Google LLC v. Virentem Ventures LLC

1. Case Identification

• Patent #: 9,785,400
• Filed: June 21, 2019
• Petitioner(s): Google LLC
• Patent Owner(s): Virentem Ventures, LLC
• Challenged Claims: 1-4 and 12-15

2. Patent Overview

• Title: Digital Rendering System with Variable Rate Presentation
• Brief Description: The ’400 patent discloses a digital rendering system capable of variable-rate media presentation. The invention's core relates to managing two distinct time measurements: a "data time" corresponding to the media content's original, unaltered timeline, and a "presentation time" reflecting the actual time elapsed during playback, which can be faster or slower than the original speed.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 and 12-15 are anticipated by Omoigui under 35 U.S.C. §102.

• Prior Art Relied Upon: Omoigui (Patent 7,096,271).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Omoigui discloses every limitation of the challenged claims. Omoigui teaches a networked multimedia system where users can modify playback speed. To achieve this, Omoigui’s system maintains a "primary" or "reference" media stream with an unaltered timeline, which Petitioner asserted is equivalent to the ’400 patent's "data time parameter." The system also generates "timeline-altered" streams for playback at different speeds, corresponding to the claimed "presentation time parameter." Omoigui further discloses using stored cross-reference tables to map between the primary timeline and the altered timelines, which enables seamless switching between speeds. Petitioner contended this process directly maps to the challenged claims' method of maintaining a data time value and calculating a corresponding presentation time value based on it.
  • Key Aspects: The argument relies heavily on the direct functional equivalence between Omoigui's "primary stream timeline" and the claimed "data time parameter," and between Omoigui's "timeline-altered stream" and the claimed "presentation time parameter."

Ground 2: Claims 1-4 and 12-15 are obvious over Omoigui under 35 U.S.C. §103.

• Prior Art Relied Upon: Omoigui (Patent 7,096,271).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative, asserting that if the Board were to find Omoigui does not explicitly disclose certain limitations—such as the requirement for data to be "tangibly stored" in a "non-volatile storage element" (per Petitioner's proposed construction)—these features would have been obvious additions. Omoigui explicitly describes client and server computers that include various storage options, such as hard drives and other computer-readable media.
  • Motivation to Combine (Motivation to Modify): Petitioner contended that for a person of ordinary skill in the art (POSITA) implementing Omoigui's streaming system, the selection of a specific type of memory (e.g., non-volatile storage) for data, values, or computer programs would have been a routine design choice from a finite number of predictable solutions.
  • Expectation of Success: A POSITA would have had a high expectation of success in using non-volatile memory or distributed storage architectures. Petitioner argued these were well-known and desirable methods for improving system performance, especially for a system intended to service many users or handle large amounts of data, as described in Omoigui.

4. Key Claim Construction Positions

• The petition proposed constructions for several key terms, arguing they should be defined as explicitly stated in the ’400 patent’s specification.
• "Temporal Sequence Presentation Data": Petitioner argued this term should be construed according to its lengthy and explicit definition in the specification. This construction characterizes the data as being intended for presentation (e.g., audio/video) and comprising elements with specific rendition types, rendition durations, and an associated "Data Time" that corresponds to the original, unaltered timeline. This construction was central to Petitioner's mapping of the functionality of Omoigui's media streams to the claims.
• "Tangibly Stored in A . . . Computer-Readable Medium": Petitioner argued this phrase should be construed to mean "stored in a non-volatile storage element." This position was based on the specification's own examples of "tangibly embodying" computer instructions, which exclusively list non-volatile memory types (e.g., EPROM, flash memory, hard disks, CD-ROMs). This narrower construction was important for demonstrating that Omoigui's disclosure of hard drives and similar media met the claim limitation.
• "Current Time": Petitioner proposed construing this term to mean "the current position in time of the temporal sequence presentation data being displayed and rendered." This construction, grounded in the specification's explanation of the term, helps link a user's request for a specific playback location in Omoigui's system to the language of the dependent claims.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate and that the petition should be instituted. It asserted that the parallel district court litigation was in its early stages, with formal claim construction yet to begin, making an IPR an efficient mechanism for resolving patentability before significant litigation resources were expended. Furthermore, Petitioner noted it had filed a concurrent petition asserting different grounds (based on a combination of Nelson, Rothermel, and DeMoney), providing the Board with distinct and alternative invalidity theories to consider.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4 and 12-15 of Patent 9,785,400 as unpatentable.