PTAB

IPR2024-00710

Aylo Freesites Ltd v. WellcomeMat LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method for Handling Video Cue Points
  • Brief Description: The ’286 patent describes a client-server system for adding, editing, and using "cue points" (defined as indexed time positions or tags) in online videos. The system allows remote users to interact with a server-side video editing environment to manage these cue points and navigate video content.

3. Grounds for Unpatentability

Ground 1: Claims 13-15 and 18-20 are Anticipated by Gupta

  • Prior Art Relied Upon: Gupta (Application # 2005/0081159).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Gupta disclosed every limitation of the challenged claims. Gupta described a networked client-server system where a client can create, view, and edit "annotations" corresponding to temporal locations in media content stored on a server. Petitioner contended these "annotations" are the same as the "cue points" of the ’286 patent. Gupta's system allegedly disclosed a server-side editing environment, receiving video and annotation information, receiving editing commands from a remote client over a public network, modifying the annotation information on the server, and streaming a portion of the video in response to a user selecting an annotation. For dependent claims, Gupta was said to teach an "edit mode" (claim 14), receiving an "edit mode entry signal" (claim 15), and using access controls for authentication (claims 18-19).

Ground 2: Claims 13-15 and 18-20 are Obvious over Kim

  • Prior Art Relied Upon: Kim (Application # 2005/0210145) and Sull (Application # 2002/0069218), which Kim incorporated by reference.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Kim, alone or in combination with Sull's incorporated teachings, rendered the claims obvious. Kim disclosed a client-server system for creating and sharing "multimedia bookmarks" ("VMark") for audiovisual files over the internet. These bookmarks, which store a relative time or byte position, were argued to be equivalent to the claimed "cue points." The system included a server-side environment (web and media hosts) where an administrator could edit bookmark information. Petitioner contended that to the extent Kim did not explicitly disclose receiving an editing command from a remote client terminal, it would have been obvious for a person of ordinary skill in the art (POSITA) to place this functionality on the client, consistent with the described client-server architecture and common bulletin board system practices of the time.
    • Motivation to Combine: Not applicable for a single-reference ground, but Petitioner argued a POSITA would find it obvious to implement administrator editing functions on a client terminal for flexibility, as was common practice.
    • Expectation of Success: Petitioner argued a POSITA would have a high expectation of success, as implementing client-side editing commands in Kim's existing client-server architecture was a simple and straightforward programming matter.

Ground 3: Claims 13-15 and 18-20 are Obvious over Vasilevsky and Logan

  • Prior Art Relied Upon: Vasilevsky (WO 2003/067594) and Logan (Application # 2003/0093790).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Vasilevsky disclosed most claim limitations through its centralized Digital Video Recording (DVR) system. Vasilevsky's system used a centralized media server to allow users on a Home Area Network (HAN) to establish, edit, and access "bookmarks" in recorded television programs. Petitioner contended these elements met the limitations for a server-side video editing environment for handling cue points. To the extent Vasilevsky's HAN was not explicitly a "public network," Petitioner asserted Logan supplied this element. Logan described a television program bookmarking system operating over a public network like the Internet.
    • Motivation to Combine: A POSITA would combine Vasilevsky and Logan to gain the benefits of a public network. Logan taught the desirability of using a public network to allow more users to contribute to the system. Applying this to Vasilevsky's system would beneficially allow a broader base of users to add, modify, and playback video bookmarks, increasing the system's utility and value.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because the combination merely involved substituting one known network type (Vasilevsky's private HAN) with another (Logan's public Internet) to achieve the predictable result of wider accessibility. This modification would not negatively affect the core bookmarking functionality of Vasilevsky's system.

  • Additional Grounds: Petitioner asserted additional challenges, including that claims 13-15 and 18-20 are anticipated by Fegan (Application # 2005/0144305) and are obvious over the combination of Kim and Gupta.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv is inappropriate. It asserted that the petition presents a compelling unpatentability challenge with a high likelihood of success. Furthermore, Petitioner noted that the jury selection for the parallel district court litigation is set for July 7, 2025, a date far enough in the future that it should not be a dominating factor in the analysis, especially in view of the Director's guidance on Fintiv.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 13-15 and 18-20 of the ’286 patent as unpatentable.