“IPR proceedings on six Virentem Ventures patents have reached the institution phase. While the PTAB has denied four Google IPR petitions, it’s decided to institute five, meaning that only one of the company’s patents has escaped the PTAB unscathed as of yet.”
On February 21, the Patent Trial and Appeal Board (PTAB) issued a pair of institution-phase decisions in inter partes review (IPR) proceedings petitioned by Internet tech giant Google, both of which challenge claims of a patent owned by Virentem Ventures and asserted in a District of Delaware infringement case against Google subsidiary YouTube. Although the PTAB denied institution to one of the IPRs, institution of the other Google IPR threatens each patent claim that has been asserted against variable speed audio/video playback services enabled by YouTube and Google products. With the IPR proceeding instituted, Virentem Ventures is now facing IPR proceedings instituted upon six of its patents asserted against Google in Delaware.
The ‘903 Patent and Virentem Ventures’ Patent Suit Against YouTube
The patent-at-issue in both IPRs is U.S. Patent No. 7683903, Management of Presentation Time in a Digital Media Presentation System with Variable Rate Presentation Capability. Claim 1 of the ‘903 patent covers a method for rendering temporal sequence presentation data in a machine-implemented rendering system that addresses issues in media players having Time-Scale Modification (TSM) capability for presenting media content at variable playback rates. While presentation time and data time are identical when media playback occurs at normal rates, differences in those times during variable playback speeds can adversely affect audio rendering during playback.
The ‘903 patent was one of a series of patents asserted by Virentem Ventures in the District of Delaware in a patent infringement case filed against YouTube and Google in June 2018. The patents in that case were first obtained by Enounce, a tech startup which developed improved methods for variable speed playback for consumer video platforms. In 2009, Enounce communicated with Google, which was developing experimental interfaces for its YouTube video platform, but the startup was told in 2013 that Google and Youtube’s corporate culture did not involve the use of third party software, although Enounce was invited to submit information on its patented technology to Google.
Enounce wound down its assets in 2015, selling its patents to Virentem Ventures which maintained Enounce’s business and product line with members of that company’s original team. Also in 2015, YouTube switched the standard default video player for its platform from an Adobe Flash player to an HTML5 player which allowed users to adjust audio and video speeds during playback. YouTube made variable speed playback available on its mobile app by 2017. Virentem Ventures alleged that Google and YouTube infringed upon the ‘903 patent through a collection of accused products and services including Google Chromebook hardware rendering the YouTube app, Google and YouTube servers which tangibly store video and audio content and services offering variable rate playback including YouTube TV or YouTube Red.
Google Petitions the PTAB
In June 2019, Google filed a pair of petitions for IPR proceedings at the PTAB to challenge the ‘903 patent. In IPR2019-01240, Google challenged claims 1 through 4, 12 through 14 and 22 of the ‘903 patent for Section 102 anticipation and Section 103(a) obviousness in light of U.S. Patent No. 7096271, Managing Timeline Modification and Synchronization of Multiple Media Streams in Networked Client/Server Systems (“Omoigui”). In IPR2019-01241, Google challenged the same claims in the ‘240 IPR for Section 102 anticipation in light of U.S. Patent No. 5719786, Digital Media Data Stream Network Management System (“Nelson”). As well, Google challenged claims 7 and 17 of the ‘903 patent for Section 103(a) obviousness in light of Nelson in combination with U.S. Patent No. 6065050, System and Method for Indexing Between Trick Play and Normal Play Video Streams in a Video Delivery System (“DeMoney”).
The PTAB declined to institute the ‘240 IPR petition involving the Omoigui prior art reference asserted by Google. In analyzing Google’s invalidity challenges, the PTAB focused on a particular claim limitation found in independent claims 1, 12, 13 and 22: “maintaining a value of a presentation time parameter… representing an amount of time elapsed during rendering of a portion of the temporal sequence presentation data.” In its decision denying institution, the PTAB noted that Omoigui discloses both client-based and server-based multimedia time-scale modification.
Google had argued in the ‘240 IPR petition that Omoigui disclosed the storage of table sets indicating timeline correlations between timeline-unaltered and timeline-altered media, meeting the “presentation time parameter” limitation recited in the ‘903 patent. Further, Google argued that Omoigui’s process of using stored time correlation tables to find an appropriate presentation time when switching from one timeline-altered media stream to another also met this limitation. However, the PTAB’s panel of administrative patent judges (APJs) didn’t see how Omoigui’s table values represented an amount of time elapsed during rendering of a portion of the temporal sequence presentation data” as recited in the claims. Google also contended that an alternative embodiment of Omoigui involving the maintenance of presentation time for each data unit in a timeline-altered media stream. However, the PTAB APJs were persuaded by Virentem Ventures’ argument that the presentation time was unrelated to the elapsed rendering time for a single media stream and was rather used for correlating the position of different media streams.
Google’s Second IPR Shows Reasonable Likelihood of Success
Though Virentem Ventures escaped IPR proceedings based on Google’s first petition, the same panel of APJs decided to institute the ‘241 IPR petition on all challenged claims. The APJ panel was persuaded that the claim 1 preamble was taught by Nelson, which met the recited limitations of a method, performed by at least one machine; rendering temporal sequence presentation data in a machine-implemented rendering system; and tangibly storing that data in a computer-readable medium.
Virentem Ventures had argued that Nelson didn’t disclose presentation time and data time parameters representing rendering times for the same portion of temporal sequence presentation data. The APJ panel found, however, that the element at issue required only that the presentation parameter represented an amount of time elapsed during rendering of a portion of the temporal sequence presentation data. Further, Nelson met the tangibly storing data element by disclosing the storage of data time values in a digital video management system.
The PTAB also instituted Google’s obviousness challenge of claims 7 and 17 based on the combination of Nelson and DeMoney. Virentem Ventures’ preliminary response didn’t challenge Google’s invalidity theory on these two claims, instead arguing that Google’s inability to prove obviousness of the challenged independent claims based on the Nelson prior art led to the conclusion that the Nelson/DeMoney challenge would fail as well. However, the current record convinced the PTAB that Google demonstrated a reasonable likelihood of prevailing on this invalidity challenge as well.
As Virentem Ventures gears up to protect the validity of the ‘903 patent’s claims, the institution decisions from the PTAB indicate that Google has filed IPR petitions to challenge eight of the other 10 patents that have been asserted in the Delaware infringement proceedings. IPR proceedings on six Virentem Ventures patents have reached the institution phase and while the PTAB has denied four Google IPR petitions, it’s decided to institute five petitions meaning that only one Virentem Ventures patent has escaped the PTAB unscathed as of yet. Two other IPR petitions each challenging a single Virentum Ventures patent are currently in the pre-institution phase.