FriendFinder Networks Inc.v.WAG Acquisition, LLC

Patent Trial and Appeal Board

Oct 19, 2015

13374942 (P.T.A.B. Oct. 19, 2015)

Trials@uspto.gov
571-272-7822 
Paper 8
Date Entered: October 19, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FRIENDFINDER NETWORKS INC., STREAMRAY INC., WMM, LLC,
WMM HOLDINGS, LLC, MULTI MEDIA, LLC, AND
DUODECAD IT SERVICES LUXEMBOURG S.À.R.L.,
Petitioner,

v.

WAG ACQUISITION, LLC,
Patent Owner.
____________

Case IPR2015-01033
Patent 8,327,011
____________

Before GLENN J. PERRY, TREVOR M. JEFFERSON, and
BRIAN J. McNAMARA, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

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

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BACKGROUND
Friendfinder Networks Inc., Streamray Inc., WMM, LLC,WMM
HOLDINGS, LLC, Multi Media, LLC, and Duodecad IT Services
Luxembourg S.À.R.L (collectively, “Petitioner”) filed a petition, Paper 1
(“Pet.”), to institute an inter partes review of claims 1–4 (the “challenged
claims”) of U.S. Patent No. 8,327,011 B2 (“the ’011 Patent”). 35 U.S.C.
§ 311. WAG Acquisition (“Patent Owner”) timely filed a Preliminary
Response, Paper 6 (“Prelim. Resp.”) contending that the petition should be
denied as to all challenged claims. We have jurisdiction under 37 C.F.R.
§ 42.4(a) and 35 U.S.C. § 314, which provides that an inter partes review
may not be instituted unless the information presented in the Petition “shows
that there is a reasonable likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the petition.”
For the reasons described below, we decline to institute inter partes
review.
REAL PARTIES IN INTEREST
The Petition identifies the following real parties in interest:
FriendFinder Networks Inc., StreamRay Inc., WMM, LLC, WMM Holdings,
LLC, Multi Media, LLC, Various, Inc., Interactive Network, Inc., DataTech
Global, LLC, DataTech Systems, LLC, Docler USA, LLC, Duodecad IT
Services Luxembourg S.à r.l., Docler Holding S.à r.l., Gattyàn Family
Irrevocable Trust (including Mr. György Gattyàn in his capacity as Grantor
and Investment Advisor), Duodecad IT Services Hungary KFT, and Gattyàn
Group S.à r.l.

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PENDING LITIGATION
The Petition identifies the following litigation in which the ’011
Patent and related U.S. Patent No. 8,122,141 (“the ’141 Patent”), related
U.S. Patent No. 8,364,839 (“the ’839 Patent”) and related U.S. Patent No.
8,185,611 (“the ’611 Patent”) have been asserted: WAG Acquisition, LLC v.
Sobonito Investments, Ltd., No. 2:14-cv-1661 (D.N.J.) (’141 Patent; ‘011
Patent; ’611 Patent; and ’839 Patent); WAG Acquisition, LLC v. Multi
Media, LLC, No. 2:14-cv-2340 (D.N.J.) (’141 Patent; and ’011 Patent);
WAG Acquisition, LLC v. Data Conversions, Inc., No. 2:14-cv-2345 (D.N.J.)
(’141 Patent; and ’011 Patent); WAG Acquisition, LLC v. Flying Crocodile,
Inc., 2:14-cv-2674 (D.N.J.) (’141 Patent; ’011 Patent; ’611 Patent; and ’839
Patent); WAG Acquisition, LLC v. Gattyàn Group S.à r.l, No. 2:14- cv-2832
(D.N.J.) (’141 Patent; ‘011 Patent; ’611 Patent; and ’839 Patent); WAG
Acquisition, LLC v. MFCXY, Inc., No. 2:14-cv-03196 (D. N.J.) (’141 Patent;
’011 Patent; ’611 Patent; and ’839 Patent); WAG Acquisition, LLC v.
FriendFinder Networks Inc., No. 2:14-cv-3456 (D.N.J.) (’141 Patent; ’011
Patent; ’611 Patent; and ’839 Patent); and WAG Acquisition, LLC v.
Vubeology, Inc., No. 2:14-cv-4531 (D.N.J.) (’141 Patent; and ’011 Patent).
RELATED MATTERS
The ’011 Patent claims to be a continuation of the ’141 Patent.
Petitioner states that it also has petitioned for inter partes review of the ’141
Patent (IPR2015–0137), the ’611 Patent (IPR2015– 0135); and the ’839
Patent (IPR2015–0136).
THE ’011 PATENT (EXHIBIT 1001)
The ’011 Patent discloses a streaming media buffering system in
which a server buffer manager or media source provides for sequentially
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numbering media data elements. Ex. 1001, col. 8, ll. 25–28. Using a
standard data communications protocol, such as TCP, the user computer
transmits a request to a server to send one or more data elements, specifying
the serial numbers of the data elements. Id. at col. 8, ll. 33–36. A media
player buffer manager in a user computer maintains a record of the serial
number of the last data element that has been received. Id. at col. 8, ll. 30–
32. The server responds and the user computer continues with additional
data requests, maintaining a record of the highest data element number
stored in the user computer buffer, for the duration of the material to be
played. Id. at col. 8, ll. 39–42.
ILLUSTRATIVE CLAIM
1. A media player for receiving an audio or video
program, the program comprising media data elements,
from a media source over an lnternet protocol network,
and playing the program for a user of the media player,
wherein each of the media data elements is associated
with a serial number, comprising
a processor;
a memory;
a connection to the network; and
media player software comprising
instructions to cause the media player to request
from the media source a predetermined number
of media data elements;
instructions to cause the media player to receive
media data elements sent to the media player by
the media source and store the media data
elements in the memory;
instructions to implement a player buffer manager,
for managing a player buffer established in the
memory, operable to maintain a record of the
serial number of the last media data element that
has been received and stored in the player buffer;
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instructions to cause the media player to play media
data elements sequentially from the player
buffer; and
instructions to cause the media player to transmit to
the media source a request to send one or more
media data elements, each identified by a serial
number, and to repeat transmitting the requests
to the media source for sequential media data
elements so as to maintain the pre-determined
number of media data elements in the player
buffer until the last media data element
comprising the program has been received.

ART CITED IN PETITIONER’S CHALLENGES TO PATENTABILITY
Petitioner cites the following prior art references as grounds for
unpatentabity:
Reference Designation Exhibit
Silvia Hollfelder,
Florian Schmidt,
Matthias Hemmje, Karl
Aberer, Arnd Steinmetz
“Transparent
Integration of
Continuous Media
Support into a
Multimedia DBMS
Hollfelder Ex. 1002
Jun Su, “Continuous
Media Support for
Multimedia Databases”
Su Ex. 1003
U.S. Patent No.
5,874,986 issued Feb.
23, 1999
’986 Patent Ex. 1004
European Patent
Application Pub. No.
EP 0 820 204 A2 to
Jaisingh et al., publ. Jan
21, 1998
Jaisingh Ex. 1005
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BASIS OF PETITION
Petitioner asserts the following challenges to patentability:
Claim[s] Basis Challenge
1 and 4 35 U.S.C. § 103 Hollfelder in view of Su
2 35 U.S.C. § 103 Hollfelder in view of Su
and ’986 Patent
3 35 U.S.C. § 103 Hollfelder in view of Su
and Jaisingh
ANALYSIS OF PETITIONER’S PRIOR ART CHALLENGES
Petitioner contends that Hollfelder discloses a media player within a
client-server architecture in which the client makes specific requests to a
server and receives and stores in a client-side buffer specific continuous
object presentation units (COPUs). Pet. 15. Petitioner notes that in
Hollfedler’s “client-pull” mechanism, the client maintains a record of the
COPU retrieved and placed into the buffer, in order to determine which
COPUs to request to continue buffering the data stream. Id.
As noted above, each of Petitioner’s challenges cites Su. Petitioner
contends that Su discloses a client-pull system that assigns all of the COPUs
disclosed in Hollfelder indexes numbered from 0 to n-1, where n denotes the
total number of COPUs. Id. at 16. Petitioner argues that Su’s indexes are
the functional equivalent of serial numbers, as claimed in the ’011 Patent.
Id.
As an initial matter, Patent Owner contends that Petitioner has not
demonstrated Su was publicly accessible, so as to constitute printed
publication prior art. Prelim. Resp. 2. Petitioner has the initial burden of
production of evidence establishing that Su is applicable as prior art.
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Dynamic Drinkware LLC v. National Graphics, Inc. No. 2015-1214, 2015
WL 5166366, at *2–3 (Fed. Cir. Sept. 4, 2015). In our August 6, 2015,
denial of Petitioner’s request for authorization to submit a response to the
Patent Owner Preliminary Response concerning this issue, we noted that
during a telephone conference on August 4, 2015, Petitioner acknowledged
that it did not seek to introduce new evidence or rebut facts presented in the
Patent Owner Preliminary Response and that the question before us is a legal
one. Paper 7, 2–3. Where no facts are in dispute, the question of whether a
reference represents a “printed publication” is a question of law. In re
Cronyn, 890 F.2d 1158, 1159 (Fed.Cir.1989).
The Petition states that Su is a thesis submitted to the Department of
Computing and Information Science at Queens University, Ontario, Canada
in September 1998. Pet. 11. The copy of Su submitted as Exhibit 1003
bears a copyright notice with the year 1998. Ex. 1003, 1. Petitioner further
states that Su was published by and available at the National Library of
Canada in 1999. Pet. 11. In support of its public availability assertion,
Petitioner cites bibliographic information provided in a print-out from
Theses Canada. Ex. 1013 (“TH-Su”). TH-Su includes an active PDF link to
Su, identifies Su as resident on two microfiches, indicates the publisher is
the Ottawa: National Library of Canada [1999], and includes an abstract. Id.
at 1. TH-Su also includes an AMICUS No. (20672380)1, an international
standard book number (ISBN 0612312569), a Canadian Number
(992099080) and the following information “Copies: NL Stacks – Mic. TJ-

1 We understand AMICUS to be a free searchable catalog listing the
holdings of Libraries and Archives Canada (LAC) and other libraries across
Canada. Ex. 3001.
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31256.” Id. However, TH-Su indicates that it is a document created and
modified on July 18, 2008. Id. at 2.
Patent Owner does not dispute that Su is available today, or even that
Su was created in 1998. Prelim. Resp. 4, 10. Patent Owner also
acknowledges that TH-Su identifies the location in the library stacks where
the two microfiches on which Su is stored may be found. Id. at 5. However,
Patent Owner contends that Petitioner has not met its burden to show when
Su became publicly accessible and, therefore, Su has not been shown to be a
prior art printed publication. Id. at 4–6, 10–11, 13–14.
Patent Owner argues that the bibliographic information in TH-Su does
not identify when the PDF link and abstract rendered in the document were
added to the database from which that web page was generated. Id. at 10–
11. Patent Owner also argues that TH-Su does not establish any date, short
of the present, as to when Su was accessible in a searchable or indexed
manner, such that it could be located by persons interested and ordinarily
skilled in the subject matter or art using reasonable diligence. Id. It is not
clear if July 18, 2008 is the date Su became available through the Theses
Canada service. 2 The earliest related application identified on the face of
the ’011 Patent is Provisional Appl. No. 60/231,997, filed on Sep. 12, 2000.
Public accessibility is the touchstone in determining whether a
reference is a printed publication. In re Hall, 781 F.2d 897, 898–99 (Fed.
Cir. 1986). “A reference is publicly accessible ‘upon a satisfactory showing

2 It appears that the Theses Canada service of Library and Archives Canada
was launched in 1965 and has been acquiring electronic theses and
dissertations since 2003. Ex. 3002, 2. We make note of this information,
although we do not rely on it in this Decision because it has not been
presented by the parties.
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that such document has been disseminated or otherwise made available to
the extent that persons interested and ordinarily skilled in the subject matter
or art exercising reasonable diligence, can locate it.”’ Kyocera Wireless
Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)(quoting
SRI Int’l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed. Cir.
2008). Whether a reference is a printed publication is a legal question based
on underlying factual determinations. Id. The party seeking to introduce the
reference “should produce sufficient proof of its dissemination or that it has
otherwise been available and accessible to persons concerned with the art to
which the document relates and thus most likely to avail themselves of its
contents.” In re Wyer, 655 F.2d 221, 227 (CCPA 1981).
Our inquiry focuses on whether Su, as it was catalogued, indexed, and
shelved, was reasonably accessible to the public before the critical date. We
consider all the facts and circumstances surrounding the disclosure and
determine whether an interested researcher would have been able to find the
reference and examine its contents exercising reasonable diligence, prior to
the critical date. In re Lister, 558 F. 3d 1307, 1314–15, 1317 (Fed. Cir.
2009). Petitioner’s only evidence of public accessibility is TH-Su and Su
itself. Thus, we look to other information provided on Su and TH-Su to
assess whether Su was accessible to an interested researcher exercising
reasonable diligence.
We first consider Su’s copyright notice. When determining the
threshold issue of whether a document is a printed publication for purposes
of a decision on institution, a copyright notice has been accepted a prima
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facie evidence of publication.3 See Ford Motor Co. v. Cruise Control
Technologies LLC, Case IPR2014-00291, slip op. at 7–8 (PTAB June 29,
2015) (Paper 44) (citing FLIR Systems, Inc. v. Leak Surveys, Inc., Case
IPR2014-00411, slip op. at 18–19 (PTAB Sep. 5, 2014) (Paper 9)).
However, in the absence of further evidence, a copyright notice may not be
determinative. Servicenow, Inc. v. Hewlett-Packard Co., Case IPR2015-
00716, slip op. at 17 (PTAB Aug. 26, 2015), LG Electronics v. Advanced
Micro Devices, Inc. Case IPR2015-00329, slip op. at 10–13 (PTAB July 10,
2015)(Paper 13). Petitioner acknowledges that Su was not published until at
least 1999. Pet. 11. Thus, it is undisputed that Su was not publicly
accessible during the year stated in its copyright notice, i.e., 1998.
Therefore, we accord the copyright notice no weight on the issue of public
accessibility.
Petitioner offers no evidence from the ISBN, the AMICUS No., or the
Canadian No. printed on TH-Su that Su was publicly accessible before the
critical date. See, Square, Inc. v. Unwired Planet LLC, Case CBM2014-
00156, slip op. at 18 (PTAB Dec. 24, 2014)(Paper 11, Decision Instituting
Covered Business Method Patent Review)(ISBN found not probative of
public accessibility where Petitioner did not provide a description of what
the ISBN actually is, how it is generated, or what it purports to show).
Although TH-Su identifies a microfiche and the shelf on which it
could be found, Petitioner provides no evidence concerning when or how Su
was publicly accessible before July 18, 2008. Patent Owner argues its

3 “[A] notice of copyright . . . may be placed on publicly distributed copies
from which the work can be visually perceived . . . .” 17 U.S.C. § 401(a)
(emphasis added).
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additional evidence “shows what the National Library of Canada did in 1999
relative to the Su thesis.” Prelim. Resp. 17.
Patent Owner’s evidence includes a photograph of the microfiche
copy of Su, Ex. 2001, and a photograph of an envelope in which the
microfiche is stored, Ex. 2002. The photograph of the envelope shows the
following information on at the top of the microfiche in the envelope: “Jan–
Jul/Aug 1999 ISSN 0225-3216 Index A Authors Titles Series.” Exhibits
2001 and 2002 provide no further information concerning when Su may
have become accessible to the public.
Patent Owner represents that Ex. 2003 is a copy of an index
microfiche as found in the envelope in Ex. 2002, containing the author, title
and other bibliographic information for 1999 Canadian works having titles
and author’s names beginning with the letter “C,” but no abstracts. Prelim.
Resp. 16. Patent Owner represents that Ex. 2004 is a similar index for the
same series of works having titles and authors beginning with the letter “S.”
Id. Again, there are no abstracts. Exhibits 2005 and 2006 are blowups of
the bibliographic entry for the Su thesis corresponding to Exhibits 2003 and
2004, respectively. Patent Owner contends that Exhibits 2001–2006
demonstrate that in 1999 the activities of the National Library of Canada
were limited to:
copying the thesis to microfiche, creating a
bibliographic entry with the author’s name and
title and other identifying information (but
importantly not an abstract), putting those
bibliographic entries into a publicly accessible
physical index, organized and accessible by
looking up the author’s last name and the first
world of the title in an alphabetical list, and
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shelving the two theses microfiches at the library
stack location specified in the index.
Prelim. Resp. 17.4
A thesis that is uncatalogued and unshelved, notwithstanding its
accessibility to a graduate committee, is not a publication within the
meaning of 35 U.S.C. § 102(b). In re Bayer, 568 F.2d 1357, 1362 (CCPA
1978)(where testimonial evidence indicated that a thesis would not be
catalogued or shelved for many months after receipt and that during that
time, it would be accessible only to library employees). In contrast, a
dissertation shelved in the stacks and indexed in the catalog at the Freiburg
University library was found to be a printed publication. In re Hall, 781 F.
2d 897– 898 (Fed. Cir. 1986)(finding that, in the absence of rebuttal
evidence, an affidavit by the director and manager of the loan department at
Freiburg University, stating that a dissertation received on November 4,
1977 would be available for general use toward the beginning of December,
1977, was competent evidence to establish the dissertation was accessible
prior to the critical date of Feb. 28, 1978, because, even though a specific
access date was not provided, the testimony was based on general library
procedure as to indexing, cataloguing and shelving of theses). Thus, an
exact date a reference became publicly accessible is not always required.
However, where a reference is not catalogued in a meaningful way, its
availability may not be sufficient to make the reference reasonably
accessible to the public. In re Cronyn, 890 F. 2d at 1161 (“Although the

4 Without other evidence, Exhibits 2001–2006 demonstrate only the
existence and condition of the microfiche indexes at the time they were
obtained in the library. However, given Patent Owner’s acknowledgement
in the Preliminary Response, we accept Patent Owner’s inference that the
National Library of Canada took these actions in 1999.
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titles of the theses were listed on 3 out of 450 cards filed alphabetically by
author in a shoebox in the chemistry department library, such “availability”
was not sufficient to make them reasonably accessible to the public. Here,
the only research aid was the student's name, which, of course, bears no
relationship to the subject of the student's thesis.”). Similarly, in In re
Lister, 558 F. 3d at 1315–16, a book concerning a golf game deposited at the
Copyright Office and searchable only by the author’s last name and the first
word of the title (“Advanced”) was not considered publicly accessible until
sometime later when commercial databases including the full title of the
work made the data keyword searchable.
In view of that above, we are persuaded by Patent Owner that the
rudimentary indexing of the Su thesis by author name (“Su”) and/or the first
word of the title (“Continuous,” which is the only indexing that the evidence
suggests may have occurred before the priority date and does not suggest its
relevance to the streaming media network transport problem addressed by
the ’011 Patent) would not be sufficient to meet the applicable standard for
public accessibility. Prelim. Resp. 18–19. As Patent Owner notes, such
indexing would not provide a meaningful pathway to a researcher who was
not previously aware of the existence of the thesis and was searching by
subject matter. Id. at 19.
In consideration of the above, we are not persuaded that Petitioner has
met its initial burden of production of evidence establishing that Su is
applicable as prior art. As Su is cited as prior art in each of Petitioner’s
challenges to patentability, we are not persuaded that Petitioner has
demonstrated a reasonable likelihood Petitioner would prevail in its
challenges to patentability and we decline to institute inter partes review.
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SUMMARY
Petitioner has not met its initial burden to establish that Su is
applicable prior art. Therefore, Petitioner has not demonstrated a reasonable
likelihood it would prevail on its challenges to patentability and we decline
to institute inter partes review.

ORDER
We decline to institute inter partes review.

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PETITIONER:
Frank Gasparo
Jeffri Kaminski
VENABLE LLP
FMGasparo@Venable.com
JAKaminski@Venable.com

Kevin O’Brien
Richard Wells
Matt Dushek
BAKER & MCKENZIE LLP
Kevin.O'Brien@bakermckenzie.com
richard.wells@bakermckenzie.com
matt.dushek@bakermckenzie.com
Duodecad_WAG@bakermckenzie.com

PATENT OWNER
Ronald Abramson
LEWIS BAACH PLLC
ronald.abramson@lewisbaach.com

Ernest D. Buff
ERNEST D. BUFF & ASSOCIATES, LLC
ebuff@edbuff.com