FriendFinder Networks Inc.v.WAG Acquisition, LLC

Patent Trial and Appeal Board

Oct 19, 2015

12800152 (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 IPR2015-01037
Patent 8,122,141 B2
____________

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 2
(“Pet.”), to institute an inter partes review of claims 1–28 (the “challenged
claims”) of U.S. Patent No. 8,122,141 (“the ’141 Patent”). 35 U.S.C. § 311.
WAG Acquisition, LLC (“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 of all the challenged claims.
REAL PARTIES IN INTEREST
Petitioner 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. Pet. 2.

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PENDING LITIGATION
Petitioner states that WAG Acquisition, LLC has asserted U.S. Patent
No. 8,122,141 (“the ’141 Patent”) (the subject of the present Petition), as
well as U.S. Patent No. 8,327,011 (“the ’011 Patent”), U.S. Patent No.
8,364,839 (“the ’839 Patent”) and U.S. Patent No. 8,185,611 (“the ’611
Patent”) in the District of New Jersey as follows: 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; ’611Patent; 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 PROCEEDINGS
Petitioner notes that it has also petitioned for inter partes review of
the ’011 Patent (IPR2015-01033), the ’611 Patent (IPR2015-01035) and the
’839 Patent (IPR2015-01036)

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THE ’121 PATENT (EXHIBIT 1001)
The ’121 Patent discloses a system for sending streaming media, such
as audio or video files, via the Internet with reduced playback interruptions.
Ex. 1001, col. 4, ll. 39–44. Data interruptions can be recovered while the
media player continues to play out the audio or video material. Id. at col. 4,
ll. 48–50. A server connected to the Internet for transmitting time-
sequenced data elements. Id. at col. 4, ll. 54–58. Associated with the server
are a buffer manager and a FIFO buffer that stores at least one of the data
elements for transmission. Id. at col 4, ll. 56–60. The buffer manager
receives the media data, supplies the media data in order to the FIFO buffer,
supplies the FIFO buffer with a predetermined number of data elements, and
maintains a pointer into the buffer for each user computer indicating the last
media data element that has been sent to that user, thus indicating the next
element or elements to be sent. Id. at col. 4, ll. 61–66. Once the FIFO
buffer is full, the oldest data elements in the buffer are deleted as new data
elements are received. Id. at col. 4, l. 66–col. 5, l. 1. A pre-determined
number of data elements are kept in the FIFO buffer. Id. at col. 5, ll. 1–4.
At least one user computer is connected to the server via the Internet
or other data communications medium. The user computer is associated
with media player software incorporating a user buffer that receives and
stores a predetermined number of media data elements. Id. at col. 8, ll.25–
28. The media elements that are received sequentially by the media player,
are played out sequentially as audio and/or video, and the media data
elements from the buffer as they are played out. Id. at col. 8, ll. 28–31. As
data is played out, the next sequential data elements are received from the
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server in such a fashion as to approximately maintain the predetermined
number of data elements in the user’s buffer. Id. at col. 8, ll. 31–34.
ILLUSTRATIVE CLAIMS
Claim 1 is illustrative:
1. A method for distributing streaming media via a data
communications medium such as the Internet to at least
one user system of at least one user, the streaming media
comprising a plurality of sequential media data elements
for a digitally encoded audio or video program,
comprising
providing a server programmed to receive requests
from the user system for media data elements
corresponding to specified serial identifiers and to
send media data elements to the user system
responsive to said requests, at a rate more rapid
than the rate at which said streaming media is
played back by a user; and
providing a machine-readable medium accessible to
said user, on which there has been recorded
software for implementing a media player for
receiving and playing the streaming media on said
user system, said software being programmed to
cause the media player to maintain a record of the
identifier of the last data element that has been
received; and to transmit requests to the server to
send one or more data elements, specifying the
identifiers of the data elements, as said media
player requires in order to maintain a sufficient
number of media data elements in the media player
for uninterrupted playback.

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Claim 19 is also illustrative:
19. A non-transitory machine-readable medium on which
there has been recorded a computer program for use in
operating a computer to prepare streaming media content
for transmission by a server wherein said server responds
to user requests for media data elements identified by a
serial identifier, said program recorded on said non-
transitory machine readable medium comprising a
routine to store and serially identify sequential data
elements comprising said streaming media content, in a
format capable of being served to users by said server.

REFERENCES CITED IN PETITION
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
Coding Of Moving Pictures And
Associated Audio --
For Digital Storage Media At Up
To About 1.5 Mbit/S – Part 1
ISO11171-1 Ex. 1004
Information Technology – Coding
of Moving Pictures and Associated
Audio For Digital Storage Media
At Up To About 1.5 Mbit/S – Part
2
ISO11171-2 Ex. 1005
Coding Of Moving Pictures And
Associated Audio
For Digital Storage Media At Up
To About 1.5 Mbit/S – Part 3
Audio
Contents
ISO11171-3 Ex. 1006
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Reference Designation Exhibit
U.S. Patent No. 6,389,473 issued
May 14, 2002 Carmel Ex. 1007
U.S. Patent No. 6,336,143 B1
issued Jan. 1, 2002 Diedrich Ex. 1012

BASIS OF PETITION
Petitioner asserts the following challenges to patentability (Pet. 3–4):
Claim[s] Statutory Basis Ground
1, 2, 5–7, 9–11, 14–16,
18–20, 24, 27, 28 35 U.S.C. § 103(a)
Obvious over
Hollfelder in view of Su
3, 4, 12, 13, 22, 23, 25,
26 35 U.S.C. § 103(a)
Hollfleder in view of
Su and ISO11172
8, 17, 21 35 U.S.C. § 103(a) Hollfelder in view of Su and Carmel
19 35 U.S.C. § 102(a)/(e) Anticipated by Diedrich

CLAIM CONSTRUCTION
For the reasons discussed below, we do not reach Petitioner’s
challenges based on Su. We construe only those terms that appear in claim
19. Petitioner does not propose any constructions for the terms in claim 19.
Patent Owner proposes the following constructions:
Said server responds to user requests for media data elements
Patent Owner proposes that “user requests for media data elements”
means a request to send media data elements and that “said server responds
to requests for media data elements identified by a serial identifier” be
construed as referring to a response from the requestor. Prelim. Resp. 29
(citing Ex. 1001 col 8, ll. 46–47). Patent Owner’s proposed constructions
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are disjointed and do not all concern the specific language of claim 19. We
are not persuaded that this term requires any further construction and we
accord this term its ordinary meaning in the context of the claim.
A routine to store and serially identify sequential data elements
comprising said media content
Patent Owner contends that the claim language would exclude a
system that uses only pre-existing identifiers. Prelim. Resp. 30. Patent
Owner’s construction appears to be mere argument. We are not persuaded
that this term requires any further construction and we accord this term its
ordinary meaning in the context of the claim.
ANALYSIS OF PETITIONER’S PRIOR ART CHALLENGES
Challenges Based on Su
Petitioner contends that Su discloses a client-pull system that assigns
all of the Continuous Object Presentation Units (COPUs) disclosed in
Hollfelder indexes numbered from 0 to n-1, where n denotes the total
number of COPUs. Id. at 17. Petitioner argues that Su’s indexes are the
functional equivalent of serial numbers and that in in the context of an
MPEG video presentation, Su discloses that the client sends a request to a
server that specifies a frame number. Id. at 17–18. Petitioner argues that
requests by the client, in view of the combined teaching of Su and
Hollfelder’s teaching of keeping a record of COPUs (which may be frames
in an MPEG system) disclose the limitation of sending or receiving a request
“for media data elements corresponding to specified serial identifiers.” Id.
As an initial matter, Patent Owner contends that Su is not applicable
as a prior art reference. We addressed this issue extensively in related
IPR2015-01033. There we determined that Petitioner had not carried its
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burden of production to establish that Su was accessible to one of ordinary
skill exercising reasonable diligence. Friendfinder v. WAG Acquisiton, Case
IPR2015-01033, slip op. at 6–13 (PTAB Oct. 19, 2015)(Paper 8, Decision
Denying Institution) (“Friendfinder I”). The analysis we applied in
Friendfinder I concerning the public accessibility of Su also applies in this
proceeding. Thus, we decline to institute on Petitioner’s challenges based on
Su.
Remaining Challenge To Claim 19
The only remaining challenge is Petitioner’s challenge to claim 19 as
anticipated by Diedrich. The text of the Petition, including the claim chart,
concerning this challenge appears to be an almost verbatim copy of
paragraphs 76 and 77 in the declaration of Nat Polish (Exhibit 1008 “Polish
Decl.). Thus, the Polish Declaration contributes little, if anything, to
Petitioner’s arguments. Petitioner argues that Diedrich teaches transmitting
data over a wide area network (WAN), such as the Internet to a client
computer. Pet. 57. According to Petitioner, Diedrich, discloses the client
sending pacing requests, id. (citing Ex. 1012 col. 3, ll. 4–13) and that such
user requests contain a parameter (or serial identifier) to ensure the next
number frame is sent, id. (citing Ex. 1012 col. 10, ll. 55–63). Petitioner also
argues that Diedrich discloses storing the multimedia data in a fixed buffer
and a storage device in terms of frame number (or sequential data elements)
in a form for users. Id.
Patent Owner argues that, in contrast to user requests for media data
elements, Diedrich is directed to a “push” embodiment and discloses
adjusting the speed of the sending station’s delivery of media based on
“pacing requests” made at negotiated time intervals by the client. Prelim
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Resp. 47–48. According to Patent Owner, the subject matter cited by
Petitioner concerning user requests addresses the response of the receiving
station to a “start multimedia session request” signal sent to the receiving
station by the sending station server. Id. at 48 (citing Ex. 1012 col. 8, ll. 35–
38). Patent Owner notes that the receiving station’s response consists of a
set of parameters for the sending station to use in configuring the upcoming
session, rather than a request for media data elements. Id. at 48.
Patent Owner also contends that Diedrich does not disclose a routine
to store and serially identify sequential data elements comprising streaming
data content, as claimed. Id. According to Patent Owner, this limitation
requires that the server serially identify the sequential data elements it stores,
but merely referring to serial identifiers already present in the streaming
media does not “store and serially identify sequential data elements
comprising said streaming media content” as recited in claim 19. Id.
Claim 19 recites a computer with stored program instructions to be
used in preparing streaming media content for transmission by a server. The
program includes a routine to store and serially identify sequential data
elements that comprise the streaming media content in a format that can be
served to users. Claim 19 also recites that the server responds to user
requests for media data elements identified by a serial identifier.
Diedrich discloses that the sending station, e.g., a server, initiates
transmission with a start multimedia session request, including a number of
parameters, to which a receiving station, e.g., a client, responds by
initializing the following parameters utilized by the multimedia
communications interface (Ex. 1012, col. 8, ll. 40–46,; col. 10, ll. 39–47): a
parameter to indicate the set time interval selected for transmission of
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multimedia requests, a parameter to indicate the frame size of the
multimedia information, a parameter to indicate availability of current
storage, a parameter to indicate the minimum data time remaining in the
receiving station, a parameter to indicate the transmission frame, and a
parameter to synchronize the interchange of multimedia data (to ensure that
the sending station correctly transmits the next proper transmission frame
and which may be the last frame number received by the receiving station,
permitting the sending station to use the synchronization parameter to
compute the availability of current storage at the receiving station). Ex.
1012, col. 8, ll. 36–50; col. 10, ll. 41–63.
As Patent Owner notes, although the parameters include frame
numbers, the receiving station is not transmitting requests for particular data
elements, but responding to a request to start a multimedia session from the
sending station. The parameters the server transmits to the receiving station
are not requests for data elements from the receiving station. The
parameters identify the information the receiving station has received, the
next information in the expected sequence, and the ability of the receiving
station to accept additional information. Ex. 1012, col. 10, l. 64–col. 11, l. 6.
The receiving station generates and transmits a multimedia session reply that
includes a pacing parameter, as well as other parameters pertaining to the
transmission of multimedia data. Id. at col. 11, ll. 7–18. A fixed multimedia
buffer is then created, and the receiving station sends a multimedia pacing
request to the sending station. Id. at col. 11, ll. 21–35. Although the
parameters and pacing requests cited by Petitioner are used for purposes of
synchronizing data transfer, we are not persuaded by Petitioner’s argument
that Diedrich discloses the claimed feature “wherein said server responds to
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user requests for media data elements identified by a serial identifier.” Pet.
58.
We are also not persuaded by Petitioner’s argument that Diedrich
discloses the claimed “routine to store and serially identify sequential data
elements comprising said streaming media content, in a format capable of
being served to users by said server.” The subject matter Petitioner cites at
column 4, lines 49–62 of Deidrich describes storing, updating and
maintaining files, generally, but does not disclose the claimed routine to
store and serially identify sequential data elements. Pet. 59. The subject
matter Petitioner cites at columns 8 and 10 of Diedrich concern the receipt of
parameters and transmission of pacing requests between the receiving station
and the sending station, as discussed above, and also do not demonstrate the
claimed routine. Pet. 59–60.
For the reasons discussed above, we are not persuaded that Petitioner
has demonstrated a reasonable likelihood it will prevail in its challenge to
claim 19 and we decline to institute a trial on Petitioner’s challenge to claim
19 as anticipated by Diedrich. 
SUMMARY
We decline to institute an inter partes review of claim 1–28 as
obvious under 35 U.S.C. § 103(a) because Petitioner has not met is burden
of production to establish that Su is applicable prior art.
We are not persuaded that Petitioner has demonstrated a reasonable
likelihood that it will prevail in its challenge to claim 19 as anticipated by
Diedrich and we decline to institute a trial on this ground.

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ORDER
In consideration of the foregoing, we do not institute inter partes
review of claims 1–28 of the ’141 Patent.

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

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