PTAB

IPR2022-01411

Google LLC v. WAG Acquisition LLC

Log In
Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Streaming Media Delivery System
  • Brief Description: The ’594 patent describes a method for a media player to stream content over the Internet. The method involves the player sending requests for serially identified media data elements, receiving those elements at a data rate faster than the playback rate, storing them in a buffer, and simultaneously playing content while automatically requesting subsequent elements to maintain a predetermined number of elements in the buffer.

3. Grounds for Unpatentability

Ground 1: Obviousness over Hill - Claims 1-17 are obvious over Hill.

  • Prior Art Relied Upon: Hill (Patent 6,005,600).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Hill, which discloses a high-performance player for time-based media, teaches all limitations of the challenged claims. Hill’s system ("workstation 104") requests media "frames" (media data elements) from a source over a network, such as the Internet. The frames are serially identified by global or local frame numbers. The system receives data at a rate more rapid than playback (e.g., data rate of 48 frames/sec vs. playback of 24 frames/sec), stores the data in a buffer, and plays it in series. Critically, Petitioner asserted that Hill's system automatically requests subsequent frames as frames are played to maintain a "request threshold" (a predetermined number of elements) in its buffer, satisfying the core limitation of claim 1.
    • Key Aspects: Petitioner contended that other limitations were also taught or rendered obvious by Hill. For example, maintaining a record of the last received frame (claim 2) is an inherent function of Hill’s buffer manager, which must track received frames to request missing ones. Further, using a reliable protocol like TCP (claims 4-5) would have been an obvious implementation choice, as TCP was the most common protocol for reliable Internet data transfer at the time.

Grounds 2 & 3: Obviousness over Hill in view of Aharoni or Ravi - Claims 1-17 are obvious.

  • Prior Art Relied Upon: Hill (Patent 6,005,600), Aharoni (Patent 6,014,694), and Ravi (Patent 6,292,834).
  • Core Argument for this Ground:
    • Prior Art Mapping: These grounds incorporated the analysis of Hill from Ground 1 and added Aharoni or Ravi to expressly teach limitations related to data transmission rates and protocols. Both Aharoni (System for Adaptive Video/Audio Transport) and Ravi (Dynamic Bandwidth Selection) explicitly teach using TCP for reliable data transmission over a network. They also disclose methods for sending data "as fast as the data connection...allows" by dynamically matching the transmission rate to the network's available bandwidth capacity, strengthening the argument for this limitation.
    • Motivation to Combine: A POSITA would combine Hill's playback system with Aharoni's or Ravi's advanced transport methods to improve performance on networks with varying bandwidth. Hill’s system is designed to adapt to such conditions, and incorporating known techniques for reliable transport (TCP) and dynamic rate adjustment would be a predictable solution to ensure smooth playback and prevent buffering.
    • Expectation of Success: The references are analogous, all addressing media streaming over IP networks. Combining their respective features would involve routine adaptation with a high expectation of success.

Ground 4: Obviousness over Carmel in view of Hill - Claims 1-17 are obvious.

  • Prior Art Relied Upon: Carmel (Patent 6,389,473) and Hill (Patent 6,005,600).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Carmel, which discloses "Network Media Streaming," teaches most claim limitations, including a client requesting serially indexed "slices" of media from a server over the Internet. To strengthen the argument for automatically requesting subsequent data to maintain a buffer during playback (claim 1[e]), Petitioner combined Carmel with Hill. Hill's detailed disclosure of using a "request threshold" and a client-side prefetching technique to maintain a set number of frames in a buffer was presented as a known technique to improve the system taught by Carmel.
    • Motivation to Combine: A POSITA would be motivated to improve Carmel's streaming system with Hill's more advanced client-side buffering and prefetching technique. This combination would predictably prevent or reduce playback delays caused by bandwidth fluctuations, a well-known problem that both patents sought to address.
    • Expectation of Success: Because both patents describe analogous streaming systems, incorporating Hill’s well-defined buffering logic into Carmel’s client-pull architecture would have been a straightforward and predictable improvement.

  • Additional Grounds: Petitioner asserted further obviousness challenges combining Carmel with Galensky (Ground 5), and three-reference combinations including Carmel, Hill, and Ravi (Ground 6) and Carmel, Galensky, and Ravi (Ground 7), all based on similar theories of improving streaming reliability and buffering.

4. Key Claim Construction Positions

  • Petitioner argued that the claim term "as required to maintain about a predetermined number of media data elements" is indefinite. The term "about" was alleged to lack sufficient guidance in the claims or specification for a POSITA to determine its numerical range. Despite this indefiniteness argument, Petitioner asserted that Hill's "request threshold," described as the "optimum number of future frames stored in the buffer," renders the limitation obvious even if it were found definite.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under §325(d), stating that although prior art references Carmel and Ravi were included in an Information Disclosure Statement, the examiner never discussed or otherwise acknowledged them during prosecution.
  • Regarding co-pending litigation, Petitioner contended that the Fintiv factors weighed against denial. It highlighted the early stage of the district court case (no expert discovery had begun and the claim construction hearing had not yet occurred), the compelling evidence of unpatentability, and its willingness to stipulate not to pursue the same invalidity grounds in court if IPR is instituted.
  • Petitioner also argued against denial under General Plastic, asserting that as a first-time challenger to the ’594 patent, it should not be penalized for a separate IPR filed by another party, especially since this petition presents different prior art combinations and arguments.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-17 of Patent 9,729,594 as unpatentable.