Google LLC v. Touchstream Technologies Inc

1. Case Identification

• Case #: IPR2022-00794
• Patent #: 8,904,289
• Filed: April 8, 2022
• Petitioner(s): Google LLC
• Patent Owner(s): Touchstream Technologies, Inc.
• Challenged Claims: 1-2 and 6-8

2. Patent Overview

• Title: Controlling Content Presentation
• Brief Description: The ’289 patent discloses a system for controlling the presentation of media content on a content presentation device (e.g., a television) using a separate personal computing device (e.g., a smartphone). A server system mediates communication between the devices to manage playback control commands for a plurality of different media players.

3. Grounds for Unpatentability

Ground 1: Claims 1-2 and 6-8 are obvious over Muthukumarasamy

• Prior Art Relied Upon: Muthukumarasamy (Application # 2010/0241699).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Muthukumarasamy discloses all elements of the challenged claims. It teaches a "device-agnostic and source-agnostic" system where a user controls media on a display device using an internet-enabled device (IED), mediated by a Device-Based Control System (DBCS) acting as the claimed server system. Muthukumarasamy’s system receives commands from the IED (the personal computing device) and translates them for the specific display device. Petitioner asserted that Muthukumarasamy discloses loading one of a plurality of different media players, as its system aggregates content from disparate sources (e.g., Netflix, DVR) and its browser-based component (RCIBS) loads specified third-party video players to present internet content. The system also sends action control commands (e.g., pause, play) from the IED that are independent of the media player, as the DBCS server translates these generic commands into device-specific protocols.
  • Motivation to Combine (for §103 grounds): Not applicable (single reference ground).
  • Expectation of Success (for §103 grounds): Not applicable (single reference ground).

Ground 2: Claims 1-2 and 6-8 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: Petitioner argued that to the extent Muthukumarasamy is found not to teach certain limitations, such as loading various media players for source-agnostic presentation, Hayward explicitly supplies the missing elements. Hayward teaches a system for presenting internet content from various sources using "embedded media player pages." These pages reference and load the appropriate media player (e.g., RealPlayer, Flash) needed to play a selected media file, regardless of its source, thereby achieving source-agnostic presentation. Hayward further discloses that these embedded players include user controls (play, pause, etc.), providing the specific action control command functionality.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Hayward’s well-known embedded media player technology with Muthukumarasamy's system to achieve Muthukumarasamy's stated goal of providing a source-agnostic content presentation experience. Muthukumarasamy already envisioned using web-based players (like Flash), which Hayward also discloses, making the technologies compatible and the combination straightforward. Hayward's teachings provided a known solution to a problem addressed by Muthukumarasamy.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success because embedded media players were a widely known and commonly used technology at the time of the invention. The combination amounted to the "mere application of [a] known technique" to improve a similar, existing system.

4. Arguments Regarding Discretionary Denial

• §325(d) Arguments: Petitioner argued denial under 35 U.S.C. §325(d) would be improper because the asserted prior art, Muthukumarasamy and Hayward, was not cited or considered during the original prosecution. Petitioner contended these references are materially different from and not cumulative of the art applied by the Examiner (Almas), as they teach the specific limitations the applicant added to overcome the Examiner’s rejections.
• §314(a) Fintiv Arguments: Petitioner argued against discretionary denial under Fintiv, stating that:
  • The district court trial date was approximately ten months from the petition filing date, and a pending motion to transfer venue could result in further delay.
  • Investment in the parallel district court proceeding was minimal, as substantive merits discovery had not yet begun.
  • The asserted grounds are strong, and the underlying prior art was never considered by the USPTO, weighing in favor of institution to correct a potential error.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-2 and 6-8 of Patent 8,904,289 as unpatentable.