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 2

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,gov

APPLICA TJON NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMA TION NO.

95/001,284

12/18/2009

7009655

8157.019.655

1850

7590

EXAMINER

03/12/2010

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

ART UNIT

PAPER NUMBER

DATE MAILED: 03/12/2010

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 10/03)

Commissioner for Patents
United States Patent and Trademark Office
p,O,60){14S0

Alexandria. VA 22313-1450
VWIW "'pjo,Qov

DO NOT USE IN PALM PRINTER
(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)

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

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MAR 12 Z010
CENTRAL REEXAMINATION UNIT

Transmittal of Communication to Third Party Requester
Inter Partes Reexamination

REEXAMINATION CONTROL NUMBER 95/001.284.
PATENT NUMBER 7,009,655.
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-day time period is statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot
be extended. See also 37 CFR 1.947.
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

95/001,284

7009655

Examiner

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):

D PTO-892

~ PTO/SB/08

DOther: _ _

1. ~ The request for inter partes reexamination is GRANTED.

[8J An Office action is attached with this order.
D An Office action will follow in due course.

2. D 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 Trademar1< Office

PTOl-2063 (08106)

Paper No. 20100226

Application/Control Number: 95/001,284

Page 2

Art Unit: 3992

DECISION GRANTING INTER PARTES REEXAMINATION
1.

A substantial new question of patentability affecting claims 1-18 of United States Patent

Number 7,009,655 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 '655 patent.

PA-A

"Cleanser 5 User Manual For MAC OS and Windows", Terran Interactive,
1995-2000 (Cleaner 5 Manual)

PA-B

"Cleaner MPEG Charger User Manual For MAC OS and Windows",
Media 100, 1995-2001 (Cleaner MPEG Charger User Manual)

PA-C

"Avid Xpress"
http://web.archive.org/web/20000815061831 1
www.avid.comlproducts/pdf/xpress.pdf

PA-D

"Avid Xpress DV"
http://web. archive.org/web/200103311738041
www.avid.comlproducts/avidxpressdv/index.htrnl
http://web, archive, org/web/200 1041 02204061
www.avid.comlproducts/avidxpressdv/features.html
http://web, archive, org/web/200 1041 02248161
www.avid.comlproducts/avidxpressdv/specs.html
http://web, archive, org/web/200104140314201
www.avid.comlproducts/avidxpressdv/press_quotes.htrnl

PA-E

MPEG Standard

Application/Control Number: 95/001,284

Page 3

Art Unit: 3992

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

Issue 1:

Cleaner 5 User Manual is asserted as rendering claims 1-18 anticipated.

Issue 2:

Cleaner 5 User 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 is asserted as rendering claims 1-3,5, 7,
9 and 13-18 obvious.

Prosecution History
The '655 patent issued from Application No.1 0/202,999 filed on July 23, 2002
(hereinafter the '999 application).
In the first Office Action, the Examiner rejected claims 1-15 and 20 but allowed claims
16-19.
The Examiner stated that the prior art failed to disclose:

"A system for converting video information from an incoming format to an outgoing
format using an integrated computer software application, the integrated computer
software application being provided on one or more memories, the one or more memories
including: a code directed to receiving video information in a first format; a code directed
to receiving a desired output media format based upon a first input; a code directed to
receiving a desired TV standard based upon a second input; a code directed to converting
the video information in the first format to raw video information an uncompressed
format using a decoding process; a code directed to resizing the raw video information in
the uncompressed format into a size associated with the desired output media format and
the desired TV standard; a code directed to adjusting the uncompressed format in the size
associated with the desired output media format and the desired TV standard to a frame
rate associated with the desired TV standard; a code directed to processing the
Uncompressed format in the size and the fraIl!e rate into an elementary video stream; and
a code directed to processing the elementary video stream with audio information in the
desired output media format and the desired TV standard to form video and audio

Application/Control Number: 95/001,284

Page 4

Art Unit: 3992

information in a presentation format based upon the desired output media format and the
desired TV standard."

The Examiner rejected claims 13 and 14 under 35 U.S.c. § 112 as being indefinite for
reciting editing information based upon an unclear fourth and an unclear fifth input; thus,
rendering the claims indefinite.
In response to the Office Action, Applicant canceled claims 1 and 20 and amended
claims 2-15 to be dependent upon claim 16, which had been previously allowed and the
Examiner promptly issued a notice of allowance.

Reasons for Allowance Analysis as disclosed in the Request

The Requester notes that original claims 1-15 and 20 recited a similar system [to allowed
claims 16-19] but did not require that the system perform the steps using computer code. The
Requester notes that claims 1-15 and 20 were rejected under Washino for disclosed the recited
method but "apparently did not recite software for accomplishing the methods."
Statement ofSubstantial New Question

The Examiner Notes that the Requester's Substantial New Question is based on a
showing of a software based system.
As noted on pages 8-10, the Requester Substantial New Question was directed to the
issue that ''the claims of the '655 patent were only deemed patentable because the Examiner was
note aware of a software system for carrying out the steps of the invention". The Requester then
asserts several prior art references for being directed to a software system that are in the same
field of endeavor of the instant claims.

Application/Control Number: 95/001,284

Page 5

Art Unit: 3992

Discussion of References that Raise a SNQ
Issues 1 and 2 - Cleaner 5 User Manual
As noted in the Request, Cleaner 5 discloses a system for converting incoming DV
[incoming format] to an outgoing MPEG-l [outgoing format] or MPEG-2 stream (Cleaner 5 ~t
pp. 141,206) via an integrated computer software application, which "offers a complete camerato-web solution that makes it easy to put video and audio on a [user's] site," (Cleaner 5 at p.
141). Cleaner 5 discloses a receiving source material in DV format [i.e., video information in a
first format] from a DV camera, (Cleaner 5 at pp. 5,8) and allowing a user to select a different
output media format based upon a first input. For example, the user "can easily produce MPEG-l
files for Video CD projects by selecting the Video CD preset in the Advanced Settings window."
Cleaner 5 at p. 209.
Cleaner 5 also discloses that a user may choose between NTSC or PAL (Le., desired
TV standard) based upon the preset [i.e., second input] the user selects, (Cleaner 5 at pp.
204-206) and that Cleaner 5 decodes and converts the DV stream format video information to an
uncompressed raw video format, such as YUV and Digital Origin's DV codec, (Cleaner 5 at p.
138). Cleaner 5 discloses converting the uncompressed raw video information to the selected
image size through a resizing operation. Cleaner 5 at p. 204. In Cleaner 5,720 x 480 pixels is the
image size associated with an MPEG 2 output media format in an NTSC TV standard. Cleaner 5
at p. 204. Additionally, 720 x 576 pixels is the image size associated with an MPEG 2 output
media format in a PAL TV standard. Cleaner 5 at p. 204.
Cleaner 5 further discloses a flame rate of29.97 frames per second is associated with
MPEG 1 and MPEG 2

~utput

media formats for the NTSC TV standard and a frame rate

Application/Control Number: 95/00 1,284

Page 6

Art Unit: 3992
of 25 frames per second is associated with MPEG 1 and MPEG 2 output media formats
for the PAL TV standard, (Cleaner 5 at p. 207) and a user can select to process the video into an
elementary video stream when outputting MPEG 1 and MPEG 2 files, (Cleaner 5 at 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 MPEG 1
output media format, (Cleaner 5 at p. 7,206).

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 from an incoming format to
an outgoing format using an integrated computer software application including receiving video
information, output selection formats, converting received video into a raw video in an
uncompressed format, resizing raw video into the size associated with desired output media
format; processing the uncompressed video into an elementary video stream and processing the
elementary video stream in the desired output media format" was not considered or discussed on
the record during the prosecution of the application which became the '655 patent. Therefore, it
is agreed that Cleaner 5 raises a SNQ over at least claims 1-18 of the instant '655 Patent.

Application/Control Number: 95/001,284

Page 7

Art Unit: 3992

Issue 3
Avid Xpress and Avid Xpress D V
As npted in the Request, the Avid Xpress system is a software system for converting and
editing video and multimedia content quickly, (Avid Xpress at p. 1). Additionally, Avid Xpress
DV is a software product that is related to Avid Xpress that has a variety of exporting options
including MPEG output abilities, (Avid Xpress DV Features - Digital Distribution Options at p.
1).

Avid Xpress receives video in many different formats including popular animation files
on Windows, Macintosh and SGI, and QuickTime formats, (Avid Xpress at pp. 1,3).
Additionally, since Avid Xpress supports the ITU R-601 standard for converting video into
broadcast digital formats. Avid Xpress at p. 1 - Avid Express has code to output video in a
compliant ITU-R601 format.
Avid Xpress DV receives RealMedia, Windows Media/ASF, 1WMV, AVI and
OMF/JFIF files input formats, (Avid Xpress DV at p. 1 and FEATURES, p. 1)

Avid Xpress software utilizes the lTU R-601 standard for outputting broadcast quality
outputs in both the NTSC and PAL TV standards. Avid Xpress at p. 3.

The Avid Xpress software system 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). Avid Xpress at p. 3. Furthermore, the Avid Xpress software system
can output projects as uncompressed video for the best possible image quality . Avid Xpress at 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. Avid Xpress at pp. 2-3.

Application/Control Number: 95/001,284

Page 8

Art Unit: 3992

In addition, since the Avid Xpress software conforms to the ITU R-601 broadcast
industry standard output for PAL and NTSC TV standards (Avid Xpress at p. 3). Avid Xpress
can adjust the output frame rate, Furthermore, Avid Xpress DV exports files to MPEG format
and therefore must conform the output to the MPEG standard. Avid Xpress DV at FEATURES,

p. 1.
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. I. 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 from an incoming format to .
an outgoing format using an integrated computer software application including receiving video
information, output selection formats, converting received video into a raw video in an
uncompressed format, resizirig raw video into the size associated with desired output media
format; processing the uncompressed video into an elementary video stream and processing the

Application/Control Number: 95/001,284

Page 9

Art Unit: 3992

elementary video stream in the desired output media format" was not considered or discussed on
the record during the prosecution of the application which became the '655 patent. Therefore, it
is agreed that Cleaner 5 raises a SNQ over at least claims 1-18 of the instant '655 Patent.

Scope of Reexamination
3.

Claims 1-18 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 oftime are not available for third party requester
comments, because a comment period of 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 7,009,655 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.

Page 10

Application/Control Number: 95/001,284
Art Unit: 3992

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.
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].

OvtduJe~
Ovidio Escalante
Primary Examiner
Central Reexamination Unit - Art Unit 3992
[phone]

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Conferee:

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Conferee:

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