Takeaway: A petitioner need not address an issue in the most clear fashion in order to preserve the right to make the same argument in its reply. The petitioner must merely include the argument in its petition.

In its Final Written Decision, the Board found that all instituted challenged claims (1, 4, 5, and 8) of the ’091 Patent are unpatentable. The ’091 Patent relates to a multimedia system for providing “consistent, timed, coordinated playback of images and/or sounds despite differences in playback system speed or configuration.”

The Board first discussed claim construction, stating that the terms will be construed according to the broadest reasonable interpretation in light of the specification. The parties disagreed on the construction of “selecting a playback bandwidth with which to deliver at least one of said images or sounds.” The Board construed that term in the Decision on Institution to mean “selecting a range of rates within which to deliver at least one of said images or sounds for playback.” Patent Owner asserted it should instead be construed as “choosing a rate in preference to other rates with which to deliver said at least one of images or sounds.” The Board modified its original construction to “a rate at or less than which to deliver at least one of said images or sounds for playback.”

Patent Owner also argued that the term “selecting” requires construction, and should be construed as “to make a choice in preference to other available alternatives.” Petitioner disagreed, stating that the specification does not state that there must be multiple alternatives. The Board agreed with Petitioner that Patent Owner’s construction was too narrow.

The Board then reviewed whether claims 1 and 4 are anticipated by Little. The Board was persuaded by Petitioner’s evidence and detailed explanation identifying where each limitation allegedly appears in Little. Patent Owner argued that Little does not disclose “selecting,” however, the Board was not persuaded by this argument because it did not construe “selecting” to require multiple choices. Patent Owner further argued that Little does not state that the channel capacity is selectable in Little. The Board credited Petitioner’s expert’s testimony, who stated that selecting the value of the channel capacity to use in the algorithm, such as is disclosed in Little, involves an exercise of engineering judgment. Patent Owner also argued that Little does not disclose that the value of the delivery rate is equal to the channel capacity of the network. However, the Board noted that both experts acknowledged that the claim does not require actual transmission, therefore, the playback bandwidth does not have to be the actual deliver rate.

Next, the Board discussed whether claim 5 is anticipated by Azadegan. The Board was persuaded by Petitioner’s arguments that Azadegan anticipates claim 5. Patent Owner argued that Azadegan does not disclose that the dividing step occurs before the replacing step. The Board agreed that the dividing step must occur before the replacing step, stating that the plain language of the claims makes clear that dividing must happen before replacing. However, the Board agreed with Petitioner that Patent Owner did not address one of its arguments as support for where Azadegan discloses the dividing step. Patent Owner argued that this argument was impermissibly raised for the first time in the Reply; however, the Board found that, although the Petition could have addressed the issue more clearly, it was addressed.

Finally, the Board discussed whether claim 8 is anticipated by Adams. Patent Owner did not discuss claim 8 in its Response. The Board reviewed Petitioner’s analysis and determined that Petitioner had demonstrated by a preponderance of the evidence that claim 8 is anticipated by Adams.

Adobe Systems Incorporated and Level 3 Communications, LLC v. Afluo, LLC, IPR2014-00154
Paper 30: Final Written Decision
Dated: April 9, 2015
Patent 5,995,091
Before: Michael W. Kim, William V. Saindon, and Tina E. Hulse
Written by: Hulse
Related Proceeding: Afluo LLC v. Adobe Systems Inc., No. 1:12-cv-01459-SLR (D. Del.)