Ex Parte 7822813 et al

Patent Trial and Appeal Board

Dec 30, 2013

95001649 (P.T.A.B. Dec. 30, 2013)

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.
95/001,649 06/08/2011 7822813 2525.623REX0 4439
84666 7590 12/30/2013
Reed Smith LLP
P.O. Box 488
Pittsburgh, PA 15230-0488
EXAMINER
CAMPBELL, JOSHUA D
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/30/2013 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
____________
YOUTUBE, LLC and GOOGLE INC.
Requester

v.

PRAGMATUS AV LLC
Patent Owner
____________

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Patent US 7,822,813 B2
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Technology Center 3900
____________

Before BRADLEY W. BAUMEISTER, ANDREW J.DILLON, and
STANLEY M. WEINBERG, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

.DECISION ON APPEAL

1
The patent involved in this reexamination appeal proceeding (the “„813
Patent”) issued to Ludwig et al. on October 26, 2010.
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STATEMENT OF THE CASE
Introduction
On June 8, 2011, YouTube, LLC and Google, Inc. (Requester) faxed a
Request for Inter Partes Reexamination of the „289 Patent (Request).
Owner appeals under 35 U.S.C. §§ 134(b) and 315(a) (2002) from the
final decision of the Examiner adverse to the patentability of claims 1-20
over various references.
Requester appeals under 35 U.S.C. §§ 134(c) and 315(b) from the
Examiner‟s decision not to adopt or maintain various other proposed
rejections.
We have jurisdiction under 35 U.S.C. §§ 134 and 315 (2002).
We affirm.
Related Proceedings
Owner has informed us that the „813 Patent is closely related to US
Patents 7,813,663 and 7,730,132 and that as of the date it filed its Appeal
Brief (App. Br.) on July 30, 2012, those related patents were subject to
ongoing inter partes reexaminations having control numbers 95/001,646 and
95/001,648, respectively, and that neither of them were on appeal at that
time. App. Br. 3.
Owner has also informed us that as of the date it filed its Appeal
Brief, the „813, „663, and „132 Patents were involved in then pending
litigation in the U.S. District Court for the Northern District of California
styled Pragmatus AV, LLC v. Facebook, Inc. et al., Case No. 5:11CV-
00494-EJD and that the litigation had been stayed pending the results of
these reexaminations. App. Br. 3.
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Owner has also informed us that on September 13, 2013, Requester
filed a request for ex parte reexamination of the „132 Patent, having Control
No. 90/013,000.
Requester has informed us of the following related prior appeals to the
Board based on prior reexaminations with control numbers: 90/009,008;
90/009,016; 90/009,015; 90/009,021; 90/009,031, and 90/009,020.
Respondent Brief (Resp. Br.) 5. Requester has also informed us of the
following related appeals that were pending as the August 30, 2012 date it
filed its Respondent Brief: 95/001,715 and 95/001,716. Id.

Invention
The „813 Patent describes
[a] content storage and distribution networked system. . .
The system includes at least one local network, at least one
audio-video storage device in communication with the local
network, and at least two client devices in communication with
the local network. The audio-video storage device is
configured to store at least one media file, which includes at
least video. The first client device is configured to enable the
two client device [sic: devices] to simultaneously access the at
least one media file stored on the audio-video storage device.
The system is configured to cause playback of media that is
associated with the retrieved media file, and to enable the user
of the first client device to operate on the playback of the media
associated with the retrieved media file, using at least the
operations of start, stop, pause, fast forward, and reverse.
„813 patent, Abstract.

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Claims
Claims 1-20 are subject to reexamination and have been rejected.
Claims 1-20 are original patent claims. Claims 1 and 11 are independent.
Claim 1 is illustrative.
1. A content storage system comprising:

at least one audio-video storage subsystem at a first
physical premises and configured for storing at least first and
second multimedia documents, respectively created by first and
second users using respective first and second client devices,

wherein both the first and second stored multimedia
documents (a) each have a universal format that defines each
multimedia document as a collection of components in multi
media with a structure that captures the relationships among the
components and their spatial layout, and (b) include at least one
hyperlink, and

wherein at least the first and second client devices are
separated by at least one wide area network and are in
communication with the audio-video storage subsystem, the
system being configured to

enable the first and second users each to access at least
both the first and second multimedia documents stored on the
audio-video storage subsystem,

enable the first and second users each to add to at least
both the first and second multimedia documents by using
software tools respectively at the first and second client devices,
and

enable respective users of the first and second client
devices to each playback at least one component of the media
associated with the first multimedia document and each
playback at least one component of the media associated with
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the second multimedia document, each user using at least the
operations of start, stop, and pause.

Prior Art
Naef, III US 5,206,934 Apr. 27, 1993
Gerlach Jr. US 5,317,732 May 31, 1994
Roseman US 6,608,636 B1 Aug. 19, 2003
Kevin Jeffay et al, System Design for Workstation-Based Conferencing With
Digital Audio and Video, Proceedings of TRI COMM ‟91, Apr. 18-19, 1991
(hereinafter “Jeffay”)
Dick C. A. Bulterman et al, A Structure for Transportable, Dynamic
Multimedia Documents, Proceedings of the Summer 1991 USENIX
Conference, June 1991 (hereinafter “Bulterman”)
Paul Kahn et al, Video in Hypermedia: The Design of InterVideo, Visual
Resources, Vol. VII, pp. 353-360, Jan. 23, 1991 (hereinafter “Kahn”)
Andy Hopper, Pandora – an experimental system for multimedia
applications, Operating Systems Review, Jan. 12, 1990 (hereinafter
“Hopper”)
Frank M. Kappe, Aspects of a Modern Multi-Media Information System,
Institute for Foundations of Information Processing and Computer
Supported New Media (IICM) Graz University of Technology, June 1991
(hereinafter “Kappe”)
David L. Drucker et al, Quicktime Handbook, The Complete Guide to Mac
Movie Making, Hayden (A division of Prentice Hall Computer Publishing),
1992 (hereinafter “QuickTime”)
Chris Adie, Network Access to Multimedia Information, Edinburgh
University Computing Service, June 29, 1993 (hereinafter “Adie”)

Owner’s Contentions – Owner’s Appeal
Owner contends that the Examiner erred in entering the following
grounds of rejection against claims 1-20. (App. Br. 5-6)
1. The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Jeffay, Bulterman, and Kahn;
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2. The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Kappe and QuickTime;
3. The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Roseman, Adie, and Gerlach;
4. The rejection of claims 2-7, 9-17, 19, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over one or more of Jeffay, Bulterman, and Kahn;
Kappe and QuickTime; and, Roseman, Adie, and Gerlach; either alone or
with Hopper.
5. The rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable
over one or more of Jeffay, Bulterman, Kahn and Naef; Kappe, QuickTime
and Naef; and, Roseman, Adie, Gerlach and Naef; and, claim 18 under
35 U.S.C. § 103(a) as unpatentable over Kappe, QuickTime and Naef.

Requester’s Contentions – Requester’s Appeal
Requester contends that the Examiner erred in failing to enter the
following grounds of rejection against claims 1-20. (Req. App. Br. 7-8):
1. The proposed rejection of claims 11-16, 19 and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Jeffay, Bulterman, and, Kahn;
2. The proposed rejection of claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Jeffay, Bulterman, Kahn, and Hopper;
3. The proposed rejection of claim 18 under 35 U.S.C. § 103(a) as
unpatentable over Jeffay, Bulterman, Kahn, and Naef;
4. The proposed rejection of claims 11-16, 19 and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Roseman, Adie, and Gerlach;
5. The proposed rejection of claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Roseman, Adie, Gerlach, and Hopper;
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6. The proposed rejection of claim 18 under 35 U.S.C. § 103(a) as
unpatentable over Roseman, Adie, Gerlach, and Naef;
7. The proposed rejection of claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Jeffay, Bulterman, Kahn, and Hopper.

ANALYSIS
Representative Claim – Owner’s Appeal
With respect to the Examiner‟s rejections of claims 1-7, 9-17, 19, and
20 as unpatentable under 35 U.S.C. § 103(a) over Kappe and QuickTime,
alone or in combination with Naef, Owner relies on the limitations of claim
1 and does not provide arguments for separate patentability for any other
claim within this group. Accordingly, we will decide the appeal of these
claims on the basis of claim 1 alone. See 37 C.F.R. § 41.67(c)(1)(vii).
Owner argues that the obviousness rejection of claim 1 over Kappe
and QuickTime lacks an articulated rational underpinning for why one of
ordinary skill in the art would have “had a foresight reason for combining
these references‟ teachings to arrive at the claimed invention.” App. Br. 22.
Specifically, Owner argues that while Kappe refers to HyperCard and
QuickTime, at page 491, refers to QuickTime movies in HyperCard, there is
no suggestion of combining the teaching of Kappe with Quicktime “to create
a content storage system for storing multimedia documents having a
universal format that defines each multimedia document as a collection of
components in multi media with a structure that captures the relationships
among the components and their spatial layout as claimed.” Id. at 23.
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Owner acknowledges Respondents‟ assertion that both Kappe and
QuickTime provide similar playback functions, but urges that the similarity
does not provide a reason to combine their teachings. Id.
Kappe does not support the combination, in the opinion of Owner,
since Kappe teaches the Hyper-G hypermedia system, which stores
document components with no structure other than cross-references (links),
while QuickTime discloses digital video technology that may be utilized in
conjunction with HyperCard stacks containing documents that a user could
create and navigate like a deck of cards. Id. at 25-26.
Consequently, Owner argues that neither reference “provides a reason
to create the claimed content storage system including a subsystem for
storing multimedia documents each having a universal format that defines
each multimedia document as a collection of components in multi media
with a structure that captures the relationships among the components and
their spatial layout.” Id.
We first note that there need not be an express suggestion within the
prior art references that suggests combination. A reason to combine
teachings from the prior art “may be found in explicit or implicit teachings
within the references themselves, from the ordinary knowledge of those
skilled in the art, or from the nature of the problem to be solved.” WMS
Gaming Inc. v. Int'l Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999)
(citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
Further, we note that Owner merely sets forth above a general
allegation that the cited references fail to disclose “a subsystem for storing
multimedia documents each having a universal format that defines each
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multimedia document as a collection of components in multi media with a
structure that captures the relationships among the components and their
spatial layout,” quoting from claim 1.
“The Examiner has the initial burden to set forth the basis for any
rejection so as to put the patent applicant on notice of the reasons why the
applicant is not entitled to a patent on the claim scope that he seeks - the so-
called „prima facie case.‟” Ex parte Frye, No. 2009-006013, 2010 WL
889747, at *3 (BPAI Feb. 26, 2010) (precedential). “„On appeal to the
Board, an applicant can overcome a rejection by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness.‟” In re Kahn, 441
F.3d 977, 985-86 (Fed.Cir. 2006) (quoting In re Rouffet, 149 F.3d 1350,
1355 (Fed.Cir. 1998)). “[T]he Board reviews the particular finding(s)
contested by an appellant anew in light of all the evidence and argument on
that issue.” Frye, 2010 WL 889747 at *4. “Filing a Board appeal does not,
unto itself, entitle an appellant to de novo review of all aspects of a rejection.
If an appellant fails to present arguments on a particular issue - or, more
broadly, on a particular rejection - the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.” Id. (internal
citations omitted). Similarly, it is not the function of this Board to examine
claims in greater detail than argued by an appellant, looking for distinctions
over the prior art. See 37 C.F.R. § 41.67(c)(1)(vii) (“Any arguments or
authorities not included in the brief permitted under this section or §§ 41.68
and 41.71 will be refused consideration by the Board, unless good cause is
shown.”)
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We find Owner‟s arguments to be unpersuasive, in the absence of any
persuasive reasoning why the cited prior art does not suggest the claimed
combination invention. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.”)
In view of the U.S. Supreme Court‟s opinion in KSR Int'l Co. v.
Teleflex Inc., 127 S. Ct. 1727 (2007), our analysis here does not turn upon
whether the Examiner has provided an adequate teaching, suggestion, or
motivation to combine the references. Instead, we view the question before
us to be whether sufficient difference exists between the prior art and the
Appellants‟ claims to render the claims nonobvious. In KSR, the Supreme
Court reaffirmed that “[w]hen a patent „simply arranges old elements with
each performing the same function it had been known to perform‟ and yields
no more than one would expect from such an arrangement, the combination
is obvious.” KSR, 127 S. Ct. at 1740 (quoting Sakraida v. Ag Pro, Inc., 425
U.S. 273, 282 (1976)).
This reasoning is applicable here. Regarding the combination of
Kappe with QuickTime, we concur with the Examiner‟s finding that both
Kappe and QuickTime are directed to multimedia documents that may be
created, accessed and played back and that modifying Kappe‟s multimedia
documents and playback with the functionality of QuickTime would have
simply been a predictable use of prior art elements performing their
established functions. RAN 8, citing Request, p. 18 of Appendix CC-K3.
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With respect the rejection of claims 8 and 18 under 35 U.S.C. § 103(a)
over Kappe and QuickTime, alone or in combination with Naef, Owner
relies upon the arguments we addressed above with respect to Kappe and
QuickTime, and further argues that Naef fails to cure the deficiencies
alleged to be present in those references. Specifically, Owner argues that
Naef fails to evidence why or how one of ordinary skill in the art would have
configured the claimed storage system “for wireless communication with at
least one of the first and second client devices” as claimed. App. Br. 41.
In the Action Closing Prosecution, the Examiner finds that the Naef
reference “provides evidence that transmission regarding multimedia
documents could be carried out over wireless network communications” and
cites the Naef reference simply for the idea of substituting wireless
communications within the teachings of the other references. ACP 22-23.
We find Owner attacks the teaching of Naef alone, rather than
considering that teaching in combination with Kappe and QuickTime.
“Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing Keller, 642 F.2d at 425). In determining obviousness, furthermore, a
reference “must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole.” Id.
Here, the Examiner relies on the combined teaching of Kappe,
QuickTime, and Naef (in combination with the prior art as a whole) to reject
the limitations at issue. Consequently, Owner‟s individual attack on Naef
cannot establish non-obviousness.
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We concur with the Examiner‟s finding that Kappe, QuickTime and
Naef, when considered in combination with the prior art as a whole, render
claims 8 and 18 unpatentable under 35 U.S.C. § 103(a).

Summary/Conclusion
We sustain the Examiner‟s rejections of claims 1-20 as unpatentable
under 35 U.S.C. § 103(a) over Kappe and QuickTime, alone or in
combination with Hopper or Naef.
In view of our conclusion that the Examiner did not err in rejecting
the appealed claims based on Kappe and QuickTime, either alone or in
combination with Hopper or Naef, we do not address any of the other
rejections upon which the Examiner relies or which are asserted by
Requester. See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009).

DECISION
The Examiner‟s decision adverse to the patentability of claims 1-20 is
affirmed.
Requests for extensions of time in this proceeding are governed by 37
C.F.R. §§ 1.956 and 41.79(e).

AFFIRMED

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Patent Owner:
REED SMITH LLP
1301 K Street, N.W.
Suite 1100 – East Tower
Washington, DC 20005

Third Party Requester:
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 New York Avenue, N.W.
Washington, DC 20005

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