FACEBOOK, INC. (PATENT OWNER) et al.

Patent Trials and Appeals Board

Mar 2, 2022

2022000946 (P.T.A.B. Mar. 2, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 90/014,502 04/29/2020 7567575 FACEP176REX 6837 107519 7590 03/02/2022 VAN PELT, YI & JAMES LLP AND META PLATFORMS, INC. 10050 N. Foothill Blvd., Suite 200 Suite 200 Cupertino, CA 95014 EXAMINER ENGLAND, DAVID E ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 03/02/2022 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FACEBOOK, INC. Patent Owner and Appellant Appeal 2022-000946 Reexamination Control 90/014,502 Patent 7,567,575 B2 Technology Center 3900 Before JOHN A. JEFFERY, MIRIAM L. QUINN, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. §§ 134(b) and 306 from the Examiner’s rejection of claims 1, 3, 4, and 22 of U.S. Patent No. 7,567,575 B2 (“the ’575 patent”). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2022-000946 Reexamination Control 90/014,502 Patent 7,567,575 B2 2 TECHNOLOGY The application relates to “providing multimedia data to a mobile device including a mobile service platform for providing communication with a variety of protocols and devices.” ’575 patent, 2:39-42. ILLUSTRATIVE CLAIM Claim 1 is illustrative and reproduced below with certain limitations at issue emphasized: 1. A method for providing multimedia data from at least one controllable multimedia source to a mobile device comprising: providing a request path from the mobile device to a mobile service platform; receiving a request from the mobile device; obtaining a device profile from the mobile device; authenticating the identity of a user of the mobile device; determining a user profile corresponding to the user identity; authorizing control and access to the at least one multimedia source; obtaining a mobile device transmission profile; providing a control channel from the mobile service platform to at least one multimedia server; providing multimedia data delivery information to the at least one multimedia server; and providing multimedia data to the mobile device in response to the request via the at least one multimedia server. Appeal 2022-000946 Reexamination Control 90/014,502 Patent 7,567,575 B2 3 REFERENCES The Examiner relies on the following references as prior art: Name Title Date Akama US 2002/0058530 A1 May 16, 2002 Hedin US 2004/0073685 A1 Apr. 15, 2004 Jiang Incorporating proxy services into wide area cellular IP networks, 1 Wireless Commc’ns & Mob. Comput. 299-312 2001 Warabino Video Transcoding Proxy for 3Gwireless Mobile Internet Access, IEEE Commc’ns Magazine 66-71 Oct. 2000 REJECTIONS The Examiner makes the following rejections under 35 U.S.C. § 103: Claims References Final Act. 1, 3, 4, 22 Warabino, Akama, Jiang 11-23 1, 3, 4, 22 Hedin, Jiang 23-35 PRIOR PROCEEDINGS The ’575 patent has been involved in at least two prior proceedings involving the same third party requester of the present reexamination. In IPR2019-01599, BlackBerry Corp. challenged the same claims (1, 3, 4, and 22) as obvious over three different combinations of references: (1) Bastone1 and Jiang; (2) Bastone and Karaul2; and (3) Bastone, Jiang, and Karaul. However, institution was denied because Bastone did not qualify as prior art to the ’575 patent. BlackBerry Corp. v. Facebook, Inc., No. IPR2019-01599, 2020 WL 1490869, at *2-4 (PTAB Mar. 27, 2020). 1 WO 01/80558 (published Oct. 25, 2001). 2 US 7,085,260 B2 (issued Aug. 1, 2006). Appeal 2022-000946 Reexamination Control 90/014,502 Patent 7,567,575 B2 4 Appellant also sued BlackBerry in the Northern District of California. The district court construed “multimedia data delivery information” as “information relating to the delivery of multimedia data” and “mobile device transmission profile” as “a profile containing information about transmission characteristics of a mobile device, including the wireless protocol and the wireless channel environment of the mobile device.” Facebook, Inc. v. BlackBerry Ltd., No. 4:18-CV-05434-JSW, 2019 WL 6828359, at *9-12 (N.D. Cal. Dec. 13, 2019). The parties ultimately dismissed Facebook’s claims with prejudice. See Docket No. 145 (Jan. 15, 2021). ISSUE Did the Examiner err in finding the combinations of (A) Warabino, Akama, and Jiang or (B) Hedin and Jiang teach or suggest “authorizing control and access to the at least one multimedia source,” as recited in claim 1? ANALYSIS Warabino, Akama, and Jiang Claim 1 recites “authorizing control and access to the at least one multimedia source.” According to Appellant, “the claim requires a determination as to whether or not control and access to the specified multimedia source is authorized,” whereas “Warabino merely discloses a transcoder system that converts video streams from the Internet, without any process of authorization.” Appeal Br. 19. Appellant further argues that “[o]btaining information does not necessarily mean that there was control of the Appeal 2022-000946 Reexamination Control 90/014,502 Patent 7,567,575 B2 5 information source device.” Id. at 18. Appellant contends Akama suffers from the same deficiencies. Id. at 19. The Examiner determines that “if a user and their device can request and receive information from a multimedia device, then the user was authorized to request information from the device or the device would not have delivered such information.” Ans. 12. According to the Examiner, “[s]ince the user has the information delivered to their device, the user controlled the server by making the server perform the function it requested, i.e., deliver the content according to my profile.” Id. (emphasis added). Claim terms must be considered “not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Here, the ’575 patent discloses an embodiment “for a mobile device controlling a VCR through AOL Instant Messenger.” ’575 patent, 4:10-12. In Figure 5, “[a]t step 510, the mobile service platform 340 authorizes control and access to . . . the multimedia source if the user has permission to retrieve data and control the data source.” Id. at 13:23-25. Similarly, it discloses that “[a]t step 518, if control of the multimedia source is authorized and requested, the multimedia source provides a logical control path from the mobile device through the mobile service platform 340 to the multimedia source 360.” Id. at 13:54-57. This confirms the plain claim language (“authorizing control and access”) that “control” and “access” are separate limitations. Thus, authorizing “control” requires more than merely authorizing the retrieval or request for data (i.e., “access”). Although the Examiner has shown that Warabino’s user has access to the multimedia Appeal 2022-000946 Reexamination Control 90/014,502 Patent 7,567,575 B2 6 source, the Examiner has not shown sufficiently how Warabino teaches or suggests authorizing control to the multimedia source. The Examiner is correct that in claim 1, “there is nothing in the claim language that connects the authenticating step to the authorizing step.” Ans. 12. The Examiner then finds that “Warabino’s control module authorizes control and access to the multimedia source based on input from the mobile device” because “Warabino Fig. 2 shows . . . encoding parameters are transmitted from the control module to the transcoder in order to control the transcoder.” Final Act. 16-17 (citing Warabino 68). The Examiner further finds that “Warabino’s control module generates encoding parameters that authorize the transcoder to allow control and access to the multimedia source.” Id. at 16 (citing Warabino 68). Claim 1 expressly recites “authorizing control and access to the at least one multimedia source.” For Warabino, the Examiner has identified “the web server” as the claimed multimedia source. Final Act. 11. As can be seen in Figure 2 of Warabino, the encoding parameters are only in the video proxy, not the web server. Thus, even if data (e.g., transmission profile, device profile, and user profile) from the client (or in Figure 2 of Warabino, the client proxy rather than the video client itself) did teach or suggest authorizing control of the video proxy (including the control module and transcoder), the Examiner still has not shown how Warabino teaches or suggests authorizing control of the web server, which is what the Examiner has identified as the claimed “multimedia source.” Accordingly, we do not sustain this rejection of claims 1, 3, 4, and 22. Appeal 2022-000946 Reexamination Control 90/014,502 Patent 7,567,575 B2 7 Hedin and Jiang The Examiner’s determination for Hedin and Jiang suffers from a similar deficiency for “authorizing control and access to the at least one multimedia source.” Ans. 16-18; Appeal Br. 22-23; Reply Br. 6. To the extent the Examiner further relies on Hedin’s disclosure of an optional “exchange of additional signaling information . . . between the involved Subscriber terminals, the proxy apparatus 10, and the gateway 40, e.g., for an additional menu control of the communication sessions” (Hedin ¶¶ 90, 73; Ans. 17), we agree with Appellant that the Examiner fails to explain sufficiently why controlling a communication session teaches or suggests the claimed control of the multimedia source. Appeal Br. 22-23; Reply Br. 6. The Examiner has identified Hedin’s “subscriber 14 at a terminal” as the claimed “multimedia source” and “subscriber 12, using a mobile phone or PDA” as the claimed “mobile device.” Final Act. 23. The Examiner has not explained sufficiently how Warabino teaches or suggests authorizing control of subscriber 14 rather than, for example, proxy apparatus 10. Accordingly, we do not sustain this rejection of claims 1, 3, 4, and 22. OUTCOME The following table summarizes the outcome of each rejection: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 4, 22 103 Warabino, Akama, Jiang 1, 3, 4, 22 1, 3, 4, 22 103 Hedin, Jiang 1, 3, 4, 22 Overall Outcome 1, 3, 4, 22 REVERSED Appeal 2022-000946 Reexamination Control 90/014,502 Patent 7,567,575 B2 8 APJ Initials: MJE JAJ MLQ Paralegal Initials: lv