Takeaway: It is irrelevant whether the references and a product practicing the claimed invention act in a similar manner. What is relevant is whether the references disclose the limitations claimed in the patent at issue.
In its Final Written Decision, the Board found that the challenged claims (1-25) of the ’282 Patent are unpatentable. The ’282 Patent relates to the field of modifying playback of a multimedia presentation, such as a video, from a storage medium.
The Board began with claim construction, stating that the claims are interpreted according to their broadest reasonable construction in light of the specification. The Board adopted the means-plus-function limitation interpretations from the Decision on Institution. Further, the Board interpreted “filter information including at least one identification of a start time and end time associated with a portion of the multimedia presentation, the filtering information further including at least one filtering action for the portion of the multimedia presentation” to mean “(1) an identification of a first time within a multimedia presentation when a filtering action is started; (2) an identification of a second time within the multimedia presentation, subsequent to the first time, when the filtering action is ended; and (3) the filtering action,” as proposed by Patent Owner.
The Board then turned to the asserted ground of unpatentability – obviousness based on Abecassis and Malkin. Patent Owner argued that Malkin does not disclose or suggest a “navigation object,” does not identify start and end times for a filtering action, and that its other control specifications do not constitute a “navigation object.” Patent Owner acknowledged that, unlike the claims in the related inter partes reviews, the claims of the ’282 Patent do not use the term “navigation object.” However, Patent Owner noted that all of the challenged claims require the three elements identified in the claim construction above, and that these three elements have been included in a “navigation object” in some of the claims in the related inter partes reviews. Patent Owner agreed that “to a large extent regarding what Clearplay does, what Abecassis does, what Malkin does, is very similar.” However, Patent Owner stated, and the Board agreed, that whether these disclosures are similar is not the relevant question because what matters is what is claimed. The Board found that, contrary to Patent Owner’s position, all of the elements of the claimed filtering information are taught in either Abecassis or Malkin. Therefore, the dispositive issue is whether it would have been obvious for one of ordinary skill in the art to include pre-defined filtering actions in Abecassis based on the disclosure in Malkin, rather than require the end-user to make all the filtering decisions.
Regarding rationale to combine, Petitioner asserted that both Abecassis and Malkin “teach systems and methods for filtering offensive or otherwise undesirable content from multimedia content during playback,” are in the same field of endeavor, and deal with related subject matter. Therefore, a person of ordinary skill “would have readily known to combine the teachings of the two references, yielding ‘predictable variation[s].’” Patent Owner’s sole argument was that because neither Malkin nor Abecassis discloses a “navigation object,” the combination does not teach said object. However, the Board already determined that the elements of the claimed filtering information are taught by the references. The Board found that the rationale for the modification comes from the references. Therefore, the claims are unpatentable as obvious based on Abecassis and Malin.
Customplay, LLC v. Clearplay, Inc., IPR2014-00430
Paper 20: Final Written Decision
Dated: August 14, 2015
Patent 8,117,282 B2
Before: Karl D. Easthom, Justin T. Arbes, and Barry L. Grossman
Written by: Grossman
Related Proceedings: IPR2013-00484; IPR2014-00339; IPR2014-00383