PTAB

IPR2022-00795

Google LLC v. Touchstream Technologies Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Controlling Content Presentation
  • Brief Description: The ’251 patent discloses a system and method where a personal computing device (e.g., a smartphone) controls the presentation of video content on a separate display device. The control is mediated by a server system that associates the personal device with the display device and translates universal commands from the personal device into specific commands for the particular media player running on the display device.

3. Grounds for Unpatentability

Ground 1: Claims 1-2 and 5-9 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 system for providing a "device-agnostic and source-agnostic entertainment experience" where an internet-enabled device (IED), like a smartphone, controls content on a display device through a server system (a Device-Based Control System or DBCS). Petitioner contended that Muthukumarasamy’s server receives universal commands (e.g., gesture-based controls like "pause/play") from the IED and translates them into device-specific commands for the media player. Furthermore, Muthukumarasamy’s system supports content from disparate sources (e.g., Netflix, VOD, internet media), which requires loading different media players (e.g., a "3rd Party Video Player specified" for a given video), thus teaching the claimed "plurality of different media players." Muthukumarasamy also discloses using a "Device Identifier" as part of configuration information stored on its server to associate the IED with the display device, allegedly teaching the claimed "synchronization code."

Ground 2: Claims 1-2 and 5-9 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 presented as an alternative, to the extent Muthukumarasamy is found not to expressly teach certain limitations, such as loading a plurality of media players for source-agnostic presentation. Petitioner argued Hayward explicitly remedies any potential deficiency by teaching the use of "embedded media player pages" to present internet content. Hayward describes how different media file formats ("REALAUDIO™, FLASH™, APPLE QUICKTIME™") require corresponding, appropriate media players. If a required player is not resident on the client device, Hayward teaches triggering a download of a "media player applet" to control and play the content. Combining Hayward’s embedded player page technique with Muthukumarasamy’s server-mediated control system would result in the claimed invention.
    • Motivation to Combine: Petitioner asserted a POSITA would combine the references to implement Muthukumarasamy’s stated goal of a "source-agnostic" system more effectively. Since Muthukumarasamy’s system involves web-based content and players like Flash, a POSITA would naturally look to well-known web-based techniques, such as the embedded media player pages taught by Hayward, for implementation details. The references were presented as compatible, as both disclose using players like Flash, and Hayward’s technique directly addresses the challenge of playing various media formats from different sources.
    • Expectation of Success: A POSITA would have had a high expectation of success because, as taught by Hayward, embedded media players were a well-known and popular technique by the priority date of the ’251 patent. The combination was framed as the predictable application of a known technique (Hayward's embedded players) to improve a known system (Muthukumarasamy's).

4. Arguments Regarding Discretionary Denial

  • §325(d) - Same or Substantially the Same Art: Petitioner argued against discretionary denial under §325(d), asserting that neither Muthukumarasamy nor Hayward was cited or considered during the original prosecution of the ’251 patent. Petitioner contended these references are materially different from the prosecution art because they teach the very limitations the applicant added to overcome prior art rejections, namely the separation of the personal device, server, and display, and the use of a synchronization code.
  • §314(a) - Parallel Litigation (Fintiv Factors): Petitioner argued against discretionary denial under Fintiv. It stated that while a parallel district court case exists, the trial date was approximately ten months away, a pending motion to transfer venue could significantly alter the schedule, and substantive discovery had not meaningfully begun. Petitioner also noted it could enter a stipulation to avoid presenting the same invalidity grounds in the district court, mitigating concerns of duplicative efforts and inconsistent rulings.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, and 5-9 of the ’251 patent as unpatentable.