In its Final Written Decision, the Board determined that the Petitioner did not show by a preponderance of the evidence that any of the challenged claims (claims 16, 27, 28, 30-34, and 40) are unpatentable. The ’970 patent relates generally to filtering multimedia content, such as scenes or language unsuitable for viewers of some ages. More specifically, the invention claimed in the ’970 patent relates to a computerized system for identifying and filtering automatically portions of multimedia content during the decoding process The system disclosed in the ’970 patent permits filtering multimedia content at the output side of a decoder rather than at the input or source side of the decoder.

The Board began with a short discussion of claim construction. It reviewed the constructions that it had given to various terms in the Decision on Institution. The Board then adopted its previous claim constructions to the extent necessary to reach its Final Decision.

The Board then analyzed whether the challenged claims are obvious over Abecassis in view of Malkin.

First, Patent Owner argued that neither Abecassis nor Malkin discloses a navigation object, so “these references also cannot teach or suggest a navigation object with a configuration identifier or the steps of selectively applying navigation objects based on the configuration identifier of the decoder.” Patent Owner also argued that Abecassis does not disclose a configuration identifier. The Board stated that the Petitioner did not direct it “to any evidence that Malkin discloses or suggests a ‘configuration identifier’ as part of a navigation object.” Petitioner argued that Abecassis discloses the claimed steps involving the “configuration identifier,” but the Board was not persuaded. In addition, the Board determined that Petitioner had not directed it “to any persuasive evidence or argument that it would have been obvious to modify the configuration technology used . . . in Abecassis to provide configurable navigation objections, each with configuration identifiers, as required in claim 16.” Accordingly, the Board concluded that “the preponderance of the evidence does not establish that the combination of Abecassis and . . . on which this inter partes review is based, discloses or suggests the ‘configuration Identifier’ limitations recited in claim 16.”

The Board next analyzed whether Abecassis or Malkin discloses, teaches, or suggests “disabling a navigation object.” Patent Owner argued that “because neither Abecassis nor Malkin teaches or suggests a navigation object, these references also cannot teach or suggest the disabling of a navigation object.” Petitioner asserted that Abecassis discloses “a supervisor’s previewing flagged segments and making individualized determinations to skip or include the segments, where an ‘include’ decision entails disabling the segment information (or navigation object)” and that “when a viewer establishes content preferences in the Abecassis video map system, the result is ‘ignoring the segment information for segments that are deemed acceptable under the viewer’s preferences.’” The Board was not persuaded that either of these assertions establishes that a navigation object can be disabled. The Board stated that “the disabling step ignores a specified filtering during playback, not at some earlier time as in Abecassis.” The Board thus concluded that the preponderance of the evidence did “not establish that the combination of Abecassis or Malkin discloses or suggests providing for disabling a navigation object and ignoring filtering actions specified by any disabled navigation objects, as required in claim 27.” Dependent claims 28, 30-34, and 40 each depend, directly or indirectly, from claim 27 and thus were not shown to be unpatentable for the same reason as claim 27.

Accordingly, the Board concluded that, “based on the evidence and arguments, Petitioner has not demonstrated by a preponderance of the evidence that claims 16, 27, 28, 30–34, and 40 of the ’970 patent are unpatentable under 35 U.S.C. § 103(a) based on Abecassis and Malkin.”

Customplay, LLC v. Clearplay, Inc., IPR203-00484
Paper 29: Final Written Decision
Dated: November 5, 2014
Patent 7,577,970 
Before: Karl D. Easthom, Justin T. Arbes, and Barry L. Grossman
Written by: Grossman