PTAB

IPR2022-00793

Google LLC v. Touchstream Technologies Inc

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: System for Server-Mediated Control of Content Presentation
  • Brief Description: The ’528 patent discloses a system for controlling content playback on a presentation device (e.g., a TV) using a separate personal computing device (e.g., a smartphone). The system uses a server to mediate the interaction, establishing a connection via a synchronization code and translating generic commands from the personal device into player-specific programming code for the presentation device.

3. Grounds for Unpatentability

Ground 1: Claims 1-5, 8, 11-12, 14-15, and 27-28 are obvious over Muthukumarasamy.

  • Prior Art Relied Upon: Muthukumarasamy (Application # 2010/0241699).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Muthukumarasamy disclosed all elements of the challenged claims. Muthukumarasamy teaches a "device-agnostic and source-agnostic" system where an internet-enabled device (IED) controls content on a presentation device through a server system called a Device-Based Control System (DBCS). The DBCS receives generic commands from the IED and translates them into specific commands (e.g., Infrared or RF signals) for the particular media device. Muthukumarasamy’s system uses a “Device Identifier” as a synchronization code to create a “device map” on its server, associating the IED with the presentation device. It also discloses loading different third-party media players depending on the content source (e.g., internet URL), thereby teaching the loading of a particular media player to present content.
    • Motivation to Combine (for §103 grounds): Not applicable, as this is a single-reference ground. Petitioner contended that Muthukumarasamy alone renders the claims obvious.
    • Expectation of Success (for §103 grounds): Not applicable.

Ground 2: Claims 1-5, 8, 11-12, 14-15, and 27-28 are obvious over Muthukumarasamy in view of Hayward.

  • Prior Art Relied Upon: Muthukumarasamy (Application # 2010/0241699) and Hayward (Patent 8,918,812).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was asserted as an alternative, arguing that to the extent Muthukumarasamy does not explicitly teach certain features, Hayward supplies the missing elements. Specifically, Hayward details a system for providing a “source-agnostic” presentation of content using embedded media player pages. Hayward teaches that for various media file formats (e.g., RealVideo, Flash), a customer system provides a client with an embedded media player page that includes a reference to the specific functional media player object (e.g., a plug-in) required to play the selected content. This reference, such as a URL, identifies both the particular media player and its location. Combining this teaching with Muthukumarasamy’s server-mediated control system would result in the claimed invention.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Hayward’s well-known embedded media player technique with Muthukumarasamy’s system to better achieve Muthukumarasamy's stated goal of providing a source-agnostic entertainment experience. Since Muthukumarasamy already envisioned using web-based third-party players (like Flash), a POSITA would naturally look to a reference like Hayward, which explicitly details the implementation of such web-based players for different content types, to implement the system.
    • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success because embedding media players was a widely used and well-understood technique at the time of the invention. The references were compatible, as both addressed presenting internet content using appropriate players, making the integration straightforward using known technologies like JavaScript, which Hayward discloses.

4. Arguments Regarding Discretionary Denial

  • §325(d) - Same or Similar Art: Petitioner argued denial would be improper because the core prior art references, Muthukumarasamy and Hayward, were never cited or considered during the original prosecution of the ’528 patent. Further, Petitioner contended this new art is materially different from the prosecution art because it teaches key limitations, such as identifying a location of the media player, that the applicant previously used to overcome prior art rejections.
  • §314(a) - Fintiv Factors: Petitioner argued against discretionary denial under Fintiv, stating the factors weigh in favor of institution. Key arguments included: the parallel district court trial date was approximately ten months from the petition filing, with a pending motion to transfer venue that could cause further delays; merits discovery in the litigation was in its early stages with no expert discovery or dispositive motions filed; and the asserted grounds are strong and rely on art the examiner never considered.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-5, 8, 11-12, 14-15, 27, and 28 of the ’528 patent as unpatentable.