Kojicast, LLC

Patent Trials and Appeals Board

Dec 4, 2020

IPR2019-01118 (P.T.A.B. Dec. 4, 2020)

Trials@uspto.gov Paper 15
571.272.7822 Date: December 4, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

UNIFIED PATENTS INC.,
Petitioner,

v.

KOJICAST, LLC,
Patent Owner.
_______________

IPR2019-01118
Patent 9,749,380 B1
_______________

Before KALYAN K. DESHPANDE, GEORGIANNA W. BRADEN, and
BARBARA A. PARVIS, Administrative Patent Judges.

BRADEN, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

IPR2019-01118
Patent 9,749,380 B1

2

We have jurisdiction to hear this inter partes review under 35 U.S.C.
§ 6, and this Final Written Decision is issued pursuant to 35 U.S.C. § 318(a).
For the reasons that follow, we determine Petitioner has shown by a
preponderance of the evidence that claims 1, 10, 13, and 14 of U.S. Patent
No. 9,749,380 B1 are unpatentable.
I. INTRODUCTION
A. Procedural History
Unified Patents Inc. (“Petitioner”) filed a Petition requesting an inter
partes review of claims 1, 10, 13, and 14 of U.S. Patent No. 9,749,380 B1
(Ex. 1001, “the ’380 patent”). Paper 1 (“Pet.”). Kojicast, LLC (“Patent
Owner”) did not file a Preliminary Response. Pursuant to 35 U.S.C.
§ 314(a), we instituted an inter partes review of all challenged claims on all
proposed grounds of unpatentability. See Paper 11 (“Dec. to Inst.”), 37.
Patent Owner did not file a response after institution of trial. The
parties agreed to file no additional briefs or motions to exclude. See
Ex. 3001. Additionally, the parties agreed to forego oral arguments;
therefore, no oral argument was held.
B. Real Parties-in-Interest
Petitioner certifies that Unified Patents Inc. is the real party-in-
interest. Pet. 1. Patent Owner identifies Kojicast, LLC as the real party-in-
interest. Paper 4 (Patent Owner’s Mandatory Notices).
C. Related Matters
Petitioner informs us of one pending district court proceeding
involving the ’380 patent and two pending district court proceedings
involving the related 9,037,683 patent (“the ’683 patent”), the parent of
IPR2019-01118
Patent 9,749,380 B1

3

the ’380 patent. Pet. 1–2. Patent Owner informs us of two terminated
district court proceedings involving the ’380 patent. Paper 4.
D. The ’380 Patent
The ’380 patent was filed on April 16, 2015, and is titled “Media
Asset Streaming Over Network To Devices.” Ex. 1001, code (54).
The ’380 patent issued on August 29, 2017. Id. at code (45).
It describes devices directed to the “[s]treaming of a media asset from
a cloud server computer to a media playback device.” Id. at code (57). One
embodiment of the ’380 patent is shown in Figure 1, reproduced below.

Figure 1 is an illustration of an exemplary network architecture including
computing device 100, media-playing device 200, communication
circuitry 302, and cloud server computer 500, each interconnected over
network 400, which “can be the Internet.” Id. at 6:29–34, 7:13, Fig. 1.
IPR2019-01118
Patent 9,749,380 B1

4

According to the ’380 patent, “computing device 100 can be a smartphone
[or] cell phone,” while media playing device 200 is suitable for playing
media assets and may have “a display unit” of up to 60 inches for playing
media assets. Ex. 1001, 6:36–52. The ’380 patent states that computing
device 100 and media-playing device 200 can include, or be coupled to,
“close-range communication circuitry” for communication with each other
via “close-range communication” (Id. at 6:61–7:6), but are encased in
different housings. Id. at 6:56–60. Not shown in Figure 1, is the coupling of
media playing device 200 to processor 301. Id. at 9:25–26.
One embodiment of cloud server computer 500 in the ’380 patent is
shown in Figure 6, reproduced below.

Figure 6 is a block diagram illustrating an exemplary configuration cloud
server computer. According to the ’380 patent, “cloud server computer 500
mainly has . . . processor 501, storage 502, communication circuitry 503,
and storage 504.” Ex. 1001, 10:19–24. The ’380 patent states that
“communication circuitry 503 is circuitry for connecting to network 400 to
receive and send data from and to computing device 100 and media-playing
IPR2019-01118
Patent 9,749,380 B1

5

device 200.” Id. at 10:25–28. Processor 501 generally processes
instructions of computer programs stored in storage 502 to execute the
computer programs, while storage 502 stores computer programs to be
executed by processor 501 and user data 600 associated with user IDs. Id.
at 10:39–41. In order to access media assets and stream data, the ’380 patent
discloses that a “user needs to register a unique user ID in cloud server
computer 500.” Ex. 1001, 11:33–35.
In one embodiment of the ’380 patent, once a unique user ID is
established, a user inputs information on a sensitive graphical user interface
(“GUI”) in order to login to cloud server computer 500. Id. at 11:36–12:31.
An example of a login screen on a sensitive GUI is reproduced below in
Figure 8A.

Figure 8A is an illustration of a GUI displayed on a sensitive display of a
computing device. Ex. 1001, 3:1–3. After logging in using GUI 102, shown
above in Figure 8A, a user can purchase, store, and upload media assets to
their cloud server computer 500. Id. at 13:20–15:40. The ’380 patent states
that if a user has one or more media assets stored as user data associated
with his/her user ID in cloud server computer 500, the user can enjoy the
media assets through streaming, because the cloud server computer 500, in
connection with the computing device 100, performs streaming of a media
asset. Id. at 15:44–48. One embodiment of a display on computing
IPR2019-01118
Patent 9,749,380 B1

6

device 100 for selecting a destination for streaming media is shown in
Figure 8J, reproduced below.

Figure 8J is an illustration of a GUI displayed on a sensitive display of a
computing device. Ex. 1001, 3:1–3.
The ’380 patent describes using computing device 100 to select a
media asset for streaming to media-playing device 200. Ex. 1001, 44:47–53.
According to the ’380 patent, computing device 100 receives “progress
information” from media playing device 200 over close-range
communication circuitry, such as that shown in steps S5014 and S5016 of
Figure 62, reproduced below.
IPR2019-01118
Patent 9,749,380 B1

7

Figure 62 is a flowchart illustrating operations performed by the computing
device, the media-playing device, and the cloud server computer.
Ex. 1001, 5:57–60. The ’380 patent states that upon starting the streaming,
cloud server computer 500 sends to media-playing device 200 a notification
that the streaming has been started, and starts sending to media-playing
device 200 progress information indicative of progress of the
streaming (S5014). Id. at 46:13–17, Fig. 62. The ’380 patent further states
that the notification may contain information indicative of the streamed
media asset such as the name of the streamed media asset, the format of the
streamed media asset, the duration of the streamed media asset, and the like.
Id. at 46:17–21.
The ’380 patent discloses that the progress information may indicate
how far the media asset has been streamed within the duration of the media
asset. Ex. 1001, 46:21–23. The ’380 patent also discloses that sensitive
IPR2019-01118
Patent 9,749,380 B1

8

display 102 displays the name of the streamed media asset, a progress bar
indicative of how far the media asset has been played within the duration of
the played media asset, and a graphical menu consisting of the icons for
operation of the streaming. Id. at 46:39–55, Fig. 63.
E. Illustrative Claims
As noted above, Petitioner challenges claims 1, 10, 13, and 14, with
claims 1 and 10 being independent. Challenged independent claims 1
and 10 are reproduced below:
1. A mobile user device, comprising:
communication circuitry through which to establish a first
communication over the Internet with a server storing a
media content and through which to establish a second
communication over a close-range communication network
with a media playback device, wherein the server and the
media playback device are identified by respective discrete
IP addresses distinct from the mobile user device;
a processor; and
a memory storing a computer program including instructions
which, when executed by the processor, cause the mobile
user device to perform operations comprising:
invoking one of a first streaming that delivers the media content
destined to the mobile user device and a second streaming
that delivers the media content destined to the media
playback device;
when the first streaming is invoked, receiving the first streaming
from the server over the first communication, and playing
back the streamed media content on a first graphical user
interface;
when the second streaming is invoked and the streamed media
content is played back by the media playback device based
on the second streaming, receiving progress information
indicative of progress of the ongoing second streaming from
the media playback device over the second communication,
and displaying how far the media content is played within a
IPR2019-01118
Patent 9,749,380 B1

9

duration of the media content on a second graphical user
interface based on the progress information.
Ex. 1001, 49:51–50:13.
10. A mobile user device, comprising:
communication circuitry through which to establish a first
network communication with a server and through which to
establish a second network communication with one or more
media playback devices, wherein the server and the media
playback devices are identified by respective discrete IP
addresses distinct from the mobile user device;
a first graphical user interface active during a first streaming that
delivers a media content directed from the server to the
mobile user device over the first network communication
being in progress, on which the media content is played back
based on the first streaming being received from the server
over the first network communication; and
a second graphical user interface active during a second
streaming that delivers the media content directed from the
server to one of the one or more media playback devices
being in progress so that the streamed media content is
played back by the one media playback device, on which
how far the media content is played is displayed based on
progress information being received from the one media
playback device over the second network communication,
wherein the progress information is indicative of progress of
the second streaming.
Id. at 51:33–52:13.
IPR2019-01118
Patent 9,749,380 B1

10

F. Evidence of Record and Asserted Challenges to Patentability
Petitioner asserts the following challenges to patentability (Pet. 4):
Claims Challenged 35 U.S.C. §1 References/Basis
1, 10, 13, 14 103 Klein2, Blanchet3, Spencer4
Petitioner submits (i) the Declaration of Henry H. Houh, Ph.D.
(“Dr. Houh”) in Support of Petition for Inter Partes Review (Ex. 1014) and
(ii) the Declaration of Ingrid Hsieh-Yee, Ph.D. (“Dr. Hsieh-Yee”) (Ex. 1015)
regarding the public availability of the Blanchet reference.
II. ANALYSIS
A. Legal Standards
A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including: (1) the scope and content of the prior art;

1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(September 16, 2011) (“AIA”), included revisions to 35 U.S.C. § 100 et seq.
effective on March 16, 2013. Because the ’380 patent is a child of the ’683
patent that issued from an application filed before March 16, 2013, we apply
the pre-AIA versions of the statutory bases for unpatentability.
2 U.S. Patent No. 8,537,753 B2, issued Sep. 17, 2013 (Ex. 1006, “Klein”).
3 Blanchet M., “Migrating to IPv6: A practical guide to implementing IPv6
in mobile and fixed networks,” Wiley & Sons, Ltd., 2006 (Ex. 1008,
“Blanchet”).
4 U.S. Patent No. 8,990,364 B2, issued Mar. 24, 2015 (Ex. 1007, “Spencer”).
IPR2019-01118
Patent 9,749,380 B1

11

(2) any differences between the claimed subject matter and the prior art;
(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
i.e., secondary considerations. See Graham v. John Deere Co. of Kansas
City, 383 U.S. 1, 17–18 (1966). “[I]t is error to reach a conclusion of
obviousness until all [the Graham] factors are considered.” Apple v.
Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en banc)
(citations omitted). “This requirement is in recognition of the fact that each
of the Graham factors helps inform the ultimate obviousness determination.”
Id.
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
(Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)). This burden of persuasion never
shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
inter partes review). Furthermore, Petitioner cannot satisfy its burden of
proving obviousness by employing “mere conclusory statements.”
In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
Thus, to prevail in an inter partes review, Petitioner must explain how
the proposed combinations of prior art would have rendered the challenged
claims unpatentable. At this final stage, we determine whether a
preponderance of the evidence of record shows that the challenged claims
would have been obvious over the cited prior art.
IPR2019-01118
Patent 9,749,380 B1

12

B. Level of Ordinary Skill in the Art
In determining whether an invention would have been obvious at the
time it was made, we consider the level of ordinary skill in the pertinent art
at the time of the invention. Graham, 383 U.S. at 17. “The importance of
resolving the level of ordinary skill in the art lies in the necessity of
maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The person of ordinary
skill in the art is a hypothetical person who is presumed to have known the
relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573,
1579 (Fed. Cir. 1995). The level of ordinary skill in the art may be reflected
by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
Cir. 2001). Factors that may be considered in determining the level of
ordinary skill in the art include, but are not limited to, the types of problems
encountered in the art, the sophistication of the technology, and educational
level of active workers in the field. GPAC, 57 F.3d at 1579. In a given case,
one or more factors may predominate. Id. Generally, it is easier to establish
obviousness under a higher level of ordinary skill in the art. Innovention
Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A
less sophisticated level of skill generally favors a determination of
nonobviousness . . . while a higher level of skill favors the reverse.”).
Petitioner argues that a person of ordinary skill in the art relevant to
the ’380 patent would have had “a B.S. degree in Electrical Engineering,
Computer Engineering, or Computer Science, or equivalent training, as well
as at least two years of technical experience in the field of computer
networking, including streaming media over a computer network.” Pet. 19–
20. Petitioner relies on the Declaration of Dr. Houh to support its
IPR2019-01118
Patent 9,749,380 B1

13

contentions. Dr. Houh proffers the same level of skill as that argued by
Petitioner but also states that “a lower level of education may be
compensated by additional work experience (e.g., 5–6 years).” Ex. 1014,
¶ 32.
Patent Owner does not contest Petitioner’s definition of a person of
ordinary skill in the art.
Based on our review of the ’380 patent, the types of problems and
solutions described in the ’380 patent and cited prior art, and the testimony
of Dr. Houh, we adopt and apply Petitioner’s definition of a person of
ordinary skill in the art. Specifically, we find that a person of ordinary skill
in the art at the time of the claimed invention would have had “a B.S. degree
in Electrical Engineering, Computer Engineering, or Computer Science, or
equivalent training, as well as at least two years of technical experience in
the field of computer networking, including streaming media over a
computer network.”
C. Claim Construction
In an inter partes review for a petition filed on or after November 13,
2018, a claim “shall be construed using the same claim construction standard
that would be used to construe the claim in a civil action under 35 U.S.C.
282(b).” See Changes to the Claim Construction Standard for Interpreting
Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
Fed. Reg. 51,340 (Oct. 11, 2018) (now codified at 37 C.F.R. § 42.100(b)
(2019)). In applying this claim construction standard, we are guided by the
principle that the words of a claim “are generally given their ordinary and
customary meaning,” as understood by a person of ordinary skill in the art in
question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303,
IPR2019-01118
Patent 9,749,380 B1

14

1312−13 (Fed. Cir. 2005) (en banc) (citation omitted). “In determining the
meaning of the disputed claim limitation, we look principally to the intrinsic
evidence of record, examining the claim language itself, the written
description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
v. Medtronic Sofamor Danek, Inc., 469 F.3d 1006, 1014 (Fed. Cir. 2006)
(citing Phillips, 415 F.3d at 1312–17). There is a “heavy presumption,”
however, “that a claim term carries it’s ordinary and customary meaning.”
CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)
(citation omitted).
Petitioner proposes to construe “streaming” as “means providing a
stream of the media asset in a manner where a recipient of the stream is able
to play the stream.” Pet. 22–23. Petitioner argues that its proposed
construction is the explicit definition provided by the ’380 patent. Id. at 23
(citing Ex. 1001, 2:37–39). Patent Owner has not addressed claim
construction or provided a proposed construction for this term.
Based on our reading of the record, we agree with Petitioner and
interpret “streaming” to mean “sending or receiving a stream of the media
asset in a manner where a recipient of the stream is able to play the stream.”
We do not expressly construe any other term. See, e.g., Nidec Motor
Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
(Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
controversy, and only to the extent necessary to resolve the controversy.”).
IPR2019-01118
Patent 9,749,380 B1

15

D. Alleged Obviousness of Claims 1, 10, 13, and 14 of the ’380 patent in
View of Klein and Blanchet in further view of Spencer
Petitioner contends claims 1, 10, 13, and 14 of the ’380 patent are
unpatentable under 35 U.S.C. § 103 as obvious in view of Klein and
Blanchet in further view of Spencer. Pet. 23–75. Although Patent Owner
did not respond to Petitioner’s contentions (e.g., Patent Owner did not
address any of the specific claim limitations, rationales for combining the
prior art, etc.), Petitioner still carries the burden to show that each element of
the challenged claims would have been obvious by a preponderance of the
evidence. See Dynamic Drinkware, 800 F.3d at 1378. In making our
determinations below, we are, thus, mindful that it is Petitioner’s burden to
make the necessary showing.
For reasons that follow, we determine Petitioner has established by a
preponderance of the evidence that claims 1, 10, 13, and 14 of the ’380
patent are unpatentable under 35 U.S.C. § 103 as obvious in view of Klein
and Blanchet in further view of Spencer.
1. Overview of Klein (Ex. 1006)
Klein is a U.S. Patent titled “In-House Location Based Services.”
Ex. 1006, code (54). Klein is related to streaming media content from a
server over a network to one of a plurality of devices in close proximity to
each other. Klein discloses the use of a number of electronic devices as
elements of a network for the transmission of data, including media content.
Id. at 2:7–10, 3:64–4:16. Klein teaches the use of a Wi-Fi access point (AP)
that can communicate via wireless communication protocols to a first
television or a second television, or a mobile device, as shown in Figure 3
reproduced below.
IPR2019-01118
Patent 9,749,380 B1

16

Figure 3 illustrates an arrangement of a Wi-Fi AP, a first television TV 1, a
second television TV 2, and a user mobile device such as, for example, a
cellular phone, a smart phone, a handheld personal computer, or other
nomadic/mobile device. Ex. 1006, 2:16–21. Figure 3 also illustrates that
televisions TV1 320 and TV2 330 may be equipped to receive and display
media content such as, for example, a still image, motion video, web pages,
and other digital information communicated via the AP 310 over wireless
communication paths 315 and 325, respectively. Id. at 6:42–47. According
to Klein, mobile device 340 wirelessly discriminates between first television
set TV1 320 and second television set TV 2 330. Id. at 6:10–19.
Klein further discloses that a graphical user interface (GUI) may
appear as part of a web page on the display of a user’s mobile device, as
shown below in Figure 4B. Id. at 8:29–31.
IPR2019-01118
Patent 9,749,380 B1

17

Figure 4B is an illustration of a window of a GUI that may appear, for
example, as part of a web page on the display of a user mobile device such
as the user mobile device of Figure 3. Ex. 1006, 2:37–40. According to
Klein, window 400, shown in Figure 4B above, is provided when viewing
media content and includes progress bar 420 representing the entirety of the
motion video file, and indicator 415 to show the relative position within the
displayed file of the currently displayed image. Id. at 8:32–40.
One embodiment in Klein discloses sending media content from a
web server to a mobile device via a web server, as shown in Figure 6A
reproduced below.

Figure 6A is a block diagram illustrating the elements and information flow
of a system in which a web page provided by a web server may be
IPR2019-01118
Patent 9,749,380 B1

18

automatically augmented by a media gateway using topological information
gathered by a user mobile device. Ex. 1006, 2:52–57. As shown in
Figure 6A above, system 600 comprises web server 602 with storage 605, a
communication network represented as web 630, media gateway 620 having
topological database 655, and user mobile device 660 with browser 675. Id.
at 11:38–56. Klein also discloses that system 600 illustrated in Figure 6A
includes electronic device 680 capable of rendering media content from web
server 602. Id. at 11:65–12:1. Klein specifically teaches that user mobile
device 660 and electronic device 680 are equipped with wireless
communication circuitry to enable communication with each other when in
proximity to one another. Id. at 12:1–5.
2. Overview of Blanchet (Ex. 1008)
Blanchet is a textbook that describes certain versions of the Internet
Protocol, IPv4 and IPv6. Specifically, Blanchet teaches the rationale for
moving from IPv4 to IPv6 and the practical issues associated with
implementing IPv6 in both mobile and fixed networks. See generally
Ex. 1008, Chapter 1. According to Blanchet, IPv4 was widely used since at
least 1990 (id. at 2, 27), while the first version of IPv6 was specified in 1995
(id. at 28). Blanchet teaches that IP addresses are an essential component of
the Internet Protocol. See generally id. at Chapter 4. Blanchet explains that
while addresses in IPv4 are represented using 32 bits (id. at 2), which
supports a very large number of unique addresses, the addresses for devices
in IPv6 are represented using 128 bits, which is incredibly large. Ex. 1008,
61.
IPR2019-01118
Patent 9,749,380 B1

19

3. Overview of Spencer (Ex. 1007)
Spencer is a U.S. Patent titled “Architecture for Content Awareness
and Control Among Peer-To-Peer Communication Devices.” Ex. 1007,
code (54). Spencer is related to collaboratively presenting content that is
distributed among a plurality of communication devices. Id. at Abstract.
One embodiment of Spencer is illustrated in Figure 1, reproduced below.

Figure 1 is a block diagram illustrating first communication device 102,
second communication device 104, and third communication device 106
(also referred to as a host device 106) in communication with other ones of
the communication devices 102, 104, 106. Id. at 3:24–27. In this
embodiment of Spencer a group of people may collaboratively select, for
presentation at content presentation device 108, a play list (also referred to
herein as a play queue) of content files that are distributed among all
communication devices 102, 104, 106. Id. at 3:34–37. The content files
may be audio files (e.g., music files), video files, still image files, and/or
other types of files. Id. at 3:38–40. According to Spencer, any of
IPR2019-01118
Patent 9,749,380 B1

20

communication devices 102, 104, 106 may implement controller
functionality to operate as a controller device that has an awareness of
content on the communication devices 102, 104, 106 that implement the
source functionality; can affect what content is listed in the play list; and can
control the presentation of the content. Ex. 1007, 3:64–4:3. In this
embodiment of Spencer, host communication device 106 presents the
content by passing the content to content presentation device 108, but host
communication device 106 may also have a display and/or audio system to
present the content to the people in the group. Id. at 4:7–11. Spencer
discloses that the content files may be “audio files (e.g., music files), video
files, still image files, and/or other types of files” (id. at 3:38–40) and that
“the controllers generally operate to control the play of content (e.g., audio,
video, or image media) on the player” (id. at 4:47–49).
Spencer teaches that once a controller has joined a session, it can
discover and select available media sources for playback via the controller.
Id. at 6:35–38. When a player starts playback of a specific entry in a play
queue, the player will establish session 344 with the source that contains that
specific media (id. at 6:51–53) as shown in Figure 6, reproduced below.

IPR2019-01118
Patent 9,749,380 B1

21

Figure 6 is a diagram illustrating a player connected to one of Spencer’s
sources for streaming a currently playing media. Ex. 1007, 6:53–55.
Additionally, according to Spencer, the controllers are still connected to the
player via session 342 so they can receive playback progress updates and
control the play/pause state as well as tell the player to seek to a new
position within the media. Id. at 6:55–59. In the embodiment shown in
Figure 6, one of the sources is not actively part of any session since the
player is streaming from only one source and neither controller is browsing
either of the two sources. Id. at 6:56–62.
One embodiment of a graphical user interface in Spencer that includes
control to remotely control, from client communication device 102, the
presentation of media content is illustrated in Figure 18, reproduced below.

Figure 18 is an illustration of a GUI that includes rewind, play, stop, and fast
forward buttons that enable the user of client communication device 1002 to
IPR2019-01118
Patent 9,749,380 B1

22

control the corresponding operations at host communication device 1006.
Ex. 1007, 11:7–11. In addition, the user interface depicted in Figure 18,
above, includes a progress bar that depicts the progress of a content file that
is currently being played. Id. at 11:7–11.

4. Analysis of Cited Art as Applied to Independent Claim 1
a. “a mobile device, comprising”
Claim 1 recites as its preamble “a mobile device, comprising . . . .”
Ex. 1001, 49:51.
Petitioner contends that to the extent the preamble is considered
limiting, Klein discloses a “user mobile device.” Pet. 35–36 (citing
Ex. 1006, 4:3–6, 6:4–19, 11:43–47). According to Petitioner, Klein
discloses that user mobile devices 140, 340, 660 are “nomadic/mobile”
devices (e.g., smart phones) having communication circuitry for
communicating with other devices (e.g., access points, televisions) over Wi-
Fi, Bluetooth, Near Field Communication (NFC), infrared (IR), and other
wireless communication technologies. Id. at 36 (citing Ex. 1006, 4:16–31,
6:4–19, 11:58–65). Thus, Petitioner concludes Klein’s “user mobile device”
is an example of a mobile user device as recited in claim 1. Id. at 36–37.
“Whether to treat a preamble term as a claim limitation is determined
on the facts of each case in light of the claim as a whole and the invention
described in the patent.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354,
1358 (Fed. Cir. 2010) (internal quotation marks omitted). “Absent clear
reliance on the preamble in the prosecution history, or in situations where it
is necessary to provide antecedent basis for the body of the claim, the
preamble generally is not limiting.” Symantec Corp. v. Computer Assoc.
IPR2019-01118
Patent 9,749,380 B1

23

Int’l, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008) (internal quotation marks
omitted). Additionally, preamble language that merely states the purpose or
intended use of an invention generally is not treated as limiting the scope of
a claim. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough
Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003); Rowe v. Dror, 112 F.3d 473,
478 (Fed. Cir. 1997). Yet, when the limitations in the body of the claim rely
upon or derive essential structure from the preamble, then the preamble acts
as a necessary component of the claimed invention and is limiting. See
Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).
Based on the evidence of record, regardless of whether the preamble
is limiting, we determine Petitioner has shown by a preponderance of the
evidence that Klein discloses a “mobile device.”
b. “communication circuitry through which to establish [i] a
first communication over the Internet with a server storing a
media content and through which to establish [ii] a second
communication over a close-range communication network
with a media playback device”
Claim 1 recites “communication circuitry through which to establish
[i] a first communication over the Internet with a server storing a media
content and through which to establish [ii] a second communication over a
close-range communication network with a media playback device.”
Ex. 1001, 49:52–56.
Petitioner contends Klein meets this claim limitation because it
discloses that its mobile device 340 supports wireless communications with
access point 310 and with other devices 320, 330 (e.g., televisions) in the
vicinity. Pet. 37 (citing Ex. 1006, 6:4–19). According to Petitioner, Klein
further describes “wireless communication circuitry” as “elements of an
IPR2019-01118
Patent 9,749,380 B1

24

electronic device that permit wireless communication with . . . for example,
wireless base stations, access points, and terminals of wireless wide area,
local area, personal area, and near-field networks.” Id. (citing Ex. 1006,
3:45–51, 4:16–32; Ex. 1014 ¶¶ 94–95).
Petitioner then contends Klein teaches that its mobile device with
communication circuitry communicates over the Internet with a server.
Pet. 38 (citing Ex. 1006, 12:26–31, Fig. 6A). Petitioner further argues Klein
teaches mobile device 660 may communicate wirelessly with electronic
device 680 when in proximity to each other. Pet. 38 (citing Ex. 1006, 12:1–
5 (“[T]he user mobile device 660 and the electronic device 680 are equipped
with wireless communication circuitry to enable them to communicate with
each other when in proximity to one another.”), 7:9–14; Fig. 3). According
to Petitioner, Klein further teaches that the types of wireless communication
circuitry it considers is close-range circuitry that parallels the disclosure of
the ’380 patent’s close-range communication circuitry. Id. at 38–39 (citing
Ex.1006, 4:24–32; Ex. 1014 ¶ 98).
Petitioner, thus, concludes that Klein’s disclosure of mobile
device 660 having circuitry for wireless communication with an access
point, which acts as a conduit to server 602 via the Internet, server 602
storing media content for streaming to mobile device 660 (or electronic
device 680), and having circuitry for wireless communication with
electronic device 680 (example “media playback player” as claimed) are
teachings of this claim limitation. Id. at 39 (citing Ex. 1014 ¶ 99).
After our review of the evidence of record, we determine Petitioner
has shown by a preponderance of the evidence that Klein’s disclosure
satisfies the challenged claim limitation.
IPR2019-01118
Patent 9,749,380 B1

25

c. “wherein the server and the media playback device are
identified by respective discrete IP addresses distinct from
the mobile user device”
Claim 1 recites “wherein the server and the media playback device are
identified by respective discrete IP addresses distinct from the mobile user
device.” Ex. 1001, 49:56–59.
Petitioner contends the combined teachings of Klein and Blanchet
would have rendered this limitation obvious to a person of ordinary skill in
the art at the time of the alleged invention of the ’380 patent. Pet. 39.
Petitioner first argues that Klein’s Figure 6A presents “an embodiment of an
architecture for delivering media content to a mobile device 660 and
electronic device 680 over the Internet from a server 602 storing content.”
Id. at 39–40 (citing Ex. 1006, Fig. 6A). Petitioner then argues that the term
“IP” was well known as referring to “Internet Protocol,” and the term “IP
address” refers to an address of a device connected to the Internet. Id. at 40
(citing Ex. 1014 ¶ 102 (citing Ex. 1039)).
According to Petitioner, a communication is established “over the
Internet,” and IP addresses were well known as being used to identify
devices that use the Internet Protocol to communicate over the Internet and
that both IPv4 and IPv6 refer to versions of the IP protocol developed before
the ’380 patent. Id. at 40 (citing Ex. 1008, 1, 33–34). Petitioner notes that
each version provides a large address space, enabling large numbers of
nodes to have unique addresses. Id. (citing Ex. 1008, 61 (“IPv4 addresses
are 32 bits wide . . . IPv6 addresses are 128 bits wide…”), 30 (the 128-bit
address space in IPv6 “enables all nodes to be addressable and reachable”);
Ex. 1014 ¶ 103).
IPR2019-01118
Patent 9,749,380 B1

26

We note that both IPv4 and IPv6 provide for devices communicating
via the Internet. Ex. 1008, chapter 1. Additionally, we credit Dr. Houh’s
testimony regarding the identification of each communication device in
Klein by a unique IP addresses as discussed in Blanchet. See Ex. 1014
¶¶ 104–106. Accordingly, based on the evidence of record, we agree with
Petitioner and determine it has shown by a preponderance of the evidence
that the combined teachings of Klein and Blanchett at least suggest the
limitation “wherein the server and the media playback device are identified
by respective discrete IP addresses distinct from the mobile user device” as
required by challenged claim 1.
d. “a processor”
Claim 1 recites “a processor.” Ex. 1001, 49:60. Petitioner contends
this limitation is met by Klein alone or Klein in view of Spencer because
Klein discloses various implementations of its “mobile device,” and that it’s
“invention may be realized in hardware, software, or a combination of
hardware and software.” Pet. 41 (citing Ex. 1006, 18:66–19:2, 20:48–49).
According to Petitioner, it would have been obvious to a person of ordinary
skill in the art that Klein’s mobile device included a processor because (1) a
processor was typically included in mobile devices and (2) the explicit
teachings of Spencer disclosing “processing components,” as examples of a
“processor” such as that recited in claim 1. Id. at 41–42 (citing Ex. 1007,
9:50–57 (“[P]rocessing components” in a communication device “may
include a video processor, modem processor, DSP, graphics processing unit
(GPU), and other processing components,” Fig. 11; Ex. 1014 ¶¶ 108–110).
Petitioner, thus, concludes that Klein alone or Klein in view of Spencer
would have rendered a “processor” obvious. Pet. 42 (citing Ex. 1014 ¶ 111).
IPR2019-01118
Patent 9,749,380 B1

27

After our review of the evidence of record, we determine Petitioner
has met its burden by a preponderance of the evidence that Klein’s
disclosure regarding its “mobile device” includes a processor, thereby
satisfying the challenged claim limitation. See Ex. 1006, 18:66–19:2,
20:48–49.
e. “a memory storing a computer program including instructions
which, when executed by the processor, cause the mobile user
device to perform operations comprising”
Claim 1 recites “a memory storing a computer program including
instructions which, when executed by the processor, cause the mobile user
device to perform operations comprising.” Ex. 1001, 49:61‒63.
Petitioner contends this limitation is met by Klein because Klein
discloses that its mobile device has a “memory.” Pet. 42 (citing Ex. 1006,
7:36–39). Petitioner notes that Klein also discloses a “computer program
product” that causes a “computer system” to carry out methods. Id. (citing
Ex. 1006, 20:60–21:3).
Petitioner relies on the testimony of Dr. Houh to support its position.
Dr. Houh testifies that “it would have been obvious that the ‘computer
program product’ is stored in a memory, and the instructions cause [sic] in
the ‘computer program product’ cause the processor to perform the
operations disclosed herein, because this represents fundamental knowledge
of a [person of ordinary skill in the art], as disclosed by Spencer, for
example.” Ex. 1014 ¶¶ 112–113.
Petitioner argues that Spencer “confirms a [person of ordinary skill in
the art]’s understanding that a ‘memory”’ in a communication device stores
‘executable code’ for a ‘processing component’ that “may include a video
IPR2019-01118
Patent 9,749,380 B1

28

processor, modem processor, DSP, graphics processing unit (GPU), and
other processing components.” Pet. 42–43 (citing Ex. 1007, 9:45–57).
According to Petitioner, Spencer’s “processing components 1126” execute
the instructions, including those for ‘effectuating’ communication via one of
the ‘N transceiver chains’.” Id. at 43 (citing Ex. 1007, 9:50–65). Thus,
Petitioner concludes that Klein in view of Spencer would have rendered a
“memory” obvious. Id. (citing Ex. 1014 ¶¶ 114–115).
After our review of the evidence of record, we agree with Petitioner
and determine it has shown by a preponderance of the evidence that Klein in
view of Spencer satisfies the challenged claim limitation. See Ex. 1006,
7:36–39, 20:60–21:3; Ex. 1007, 9:45–65.
f. “invoking one of a first streaming that delivers the media
content destined to the mobile user device and a second
streaming that delivers the media content destined to the media
playback device”
Claim 1 recites “invoking one of a first streaming that delivers the
media content destined to the mobile user device and a second streaming
that delivers the media content destined to the media playback device.”
Ex. 1001, 49:64‒67.
Petitioner contends this limitation is met by Klein because Klein
discloses graphical user interfaces (GUIs) on a mobile device to allow a user
to invoke and direct streaming media content to either the mobile device (an
example “mobile user device”) or another electronic device in a local area,
such as a “television set” (an example “media playback device”) in a home.
Pet. 43 (citing Ex. 1006, 5:44–54, Figs. 4A, 4B). Petitioner argues that
Klein discloses that the media content is delivered for viewing via
IPR2019-01118
Patent 9,749,380 B1

29

“streaming,” by providing a stream of the media content where a recipient,
for example any “electronic devices in proximity to the mobile device,” are
able to reproduce “the streaming media content.” Id. at 43–44 (citing
Ex. 1006, Abstract). According to Petitioner, Klein discloses a user
selecting delivery, using a GUI on a mobile device, of a first streaming to
the mobile device (an example “mobile user device”) or a second streaming
to a television (an example “media playback device”). Id. at 44 (citing
Ex. 1014 ¶¶ 116–118). Thus, Petitioner concludes that by “selecting
icon 440 in either Figure 4A or Figure 4B, a user invokes “a first streaming
that delivers the media content destined to the mobile user device” and by
alternatively selecting icon 450 in Figure 4B the user invokes “a second
streaming that delivers the media content destined to the media playback
device” (e.g., a television), thereby disclosing the challenged limitation of
claim 1. Id. at 46–47 (citing Ex. 1014 ¶ 123).
After our review of the evidence of record, we determine Petitioner
has met its burden by a preponderance of the evidence that Klein’s system
satisfies the challenged claim limitation. See Ex. 1006, 5:44–54, 8:49–59,
Figs. 4A, 4B.
g. “[i] when the first streaming is invoked, receiving the first
streaming from the server over the first communication, and
[ii] playing back the streamed media content on a first
graphical user interface”
Claim 1 recites “[i] when the first streaming is invoked, receiving the
first streaming from the server over the first communication, and [ii] playing
back the streamed media content on a first graphical user interface.”
Ex. 1001, 50:1‒4.
IPR2019-01118
Patent 9,749,380 B1

30

Petitioner contends this limitation is met by Klein because Klein
discloses that media content is delivered from server 602 over the Internet
and via media gateway 620 to mobile device 660. Pet. 47 (citing Ex. 1006,
3:45–51, 4:16–32, 5:44–54, 6:4-19, 8:49–59, Fig. 4A, 4B, 6A). Petitioner
argues that the link between the mobile device and the web server storing the
media content is an example of claimed “the first communication.” Id.
(citing Ex. 1014 ¶¶ 124–126).
Petitioner then contends that Klein would have rendered this
limitation obvious to a person of ordinary skill in the art at the time of the
invention. Id. According to Petitioner, when media, such as video, is played
back after selecting icon 440 on Klein’s “window 400 of an exemplary
graphical user interface” “provided when viewing media content in the form
of motion video,” the graphical user interface is a “first graphical user
interface.” Id. (citing Ex. 1014 ¶ 127). Petitioner provides as an example
Klein’s disclosure that “graphical user interface may be used for viewing
files of motion video.” Id. (citing Ex. 1006, 8:33–37). Petitioner argues that
given that window 400 is a “graphical user interface,” it would have been
obvious to give the user the ability to manipulate indicator 415 by moving
indicator 415 to the desired time in a video. Pet. 47–48 (citing Ex. 1014
¶ 128). Thus, Petitioner concludes that “the disclosure of media being
played on the display of Klein’s mobile device, the display including an
indicator 415 and a progress bar 420, renders obvious the claimed ‘playing
back the streamed media content on a first graphical user interface’ once
icon 440 is selected.” Id. at 48 (citing Ex. 1014 ¶ 129).
Petitioner further contends that Klein in view of Spencer also would
have rendered this limitation obvious to a person of ordinary skill in the art
IPR2019-01118
Patent 9,749,380 B1

31

at the time of the invention. Id. Petitioner notes that Klein discloses playing
back media, such as video, on the mobile device after selecting icon 440 on
Klein’s “window 400 of an exemplary graphical user interface,” while
Spencer discloses “controls” on a user interface to control the “presentation
of content,” including “rewind, play, stop, and fast forward buttons.” Id.
(citing Ex. 1007, 11:5–14). According to Petitioner, “[t]he controls are
presented in the context of client device taking on the role of a ‘controller’ to
remotely control the presentation of content.” Id. Petitioner argues,
however, that Spencer is clear this is merely an example in which client
device 1002 is used as a controller because “each communication
device 1002, 1006 may implement any combination of a source, controller,
and player.” Id. (citing Ex. 1007, 10:17–19). Thus, Petitioner contends
Spencer discloses a client device used as both controller and player for
playback of media, such as audio or video. Id. Petitioner concludes that
“[w]hen video is displayed on Klein’s mobile device and Spencer’s controls
for rewind, play, stop and fast forward are displayed on Klein’s mobile
device during media playback as shown in Spencer’s Figure 19, reproduced
below, the resulting graphical user interface is substantially similar to
example user interfaces from the ’380 patent specification.” Pet. 48–49
(citing Ex. 1001, 16:44–60; Ex. 1014 ¶ 131).
After our review of the evidence of record, we determine Petitioner
has met its burden by a preponderance of the evidence that Klein alone or
Klein in view of Spencer satisfies the challenged claim limitation. See
Ex. 1006, 3:45–51, 4:16–32, 5:44–54, 6:4-19, 8:49–59, Fig. 4A, 4B, 6A.
IPR2019-01118
Patent 9,749,380 B1

32

h. “when the second streaming is invoked and the streamed
media content is played back by the media playback device
based on the second streaming, [i] receiving progress
information indicative of progress of the ongoing second
streaming from the media playback device over the second
communication, and [ii] displaying how far the media content
is played within a duration of the media content on a second
graphical user interface based on the progress information.”
Claim 1 recites “when the second streaming is invoked and the
streamed media content is played back by the media playback device based
on the second streaming, [i] receiving progress information indicative of
progress of the ongoing second streaming from the media playback device
over the second communication, and [ii] displaying how far the media
content is played within a duration of the media content on a second
graphical user interface based on the progress information.” Ex. 1001,
50:9‒13.
Petitioner contends Klein in view of Spencer would have rendered this
limitation obvious to a person of ordinary skill in the art at the time of the
invention. Pet. 50. Petitioner argues that when icon 450 is selected on
Klein’s mobile device, a “second streaming is invoked and the streamed
media is played back by the media playback device based on the second
streaming,” as claimed and “as a result of selecting icon 450 (seen in
Figure 4B), media content is streamed to selected electronic device, such as
device 680.” Pet. 50 (citing Ex. 1006, 11:7‒20, 13:17‒20, Figs. 4B, 6A;
Ex. 1014 ¶ 135).
Petitioner then argues Spencer discloses a generic controller in
communication with a player, which is connected to a source of media
content and that “controllers generally operate to control the play of content
IPR2019-01118
Patent 9,749,380 B1

33

(e.g., audio, video, or image media) on the player.” Pet. 51 (citing Ex. 1007,
4:45–49, 6:53–55). Petitioner further argues Spencer discloses that any of
the “player,” “controller” or “source” may be implemented by a mobile
device, such as a smartphone or tablet. Id. (citing Ex. 1007, 3:21–27,
3:45–48, 4:50–60; Ex. 1014 ¶¶ 136–139). According to Petitioner,
Spencer’s controller receives playback progress updates from a player:
“[T]he controllers are still connected to the player via the session 342 so
they can receive playback progress updates [from the player] and control the
play/pause state as well as tell the player to seek to a new position within the
media.” Id. at 52 (emphasis omitted) (citing Ex. 1007, 6:53–59; Ex. 1014
¶ 139). Thus, Petitioner concludes that Klein’s mobile device 660 in
communication with media playback device 680, with Klein’s mobile device
660 “receiv[ing] playback progress updates” as disclosed in Spencer, at least
teaches or suggests “receiving progress information indicative of progress of
the ongoing second streaming from the media playback device over the
second communication,” as claimed. Id. at 52 (citing Ex. 1014 ¶ 140).
Petitioner further contends Klein describes capability to perform
“displaying how far the media content is played within a duration of the
media content on a second graphical user interface based on the progress
information” because Klein discloses various aspects of window 400 as seen
in Figure 4A, with numbering also applying to Figure 4B, including:
a progress bar 420 representing the entirety of the motion video
file, and an indicator 415 to show the relative position within the
displayed file of the currently displayed image [and] [a]n actual
indication of the current elapsed time and the total duration of
the motion video file is shown as elapsed and total time indicator
435. During viewing, the position of the indicator 415 along the
IPR2019-01118
Patent 9,749,380 B1

34

progress bar 420 represents relative progress in playback of the
motion video file.
Pet. 52 (citing Ex. 1006, 8:37–48; Ex. 1014 ¶ 141).
Petitioner acknowledges that Klein does not explicitly disclose its
mobile device receiving playback progress updates from an associated
electronic device, such as a television set, but nonetheless argues that it
would have been obvious to display how far media content on the associated
electronic device is played using Klein’s “progress bar” on the mobile
device, based on Spencer’s disclosure of “receiv[ing] playback progress
updates” from a “player,” because Spencer, like Klein, also discloses a
“progress bar” to display progress information. Pet. 54 (citing Ex. 1014
¶ 143). Petitioner cites to Klein’s Figure 4B, with progress updates shown
on progress bar 420 while streaming media, as an example of the “second
graphical user interface.” Id. Petitioner argues that to the extent the “second
graphical user interface” includes more features, Spencer also explicitly
discloses using this progress information to provide remote control of a
media player and providing buttons on a graphical user interface, such as
would have been provided on Klein’s display, to provide the control. Id.
at 54–55 (citing Ex. 1007, 11:5–15, 11:31–36, Figs. 18, 19).
After our review of the evidence of record, we agree with Petitioner’s
position regarding Klein and Spencer. Accordingly, we determine Petitioner
has met their burden by a preponderance of the evidence that Klein in view
of Spencer satisfies the challenged claim limitation.
i. Rationale to Combine Klein, Blanchet, and Spencer
Petitioner contends a person of ordinary skill in the art would have
many motivations to combine the teachings of Spencer with the teachings of
IPR2019-01118
Patent 9,749,380 B1

35

Klein, because: (1) both references are in the same field as the ’380 patent
of streaming media from a computer over a network to devices (Pet. 31
(citing Ex. 1006, Fig. 6A; Ex. 1007, Figs. 1, 6, 1:23–27, 6:53–56)); and (2)
both references address graphical user interfaces for playing media content
on various networked devices (id. (citing Ex. 1006, 1:38–39, 2:32–43,
Figs. 4A, 4B; Ex. 1007, 3:15–17, Figure 18)) and combining the references
yields the obvious, predictable, and beneficial results of (i) specifying, in
detail, how Klein’s mobile device (e.g., mobile device 660 in Figure 6A)
would obtain progress information to present on its progress bar (e.g.,
progress bar 420 in Figure 4B) when the media stream is sent to another
electronic device (e.g., electronic device 680 in Figure 6A); (ii) providing
information for Klein’s progress bar and explaining what icons to present on
Klein’s graphical user interface to facilitate pause, stop, rewind and fast-
forward controls to use Klein’s mobile device beneficially as a remote
control; and (iii) confirming the understanding of a person of ordinary skill
in the art regarding the hardware components used in Klein’s mobile device
(id. (citing Ex. 1014 ¶ 83)). Petitioner provides multiple examples and
arguments supporting each contention listed above. See Pet. 32–35.
Petitioner further contends that a person of ordinary skill in the art
would have been motivated to combine the teachings of Klein with the
teachings of Blanchet for multiple reasons. Petition specifically argues that
using either IPv4 or IPv6, as described in Blanchet, yields the obvious,
predictable, and beneficial results of (1) describing existing protocols for
communication over Klein’s “Internet” 630 in the example architecture of
Figure 6A, and (2) specifying addresses identifying each of devices
server 602, electronic device 680, and mobile device 660 (and any other
IPR2019-01118
Patent 9,749,380 B1

36

electronic devices communicating over the Internet). Id. at 27–28 (citing
Ex. 1014 ¶ 71). According to Petitioner, Klein discloses that its mobile
device determines the identity of electronic device 680 in Figure 6A, but the
“identity” is described generically in Klein, leaving it to a person of ordinary
skill in the art to fill in the implementation details. Id. at 28 (citing
Ex. 1006, 12:6–19). Thus, Petitioner argues that a person of ordinary skill in
the art interested in designing or implementing a network would have been
motivated to use existing protocols for communications over the Internet,
such as those taught by Blanchet, because Blanchet specifies addresses
identifying each of devices server 602, electronic device 680, and mobile
device 660 (and any other electronic devices communicating over the
Internet). Id. at 27–28 (citing Ex. 1014 ¶¶ 72–73).
Petitioner also argues that Klein discloses communications over the
“Internet” 630, but does not specify the network protocol used to perform
the communications, so a person of ordinary skill in the art would have been
motivated to specify this implementation detail using Blanchet’s teaching of
the IPv4 and IPv6 protocols for communication over the Internet as well.
Pet. 28–29 (citing Ex. 1014 ¶ 73). According to Petitioner, there was a
reasonable expectation of success in using IPv4 or IPv6 and specifying
addresses of devices in such a manner. Id. at 29 (citing Ex. 1014 ¶ 74 (citing
Ex. 1011)). Therefore, Petitioner concludes there was a reasonable
expectation of success of using either IPv4 or IPv6, as described in Blanchet,
for Klein’s connecting devices. Id. (citing Ex. 1014 ¶¶ 74–76).
We have considered all arguments and supporting evidence regarding
the rationale for combining the teachings of Klein with Blanchet and
Spencer, and find Petitioner articulates a reasoning with a rationale
IPR2019-01118
Patent 9,749,380 B1

37

underpinning that a person of ordinary skill in the art would have combined
the teachings from the cited prior art to arrive at the inventions recited in the
challenged claims. KSR Int’l Co. v. Teleflex Inc., 127 U.S. 398, 418 (2007).
A motivation to combine may be found “explicitly or implicitly in market
forces; design incentives; the ‘interrelated teachings of multiple patents’;
‘any need or problem known in the field of endeavor at the time of invention
and addressed by the patent’; and the background knowledge, creativity, and
common sense of the person of ordinary skill.” ZUP, LLC v. Nash Mfg.,
Inc., 896 F.3d 1365, 1371 (Fed. Cir. 2018) (quoting Plantronics, Inc. v.
Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013)). Based on the evidence of
record, Petitioner relies on Blanchet and Spencer to provide more explicit
teachings for Klein’s mobile device system. Given Klein’s teaching
regarding the use of the Internet and of progression bars, we agree with
Petitioner that a person of ordinary skill in the art would have had reason to
turn to the teachings of Blanchet and Spencer for use with Klein’s system.
j. Summary regarding Independent Claim 1
Based on the foregoing, we conclude Petitioner has demonstrated by a
preponderance of the evidence that challenged independent claim 1 would
have been obvious under 35 U.S.C. § 103 in view of the combined teachings
of Klein, Blanchet, and Spencer.
5. Analysis of Cited Art as Applied to Independent Claim 10
a. “a mobile device, comprising”
Claim 10 recites as its preamble “a mobile device, comprising . . . ”
Ex 1001, 51:33.
IPR2019-01118
Patent 9,749,380 B1

38

Petitioner contends, to the extent the preamble is considered limiting,
Klein discloses a “user mobile device.” See 4.a above
Based on the evidence of record, regardless of whether the preamble
is limiting, we determine Petitioner has shown by a preponderance of the
evidence that Klein discloses “a mobile user device” as recited in claim 1.
b. “communication circuitry through which to establish a first
network communication with a server and through which to
establish a second network communication with one or more
media playback devices wherein the server and the media
playback devices are identified by respective discrete IP
addresses distinct from the mobile user device”
Claim 10 recites “communication circuitry through which to establish
a first network communication with a server and through which to establish
a second network communication with one or more media playback devices
wherein the server and the media playback devices are identified by
respective discrete IP addresses distinct from the mobile user device.”
Ex. 1001, 51:34‒40.
Petitioner contends the combination of Klein, Blanchet, and Spencer
meets this claim limitation for reasons similar to those discussed previously.
Pet. 57‒59; see 4.b–c, supra.
Based on the evidence of record, we determine Petitioner has met its
burden by a preponderance of the evidence that Klein in view of Blanchet
and Spencer satisfies the challenged claim limitation.
IPR2019-01118
Patent 9,749,380 B1

39

c. “a first graphical user interface active during a first streaming
that delivers a media content directed from the server to the
mobile user device over the first network communication being
in progress, on which the media content is played back based
on the first streaming being received from the server over the
first network communication”
Claim 10 recites “a first graphical user interface active during a first
streaming that delivers a media content directed from the server to the
mobile user device over the first network communication being in progress,
on which the media content is played back based on the first streaming being
received from the server over the first network communication.” Ex. 1001,
51:41‒52:3.
Petitioner contends this limitation is met by Klein. Pet. 59‒62.
Petitioner argues the GUI shown in Figure 4A of Klein on the mobile device
660 displays media content 610 delivered from the server 602 to the mobile
device 660. Id.; see Fig. 6A.
Petitioner also contends this limitation is rendered obvious by Klein in
view of Spencer because Spencer simply adds “controls for rewind, play,
stop and fast forward” to the GUI shown in Figure 4A of Klein. Pet. 62
(citing Ex. 1007, Fig. 19).
Based on the evidence of record, we agree with Petitioner and
determine it has shown by a preponderance of the evidence that Klein in
view of Spencer satisfies the challenged claim limitation.
IPR2019-01118
Patent 9,749,380 B1

40

d. “a second graphical user interface active during a second
streaming that delivers the media content directed from the
server to one of the one or more media playback devices being
in progress so that the streamed media content is played back
by the one media playback device”
Claim 10 recites “a second graphical user interface active during a
second streaming that delivers the media content directed from the server to
one of the one or more media playback devices being in progress so that the
streamed media content is played back by the one media playback device”
Ex. 1001, 52:4‒9.
Petitioner contends this limitation is met by Klein. Pet. 62–66.
Petitioner argues the GUI shown in Figure 4B of Klein is the second
graphical interface that, when icon 450 is selected, “enables a user to direct
media content from a server to a media playback device.” Id. at 62‒63
(citing Klein 8:49‒59). Specifically, Petitioner argues selecting the icon 450
triggers the server 602 to send media content 610/625 to electronic device
680 for display. Id. at 63‒64; Ex. 1006, Fig. 6A.
Petitioner also contends this limitation is rendered obvious by Klein in
view of Spencer because Spencer simply adds the disclosure of receiving
playback progress updates from another display device. Pet. 66.
Based on the evidence of record, we determine Petitioner has met its
burden by a preponderance of the evidence that Klein in view of Spencer
satisfies the challenged claim limitation.
IPR2019-01118
Patent 9,749,380 B1

41

e. “on which how far the media content is played is displayed
based on progress information being received from the one
media playback device over the second network
communication, wherein the progress information is indicative
of progress of the second streaming”
Claim 10 recites “on which how far the media content is played is
displayed based on progress information being received from the one media
playback device over the second network communication, wherein the
progress information is indicative of progress of the second streaming.”
Ex. 1001, 52:9‒14.
Petitioner contends this limitation is met by Klein in view of Spencer.
Specifically, Petitioner argues Klein discloses the mobile device 660 is in
communication with media playback device 680 and Spencer discloses
receiving “playback progress updates.” Pet. 67. Accordingly, as Klein
discloses in Figure 4B an “indicator 415 to show the relative position within
the displayed file,” Petitioner argues a person of ordinary skill in the art
would have been motivated by Spencer’s disclosure of “receiv[ing] playback
progress updates” to move the indicator 415 according to the progress of the
media content displayed on the media playback device 680. Id. at 67‒68.
Based on the evidence of record, we determine Petitioner has met its
burden by a preponderance of the evidence that Klein in view of Spencer
satisfies the challenged claim limitation.
6. Analysis of Cited Art as Applied to Claim 13
a. “A mobile user device according to claim 10”
See analysis of claim 10.
IPR2019-01118
Patent 9,749,380 B1

42

b. “wherein the second graphical user interface is active through
which to receive a second user input responsive to which to
terminate the ongoing second streaming and invoke another
second streaming that delivers the media content directed to
another media playback device”
Claim 13 recites “wherein the second graphical user interface is active
through which to receive a second user input responsive to which to
terminate the ongoing second streaming and invoke another second
streaming that delivers the media content directed to another media playback
device.” Ex. 1001, 52:29‒34.
Petitioner contends this limitation is met or rendered obvious by
Klein. Petitioner argues Klein discloses there may be multiple icons 450 in
Figure 4B of Klein, each icon representing an electronic device for playing
back media content. Pet. 70‒71 (citing Ex. 1006, 9:1-15; Ex. 1014 ¶ 179).
Petitioner further notes that Klein discloses an example of playing content
on one electronic device and moving that content to another electronic
device. Id. at 71 (citing Ex. 1006, 5:63‒6:3). Accordingly, Petitioner argues
a person of ordinary skill in the art would have been motivated to make the
graphical user interface on the mobile device in Klein remain “active
through which to receive a second user input” during the streaming of media
content to continue to, in mid-stream, play the media content on another
electronic device. Pet. 71‒72; Ex. 1014 ¶ 182.
Based on the evidence of record, we determine Petitioner has met its
burden by a preponderance of the evidence that Klein in view of Spencer
satisfies the challenged claim limitation.
IPR2019-01118
Patent 9,749,380 B1

43

7. Analysis of Cited Art as Applied to Claim 14
a. “A mobile user device according to claim 13 wherein the
second graphical user interface displays one or more icons
each of which is associated with another or the other media
playback devices; wherein the second user input includes
selection of one of the displayed icons; and wherein the
invoking another second streaming is invoking the another
second streaming that delivers the media content directed to
another media playback device corresponding to the selected
icon”
Petitioner contends this limitation is met or rendered obvious by Klein
for the same reasons it renders claims 10 and 13 obvious. Pet. 72‒75 (citing
Ex. 1014 ¶¶ 185‒189).
Based on the evidence of record, and for reasons similar to those
discussed in regard to claim 13, we determine Petitioner has met its burden
by a preponderance of the evidence that Klein in view of Spencer satisfies
the challenged claim limitation.

IPR2019-01118
Patent 9,749,380 B1

44

III. CONCLUSION5
We determine Petitioner has shown by a preponderance of the
evidence that claims 1, 10, 13, and 14 of the ’380 patent would have been
obvious in view of Klein, Blanchet, and Spencer. In summary:

5 Should Patent Owner wish to pursue amendment of the challenged
claims in a reissue or reexamination proceeding subsequent to the
issuance of this decision, we draw Patent Owner’s attention to the
April 2019 Notice Regarding Options for Amendments by Patent Owner
Through Reissue or Reexamination During a Pending AIA Trial
Proceeding, 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner
chooses to file a reissue application or a request for reexamination of
the challenged patent, we remind Patent Owner of its continuing
obligation to notify the Board of any such related matters in updated
mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims

35 U.S.C.
§
Reference(s)/
Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1, 10, 13, 14 103 Klein, Blanchet,
Spencer
1, 10, 13, 14
Overall
Outcome
1, 10, 13, 14
IPR2019-01118
Patent 9,749,380 B1

45

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner has shown by a preponderance of the
evidence that claims 1, 10, 13, and 14 of the ’380 patent are unpatentable;
and
FURTHER ORDERED that parties to the proceeding seeking judicial
review of this Final Written Decision must comply with the notice and
service requirements of 37 C.F.R. § 90.2.

IPR2019-01118
Patent 9,749,380 B1

46

For PETITIONER:

David Odell
Clint Wilkins
HAYNES AND BOONE, LLP
david.odell.ipr@haynesboone.com
clint.wilkins.ipr@haynesboone.com

Jonathan Bowser
Ashraf Fawzy
Jessica Marks
UNIFIED PATENTS INC.
jbowser@unifiedpatents.com
afawzy@unifiedpatents.com
jessica@unifiedpatents.com

For PATENT OWNER:

Ryan Loveless
Brett Mangrum
James Etheridge
Jeffrey Huang
Brian Koide
Aakash Parekh
ETHERIDGE LAW GROUP
ryan@etheridgelaw.com
brett@etheridgelaw.com
jim@etheridgelaw.com
jeff@etheridgelaw.com
brian@etheridgelaw.com
aakashparekh@gmail.com

Benjamin Johnson
TOLER LAW GROUP, PC
bjohnson@tlgiplaw.com