MedioStream Inc v. Microsoft Corporation

Filing 609

Declaration of Scott Schrader in Support of Renewed Motion to Stay the Case Pending Completion of Inter Partes Reexamination Pending Before the Patent and Trademark Office re 608 filed on behalf of Acer America Corp., Apple Inc., ASUS Computer International, Cyberli nk.com Corp., Dell, Inc., Gateway, Inc., Microsoft Corporation, Nero AG, Nero, Inc., Sonic Solutions, Sony Corporation and Sony Electronics Inc. filed byMicrosoft Corporation. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12, # 13 Exhibit 13, # 14 Exhibit 14, # 15 Exhibit 15, # 16 Exhibit 16) (Schrader, Scott) (Filed on 6/22/2011) Modified on 6/23/2011 (bw, COURT STAFF). (Entered: 06/22/2011)

EXHIBIT 10

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313·1450
www.uspto.gOY

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

95/001,283

03/23/2010

7283172

8157.019.172

1757

7590

04/2312010

KAI-CHING CHU
MEDIO STREAM, INC.
4962 EL CAMINO REAL
SUITE 201
LOS ALTOS, CA 94022

EXAMINER
ESCALANTE, OVIDIO
ART UNIT

PAPER NUMBER

3992

MAIL DATE

DELIVERY MODE

04/23/2010

PAPER

Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.

PTOL-90A (Rev. 04/07)

r

CommisSioner for Patents

United States Patent and Trademark Office
P.O. 80)(1450

Alexandria. VA 22313·1450

\NWNj)'pjo.gov

MAILED

DO NOT USE IN PALM PRINTER

APR 232010

(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)

NOVAK DRUCE & QUIGG, LLP
(NDQ REEXAMINATION GROUP)
1000 LOUISIANA STREET, FIFTY-THIRD FLOOR
HOUSTON, TX 77002

CENTRAL. REEXAMINATION UNfT

Transmittal of Communication to Third Party Requester
Inter Partes Reexamination

REEXAMINATION CONTROL NUMBER 951001.283.
PATENT NUMBER 7.283.172.
TECHNOLOGY CENTER 3900.
ART UNIT 3992.

Enclosed is a copy of the latest communication from the United States Patent and
Trademark Office in the above-identified reexamination proceeding. 37 CFR 1.903.
Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
communication, the third party requester of the inter partes reexamination may once file
written comments within a period of 30 days from the date of service of the patent owner's
response. This 30-daytime period is statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot
be extended. See also 37 CFR1.947.
If an ex parte reexamination has been merged with the inter partes reexamination, no
responsive submission by any ex parte third party requester is permitted.
All correspondence relating to this inter partes reexamination proceeding should be
directed to the Central Reexamination Unit at the mail, FAX, or hand-carry addresses

given at the end of the communication enclosed with this transmittal.

PTOL-2070 (Rev.07-04)

Control No.

ORDER GRANTING/DENYING
REQUEST FOR INTER PARTES
REEXAMINA TION

Patent Under Reexamination

95/001,283
Examiner

7283172
Art Unit

OVIDIO ESCALANTE

3992

•• The MAILING DA TE of this communication appears on the cover sheet with the correspondence address . ••

The request for inter partes reexamination has been considered. Identification of the claims, the
references relied on, and the rationale supporting the determination are attached.

Attachment(s):

o PTO-892

IZI PTO/SS/08

DOther: _ _

1.1Z1 The request for inter partes reexamination is GRANTED.

IZI An Office action is attached with this order.
D An Office action will follow in due course.

2.

0

The request for inter partes reexamination is DENIED.

This decision is not appealable. 35 U.S.C. 312(c). Requester may seek review of a denial by petition
to the Director of the USPTO within ONE MONTH from the mailing date hereof. 37 CFR 1.927.
EXTENSIONS OF TIME ONLY UNDER 37 CFR 1.183. In due course, a refund under 37 CFR 1.26(c)
will be made to requester.

All correspondence relating to this inter partes reexamination proceeding should be directed to the
Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this
Order.

U.S. Patent and Trademark Office
PTOL·2063 (08/06)

Paper No.

20100420

Application/Control Number: 95/001,283

Page 2

Art Unit: 3992

])ECISION GRANTING INTER PARTES REEXAMINATION
1.

A substantial new question of patentability affecting claims 1-19 of United States Patent

Number 7,283,172 is raised by the request for inter partes reexamination.

References Cited in the Request
2.

The Request identifies the following printed publications as providing teachings relevant

to the claims of the '172 patent.

PA-A

"Cleanser 5 User Manual

PA-B

"Cleaner MPEG Charger User Manual

PA -C

"Avid Xpress"
http://web.archive.org/web/200008150618311
www.avid.comlproducts/pdf/xpress. pdf

PA-D

"Avid Xpress DV"
http://web. archive.org/web/200 103311738041
www.avid.comlproducts/avidxpressdv/index.html
http://web, archive, org/web/200 1041 02204061
www.avid.comlproducts/avidxpressdv/features.html
http://web, archive, org/web/200 104102248161
www.avid.com/products/avidxpressdv/specs.html
http://web, archive, org/web/200 10414031420/
www.avid.com/products/avidxpressdv/press_ quotes.html

PA-E

Washino U.S. Patent 6,370,198

PA-F

MPEG Standard

Application/Control Number: 95/001,283

Page 3

Art Unit: 3992

Detailed Explanation 0/ How tire Cited Prior Art is Applied to Every Claim/or Wlriclr
Reexamination is Requested.

,

Issue 1:

Cleaner 5 V ser Manual is asserted as rendering claims 1-19 anticipated.

Issue 2:

Cleaner 5 Vser Manual in view of Cleaner MPEG Charger is asserted as
rendering claims 5, 6 and 8 obvious.

Issue 3:

Avid Xpress in view of Avid Xpress DV and further in view of MPEG standard is
asserted as rendering claims 1-3,5, 7, 9 and 13-19 obvious.

Issue 4:

Washino is asserted as rendering claims 1-12, 15 and 19 anticipated.

Prosecution History
The '172 patent issued from Application No. 111342,280 filed on July 27,2006 and is a
continuation of Application No.1 0/202/999 filed on July 23,2002 (hereinafter the '999
application).
In the First Office Action dated February 5, 2007, the Examiner rejected claim 16
under 35 U.S.C. § 101 for statutory type double patenting because claim 16 ofthe '280
application was identical to issued claim 1 of U.S. 7,009,655 (issued from the '999
application). Claims 17-19 were objected to as being dependent on rejected claim 16.
The Examiner further rejected claims 1-15 and 20 on the ground of nonstatutory
obviousness-type double patenting in view of the issued claims ofV.S. 7,009,655.
In response to the Examiner's rejections, Applicant canceled claim 16 and
amended claim 17 to be in independent form by including the limitations of claim 16
there within and modifying the language "TV standard" to read "video presentation

Application/Control Nwnber: 95/001,283

Page 4

Art Unit: 3992
standard." Additionally, Applicant filed a terminal disclaimer to overcome the obvioustype double patenting rejection.
The application was subsequently allowed.

Statement a/Substantial New Question
The Examiner Notes that the Requester's Substantial New Question is based on a
showing that the cited prior art references discloses a system for converting video information in
an incoming format into an outgoing format, which is one of a plurality of formats using
computer software and then writing the video information on a mediwn.

Discussion of Reference!f that Raise a SNQ
Issues 1 and 2 - Cleaner 5 User Manual and Cleaner MPEG Charger·
As asserted in the Request, Cleaner 5 raises a substantial new question of patentability
with respect to the claims of the '172 patent because it is not cwnulative of any art previously of
record and its teachings are such that a reasonable examiner would have considered Cleaner 5
pertinent to deciding the question of patentability of the requested claims. Specifically, Cleaner 5
discloses a software system for carrying out the steps of the claim.
The Examiner notes that Cleaner 5 discloses a system for converting incoming DV to an
outgoing MPEG-l or MPEG-2 stream, (pp. 141 and 206). Additionally, Cleaner 5 uses a
continuous pass (e.g., single pass) conversion process to encode movies free from intermediary
files into a single file, (pp. 64 and 206). Cleaner 5 further discloses also a capture code directed
to receiving source material in DV format (i.e., video information in a first format) from a DV

Application/Control Number: 95/001,283

Page 5

Art Unit: 3992

camera, (pp. 5, 8) and converts the DV stream format video information to an uncompressed
raw video format, such as YUV, (p. 138).
A user is allowed to select a different output media format based upon a first input. 'For
example, the user "can easily produce MPEG-I files for Video CD projects by selecting the
Video CD preset in the Advanced Settings window," (p. 209). Cleaner 5 also supports MPEG-2
files for the DVD output media format, (p. 62). A user many also choose between NTSC or PAL
(i.e., desired video presentation standard) based upon the preset the user selects, (pp. 204, 205).
Cleaner 5 discloses converting the uncompressed raw video information to the selected
image size through a resizing operation, (p. 204). In Cleaner 5,720 x 480 pixels is the image size
associated with a DVD output media format in an NTSC TV standard, (p. 62, 204, 209).
Additionally, 720 x 576 pixels is the image size associated with an DVD output media format in
a PAL TV standard, (p. 62, 204, 209). Cleaner 5 discloses a frame rate of29.97 frames per
second is associated with VCD and DVD output media formats for the NTSC TV standard and a
frame rate of25 frames per second is associated with VCD and DVD output media formats for
the PAL TV standard, (p. 62, 207,209).
A user can select to process the video into an elementary video stream when outputting
MPEG 1 and MPEG 2 files, (p. 206). Cleaner 5 discloses that when an MPEG 1 system stream is
selected, the elementarY' video stream is processed or multiplexed with the audio stream to form
a single multiplexed stream of audio and video information in the desired NTSC or PAL TV
standard based on the desired VCD output media format, (pp. 7,206).

Page 6

Application/Control Number: 95/001,283

Art Unit: 3992
Given the above teachings, there is a substantially likelihood that a reasonable examiner
would consider these teachings important in deciding whether or not the instant claims under
reexamination are patentable.
The teaching of "a system for converting video information in an incoming format into an
outgoing format, which is one of a plurality of formats using computer software and then writing
the video information on a medium" was not considered or discussed on the record during the
prosecution of the application which became the' 172 patent. Therefore, it is agreed that Cleaner
5 raises a SNQ over at least claims 1-19 of the instant ' 172 Patent.

Issue 3
Avid Xpress and Avid Xpress DV
As assert in tile Request, the combination raises a substantial new question of
patentability with respect to the claims of the' 172 patent because it is not cumulative of any art
previously of record and its teachings are such that a reasonable examiner would have considered
Avid Xpress in view of Avid Xpress DV and MPEG standard pertinent to deciding the question
of patentability of the requested claims. Specifically, Avid Xpress in view of Avid Xpress DV
and MPEG standard discloses a software system for carrying out the steps of the claim.

The Examiner notes that the Avid Xpress system is a software system for converting
and editing video and multimedia content quickly and in a single step, (p. 1). Additionally, Avid
Xpress DV is a related application to Avid Xpress having a variety of exporting options
including MPEG output abilities, (p. 1 and FEATURES, p. 1).

Application/Control Number: 951001,283

Page 7

Art Unit: 3992

Avid Xpress discloses having code to receive video in many different input formats
including popular animation files on Windows, Macintosh and SGI, and QuickTime formats,
(pp. 1,3). Further, Avid Xpress supports the ITU R-601 standard for converting video into
broadcast digital formats, (p. 1). Avid Xpress DV, also receives RealMedia, Windows
MediaiASF, IWMV, AVI and OMF/JFIF files input formats, (FEATURES, p. I)
Avid Xpress further discloses code for converting video information into
uncompressed video using its uncompressed video option, (pp. 1-2) and code to output video in
many different output formats including popular animation files on Windows, Macintosh and
SGI, and QuickTime formats, (pp. 1,3). Further, Avid Xpress supports the ITU R-601 standard
for converting video into broadcast digital formats, (p. 1). Furthermore, Avid Xpress DV also
supports output formats such as MPEG-l, MPEG-2 and OMF/JFIF formats, (FEATURES, p. 1).
Avid Xpress DV enhances Avid Xpress capabilities providing MPEG outputs and media formats
including Web, DVD, and tape, (p. 1 and FEATURES, p. 1).
Avid Xpress discloses the ITU R-601 standard for outputting broadcast quality outputs
in both the NTSC and PAL TV standards, (p. 3). In addition, Avid Xpress includes code directed
to resizing input video information in a size associated with the desired output media format and
TV standard (720 x 486 NTSC; 720 x 576 PAL), (p. 3). Furthermore, Avid Xpress can output
projects as uncompressed'video for the best possible image quality, (p. 2). Therefore, Avid
Xpress can resize the input video and output an uncompressed video file in the desired size for
the output media format and TV standard, (pp. 2-3). Avid Xpress DV enhances Avid Xpress
capabilities providing MPEG outputs and media formats including Web, DVO, and tape, (p. 1

Application/Control Number: 95/001,283

Page 8

Art Unit: 3992

and FEATURES, p. 1). Avid Xpress DV software is companion software to Avid Xpress and
includes code directed to exporting files in the MPEG format, (p.l and FEATURES, p. 1).
Avid Xpress and its companion software Avid Xpress DV include code for processing

the elementary stream into an output audio-visual file having the characteristics required based
upon the output media format and desired TV standard. Specifically, Avid Xpress discloses
processing the output audio-visual file based on broadcast industry standards and the output
media format (storage for online broadcasting), (Avid Xpress at p. 1). Avid Xpress also discloses
many other output formats such as Quicktime, and other Windows and Macintosh platform files,
(Avid Xpress at p. 1). Avid Xpress DV enhances Avid Xpress capabilities providing MPEG
outputs and media formats including Web, DVD, and tape, (Avid Xpress DV at p. 1 and
FEATURES, p. 1).

Given the above teachings, there is a substantially likelihood that a reasonable examiner
would consider these teachings important in deciding whether or not the instant claims under
reexamination are patentable.
The teaching of "a system for converting video information in an incoming format into an
outgoing format, which is one of a plurality of formats using computer software and then writing
the video information on a medium" was not considered or discussed on the record during the
prosecution of the application which became the' 172patent. Therefore, it is agreed that Avid
Xpress and Avid Xpress DV raises a SNQ over at least claims 1-3, 5, 7, 9 and 13-19 of the
instant '1 72 Patent.

Application/Control Number: 95/001,283

Page 9

Art Unit: 3992

Issue 4 - Wasltino

The Examiner notes that Washino discloses a multi-format digital video production
system that enables a user to process an input video program to produce an output version of the
program in a final format, (Abstract, lines 1-3). Washino also discloses inputting video
information in a first format, (CollI, lines 51-54)and converting the inputted video information
in the first format to an uncompressed format, such as YUV, (CollI, lines 54-63).
Washino further discloses that outputs can be configured to ROB format or other output
media formats, (CollI, lines 51-54) and that the video data stream may undergo a number of
modifications based on the desired output format such as NTSCIPAL or HDTV, (Col. 21, line 56
to Col. 22, line 11; CollI, lines 54-63).
Washino discloses that images are re-sized horizontally and vertically by pixel
interpolation and frame rates are adapted by inter-frame interpolation, (Abstract; Col. 18, lines
50-63) and adjusting the frame rate of the uncompressed format to the desired frame rate of the
video presentation standard, (Abstract; Col. 18, lines 53-63). Washino discloses processing the
uncompressed format in any selected size and frame rate into an elementary video stream, (col.
18, lines 50-63; Col. 20, lines 6-10).
Washino also discloses processing the video format with audio information in the
desired output media format. Specifically, Washino discloses adjusting the pitch ofthe
audio based on the frame rate of the video which is related to the desired video standard, (Col.
21, lines 45 to Col. 22, lines 15; Col. 22, lines 49-53).

Application/Control Number: 95/001,283

Page 10

Art Unit: 3992
Given the above teachings, there is a substantially likelihood that a reasonable examiner
would consider these teachings important in deciding whether or not the instant claims under
reexamination are patentable.
The'teaching of "a system for converting video information in an incoming format into an
outgoing format, which is one of a plurality of formats using computer software and then writing
the video information on a medium" was not considered or discussed on the record during the
prosecution of the application which became the' 172 patent. Therefore, it is agreed that
Washino raises a SNQ over at least claims 1-12, 15 and 19 of the instant' 172 Patent.

Scope of Reexamination
3.

Claims 1-19 will be reexamined as requested in the request.

Conclusion
4.

Extensions of time under 37 CFR 1. 136(a) will not be permitted in inter partes

reexamination proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant"
and not to the patent owner in a reexamination proceeding. Additionally, 35 U.S.C. 314(c)
requires that inter partes reexamination proceedings "will be conducted with special dispatch"
(37 CFR 1.937). Patent owner extensions of time in inter partes reexamination proceedings are
provided for in 37 CFR 1.956. Extensions of time are not available for third party requester

Application/Control Number: 95/001,283

Page 11

Art Unit: 3992
comments, because a comment period 0[,30 days from service of patent owner's response is set
by statute. 35 U.S.C. 314(b)(3).
5.

The Patent Owner is reminded of the continuing responsibility under 37 CFR 1.985(a) to

apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving the
US Patent 7,283,172 throughout the course of this reexamination proceeding. The Third Party
Requester is also reminded of the ability to similarly apprise the Office of any such activity or
proceeding through the course of this reexamination proceeding. See MPEP § 2686 and
2686.04.
All correspondence relating to this inter partes reexamination proceeding should be
directed:
By EFS:
Registered users may submit via the electronic filing system EFS-Web, at
https://sportal.uspto.gov/authenticate/authenticateuserlocalepf.html.

By Mail to:

Mail Stop Inter Partes Reexam
Attn: Central Reexamination Unit
Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, Virginia 22313-1450

By FAX to:

[phone]
Central Reexamination Unit

By hand:

Customer Service Window
Attn: Central Reexamination Unit
Randolph Building, Lobby Level
401 Dulany Street
Alexandria, VA 22314

For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i) (C) and (ii) states that correspondence
(except for a request for reexamination and a corrected or replacement request for
reexamination) will be considered timely filed if (a) it is transmitted via the Office's electronic
filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission
for each piece of correspondence stating the data of transmission, which is prior to the expiration
of the set period of time in the Office action.

Page 12

Application/Control Number: 95/001,283
Art Unit: 3992

Any inquiry concerning this communication or earlier communications from the
examiner, or as to the status of this proceeding, should be directed to the Central Reexamination
Unit at telephone number [phone].

Ovu;Lu~
Ovidio Escalante
Primary Examiner
Central Reexamination Unit - Art Unit 3992
[phone]
Conferee: /r.g.f.I

Conferee: &S/<,