Google LLC v. WAG Acquisition LLC

1. Case Identification

• Case #: IPR2022-01412
• Patent #: 9,742,824
• Filed: August 12, 2022
• Petitioner(s): Google LLC
• Patent Owner(s): WAG Acquisition, L.L.C.
• Challenged Claims: 1-12

2. Patent Overview

• Title: STREAMING MEDIA DELIVERY SYSTEM
• Brief Description: The ’824 patent describes a client-pull method for distributing pre-recorded, digitally encoded media over the internet. A server system supplies media as discrete "media data elements," each having a serial identifier, which are stored in a data structure and sent to user systems only upon receiving specific requests that identify the desired elements.

3. Grounds for Unpatentability

Ground 1: Obviousness over Carmel - Claims 1-12 are obvious over Carmel

• Prior Art Relied Upon: Carmel (Patent 6,389,473).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Carmel, which discloses a system for real-time multimedia broadcasting, teaches every limitation of the challenged claims. Carmel's system generates a stream of media data that is broken into "data slices" (media data elements), each assigned a "slice index" (serial identifier indicating a time sequence). These slices are stored on a network server (a data structure under the control of the server system). Client computers connect to the server, read an index file, and request specific slices by their index (receiving requests specifying serial identifiers). Responsive to these client-pull requests, the server sends the corresponding slices. Carmel also teaches that the data rate for transmission should be faster than the data generation rate (playback rate) and that standard internet protocols like TCP would be used, which inherently send data as fast as the connection allows. Petitioner asserted Carmel’s client-centric selection process meets the limitation that data elements are selected without the server maintaining a record of the last element sent. For system claims 5 and 9, Petitioner argued they recite the same functionality as method claim 1, and Carmel's disclosure of servers and computers running software renders these claims obvious.

Ground 2: Obviousness over Carmel in view of Ravi - Claims 1-12 are obvious over Carmel in view of Ravi

• Prior Art Relied Upon: Carmel (Patent 6,389,473) and Ravi (Patent 6,292,834).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground incorporated the analysis from Ground 1 and added Ravi to further support the limitation that "each sending is at a transmission rate as fast as the data connection between the server system and each requesting user system allow." To the extent Carmel did not render this limitation obvious, Petitioner contended Ravi explicitly discloses a method for dynamically matching the transmission rate of a media stream to the available bandwidth capacity of the network connection. Ravi's server "dynamically selects transmission rates in order to better match the varying bandwidth capacity," which a person of ordinary skill in the art (POSITA) would understand means sending data as fast as the connection allows.
  • Motivation to Combine: A POSITA would combine Carmel with Ravi to solve the well-known problem of streaming media reliably over the internet, which has fluctuating bandwidth. Because both references are analogous arts addressing media streaming, a POSITA would be motivated to incorporate Ravi's efficient and reliable method of dynamic rate matching into Carmel's system to ensure optimal streaming performance and media playback.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in the combination because the systems are substantially similar and implementing Ravi’s teachings would involve only routine adaptations to Carmel’s client computers.

Ground 3: Obviousness over Carmel in view of Narayan - Claims 1-12 are obvious over Carmel in view of Narayan

• Prior Art Relied Upon: Carmel (Patent 6,389,473) and Narayan (Patent 6,008,853).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground incorporated the analysis from Ground 1 and added Narayan to further support the preamble limitation that the pre-recorded program is "stored in digitally encoded form." While Petitioner argued Carmel's disclosure of storing a video sequence on disk implies digital encoding, Narayan was cited as explicitly teaching this concept. Narayan discloses a digital camcorder that generates a stream of video image data, compresses it into a digital format (SD format), and transmits it to a computer.
  • Motivation to Combine: A POSITA seeking to implement Carmel's system, which contemplates using a video camera but provides no detail, would have been motivated to look to Narayan's detailed disclosure of a digital camera. Narayan provides a solution for efficiently generating and transferring compressed, digitally encoded media data from a source to a computer, which would improve Carmel's system by offloading the encoding task from the main computer to the camera itself.
  • Expectation of Success: A POSITA would expect success because Narayan's digital camera system is well-suited for and fits seamlessly into Carmel's media streaming architecture, providing an efficient source for the pre-recorded, digitally encoded program.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate. Under the General Plastic factors, this is Petitioner's first challenge to the ’824 patent, and it is not a party or privy to any other PTAB proceedings involving the patent. Under the Fintiv factors for parallel litigation, Petitioner asserted that the district court case is at a very early stage, with no claim construction hearing or expert discovery yet to occur, and that the petition presents compelling evidence of unpatentability. Petitioner also stated its willingness to stipulate not to pursue the same grounds in district court. Finally, denial under §325(d) was argued to be improper because, although the primary references were listed in an Information Disclosure Statement, they were never substantively discussed or relied upon by the examiner during prosecution.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-12 of the ’824 patent as unpatentable.