PTAB

IPR2019-00421

MINDGEEK USA INC v. University of Southern California

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1. Case Identification

2. Patent Overview

  • Title: Method and Apparatus Management of Multimedia Assets
  • Brief Description: The ’060 patent describes a system for managing multimedia assets using generalized interfaces between various components. The purported innovation is an open architecture allowing components from different vendors (e.g., browser, indexing server, archive server, player) to be interconnected and communicate via a common protocol, overcoming the limitations of prior art systems which allegedly forced all components onto a single hardware platform.

3. Grounds for Unpatentability

Ground 1: Anticipation by Chiu - Claims 1, 2, and 15 are unpatentable under 35 U.S.C. §102 over Chiu.

  • Prior Art Relied Upon: Chiu (Patent 6,181,336).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Chiu, which was not cited during prosecution, discloses every limitation of independent claims 1 and 15. Chiu teaches a system for managing multimedia assets that provides an open architecture supporting a "diverse variety of multimedia development tools" from various vendors. This is achieved through a class library (API) that serves as a generalized interface between multimedia production tools and a central "Vault" for storing assets. Petitioner contended that Chiu’s API is the claimed "generalized protocol," its "Vault" is the claimed "catalogue," and its system performs all the claimed method steps: defining the protocol, accessing data via commands, invoking search and retrieval requests, and returning search responses identifying catalogue elements. Dependent claim 2 is allegedly met by Chiu's explicit disclosure of the generalized protocol being an API.

Ground 2: Obviousness over Chiu and Ferrel - Claims 1-18 are obvious over Chiu in view of Ferrel.

  • Prior Art Relied Upon: Chiu (Patent 6,181,336) and Ferrel (Patent 5,907,837).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Chiu provides the foundational system as described in Ground 1: an open, distributed multimedia management system with a generalized API, a central vault, and search/retrieval capabilities. Ferrel, also not cited during prosecution, addresses the same field of information retrieval systems for online networks. Ferrel was argued to supply any features of the challenged claims not explicitly found in Chiu. Specifically, Ferrel teaches a more advanced system for indexing, querying, and caching multimedia objects. For example, Ferrel describes storing previous queries (query caching) to improve search speed, using an IR server to index and search content objects, and using a viewer to browse and retrieve assets from a Caching Object Store (COS).
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would have been motivated to combine the teachings of Chiu and Ferrel for several reasons. Both references are in the same field of endeavor (multimedia information cataloging, indexing, and retrieval) and address overlapping problems. A POSITA looking to implement or improve upon Chiu’s multimedia management system would have naturally looked to contemporaneous art like Ferrel to incorporate its more advanced and efficient querying, caching, and network distribution techniques. For instance, incorporating Ferrel’s improved query caching and keyword association methods would be a predictable solution to improve the performance and functionality of Chiu's search features.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the systems. The integration involved applying Ferrel’s known search and caching improvements to Chiu's compatible client-server architecture. Both systems operate on standard principles of database management and network communication, making the combination a matter of applying known techniques to achieve predictable results.

4. Arguments Regarding Discretionary Denial

  • Petitioner acknowledged that a prior complaint involving the ’060 patent was served and subsequently voluntarily dismissed without prejudice. While Federal Circuit precedent in Click-To-Call Techs., LP v. Ingenio, Inc. suggests the one-year IPR time bar under §315(b) would apply, Petitioner argued that Click-To-Call was wrongly decided and that the bar should not be triggered by a complaint that was voluntarily dismissed without prejudice. Petitioner stated it was filing the IPR petition to preserve its rights of appeal on this issue, asserting that the ’060 patent is eligible for review and that Petitioners are not time-barred from requesting it.

5. Relief Requested

  • Petitioner requests that the Board institute an inter partes review (IPR) of claims 1-18 of the ’060 patent and find them unpatentable.