, even though Wolf was considered by the examiner during prosecution. The reasons asserted were:
  • The primary reference in the combination, Acharya, was never before the Office, presenting a new combination and context.
  • The examiner did not apply Wolf to prosecution claim 11, which later became challenged claim 9.
  • The petition's arguments and supporting expert declaration provided a new perspective on the prior art not previously considered by the examiner.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 3 and 9 of Patent 9,462,074 as unpatentable.