Scorpcast LLC

Patent Trials and Appeals Board

Sep 3, 2021

IPR2021-00511 (P.T.A.B. Sep. 3, 2021)

Trials@uspto.gov Paper 15
571-272-7822 Date: September 3, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

MG FREESITES LTD.,
Petitioner,
v.
SCORPCAST, LLC,
Patent Owner.

IPR2021-00511
Patent 8,595,057 B2

Before JOSIAH C. COCKS, MEREDITH C. PETRAVICK, and
ARTHUR M. PESLAK, Administrative Patent Judges.

COCKS, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314, 37 C.F.R. § 42.4

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I. INTRODUCTION
Petitioner MG FreeSites Ltd. filed a Petition (Paper 1, “Pet.”)
requesting inter partes review of claims 1–3, 6–8, 10–12, 15, 16, 19, and 20
of U.S. Patent No. 8,595,057 B2 (Ex. 1001, “the ’057 patent”). Patent
Owner Scorpcast, LLC filed a Preliminary Response (Paper 7, “Prelim.
Resp.”).
With our authorization (Paper 10), Petitioner filed a Reply to the
Preliminary Response (Paper 13) to address the factors set forth in Apple
Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, 5–6 (PTAB Mar. 20, 2020)
(precedential) that inform our exercise of discretion under 35 U.S.C.
§ 314(a). Patent Owner filed a Sur-Reply, stating that in light of recent
developments in related litigation, Patent Owner no longer asserts that the
factors of Apple Inc. v. Fintiv, Inc. favor discretionary denial. Paper 14, 1.
We, thus, consider moot Patent Owner’s request for discretionary denial
(Prelim. Resp. 31–35).
Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
unless the information presented in the Petition and any response thereto
shows “there is a reasonable likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the petition.” Taking into
account the Petition, the arguments presented in the Preliminary Response,
as well as all supporting evidence, we determine that Petitioner has failed to
show a reasonable likelihood that at least one of the challenged claims is
unpatentable. Accordingly, we do not institute inter partes review.
A. Related Matters
The parties state that the ’057 patent was asserted in Scorpcast, LLC
dba HaulStars v. MG Freesites Ltd, Case No. 6-20-cv-00877 (W.D. Tex.).
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Pet. xix; Paper 4, 2. On June 21, 2021, the District Judge transferred this
case to the District of Delaware, Scorpcast, LLC dba HaulStars v. MG
Freesites Ltd, Case No. 1:21-cv-00887. Paper 12, 1–2; Paper 14, 1.
Patent Owner also states that a decision in this proceeding would
affect or be affected by numerous other inter partes reviews and District
Court proceedings. Paper 4, 1–5.
B. The ’057 Patent
The ’057 patent is titled “System For Apportioning Revenue Based on
Content Delivered by an Online Community” and issued on November 26,
2013. Ex. 1001, codes (45), (54). The Abstract of the’057 patent is
reproduced below:
Uses media, for example audio, video or text performances
that were integrated into an online community for feedback
determination of outcome, for digital distribution. Apportions
compensation for a selected artist from revenue that may be
generated through one or any combination of advertisement
services associated with artist’s performance, and media sales.
The media may include singing, instrumental music, rhythmic
music, videos, and writings.
Id. at code (57).
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Figure 1 of the’057 patent is reproduced below:

Figure 1 above is a “flow diagram that illustrates the process for
providing one or more services to artist meeting a certain threshold of
feedback, apportionment of revenue derived from the services related to
artist’s performance activities and distribution of submitted performance
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data in accordance with one or more embodiments of the invention.” Id.
at 4:3–8.
C. Challenged Claims
Petitioner challenges claims 1–3, 6–8, 10–12, 15, 16, 19, and 20.
Claims 1, 2, and 19 are independent claims. Claims 3–18 ultimately depend
from claim 2. Claim 20 depends from claim 19.
Claim 1 is illustrative and reproduced below:1
[1.P] 1. A system for providing performance data to an online
community for outcome determinative feedback comprising:

[1.1] data repository for storing said-recorded performance data
of an artist; and,

[1.2] a server configured to:

[1.3] associate said performance data with a profile of said artist;

[1.4] present said performance data to an online community
having access to said performance data;

[1.5] obtain feedback from at least one user with respect to said
performance data;

[1.6] determine that a selected artist meets a threshold value or
condition;

[1.7] offer service and revenue participation to said selected
artist;

[1.8] deliver content items associated with said selected artist and
one or more advertisements to said online community;

[1.9] calculate an advertisement score for a subsequent online
community interaction with said one or more advertisements

1 Claim 1 is reproduced with Petitioner’s labels. Pet. xiii–xiv.
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associated with said content item associated with said selected
artist and a performance download score for online community
download of a performance data for sale of said selected artist;
[1.10] accounts established by members referred by said selected
artist;

[1.11] enable a process of providing one or more services to said
selected artist; and,

[1.12] apportion revenue to said selected artist based on said
advertisement score and said performance download score.
Ex. 1001, 7:47–8:10; Pet. xiii–xiv.
D. Alleged Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability:
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1–3, 6–8, 10–12, 15,
16, 19, 20
102 Starr2
1–3, 6–8, 10–12, 15,
16, 19, 20
103 Starr, Hughes3
1–3, 6–8, 10–12, 15,
16, 19, 20
102 Arnold4
1–3, 6–8, 10–12, 15,
16, 19, 20
103 Arnold, Hughes
Pet. 1. In addition to the references listed above, Petitioner relies on the
Declaration of Dr. Henry Houh (Ex. 1002).

2 U.S. Patent Application Publication 2006/0287916 A1 published Dec. 21,
2006 (Ex. 1004, “Starr”).
3 U.S. Patent Application Publication 2006/0265331 A1 published Nov. 23,
2006 (Ex. 1009, “Hughes”).
4 U.S. Patent Application Publication 2007/0233564 A1 published Oct. 4,
2007 (Ex. 1005, “Arnold”).
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II. ANALYSIS
A. Principles of Law
A petition must show how the construed claims are unpatentable
under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4).
Petitioner bears the burden of demonstrating a reasonable likelihood that it
would prevail with respect to at least one challenged claim for a petition to
be granted. 35 U.S.C. § 314(a).
To establish anticipation under 35 U.S.C. § 102, “all of the elements
and limitations of the claim must be shown in a single prior art reference,
arranged as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242
F.3d 1376, 1383 (Fed. Cir. 2001).
A claim is unpatentable under § 103(a) if the differences between the
claimed subject matter 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; (2) any differences
between the claimed subject matter and the prior art; (3) the level of skill in
the art; and (4) when in evidence, objective indicia of non-obviousness
(i.e., secondary considerations). Graham v. John Deere Co., 383 U.S. 1,
17–18 (1966).
We analyze the asserted grounds with these principles in mind.
B. Level of Ordinary Skill in the Art
In determining the level of skill in the art, we consider the type of
problems encountered in the art, the prior art solutions to those problems, the
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rapidity with which innovations are made, the sophistication of the
technology, and the educational level of active workers in the field. Custom
Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir.
1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983).
Petitioner contends that a person of ordinary skill in the art at the time
of the invention of the ’057 patent would have had the following education
and experience: “a Bachelor’s degree in Electrical Engineering, Computer
Engineering, or Computer Science (or equivalent degree) plus approximately
two years of work experience with technologies relating to distributed
systems, multimedia streaming, and various HTTP-related technologies.”
Pet. 16. Petitioner adds that “[m]ore education can supplement work
experience and vice versa.” Id. (citing Ex. 1002 ¶¶ 1–36). Patent Owner
does not dispute this level of skill. Prelim. Resp. 5.
For purposes of this Decision, we adopt Petitioner’s proposal as
reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate
level of skill in the art).
C. Claim Construction
For petitions filed on or after November 13, 2018, the “broadest
reasonable interpretation” standard has been replaced with the federal court
claim construction standard that is used to construe a claim in a civil action
under 35 U.S.C. § 282(b). This is the same claim construction standard
articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
banc), and its progeny.
Neither Petitioner nor Patent Owner provides any explicit construction
of any claim terms. We determine that for the purposes of this Decision, it is
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unnecessary to expressly construe any claim terms. See Vivid Techs., Inc. v.
Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms in
controversy must be construed and only to the extent necessary to resolve
the controversy); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs in the
context of an inter partes review).
D. Alleged Anticipation by Starr
Petitioner contends that claims 1–3, 6–8, 10–12, 15, 16, 19, and 20 are
anticipated by Starr. Pet. 21–50. Patent Owner disputes Petitioner’s
contentions. Prelim. Resp. 6–23.
1. Summary of Starr
Starr, a U.S. patent application published on December 21, 2006, is
titled “Media Marketplaces.” Ex. 1004, codes (45), (54). Starr characterizes
its disclosure as relating to “publishing and distributing media segments in
an online marketplace where creators meet advertisers in order to associate
advertisements with the media segments.” Id. at ¶ 6.
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Starr’s Figure 1A is reproduced below:

Figure 1A above depicts an embodiment of media platform 100 (not
numbered in Figure 1A). Id. at ¶ 58. “[M]edia owner 152 interacts with an
owner user interface 148 to deliver a media segment 102 to the media
platform 100.” Id. Further, “advertiser 144 may interact with the media
platform 100 through an advertiser user interface 142 to provide an
advertisement 112 and to submit a bid 101 through a transaction facility 138
to associate the advertisement 112 with the media segment 102.” Id.
2. Independent Claim 1
Petitioner contends that Starr describes all the elements of
independent claim 1. Pet. 29–36. Patent Owner disagrees and, in particular,
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disputes that Starr describes elements [1.7], [1.9], [1.10], [1.11], and [1.12]
of claim 1. Prelim. Resp. 6–11. We focus on element [1.9].
By way of background, we observe that element [1.6] recites a step of
determining that a “selected artist” meets a threshold value or condition. Ex.
1001, 7:58–59; Pet. xiii. Element [1.9] then specifies that calculation of an
“advertisement score” and a “performance download score” occurs, where
the performance download score is “for online community download of a
performance data for sale of said selected artist.” Ex. 1001, 7:65–8:3; Pet.
xiii. According to Petitioner, Starr accounts for the claim requirements
pertaining to a “performance download score” in two alleged ways. Pet. 31–
32.
In particular, Petitioner states “[f]irst, Starr calculates such a
performance download score, by tracking a user’s ‘interactivity (e.g., plays,
emails, forwards)’ associated with his/her download of a media segment,
which interactivity ultimately determines ‘further compensation.’” Pet. 32
(citing Ex. 1004 ¶¶ 104, 144). Although the cited paragraphs of Starr (Ex.
1004) generally describe tracking of a user’s internet activity, Petitioner
provides little by way of insight as to why such tracking amounts to the
development or calculation of a “performance download score” with regard
to performance data of an artist. To that end, Petitioner simply does not
provide adequate explanation as to why Starr’s noted paragraphs convey
teaching of calculating a “performance download score.” We agree with
Patent Owner (Prelim. Resp. 8) to the extent that we are not satisfied that
Petitioner explains adequately why the referenced disclosure of Starr (i.e.,
¶¶ 104, 144) gives rise to the required “performance download score.”
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Petitioner also expresses the following:
Second, Starr calculates such a performance download
score, since media owners can “opt-in to any licensing program”
(id., ¶[00023]), whereby media segments “may be licensed for
use by third parties for distribution through offline channels such
as cell phones” and “pod casts” (id., ¶[00023]) and may be
downloaded to “iTunes Viewers” (id., ¶[0310). Id., ¶[0214]
“licensing programs”). A [Person of Ordinary Skill in the Art]
would have understood that such licensed downloads involve a
performance download score to track downloads of a media
segment, for proper distribution of artist licensing revenue.6 Ex.
1002, ¶¶ 98–104.
Pet. 32.5
Here too, neither Petitioner nor Dr. Houh (Ex. 1002) expresses
meaningfully why the second above-quoted sentence follows from the first.
Left wanting is adequate explanation as to why disclosure in Starr as to
opting in to a “licensing program,” “licensing” media segments through
offline channels, or downloading of content from “iTunes Viewers”
establishes disclosure of the creation or calculation of a “performance
download score.” We share Patent Owner’s view that Petitioner simply does
not articulate adequately why Starr’s referenced disclosure necessarily
involves calculation of a performance download score. See Prelim. Resp. 9.6
Accordingly, because we conclude that Petitioner has not explained
adequately how or where the “performance download score” element of

5 The footnote “6” presented by Petitioner in the quoted portion states “Starr
also tracks ‘download and/or viewing rates of the tagged media segments
102.’ Ex. 1004, ¶[0110].”
6 We note that the deficiency in Petitioner’s application of Starr’s teachings
to the required “performance download score” is also reflected with respect
to limitation [1.12] which recites a step of apportioning revenue to the
selected artist based in-part on the performance download score.
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claim 1 is found in Starr, we do not conclude that Petitioner’s proposed
ground of anticipation of claim 1 based on that reference is reasonably likely
to succeed.
3. Independent Claims 2 and 19
Claims 2 and 19 are independent claims that are each directed to a
“non-transitory, computer-readable medium” that carries out various steps
pertaining to the distribution to users of an on-line community of a media
file composed of a work of authorship by an author. Ex. 1001, 8:11–38,
10:1–24; Pet. xiv–xv, xvii–xviii. Feedback is then obtained from those users
to determine a threshold condition, which then factors into an offer of
revenue participation for the author and delivery of the media file and
advertisement content to the on-line community after acceptance of that
offer. Ex. 1001, 8:11–38, 10:1–24; Pet. xiv–xv, xvii–xviii. Petitioner
submits that all of the limitations of independent claims 2 and 19 are found
in Starr. Pet. 36–42, 48–50. Patent Owner disagrees, and, in doing so,
focuses on limitations [2.8] and [19.6] of those claims. 7 Prelim. Resp. 12–
14, 16. Those limitations are similar to one another and are reproduced
below from the Petition:
[2.8] delivering advertisement content along with said media file
to said online community after acceptance of said revenue
participation offer;
***

7 As with claim 1, Petitioner identifies limitations of claims 2 and 19 using
numerical labels, which we reference in this Decision. See Pet. xiv–xv,
xvii–xviii.
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[19.6] delivering advertisement content along with said media
file to said online community after acceptance of said revenue
participation offer by said author[.]
Pet. xv, xvii.
Patent Owner argues that lacking from the Petition is adequate
explanation as to how Starr teaches that any delivery of advertisement
content to an online community in light of a met threshold condition is
triggered by “acceptance of said revenue participation offer.” Prelim.
Resp. 12–13. According to Patent Owner:
[T]here is no discussing in the Petition or in Starr that the playing
of the media and/or advertising segment comes after (i) a
threshold value or condition being met, (ii) an offer based on said
threshold condition, and (iii) acceptance of said revenue
participation offer, as required by claim 2. For at least these
reasons, Starr does not disclose “delivering advertisement
content along with said media file to said online community after
acceptance of said revenue participation offer” as required by
claim element [2.8].
Prelim. Resp. 13; see also id. at 16 (associating discussion of limitation [2.8]
in the context of claim 19 and, specifically, limitation [19.6]).
Petitioner contends that the noted limitations [2.8] and [19.6]
are satisfied because, according to Petitioner, Starr describes that the
media owner “has already conveyed ‘agree[ment] to fee terms’ for the
media owner to provide media segments and that such terms may
include “revenue sharing terms” for generating revenue from playing
the media segments. Pet 41 (citing Ex. 1004 ¶¶ 131, 82, 81; Ex. 1002
¶¶ 135–136); see also Pet. 49 (referencing discussion of limitation
[2.8] and citing Ex. 1002 ¶¶ 194–196).
We agree with Patent Owner’s above-noted assessment of
features that are required by claim 2 (and claim 19) that acceptance of
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a revenue participation offer, and subsequent delivery of
advertisement content and a media file to an online community,
occurs after some threshold value or condition has been met and a
revenue participation offer then made. With that in mind, it is
difficult to reconcile Petitioner’s view, echoed by Dr. Houh, that
Starr’s disclosure of some type of initial agreement to “fee terms”
coupled with the general recognition that revenue sharing ultimately
occurs based on played media content, establishes that the claims
elements [2.8] and [19.6] are found in Starr and arranged as in those
claims. Yet, that is necessarily what is required to establish that there
is a reasonable likelihood that claims 2 and 19 are unpatentable under
the guise of “anticipation.” See Karsten Mfg. Corp., 242 F.3d at 1383.
Accordingly, having considered the record that is before us, and
for at least the foregoing reasons, we conclude that Petitioner has not
sufficiently established a reasonable likelihood that claims 2 and 19
are anticipated by Starr.
4. Dependent Claims 3, 6–8, 15, 16, and 20
Claims 3, 6–8, 15, 16, and 20 ultimately depend from either
independent claims 2 or 19, and thus require the limitations of those
independent claims. We also conclude that Petitioner has not shown a
reasonable likelihood of prevailing in its proposal that dependent claims 3,
6–8, 15, 16, and 20 are anticipated by Starr.
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E. Alleged Anticipation by Arnold
1. Summary of Arnold
Arnold, a U.S. patent application that published on October 4, 2007, is
titled “Method and System for Distributing Revenue Among User-Authors.”
Ex. 1005, codes (45), (54). Arnold’s Abstract is reproduced below:
Described is a method and system for receiving user-
authored content from one or more user-authors, receiving at
least one advertisement from one or more third-parties,
associating the at least one advertisement with the user-authored
content and determining a compensation for at least one of the
user-authors, wherein the compensation is based on at least one
of the number of advertisements associated with the user
authored content and a number of associations made with the
user-authored content by third parties.
Id. at code (57).
Arnold’s Figure 1 is reproduced below:

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Figure 1 above “shows an exemplary system for publishing and distributing
content over a network for sharing revenue derived from the content
according to the present invention.” Ex. 1005, ¶ 9. System 100 operates to
publish and distribute content over network 101, e.g., the Internet, and
interacts with at least one user-author 170, at least one content viewer 180,
and at least one third-party business partner 190. Id. at ¶ 17.
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2. Independent Claim 1
Petitioner proposes that Arnold discloses all the elements of
independent claim 1. Pet. 53–66. Patent Owner disagrees and, in particular,
disputes that Starr describes elements [1.5], [1.6], [1.7], and [1.10] of
claim 1. Prelim. Resp. 6–11. We focus on elements [1.5] and [1.6].
By way of context, we note that limitations [1.2] to [1.4] describe a
server that is configured to associate performance data of an artist with a
profile of an artist and present that performance data to an online
community. Ex. 1001, 751–55; Pet. xiii. Limitation [1.5] reads “obtain
feedback from at least one user with respect to said performance data[.]”
Ex. 1001, 7:56–57; Pet. xiii. Limitation [1.6] reads “determine that a
selected artist meets a threshold value or condition.” Ex. 1001, 7:58–59;
Pet. xiii.
Petitioner is of the view that limitation [1.6] and its required
determination that a selected artist meets a threshold value or condition is
satisfied by Arnold’s disclosure that user-authored content is “approved” by
either a network editor or administrator for publication on Arnold’s system.
Pet. 58.
Patent Owner disputes Petitioner’s view. As an initial matter, Patent
Owner submits that, in the context of claim 1 and the ’057 patent, the
feedback obtained in limitation [1.5] from at least one user of the on-line
community “is determinative— it determines if the artist meets a threshold
value.” Prelim. Resp. 21 (citing Ex. 1001, 5:19–28). With that
circumstance in mind, Patent Owner further contends that Petitioner’s
reliance on Arnold’s disclosure that user content may be “approved” by a
network editor or administrator to be “published on the system” is
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insufficient for multiple reasons to account for the requirements of limitation
[1.6]. To that end, Patent Owner contends the following:
First, it is not performed by an online community, but by a
“network editor.” [citing Pet. 58]. Second, the approval by an
editor is necessary for the content to be published, which
Petitione[r] cites as the outcome determination. Id. But in claim
1 [of] the ’057 patent, the “performance data” is already
presented “to an online community having access to said
performance data” in limitation [1.3], before feedback from the
online community, and before the content is determined to reach
a threshold value or condition. The threshold value or condition
cannot be used to determine if the online community has access
to the performance data, as Petitioner cites from Arnold. For at
least these reasons, Arnold does not disclose claim element [1.6].
Prelim. Resp. 22.
On this record, we conclude that Patent Owner’s assessment of the
above-noted requirements of claim 1 comports with both the plain language
of the claim and also the understanding of the claim when read in the context
of the ’057 patent. In that regard, it is sufficiently clear that the required
“determination” that a threshold value or condition is met arises form
performance content that has already been released or published to the
online community for feedback therefrom. We agree with Patent Owner that
Petitioner does not explain meaningfully or adequately why Arnold’s
disclosure that a network editor or administrator must first approve user-
created content before it is published reasonably can be said to meet the
requirements of limitation [1.6], i.e., “determine that a selected artist meets a
threshold value or condition” as that limitation is understood in the context
of the ’057 patent.
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3. Independent Claim 2
Petitioner contends that all of the claim features of claim 2 are
disclosed in Starr. Pet. 66–72. Patent Owner has a different position, and
directs attention to proposed deficiencies in connection with each of
limitations [2.5], [2.6], and [2.8]. Prelim. Resp. 23–25.
Claim 2 is drawn to a non-transitory computer-readable medium with
instructions for execution by processors that carry out various steps. Those
steps include, among other things, presenting a media file associated with a
work of authorship to an online community comprising a plurality of users.
Limitations [2.5] and [2.6] are similar to those recited as a part of limitations
[1.5] and [1.6]. Specifically, limitation [2.5] reads “obtaining feedback on
said work of authorship from at least one user of said plurality of users,” and
limitation [2.6] reads “determining that a threshold condition based on said
feedback has been met.” Ex. 1001; 2:25–28; Pet. xiv–xv.
For limitation [2.6], Petitioner points to its discussion with respect to
limitation [1.6], and the disclosure in Arnold pertaining to user-authored
content being “‘approved’ by a network editor/administrator.” Pet. 70. As
with limitation [1.6], we are not satisfied that Petitioner explains adequately
why Arnold’s disclosure that a network editor or administrator must first
approve an author’s content for publication meets the requirement of
limitation [2.6] of determining that a threshold condition has been met based
on feedback from the users of an online community.
Limitation [2.8] reads “delivering advertisement content along with
said media file to said online community after acceptance of said revenue
participation offer.” Ex. 1001, 8:31–32; Pet. xv. Petitioner contends that
the limitation is met in Arnold because “the user-author first (i) accepts
registration with the system (which defines a predetermined revenue
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allocation model/formula, and/or (ii) selects a particular form of revenue.”
Pet. 71–72 (citing Ex. 1005 ¶¶ 18, 22, 12, 25, 43; Ex. 1002 ¶¶ 275–276).
Patent Owner disputes that Arnold’s disclosure of registering with its
system constitutes any “acceptance” of a revenue participation offer.
Prelim. Resp. 25. Patent Owner explains that a user-author registers or
“accepts registration” with the system before any threshold value or
condition has been met, while claim 2 requires that a “revenue participation
offer must first be made (based on the user meeting a threshold value or
condition) which the user then accepts.” Id. We agree. Claim 2 clearly
requires in-part that: (1) feedback is obtained on a work of authorship from
users of an online community (limitation [2.5]); (2) a determination that a
threshold condition based on the feedback has been met (limitation [2.6]);
(3) a revenue participation offer is presented based on the threshold
condition (limitation [2.7]); and (4) advertisement content and the media file
are delivered to the online community after acceptance of the revenue
participation offer (limitation [2.8]). Ex. 1001, 8:24–34; Pet. xiv–xv.
Petitioner does not credibly explain why preliminary or initial registration by
a user with Arnold’s system amounts to what is required by claim 2,
including the acceptance of the revenue participation offer that is set forth in
limitation [2.8].
Accordingly, because we conclude that Arnold does not disclose or
account for all the limitations required by claim 2, we are not persuaded that
Petitioner has shown a reasonable likelihood of success in its challenge that
claim 2 is anticipated by Arnold.
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4. Independent Claim 19
Claim 19 is similar to claim 2 and also requires the step of “delivering
advertisement content along with said media file to said online community
after acceptance of said revenue participation offer by said author”
(limitation [19.6]). For the same reasons discussed above in connection with
limitation [2.8], we are not satisfied that Petitioner has shown that Arnold
accounts for what is required by claim 19, including the acceptance of the
revenue participation offer by an author recited in limitation [19.6].
5. Dependent Claims 3, 6–8, 15, 16, and 20
As noted above, claims 3, 6–8, 15, 16, and 20 ultimately depend from
either independent claim 2 or claim 19. We also conclude that Petitioner has
not shown a reasonable likelihood of prevailing in its assertion that
dependent claims 3, 6–8, 15, 16, and 20 are anticipated by Arnold.
F. Alleged Obviousness Grounds
Petitioner challenges claims 1–3, 6–8, 10–12, 15, 16, 19, and 20 as
unpatentable over (1) Starr and Hughes, and (2) Arnold and Hughes. Pet.
51–53, 79–81. Hughes it titled “System and Method for Marketing
Product.” Ex. 1009, code (54). Petitioner cites to Hughes as disclosing a
“direct distribution system” for delivering and marketing creative and
proprietary works by artists. Pet. 51. According to Petitioner, Hughes
disclosure of screening such work “for technical and quality standards” by a
“human panel” constitutes feedback on the artist’s work and that ultimately
an artist earns revenue from distribution of that work. Id. (citing Ex. 1009
¶¶ 15, 22, 35–36, 17–19). Petitioner generally concludes that it would have
been obvious to combine Hughes’s teachings with each of the teachings of
IPR2021-00511
Patent 8,595,057 B2
23
Starr and Arnold “in order to maintain baseline ‘technical and quality
standards’ for published content, as described by Hughes.” Id. at 52, 80.
Petitioner also states that a person of ordinary skill in the art would have had
a reasonable expectation of success in combining Hughes’s teachings with
the teachings of each of Starr and Arnold. Id.
Patent Owner disputes that Petitioner has shown that any of claims 1–
3, 6–8, 10–12, 15, 16, 19, and 20 are rendered obvious based on the either
the combination of Starr and Hughes or the combination of Arnold and
Hughes. Prelim. Resp. 16–20, 28–31.
We are not persuaded that Petitioner has established obviousness of
any claims of the ’057 patent in connection with either the combination of
Starr and Hughes or the combination of Arnold and Hughes. Even
assuming, as Petitioner asserts, that a skilled artisan would have had a
reasonable expectation of success in the combining those teachings,
Petitioner does not provide adequate analysis as to how Hughes’s teachings
are applied to either Starr or Arnold to account for the deficiencies discussed
above in connection with the grounds of anticipation. For instance, it simply
is not clear from the record why Hughes’s disclosure of screening of artists’
works by a panel for technical and quality standards addresses issues such as
calculating a performance download score or providing for delivery of
content to an online community after acceptance of a revenue participation
offer by an author or artist who has met a threshold condition based on
community feedback. As discussed above, we determine that Petitioner
does not account adequately for issues such as those based on Starr’s and
Arnold’s teachings.
IPR2021-00511
Patent 8,595,057 B2
24
After reviewing the record at hand, we are not persuaded that the
grounds of obviousness offered in the Petition for claims 1–3, 6–8, 10–12,
15, 16, 19, and 20 warrant institution of inter partes review.
III. CONCLUSION
Petitioner does not show that there is a reasonable likelihood that it
would prevail with respect to at least one of the challenged claims.
IV. ORDER
In consideration of the foregoing, it is hereby
ORDERED that the Petition is denied, and no inter partes review is
instituted.

FOR PETITIONER:
Frank M. Gasparo
Jonathan M. Sharret
Stephen K. Yam
VENEABLE LLP
fmgasparo@venable.com
jsharret@venable.com
syam@venable.com
ScorpcastIPR@venable.com

FOR PATENT OWNER:
Todd E. Landis
John Wittenzellner
Adam B. Livingston
WILLIAMS SIMONS & LANDIS PLLC
tlandis@wsltrial.com
johnw@wsltrial.com
alivingston@wsltrial.com
haulstarscounsel@wsltrial.com