Apple Inc.v.Aylus Networks, Inc.

Patent Trial and Appeal Board

Apr 23, 2015

13232432 (P.T.A.B. Apr. 23, 2015)

Trials@uspto.gov Paper 10
571-272-7822 Date: April 23, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE, INC.,
Petitioner,

v.

AYLUS NETWORKS, INC.,
Patent Owner.

Case IPR2014-01566
Patent RE44,412 E

Before BRIAN J. MCNAMARA, PATRICK R. SCANLON, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION
Denying Inter Partes Review
37 C.F.R. § 42.108

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Patent RE44,412 E

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I. INTRODUCTION
Petitioner, Apple, Inc., filed a Petition for an inter partes review of claims 1,
2, 5, 8, 9, 15, 20, 21, 27, 29, and 33 of U.S. Patent No. RE44,412 E (“the
’412 patent”). Paper 1, “Pet.” Patent Owner, Aylus Networks, Inc., filed a
Preliminary Response pursuant to 35 U.S.C. § 313. Paper 8, “Prelim. Resp.”
We have authority to determine whether to institute an inter partes review.
35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Upon consideration of the Petition and
the Preliminary Response, and for the reasons explained below, we deny the
Petition and do not institute an inter partes review.
A. Related Matters
Patent Owner has asserted the ’412 patent against Petitioner in Aylus
Networks, Inc. v. Apple, Inc., Case No. 3:13-cv-4700 (N.D. Cal.) (the “related
lawsuit”). Pet. 1; Paper 4, 3. Also, the ’412 patent is the subject of another
petition for an inter partes review filed by Petitioner. See IPR2014-01565.
B. The Asserted Art
The term “UPnP” refers to Universal Plug and Play. See, e.g., Ex. 1101,
6:37–38; Pet. 3. Petitioner asserts, as prior art, multiple exhibits it collectively
refers to as “UPnP Design.” More specifically, Petitioner uses the term “UPnP
Design” to refer to a book titled UPnP Design by Example: A Software
Developer’s Guide to Universal Plug and Play (“UPnP Design book,” Ex.1109)
along with a CD-ROM accompanying the book (image of CD-ROM provided as
Exhibit 1110), which contains UPnP-related files that have been printed out and
submitted as Exhibits 1111–1118.
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Petitioner also relies on U.S. Patent Application Publication No.
2006/0245403 A1, published November 2, 2006 (“Kumar,” Ex. 1120), U.S. Patent
Application Publication No. 2006/0184851 A1, published August 17, 2006
(“Froidcoeur,” Ex. 1121), U.S. Patent Application Publication No. 2006/
0280190 A1, published December 14, 2006 (“Chen,” Ex. 1122), and a declaration
by Dr. Ketan Mayer-Patel (“Mayer-Patel Decl.,” Ex. 1123).
C. The Asserted Grounds
Petitioner asserts the following grounds of unpatentability:
claims 1, 2, 5, 8, 9, 15, 20, 21, 27, 29, and 33 as anticipated by UPnP
Design;
claims 1, 2, 5, 8, 9, 15, 20, 21, 27, 29, and 33 as obvious over UPnP Design;
claims 1, 2, 5, 8, 9, 15, 20, 21, 27, 29, and 33 as obvious over UPnP Design
in view of Kumar;
claims 1, 2, 5, 8, 9, 15, 20, 21, 27, 29, and 33 as obvious over UPnP Design
in view of Froidcoeur; and
claims 1, 2, 5, 8, 9, 15, 20, 21, 27, 29, and 33 as obvious over UPnP Design
in view of Chen.
D. The ’412 Patent
The ’412 patent relates to a system “whereby a user of a computer or mobile
device can direct and control video signals from servers located on the internet to
be rendered on a display device (e.g., a television).” Ex. 1102, 3:22–24.
According to Patent Owner, its patent “covers, inter alia, a system computer or
mobile device that can direct and control video signals from a media server located
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on the internet to be rendered on a display device, such as a television, that is
separate from the computer or mobile device.” Id. at 4:4–6. Figure 11 of the ’412
patent is reproduced below:

Figure 11 shows a UPnP
1
AV architecture that includes media server 1102
(“MS”), media renderer 1104 (“MR”), and control point 1016 (“CP”). Ex. 1101,
10:42–43, 16:36–39. The MS could be a video player, the MR could be an LCD
display, and the CP could be an (advanced) “remote control unit.” Id. at 16:59–61.
A UPnP device added to a network will advertise its presence on the
network. Ex. 1101, 21:23–25. The UPnP architecture allows the CP to discover
the existence of the MS and MR on the network. Id. at 21:25–43.
The CP queries the MS for a directory of content and presents that content to

1
The ’412 patent states that “Universal Plug and Play (UPnP)” was the “industry
standard” for automated network and service discovery mechanism. Ex. 1101,
10:41–43.
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a user on a display (MR), allowing the user to select content for rendering.
Ex. 1101, 16:61–63. Upon such selection of content, the CP negotiates content
delivery with the MS and instructs the MS to deliver content to the MR. Id. at
13:64–66. The CP also negotiates media rendering with the MR, instructing the
MR to start expecting content from the MS and to present such. Id. at 14:2–5. The
MS then delivers media content to the MR. Id. at Fig. 11. Direct communication
between the MS and the MR is “out of band” because it employs a protocol other
than UPnP, such as RTSP/RTP. Id. at 16:55–58.
The ’412 patent also describes an extension of the UPnP architecture as
shown in Figure 12, reproduced below.

Figure 12 shows the CP located in a wide area network via “Service
Provider” and control point proxy 1202 (“CPP”) within “User Premises.”
Ex. 1101, 17:7–12. The CP communicates with the MS, the CPP communicates
with the MR, and the CP and CPP communicate with each other. Id. at 17:12–17,
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20–24, 45–47. The CPP resides in a “handset” or User Entity (“UE”), not shown
in Figure 12. Id. at 17:52. The handset may have VCR-type controls for
controlling the presentation of the media content rendered on the MR. Id. at 5:55–
62, 17:35–37.
Moving the control point into the wide area network enables a user to
connect to services provided by media servers that are not located in the home. Id.
at 17:25–27.
E. The Challenged Claims
Petitioner challenges claims 1, 2, 5, 8, 9, 15, 20, 21, 27, 29, and 33 of the
’412 patent. Pet. 2–3. Claims 1, 20, and 27 are independent. Independent claim 1
is illustrative and reproduced below with italics preserved to indicate matter added
during reissue:
1. A method of controlling and delivering media content
from a media server (MS) to a media renderer (MR) utilizing a wide
area network for control, comprising the acts of:
provisioning a serving node in the wide area network with
control point (CP) logic that includes logic to negotiate media content
delivery with at least one of the MS and the MR, wherein the CP
logic, MS, and MR resides outside of a user endpoint (UE) and the CP
logic resides in the signaling domain and serves as a first proxy;
provisioning the UE of the wide area network with control
point proxy (CPP) logic that includes (i) logic to negotiate media
content delivery with at least one of the MS and the MR, (ii) logic to
cooperate with CP logic to negotiate media content delivery between
the MS and the MR, and (iii) video cassette recorder (VCR) controls
to control a presentation of content provided by the MS and rendered
by the MR, wherein the CPP logic resides in the UE and serves as a
second proxy;
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in response to a media content delivery request, determining a
network context of the UE and a network connectivity of the MS and
MR;
invoking the CPP logic and the CP logic to cooperatively
negotiate media content delivery between the MS and the MR if one
of the MS and MR are not in communication with the UE via a local
wireless network;
and once media content delivery is negotiated, controlling a
presentation of delivery via the VCR controls on the UE.
II. ANALYSIS
A. Anticipation by UPnP Design
Petitioner asserts that “UPnP Design anticipates claims 1-2, 5, 8-9, 15, 20-
21, 27, 29, and 33.” Pet. 16. But, UPnP Design, which consists of Exhibits 1109
through 1118, cannot anticipate anything because “it” does not constitute a single
reference. See, e.g., Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d
1340, 1351, (Fed. Cir. 2008) (holding that, “in order to anticipate a claim, ‘a single
prior art reference must expressly or inherently disclose each claim limitation’”)
(quoting Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir.
2008)). Although the asserted references all relate to UPnP architecture and are
grouped together for consumption by a person of ordinary skill in the art, they
remain separate references. In fact, they were not even published simultaneously.
Pet. 15–16 (listing five different publication dates for Exhibits 1109–1118).
In view of the above, Petitioner has not demonstrated there is a reasonable
likelihood it would prevail in showing any of the challenged claims is anticipated
by UPnP Design.
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B. Obviousness over UPnP Design
Petitioner asserts that claims 1, 2, 5, 8, 9, 15, 20, 21, 27, 29, and 33 would
have been obvious over UPnP Design. Pet. 27–28. Petitioner’s assertion in the
instant Petition is based on the same or substantially the same prior art arguments
presented in another petition. See IPR2014-01565, Paper 1, at 13–31 (asserting
that claims 1–33 of the ’412 patent would have been obvious over UPnP Design).
2

“In determining whether to institute or order a proceeding . . . , the
Director
[3]
may take into account whether, and reject the petition or request
because, the same or substantially the same prior art or arguments previously were
presented to the Office.” 35 U.S.C. § 325(d). Pursuant to § 325(d), we deny
institution on the instant ground because the same or substantially the same
arguments have already been presented in IPR2014-01565.
C. Other Grounds
Petitioner asserts that the subject matter of claims 1, 2, 5, 8, 9, 15, 20, 21, 27,
29, and 33 would have been obvious over UPnP Design in view of Kumar
(Pet. 28–37), UPnP Design in view of Froidcoeur (Pet. 38–49), and UPnP Design
in view of Chen (Pet. 50–58). Each of these grounds is deficient, under 37 C.F.R.
§ 42.104(b)(2), for failing to show how the challenged claims are unpatentable
under 35 U.S.C. § 103.

2
In IPR2014-01565, we instituted trial on this ground with respect to claims 1, 3,
5–20, 22, 24–33. IPR2014-01565, Paper 10, 19–20.
3
The Director has delegated instituting authority to the Board. 37 C.F.R.
§§ 42.4(a), 42.108(a), 42.108(b).
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With respect to obviousness over UPnP Design and Kumar, Petitioner states:
To the extent that UPnP Design does not disclose any of the
limitations of claims 1-2, 5, 8-9, 15, 20-21, 27, 29, and 33 for the
reasons discussed above in Section III.H,
[4]
UPnP Design and Kumar
render such limitations obvious for the reasons discussed above in
Section III.H and the additional reasons discussed below.
Pet. 28; see also Pet. 38 (similar statement with respect to obviousness over UPnP
Design and Froidcoeur), Pet. 50 (similar statement with respect to obviousness
over UPnP Design and Chen).
The Petition lacks a discussion of how the cited teachings from UPnP
Design and Kumar would have been combined to render the challenged claims
obvious. Instead, the Petition refers back to a claim chart mapping teachings only
of UPnP Design to the challenged claims (i.e., Section III.H.) and provides a
second claim chart mapping teachings only of Kumar to the challenged claims.
Pet. 30–37. It is not clear what combinations of teachings are being asserted
against the challenged claims. For this reason, Petitioner has not demonstrated a
reasonable likelihood that it would prevail in showing that any of the challenged
claims would have been obvious over UPnP Design in view of Kumar.
Petitioner’s additional grounds of obviousness, over UPnP Design in view of
Froidcoeur and in view of Chen, are deficient for the same reasons. See Pet. 38–
58. Thus, Petitioner has not demonstrated a reasonable likelihood that it would

4
Section III.H. is the section of the Petition regarding anticipation by UPnP
Design.
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prevail in showing that any of the challenged claims would have been obvious over
UPnP Design in view of Froidcoeur or Chen.
III. ORDER
Accordingly, it is
ORDERED that the Petition is denied and no trial is instituted.

Petitioner:

James Heintz
Apple-aylus-ipr@dlapiper.com

Robert Buergi
Robert.buergi@dlapiper.com

Patent Owner:

Bruce Zisser
brucezisser@quinnemanuel.com

Joseph Richetti
Joe.richetti@bryancave.com