Google LLC v. Virentem Ventures LLC

1. Case Identification

• Case #: [Not Provided in Document]
• Patent #: 9,785,400
• Filed: June 21, 2019
• Petitioner(s): Google LLC
• Patent Owner(s): Virentem Ventures, LLC
• Challenged Claims: 1-4, 7, 12-15, and 18

2. Patent Overview

• Title: Digital Rendering System Including Variable Rate Presentation
• Brief Description: The ’400 patent describes a digital rendering system with a variable rate presentation capability. The core technology distinguishes between "data time," which represents the duration of the media content itself, and "presentation time," which is the real-world time it takes to render that content, allowing for playback at rates other than normal speed.

3. Grounds for Unpatentability

Ground 1: Obviousness over Nelson and Rothermel - Claims 1-4 and 12-15 are obvious over Nelson in view of Rothermel.

• Prior Art Relied Upon: Nelson (Patent 5,719,786) and Rothermel (“Clock Hierarchies: An Abstraction for Grouping and Controlling Media Streams,” IEEE Journal on Selected Areas in Communications, Jan. 1996).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Nelson discloses a digital video management system that meets most limitations of the independent claims. Nelson’s system uses a "presentation time" (a calculated product of consumed units and their duration) and a "reference time base" (current real time) to synchronize media streams. However, Petitioner contended that Nelson does not explicitly teach calculating one timeline based on the other to handle all scenarios, such as starting playback from a point other than the beginning of the stream.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Nelson with Rothermel to add flexibility and improve functionality. Rothermel, which addresses the same technical problem of synchronizing media streams, explicitly discloses a simple mathematical formula for mapping between "media time" (analogous to Nelson's presentation time) and "real time" (analogous to Nelson’s reference time base). This formula accounts for variables like playback speed and an arbitrary start time, which would have been a known and desirable improvement for Nelson’s system.
  • Expectation of Success: A POSITA would have a high expectation of success because combining the references involved applying a known formula (Rothermel) to a known system (Nelson) to achieve a predictable result—enhanced playback flexibility. Nelson already established the framework of using two separate timelines; Rothermel provided the well-understood logic to interrelate them.

Ground 2: Obviousness over Nelson, Rothermel, and DeMoney - Claims 7 and 18 are obvious over Nelson and Rothermel in view of DeMoney.

• Prior Art Relied Upon: Nelson (Patent 5,719,786), Rothermel (IEEE Journal, Jan. 1996), and DeMoney (Patent 6,065,050).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Nelson and Rothermel to address the limitations of claims 7 and 18, which require calculating a data time parameter by multiplying an actual rendition period by an actual presentation rate and maintaining a sum of these products. Petitioner argued that the base combination of Nelson and Rothermel assumes a fixed presentation duration. DeMoney, however, addresses video delivery at different presentation rates (e.g., fast-forward) and explicitly teaches converting a timestamp value by multiplying it by a presentation rate scale factor to normalize it.
  • Motivation to Combine: A POSITA implementing the Nelson/Rothermel system would recognize its limitation in handling streams where presentation units have varying or non-standard durations (e.g., due to network jitter or variable-rate encoding). A POSITA would combine the teachings of DeMoney to solve this problem, as DeMoney provides a known method for scaling time values to account for actual presentation rates. This would be a simple arithmetic modification to improve the robustness and accuracy of the system.
  • Expectation of Success: The combination would yield predictable results. Applying DeMoney's scaling logic to the time calculations in the Nelson/Rothermel system is a straightforward application of a known technique to address a known problem, providing the added benefit of accounting for varying and actual durations of presentation units.

4. Key Claim Construction Positions

• "Tangibly Stored in a ... Computer-Readable Medium": Petitioner proposed that this term should be construed to mean "stored in a non-volatile storage element." This construction was argued to be supported by the specification’s examples of tangible embodiment, which list only non-volatile memory types (e.g., EPROM, magnetic disks, CD-ROMs). This construction is important for the obviousness argument that using well-known non-volatile storage like disk drives, as disclosed in Nelson, would be a routine design choice.
• "Temporal Sequence Presentation Data": Petitioner argued this term should be construed according to its lengthy and explicit definition provided in the ’400 patent specification. This definition includes numerous required characteristics, such as having associated "Data Time" and "Rendition Period" values. Petitioner relied on this detailed definition to map the disclosures of Nelson, particularly its use of "presentation units" with associated time and duration information, to the claim language.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) by asserting that institution would be proper and efficient. The petition was filed concurrently with another IPR petition against the same patent that relies on different prior art (a single reference, Omoigui) and addresses a different subset of claims. Petitioner contended that the parallel district court litigation was in its very early stages, with infringement contentions having only recently been served and no formal claim construction process initiated. This uncertainty regarding the Patent Owner’s positions and claim interpretations was presented as a reason why review by the Board would be efficient and valuable for streamlining the dispute.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-4, 7, 12-15, and 18 of the ’400 patent as unpatentable.