Resi Media LLC v. BoxCast Inc.
| Decision Date | 12 April 2023 |
| Docket Number | IPR2022-00066,Patent 9,686,574 B2 |
| Parties | RESI MEDIA LLC, Petitioner, v. BOXCAST INC., Patent Owner. |
| Court | Patent Trial and Appeal Board |
PETITIONER: Brian Mack Joseph Paunovich QUINN EMANUEL URQUHART & SULLIVAN
Before GEORGIANNA W. BRADEN, MICHAEL T. CYGAN, and JULIET MITCHELL DIRBA, Administrative Patent Judges.
JUDGMENT FINAL WRITTEN DECISION DETERMINING ALL CHALLENGED CLAIMS UNPATENTABLE GRANTING PETITIONER'S MOTION TO STRIKE DENYING PATENT OWNER'S MOTION TO EXCLUDE 35 U.S.C. § 318(A)
BRADEN, ADMINISTRATIVE PATENT JUDGE.
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 Resi Media LLC ("Petitioner") has shown by a preponderance of the evidence that claims 1-30 (the "challenged claims") of U.S. Patent No 9,686,574 B2 (Ex. 1001, "the '574 patent") are unpatentable.
Petitioner filed a Petition requesting an inter partes review of challenged claims of the '574 patent. Paper 1 ("Pet."). Boxcast Inc. ("Patent Owner") filed a Preliminary Response. Paper 8 ( ). With our permission, Petitioner filed a Preliminary Reply (Paper 10) and Patent Owner filed a Preliminary Sur-Reply (Paper 14), both of which address arguments as to discretionary denial under § 314(a). 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 19 ("Dec. to Inst."), 70.
After institution of trial, Patent Owner filed a Patent Owner Response (Paper 28, "PO Resp."), to which Petitioner filed a Reply (Paper 41, "Pet. Reply"). Patent Owner filed a Sur-Reply (Paper 47, "PO Sur-Reply"). Petitioner then filed a Motion to Strike (Paper 50) to which Patent Owner filed an Opposition (Paper 54) and Petitioner filed a Reply (Paper 58). Patent Owner also filed a Motion to Exclude (Paper 52) to which Petitioner filed an Opposition (Paper 55) and Patent Owner filed a Reply (Paper 59).
An oral argument was held on January 25, 2023. A transcript of the oral argument is included in the record. Paper 63 ("Tr.").
Petitioner lists Resi Media LLC (Petitioner), Pushpay Holdings Limited, and Pushpay, Inc. as real parties-in-interest. Pet. 1. Patent Owner states that it is a "real party-in-interest." Paper 5 (Patent Owner's Mandatory Notice), 2. The parties do not raise any issue or provide arguments regarding real parties in interest in this proceeding.
The parties identify the following district court case involving the '574 patent: BoxCast Inc. v. Resi Media LLC, PushPay, Inc. and PushPay Holdings Ltd., 2:21-cv-00217-JRG (E.D. Tex.). Pet. 1; Paper 5, 2. Petitioner also indicates it has filed a petition for inter partes review against U.S. Patent No. 10,154,317 (see IPR2022-00067). Pet. 2.
The '574 patent is titled "Systems and Methods for Autonomous Broadcasting," and issued on June 20, 2017. Ex. 1001, codes (45), (54). It is a continuation of U.S. Patent Application Nos. 14/876,080 and 13/045,719 (which issued as U.S. Patent No. 9,167,275 ("the '275 patent")), and relies on a provisional application filed on Mar. 11, 2010. Id. at codes (60), (63).
The '574 patent relates to a "Computer-implemented systems and methods provide for the autonomous broadcasting of video data, audio data, or video and audio data during an event, wherein the broadcasting can be schedule[d] in advance and from a remote location (i.e., over a network)." Id. at code (57).
The '574 Patent purports to solve problems with distributed broadcasting systems in the prior art by splitting functions between three remote components: (1) an automated broadcasting device or node ("ABD"); (2) a scheduling logic; and (3) a media server. Ex. 1001, Fig. 2. One embodiment of the invention is shown in Figure 2, reproduced below:
(Image Omitted)
Figure 2 is a diagram of autonomous broadcasting system 200. Ex. 1001, 6:32-33. The '574 patent discloses that system 200 includes scheduling software 202 installed on server computer 204, as well as autonomous broadcasting node or device 208, video acquisition device 210, and a plurality of media servers 212. Id. at 8:33-41. The '574 patent describes the broadcasting device 208 as "a dedicated hardware device" for broadcasting and then provides exemplary technical specifications for the device. Id. at 8:56-9:20. In one exemplary embodiment, video acquisition device 210 is a digital camera capable of capturing audio and video data, and interfaces with broadcasting device 208 to transfer data to broadcasting device 208. Id. at 9:57-65.
In another embodiment, the '574 patent describes the autonomous broadcasting system 200 as:
simplif[ying] the task of broadcasting a secure live or prerecorded video stream over the Internet. A content provider 216 using the autonomous broadcasting system 200 may securely broadcast live video by installing the broadcasting device 208 and subsequently scheduling events via the scheduling software 202 implemented as a scheduler website on the server computer 204. In the autonomous broadcasting system 200, the content provider 216 is remote from the scheduling software 202 and, thus, accesses the scheduling software 202 over the Internet 214. However, in an autonomous broadcasting system 300, according to an alternative exemplary embodiment, as shown in FIG. 3, the content provider 216 is at the same physical location as the scheduling software 202 (i.e., the server computer 204). Accordingly, in the autonomous broadcasting system 300, the content provider 216 can directly access the scheduling software 202, for example, by using an input device (not shown) of the server computer 204.
Id. at 10:10-28. The '574 patent also contemplates minimizing the capital expenditure associated with purchasing and maintaining of media servers 212 by renting use of media servers 212 from a third-party provider of a cloud computing service and/or a cloud storage service. Id. at 10:3-9.
According to certain embodiments in the '574 patent, Id. at 10:39-45. Additionally, the '574 patent discloses that scheduling logic 220 is responsible for directing a request from viewer 218 to specific media server 212 and monitoring loads of individual media servers 212. Based on these factors, according to the '574 patent, scheduling logic 220 dynamically allocates resources using the cloud computing service. Id. at 10:57--62.
The '574 patent describes the primary functions of broadcasting device 208 as: (1) capturing and encoding video, (2) publishing a video stream to a video server, and (3) managing local video capture hardware. Id. at 12:19-23. While broadcasting device 208 (once set up) can initiate communications on its own, it also can be controlled by a remotely located scheduling logic 220. Id. at 10:10-20. Scheduling logic 220, in various embodiments, can (1) maintain a schedule of events and provide a user interface for entering events, (2) manage the scaling of the media servers, (3) manage access of ABDs to the media servers, and (4) manage access of viewers to secure video streams. Id. at 11:42-61, Figs. 18-22. In one embodiment, broadcasting device 208 repeatedly sends an event schedule request, for example every 5, 30 or 60 seconds. Id. at 18:62-19:4. Scheduling logic 220 responds with data relating to a recording time that is sufficient to inform broadcasting device 208 that it should or should not be broadcasting at that time. Id. at 19:5-11. In another embodiment, the "event schedule request" is not for actual schedule data, but is instead a status request. Id. at 19:12-29. Specifically, broadcasting device 208 sends a token representing its present instructions and scheduling logic 220 responds with a "status code" indicating whether broadcasting device 208's present instructions match what is stored in scheduling logic 220. Id.
The '574 patent also explains that, in certain embodiments, the primary functions of the media servers are: (1) making video streams available for viewing by many users, (2) maintaining secure access to streams, (3) storing live broadcast for later, on-demand viewing, and (4) facilitate the uploading of higher-quality recordings from broadcasting device 208. Id. at 12:51-62.
As noted previously, Petitioner challenges claims 1-30 of the '574 patent, of which claims 1, 6, 12, and 22 are independent. Pet. 4; Ex. 1001, 27:8-28:46. Claims 1 and 12 are illustrative of the challenged subject matter and are reproduced below.
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