NeuLion, Inc.v.Cascades Ventures, Inv.

Patent Trial and Appeal BoardSep 3, 2014

12497273 (P.T.A.B. Sep. 3, 2014)

Trials@uspto.gov Paper 23 571-272-7822 Entered: September 3, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ NEULION, INC., Petitioner, v. FILIPPO COSTANZO, SAVERIO RONCOLINI, and ANTONIO ROSSI, Patent Owners. ____________ Case IPR2014-00526 Patent 8,156,236 B2 ____________ Before, TRENTON A. WARD, BEVERLY M. BUNTING, and JENNIFER M. MEYER, Administrative Patent Judges. BUNTING, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R. § 42.108 IPR2014-00526 Patent 8,156,236 B2 2 I. BACKGROUND Petitioner, Neulion, Inc. (“Petitioner”), filed a corrected Petition (“Pet.”) requesting an inter partes review of claims 16–22, 25–31, and 34 of U.S. Patent No. 8,156,236 B2 (Ex. 1001, “the ’236 patent”) on April 15, 2014. Paper 15. Patent Owners, Filippo Costanzo, Saverio Roncolini, and Antonio Rossi (“Patent Owners”), filed a Preliminary Response to the Petition on June 9, 2014. Paper 17 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Petitioner asserts that claims 16–22, 25–31, and 34 (“the challenged claims”) are unpatentable under 35 U.S.C. §§ 102(a) or 102(b), and 35 U.S.C. § 103(a). Pet. 15–19. Upon consideration of the Petition and Preliminary Response, we are not persuaded that Petitioner has established a reasonable likelihood that it would prevail in establishing the unpatentability of the challenged claims. Consequently, we deny the Petition, and do not institute an inter partes review of the ’236 patent based on any of the asserted grounds. A. Related Proceedings Petitioner indicates that the ’236 patent is the subject of the following judicial matter: Cascades Streaming Technologies, LLC v. Big Ten Network, LLC, Civil Action No. 13-1455 (N.D. Ill.), filed on February 25, 2013. Pet. 1. IPR2014-00526 Patent 8,156,236 B2 3 B. The Prior Art Petitioner relies on the following prior art references (Pet. 11–14) and the declaration of Henry Hough, Ph.D. (Ex. 1027): 1 Petitioner’s citation to “RealSystem G2” is actually a collective reference to nineteen different documents, namely Exhibits 1002-1020. References Patents/Printed Publications Date Ex. RealSystem 1 G2 RealsystemTM G2 Production Guide, RealSystem G2, Release 7, ©1998-2000 Real Networks, Inc. 1998– 2000 1002 RealProducer Plus TM User's Guide, Version G2 for UNIX ® , ©1998-1999 Real Networks, Inc. 1998– 1999 1003 http://service.real.com/helplibraryblueprints/ 85codecslhtmlfiles/producer2.html, ©2001 Real Networks, Inc. 2001 1004 RealServer Administration Guide, RealServer 7.0 Powered by RealSystem G2, ©1998-1999 Real Networks, Inc. 1998– 1999 1005 RealSystem G2: Management and Control of Streaming Media Over Corporate Networks, ©1999 Real Networks, Inc. March 1999 1006 RealMedia File Format, Internet-Draft, Internet Engineering Task Force, ©1998 Real Networks, Inc. March 13, 1998 1007 Working With RealProducer 8 Codecs, RealNetworks Technical Blueprint Series, ©2000 Real Networks, Inc. May 19, 2000 1008 RealProxy G2 Administration Guide, Beta One, ©1999 Real Networks, Inc. 1999 1009 Chapter 8: Troubleshooting, Service.real.com/help/player/plus_manual.g2/- htmfiles/troubles.htm, ©1998-1999 Real Networks, Inc. 1998– 1999 1010 IPR2014-00526 Patent 8,156,236 B2 4 RealServer ® Administration and Content Creation Guide, version 4.0, Progressive Networks, Inc., © 1995-1997 Progressive Networks, Inc. 1995– 1997 1011 “RealPlayer 8 Beta Released,” Mac-Macworld UK, www.macworld.co.uk/mac/news/?newsid=1362 May 25, 2000 1012 Delivering RealAudio ® or RealVideo ® From a WebServer, RealNetworks Technical Blueprint Series, ©1998 Real Networks, Inc. 1998 1013 RealSystem™ Production Guide, Release 8, ©1998-2000 Real Networks, Inc. 1998– 2000 1014 RealPlayer™ Plus, RealPlayer 8 Plus User Manual, Revision 1.0, ©2000 Real Networks, Inc. 2000 1015 Embedded RealPlayer ® Extended Functionality Guide, RealSystem™ G2, ©1998 Real Networks, Inc. Dec. 21, 1998 1016 Chapter 2: Streaming Media Basics, last updated 09/02/99, Service.real.com/help/library/guides/- mproducerplus/htmfiles/preparin.htm, ©1998-1999 Real Networks, Inc. 1998– 1999 1017 RealProducer Plus™ User's Guide, Version G2, ©1998 Real Networks, Inc. 1998 1018 RealProducer Pro™ User's Guide, Version G2, ©1998-1999 Real Networks, Inc. 1998– 1999 1019 RealSystem™ G2 Syntax Style Guide, RealNetworks Technical Blueprint Series, ©1998 Real Networks, Inc. 1998 1020 Radha U.S. Patent No. 6,806,909 B1 Oct.19, 2004 1021 Omoigui U.S. Patent No. 7,237,254 B1 June 26, 2007 1022 HTTP Hypertext Transfer Protocol--HTTP/l.l, Fielding et al., Network Working Group, RFC: 2616, The Internet Society, June, ©1999 The Internet Society. June, 1999 1023 IPR2014-00526 Patent 8,156,236 B2 5 C. The Asserted Grounds Petitioner challenges the patentability of claims 16–22, 25–31, and 34 of the ’236 patent on the following grounds. Pet. 15-19. Reference(s) Basis Claims challenged RealSystem G2 102(a) or 102(b) 18–20, 26, 28–31, and 34 RealSystem G2, Radha, Omoigui, Girod, or Watkinson 103(a) 16 and 25 RealSystem G2, Radha, Girod, or Watkinson 103(a) 17, 21, and 27 RealSystem G2, Radha, or Omoigui 103(a) 22 II. ANALYSIS As indicated in the Table above, each proposed ground of unpatentability advanced by Petitioner against the challenged claims relies on RealSystem G2, a collection of nineteen separate documents (Exs. 1002 to 1020). Pet. 15-19. Specifically, Petitioner argues that the RealSystem G2 documents “are all directed to and disclose the RealSystem G2 of RealNetworks, Inc., a multimedia streaming RTSP Real Time Streaming Protocol, Schulzrinne et al., Network Working Group, RFC 2326, The Internet Society, ©1998 The Internet Society. April, 1998 1024 MPEG-2 MPEG-2, John Watkinson, (Focal Press. 1999) 1999 1025 Girod U.S. Patent No. 6,480,541 B1 Nov. 12, 2002 1026 IPR2014-00526 Patent 8,156,236 B2 6 system which included the products RealServer, RealPlayer and RealProducer, and SureStream technology.” Id. at 11. At the outset, we consider whether RealSystem G2 is designated properly in this Petition as a single prior art reference, in accordance with 35 U.S.C. §§ 102 and 311(b). Our inspection of the RealSystem G2 documents reveals that each describes apparently one or more features utilized in the RealSystem G2 product line, which contains individually at least the RealServer, RealPlayer and RealProducer, and SureStream products. See Exs. 1002–1020. In particular, we note that each document has a different title, and each document has a different publication date. See Section I.B. Further, at least two of the documents, i.e., Exhibits 1011 and 1012, are not attributable to the same source as the other documents. Ex. 1011, 2; Ex. 1012, 1. In order to establish anticipation, each and every element of a claim must be found in a single prior art reference. See Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Other than asserting baldly that these documents are “all directed to and disclose the RealSystem G2,” Petitioner does not proffer evidence describing sufficiently the content of each document, or the alleged relationship between each of the documents, to persuade us that the RealSystem G2 documents represent a single prior art reference. Pet. 11. Although Petitioner appears to refer expressly to the public use or sale of the RealSystem multimedia streaming system product itself as the basis for its assertion that the challenged claims are anticipated by RealSystem G2, Petitioner does not proffer arguments or evidence demonstrating how the RealSystem product, itself, qualifies as a single prior art reference for purposes of inter partes IPR2014-00526 Patent 8,156,236 B2 7 review. 2 Thus, Petitioner does not persuade us that the RealSystem G2 multimedia streaming system described in the supporting RealSystem G2 documents comport with the meaning of single prior art reference, as required by 35 U.S.C. § 102 and 35 U.S.C. § 311(b). A. Anticipation Turning now to Petitioner’s challenge of claims 18–20, 26, 28–31, and 34 as anticipated under 35 U.S.C. §§ 102(a) and/or 102(b), we note that Petitioner provides a claim chart for each challenged claim with citations to specific RealSystem G2 documents. Id. at 15, 19-54. Petitioner further relies on the declaration of Dr. Hough to support the analysis advocated in the Petition. Ex. 1027. Even assuming that the RealSystem G2 documents represent a single prior art reference under § 102, we are not persuaded by Petitioner’s contention that the RealSystem G2 documents “qualify as prior art to the ’236 patent under 35 U.S.C. §§ 102(a) and/or 102(b).” Pet. 11. Petitioner asserts that the ’236 patent claims priority to a provisional patent application filed on July 15, 2000. Pet. 3–4. Patent Owner argues that “[m]any of the RealSystem G2 documents do not qualify as prior art,” in view of the ’236 patent’s claim to priority as of the July 15, 2000 date. Prelim. Resp. 2. Specifically, Patent Owner points to Exhibits 1002 and 1014 as each stating a copyright of “©1998-2000 RealNetworks, Inc.”; Exhibit 1004 as stating “Copyright © 2001”; and Exhibit 1015 as stating a copyright of “©RealNetworks, Inc. 2000.” Id. at 2–3. Patent Owner asserts that “[w]hen a document bears only a year, and no month or day, it has not been shown to be prior art to a provisional 2 See 35 U.S.C. § 311(b) (limiting inter partes review to challenges based upon patents and printed publications). IPR2014-00526 Patent 8,156,236 B2 8 application filed on July 15, 2000.” Prelim. Resp. 2 (citing iONROAD Ltd. v. Mobileye Tech. Ltd., Case IPR2013-00227, slip op. at 15–16 (PTAB Aug. 27, 2013) (Paper 18)); see also Oka v. Youssefyeh, 849 F.2d 581, 584 (Fed. Cir. 1988) (where testimony places acts within a stated time period, the inventor has not established a date for his activities earlier than the last day of the period). According to Patent Owner, Petitioner fails to provide evidence indicating what parts of Exhibits 1002, 1004, 1014, and 1015 existed before July 15, 2000, in order to qualify as prior art with respect to the ’236 patent. Prelim. Resp. 3. Patent Owner’s argument, that Petitioner “has failed to carry its burden to show that Exhibits 1002, 1004, 1014[,] and 1015 are prior art, as required by 37 C.F.R. § 42.20(c),” is convincing. Id. For example, with respect to independent claim 18, Petitioner cites multiple documents, including Exhibits 1001, 1002, 1005, 1007, 1008, 1014, and 1022. Pet. 31-34. With regards to independent claim 26, Petitioner references similarly Exhibits 1002, 1005, 1023, and 1024; and for claim 28, Petitioner cites Exhibits 1002, 1005, 1014, 1023, and 1024. Id. at 41-51. However, Petitioner provides no evidence establishing that the cited passages, in at least Exhibits 1002, 1004, and 1014, were disclosed prior to the critical date of July 15, 2000. As such, Petitioner has not shown that the RealSystem G2 documents are prior art with respect to the challenged claims. See 37 C.F.R. § 42.20(c). Based on the record before us, Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to its contention that claims 18–20, 26, 28–31, and 34 are anticipated by the RealSystem G2 documents. IPR2014-00526 Patent 8,156,236 B2 9 B. Obviousness Petitioner advances additional grounds of unpatentability, arguing that claims 16, 17, 21, 22, 25, and 27 are obvious, based in part on the RealSystem G2 documents, in combination with one or more of Radha, Omoigui, Girod, and Watkinson. Pet. 15-19. Petitioner relies on Radha, Omoigui, Girod, and Watkinson to supplement deficiencies in the RealSystem G2 documents. Id. For the reasons provided with respect to the anticipation ground, and based on the record before us, our determination that Petitioner has not shown sufficiently that the RealSystem G2 documents qualify as prior art to the challenged claims of the ’236 patent applies equally to Petitioner’s obviousness contentions. Additionally, although Petitioner asserts three grounds based on obviousness, each of these individual grounds represents groups of multiple grounds. For example, the Petition includes a ground asserting that claims 16 and 25 would have been obvious “from the RealSystem G2 multimedia streaming system of RealNetworks, Inc. (Ex. 1002-1020), in view of U.S. Patent No. 6,806,909 (“Radha”) (Ex. 1021) or U.S. Patent No. 7,237,254 (“Omoigui”) (Ex. 1022), further in view of U.S. Patent No. 6,480,541 (“Girod”) (Ex. 1026) or Watkinson (Ex. 1025).” Id. at 15. In essence, this one ground represents four grounds which are asserted and argued together: RealSystem G2, Radha, and Girod; RealSystem G2, Radha, and Watkinson; RealSystem G2, Omoigui, and Girod; RealSystem G2, Omoigui, and Watkinson. By presenting and arguing multiple grounds together, the Petition obfuscates the arguments as to each ground individually. “For these reasons, the Petition does not comply with the Board’s rules that a petition must include ‘[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence’ and ‘where each element of [each challenged] claim IPR2014-00526 Patent 8,156,236 B2 10 is found in the prior art patents or printed publications relied upon [and] the relevance of the evidence to the challenge raised.’” Zetec, Inc. v. Westinghouse Electric Co., LLC, Case IPR2014-00384, slip op. at 14 (PTAB July 23, 2014) (Paper 10) (citing 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4),(5)). Moreover, the Petition addresses the obviousness grounds with perfunctory assertions, and fails to identify clearly where each element of the challenged claims are found in the prior art patents or printed publications relied upon, and the relevance of the evidence to the challenge raised. For example, Petitioner states the following: Omoigui discloses a streaming server system that includes all of the functionality of a feed distributor for seamless switching, initiated by remote user selection, among multiple versions of multimedia content and each of Girod, Radha, and Watkinson discloses the well-known advantages of switching between differentially compressed streams at a key frame Pet. 16. This assertion is a general statement that does not state with particularity where these teachings are found in the cited references. See id. Additionally, Petitioner does not explain adequately or provide evidence sufficient as to why one skilled in the art would have combined features of the cited references to arrive at the claimed invention. For example, Petitioner’s assertion that it would have been obvious to incorporate the splicer disclosed in Radha in the RealSystem G2 system “to effect switching between video files encoded for different bandwidths at the Radha splicer/feed distributor” to compensate for changing network conditions, as both relate to the same art and same problem, is not convincing. Id. Accordingly, Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to its contention that claims 16, 17, 21, 22, 25, and 27 are obvious. IPR2014-00526 Patent 8,156,236 B2 11 III. CONCLUSION For the foregoing reasons, we determine that Petitioner has not demonstrated a reasonable likelihood that at least one challenged claim is unpatentable based on the asserted grounds. We, therefore, do not institute an inter partes review on any of the asserted grounds as to any of the challenged claims. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that an inter partes review as to claims 16–22, 25–31, and 34 of the ’236 patent is DENIED. PETITIONER: Lance Lieberman Martin Pavane COZEN O'CONNOR 227 Park Avenue New York, New York 10172 llieberman@cozen.com mpavane@cozen.com PATENT OWNER: Joseph Hosteny NIRO, HALLER & NIRO 181 West Madison Street Suite 4600 Chicago, IL 60602 mkowalski@nshn.com clifflaw@att.net

NeuLion, Inc. v. Cascades Ventures, Inv.