Case 5:15-cv-02008-EJD Document 81-16 Filed 03/29/16 Page 1 of 10
`Case 5:15—cv—O2008—EJD Document 81-16 Filed 03/29/16 Page 1 of 10
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`EXHIBIT 15
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`EXHIBIT 15
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`Case 5:15-cv-02008-EJD Document 81-16 Filed 03/29/16 Page 2 of 10
`NETFLIX, INC., PETITIONER v. OPENTV, INC., PATENT..., 2014 WL 2889586...
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`2014 WL 2889586 (Patent Tr. & App. Bd.)
`
`Patent Trial and Appeal Board
`
`Patent and Trademark Office (P.T.O.)
`
`NETFLIX, INC., PETITIONER
`v.
`OPENTV, INC., PATENT OWNER
`
`IPR2014-00269
`Patent 6,233,736
`June 24, 2014
`
`PETITIONER:
`*1 Andrew S. Ehmke
`andy.ehmke.ipr@haynesboone.com
`Scott Jarratt
`scott.jarratt.ipr@haynesboone.com
`
`PATENT OWNER:
`Erika H. Arner
`erika.arner@finnegan.com
`Joshua L. Goldberg
`joshua.goldberg@finnegan.com
`Russell Levine
`russell.levine@kirkland.com
`Eugene Goryunov
`eugene.goryunov@kirkland.com
`
`Before SALLY C. MEDLEY, JAMES T. MOORE, and JUSTIN BUSCH
`Administrative Patent Judges
`BUSCH
`Administrative Patent Judge
`
`DECISION
`
`Institution of Inter Partes Review
`
`37 C.F.R. § 42.108
`
`
`
`
`
`
`I. INTRODUCTION
`
`A. Background
`
`Netflix, Inc. (“Petitioner”) filed a Petition requesting an inter partes review of claims 1-12 of U.S. Patent No. 6,233,736
`(Ex. 1001, “the '736 patent”) on December 18, 2013. Paper 1 (“Pet.”). OpenTV, Inc. (“Patent Owner”) filed a Patent Owner
`Preliminary Response on March 27, 2014. Paper 11 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. §§ 6(b) and 314.
`
` © 2016 Thomson Reuters. No claim to original U.S. Government Works.
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`The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which states:
`THRESHOLD -- The Director may not authorize an inter partes review to be instituted unless the Director
`determines that the information presented in the petition filed under section 311 and any response filed
`under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.
`
`Inter partes review is instituted only if the petition supporting the ground demonstrates “that there is a reasonable likelihood
`that at least one of the claims challenged in the petition is unpatentable.” 37 C.F.R. § 42.108(c).
`
`Upon consideration of the Petition and the Patent Owner Preliminary Response, we conclude Petitioner has established a
`reasonable likelihood that it would prevail with respect to claims 1-12 of the '736 patent and, accordingly, we institute an inter
`partes review of claims 1-12.
`
`B. Related Proceedings
`
`*2 Petitioner indicates that the '736 patent was asserted against Petitioner in OpenTV, Inc. v. Netflix, Inc., No. 1:12-cv-01733
`(D. Del.). Pet. 1. Petitioner also indicates that “a proceeding relating to European Patent EP 0 879 534, which claims priority
`to the parent of the '736 patent, arising out of request number KG RK 13-1834 is pending in The Hague District Court, The
`Netherlands.” Id. The same parties and related patents are involved in the following petitions for inter partes review before this
`Board: Netflix, Inc. v. OpenTV, Inc., Case IPR2014-00252 (Dec. 16, 2013); Netflix, Inc. v. OpenTV, Inc., Case IPR2014-00267
`(PTAB Dec. 17, 2013); and Netflix, Inc. v. OpenTV, Inc., Case IPR2014-00274 (PTAB Dec. 19, 2013).
`
`C. The '736 Patent (Ex. 1001)
`
`The specification of the '736 patent describes a method and system “for providing direct automated access to an online
`information services provider” by extracting an address that is embedded in a signal containing an audio or video program.
`Ex. 1001, Abstract. The '736 patent explains that the address used to access online information is encoded either in the vertical
`blanking interval (VBI) of a video signal or some other portion of a signal that is not displayed so that the encoded address does
`not interfere with the program. Id. The system and method disclosed by the '736 patent can detect and decode an encoded address
`and alert the user that additional information is available. Id. In response to the indication that additional information is available,
`the user may opt to access the online information provider “by giving a simple command, e.g., pushing a special button on a
`remote control.” Id. “The system then automatically establishes a direct digital communication link to the online information
`provider through the address.” Id. One described embodiment provides a system that generates a secondary advertisement that
`is not derived from the primary advertisement when a user elects to skip or fast forward through the primary advertisement.
`Ex. 1001, 2:53-61.
`
`*3 Of the challenged claims, claims 1 and 6-9 are independent claims. Claims 1 and 6-8 are directed to methods, and claim
`9 is directed to a system with means-plus-function limitations that provide similar function as the method steps of claim 1.
`Illustrative claim 1 is reproduced as follows:
`1. A method of providing to a user of online information services automatic and direct access to online information through an
`address associated with an online information source provided with a video program comprising:
`
`indicating to the user that an address has been provided
`
`with said video program; and
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`electronically extracting said address and automatically establishing, in response to a user initiated command, a direct
`communication link with the online information source associated with said address so that the user has direct access to the
`online information.
`
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability under 35 U.S.C. § 103:
`
`Challenged Claims
`
`1-3 and 6-12
`
`
`4
`
`5
`
`Basis
`
`§
`103
`
`§
`103
`
`§
`103
`
`
`Reference[s]
`
`Throckmorton 1
`
`
`Throckmorton and Williams 2
`
`
`Throckmorton and Kerman 3
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest reasonable construction standard,
`claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in
`the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition
`for a claim term must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480
`(Fed. Cir. 1994).
`
`Independent claim 1 recites “automatically establishing, in response to a user initiated command, a direct communication link
`with the online information source.” Independent claims 1 and 6-9 each recite “so that the user has direct access to the online
`information.” Claim 9 recites “means for indicating to the user that an address is available for extraction from said electronic
`signal,” and “means for extracting an address associated with an online information source from an information signal embedded
`in said electronic signal, and for automatically establishing, in response to a user initiated command, a direct link with the
`online information source.” Dependent claim 10 recites “means for receiving an information signal from said online information
`source,” and “means for displaying an image signal detected from said received information signal.”
`
`*4 Petitioner argues that the inventor of the '736 patent did not provide any special meaning for the claim terms and, thus, the
`terms should be given their ordinary and customary meanings, as understood by an ordinarily skilled artisan. Pet. 6-7. Petitioner
`proposes a construction for each of those terms based on the customary and ordinary meaning. Id. at 7-8. Patent Owner does not
`propose a construction for any term but argues that Petitioner's proposed constructions lack material facts necessary to construe
`the claims. Prelim. Resp. 4-9. In particular, Patent Owner argues the Petition does not point to anything in the specification
`of the '736 patent supporting the proposed constructions. Id. Patent Owner further asserts that any argument in Mr. Kramer's
`declaration should not be considered because the Petition itself must identify the evidence to support Petitioner's constructions.
`Id.
`
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`1. “automatically establishing, in response to a user initiated command, a direct communication link with the online information
`source” (the ““automatically establishing limitation”)
`
`Petitioner asserts the ordinary and customary meaning of the automatically establishing limitation is “in response to a user
`initiated command, establishing a communication link to an online information source without the user performing additional
`steps.” Pet. 7. We do not see, nor does Patent Owner point to, anything in the specification of the '736 patent providing
`a definition for the automatically establishing limitation or any terms therein. Therefore, we agree with Petitioner that the
`automatically establishing limitation should be construed according to its ordinary and customary meaning, in light of the
`specification.
`
`We note that the '736 patent explains that existing media receiving and display systems (e.g., radio and television receivers)
`provide only limited access to interactive information providers. Ex. 1001, col. 1, ll. 15-17. The ' 736 patent expounds that
`current systems may either display an Internet address the viewer can access using his computer or provide access to a single
`information source from the media provider (e.g., the broadcast or cable operator), leaving the media provider in control of
`selecting the information provider. Id. at col. 1, ll. 17-29. The '736 patent also points out that, while systems providing interactive
`access “through a broadcast or cable television signal” exist, “such systems are limited in the access they provide to information
`sources directly available through the unitary cable or broadcast provider,” whereas “the present invention facilitates direct
`automated user access to an unlimited number of online information providers through provider addresses.” Id. at col. 2, ll.
`59-67 (emphasis added); see also id. at col. 1, ll. 29-32 (“[n]o system yet exists which provides automated and direct user access
`to online information providers through an address embedded in a video or audio program signal”).
`
`*5 While we conclude Petitioner's proposed construction uses a plain and ordinary meaning of the relevant terms, we determine
`it is not complete. In particular, Petitioner's proposed construction does not appear to provide any meaning for the recited term
`“direct.” Therefore, based on the record, the broadest reasonable construction of the automatically establishing limitation is in
`response to a command from a user, establishing, without further input from the user, a communication link directly between
`the user and the online information source. As seen in the above analysis, each of the limitations includes receiving a command
`initiated by a user, which then triggers the connection being established automatically.
`
`Additionally, we note that, while a communication link is established in response to a user command and with no further
`input required from the user, there is no limitation on when or how the communication link is established. Furthermore, while
`the communication link must be established directly between the user and the information source, one of ordinary skill in
`the art would have understood that Internet routing involves various intermediaries inherent to Internet traffic routing. The
`direct connection merely implies that the user does not need to go “through” the provider of the video program or any other
`intermediary not inherent to Internet traffic routing.
`
`2. “so that the user has direct access to the online information” (the “direct access limitation”)
`
`Petitioner asserts the ordinary and customary meaning of the direct access limitation is “displaying online information without
`the user leaving the screen to access the online information.” Pet. 7. Once again, we do not see, nor does Patent Owner point
`to, anything in the specification of the '736 patent providing a definition for the direct access limitation or any terms therein.
`Therefore, we agree with Petitioner that the direct access limitation should be construed according to its ordinary and customary
`meaning, in light of the specification.
`
`We disagree with Petitioner's proposed construction. We are not directed to anything in the specification of the '736 patent that
`indicates “direct access to the online information” requires the system to display the online information to the user without
`the user leaving the screen to access the information. See id. As discussed above with respect to the automatically establishing
`limitation, the '736 patent indicates that direct access means that the user does not need to go through the program provider
`in order to access the online information. Therefore, the broadest reasonable construction of the direct access limitation is
`that the user has access to the online information directly from the online information source. Once again, this means that the
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`system establishes a communication link directly between the user and the online information source, without any intervening
`intermediary that is not inherent to Internet traffic routing.
`
`3. “means for indicating to the user that an address is available for extraction from said electronic signal” (the “indicating
`means”)
`
`*6 We agree with Petitioner that the indicating means should be construed in accordance with 35 U.S.C. § 112, ¶ 6. 4 Moreover,
`we agree with the Petitioner that the function of the indicating means is stated clearly in the claim as “indicating to the user
`that an address is available for extraction,” and does not need further explanation. Pet. 7. We also agree with Petitioner that
`the structure of the indicating means includes “a message or other indicator, or equivalents.” Id.; Ex. 1001, 3:60-63. However,
`the specification of the '736 patent provides additional detail regarding the structure of the indicating means. Specifically, the
`structure of the indicating means is “a message displayed on a video screen, . . . a light, a sound or a wireless tactile indicator,
`e.g., vibrating wristband or clip-on unit . . . [or] a logo or message to be displayed for the user at points in the program which
`coincide with the presence of an embedded online information provider address” and equivalents thereof. Ex. 1001, 3:60-67.
`
`According to Patent Owner, the Petition cites only to Mr. Kramer's declaration and not to the specification of the '736 patent
`in support of Petitioner's proposed construction. Prelim. Resp. 5-6. While, in some instances, we may deny instituting review
`because the Petitioner does not cite to the appropriate evidence for support, we decline to do so in this case. Petitioner should have
`directly cited to the specification of the '736 patent, rather than citing to the declaration, which in turn cites to the relevant portion
`of the specification. However, Petitioner's failure to cite to the specification does not appear to be an attempt to circumvent the
`page limits. Moreover, the portion of the '736 patent cited in Mr. Kramer's declaration reveals the relevant structure without
`need for further analysis.
`
`4. “means for extracting an address associated with an online information source from an information signal embedded in
`said electronic signal, and for automatically establishing, in response to a user initiated command, a direct link with the online
`information source” (the “extracting and connecting means”)
`
`We agree with Petitioner that the extracting and connecting means should be construed in accordance with 35 U.S.C. §
`112, ¶ 6. Petitioner asserts the ordinary and customary meaning of the function of the indicating means is “(i) extracting an
`address associated with an online information source from an information signal embedded in said electronic signal and (ii)
`automatically establishing, in response to a user initiated command, a direct link with the online information source.” Pet. 7-8.
`For the same reasons as discussed above with respect to the indicating means, the function of the extracting and connecting
`means is stated clearly in the claim. We see nothing in the specification of the '736 patent to alter the proposed construction of
`the function of the extracting and connecting means nor a need for further explanation. We also agree with Petitioner's assertion
`that the structure of the extracting and connecting means is hardware and/or software. Id. at 8. According to the specification,
`the extracting and connecting means is an access controller including both an address extractor and a modem. Ex. 1001, Fig. 1,
`5:43-6:7, 8:53-65. However, as identified in Mr. Kramer's declaration, the specification provides additional detail. Ex. 1005 ¶ 38.
`
`*7 Specifically, the address extractor portion of the extracting and connecting means is “hardware and/or software to detect,
`decode and store an address which has been embedded in a video or audio program signal.” Ex. 1001, 5:45-47. The '736 patent
`also explains that there are multiple ways to detect an address signal, including detecting an address transmitted in the vertical
`blanking interface or other portion of a video signal. Id. at 5:50-52. The '736 patent states that “[t]he details of the construction
`of address extractor 42 are well known in the art and need not be described in further detail.” Id. at 6:5-7. The modem portion
`of the extracting and connecting means also is described as hardware and/or software that can automatically establish a direct
`digital communication link to the online information provider. Id. at 8:60-65. Therefore, the extracting and connecting means
`is hardware, software, or some combination of hardware and software that is programmed or configured to detect, decode and
`store an address transmitted as part of a program and use the address to establish a digital communications link directly between
`the user and the online information source, and equivalents thereof.
`
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`Once again, we have considered Patent Owner's argument regarding the failure of the Petition to cite to the specification of the
`'736 patent but decline to deny institution on that basis in this case.
`
`5. “means for receiving an information signal from said online information source” (the “receiving means”)
`
`We agree with Petitioner that the receiving means should be construed in accordance with 35 U.S.C. § 112, ¶ 6. Petitioner
`asserts the ordinary and customary meaning of the function of the indicating means is “receiving an information signal from
`said online information source.” Pet. 8. For the same reasons as discussed above, the function of the receiving means is stated
`clearly in the claim. We see nothing in the specification of the '736 patent to alter the proposed construction of the function
`of the receiving means nor a need for further explanation. We also agree with Petitioner's assertion that the structure of the
`receiving means is “a modem, or equivalents.” Id.
`
`The function of the modem and the fact that it may be implemented in hardware and/or software generally is described above
`with respect to the extracting and connection means. Moreover, the '736 patent further indicates the modem is used “for
`transmitting and receiving digital information signals between access controller 10 and public switching network 30 through an
`information signal carrier line 32.” Ex. 1001, 6:59-62. Therefore, we conclude the receiving means is a modem implemented in
`hardware, software, or some combination thereof programmed or configured to receive information signals and its equivalents.
`
`*8 As discussed above, we have considered Patent Owner's argument regarding the failure of the Petition to cite to the
`specification of the '736 patent but decline to deny institution on that basis in this case.
`
`6. “means for displaying an image signal detected from said received information signal” (display means)
`
`We agree with Petitioner that the display means should be construed in accordance with 35 U.S.C. § 112, ¶ 6. Petitioner asserts
`the ordinary and customary meaning of the function of the indicating means is “displaying an image signal detected from
`said received information signal.” Pet. 8. For the same reasons as discussed above, the function of the display means is stated
`clearly in the claim. We see nothing in the specification of the '736 patent to alter the proposed construction of the function
`of the receiving means nor a need for further explanation. Petitioner asserts that the structure of the display means includes a
`“computer monitor or other display device, or equivalents.” Id.
`
`The '736 patent explains “[r]eceived information signals are operated upon by processor 58 for displaying upon conventional
`TV reproducing system 22 or high resolution reproducing system 40, e.g., a computer monitor or other display device.” Ex.
`1001, 7:57-61. Therefore, we conclude the display means is a television, computer monitor, and equivalents.
`
`As discussed above, we have considered Patent Owner's argument regarding the failure of the Petition to cite to the specification
`of the '736 patent but decline to deny institution on that basis in this case.
`
`B. Asserted Obviousness Grounds Based on Throckmorton, Throckmorton and Williams, and Throckmorton and Kerman
`
`1. Overview of Throckmorton (Ex. 1004)
`
`Throckmorton describes systems and methods for providing apparent or actual two-way interactive access to information related
`to a one-way data stream, such as a television program broadcast. Ex. 1004, Abstract. Throckmorton provides a consumer
`of broadcast programming with access to data relevant to the programming in real time (i.e., “during the process of program
`reception”). Id. at 1:59-64. Throckmorton describes supplying a one-way data stream, including the primary data stream and
`associated data, to a consumer, at which point the primary data stream may be rendered to the consumer and the associated data
`may be accessed. Id. at 3:6-14. If the primary data stream is a television broadcast, the associated data may be encoded in the
`vertical blanking interval (VBI). Id. at Abstract, 7:63-65.
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`*9 Throckmorton describes two preferred embodiments for interacting with the associated information. The first preferred
`embodiment provides the consumer with apparent two-way interactive access and is described as providing additional online
`information relevant to the primary data stream that can be stored locally at the consumer's receiver. Id. at 7:53-67. The
`consumer then has access to the online information, and it appears to the consumer that the locally stored data is coming from an
`online service. Id. at 8:1-15. The second preferred embodiment provides the consumer with actual two-way interactive access
`and is described as adding a two-way communication channel connected to the microprocessor that provides access to online
`information. Id. at 8:16-24. Throckmorton explains that the two-way communication channel allows access to information
`for which only references (such as URLs), rather than actual data (such as web pages), have been received. Id. at 8:63-9:15.
`Throckmorton also discloses that the second embodiment may deliver actual data, rather than just references, so that the
`consumer experiences apparent interactivity even if the consumer does not have a two-way communication channel. Id. at
`9:16-26.
`
`The primary difference between the first and second preferred embodiments is that the second preferred embodiment includes
`a two-way communication channel (and an associated network protocol manager) connected to the processor and a remote data
`manager. See id. at 8:18-19, 8:26-27, Figs. 3-5.
`
`2. Overview of Williams (Ex. 1005)
`
`Williams describes a system and method for providing real time data (including emergency broadcast messages) on the same
`screen on which a user is viewing broadcast programming. Ex. 1005, Abstract. Williams allows for the real time data to
`be extracted and displayed, superimposed over any video signal being viewed, including broadcast programming and VCR
`playback. Id.
`
`3. Overview of Kerman (Ex. 1006)
`
`Kerman describes a system for providing a visible and/or audible alarm upon the occurrence of certain events. Ex. 1006,
`Abstract. Kerman discloses extracting an information signal from a received television signal and, upon determination that a
`certain event has occurred, activating the visible and/or audible alarm. Id. Kerman discusses that the event triggering the alarm
`may include receipt of a certain message, program, or details about a program. Id.
`
`4. Analysis of Asserted Obviousness Ground Based on Throckmorton (Claims 1-3 and 6-12), Throckmorton and Williams
`(Claim 4), and Throckmorton and Kerman (Claim 5)
`
`Petitioner contends that claims 1-3 and 6-12 would have been obvious in view of Throckmorton (Pet. 9-39), claim 4 would
`have been obvious in view of Throckmorton and Williams (id. at 39-42), and claim 5 would have been obvious in view of
`Throckmorton and Kerman (id. at 42-47). Regarding the obviousness challenge to claims 1-3 and 6-12, Petitioner discusses
`the two embodiments of Throckmorton and provides a motivation for combination of the two embodiments, including that
`a combination of the two disclosed embodiments is the combination of elements in the manner described in the reference,
`resulting in two-way communication while viewing a program. Id. at 13. Petitioner further argues that Throckmorton teaches
`the proposed combination and “specifically teaches such a result.” Id. Petitioner maps portions of Throckmorton to each of the
`limitations in claims 1-3 and 6-12. Id. at 14-39.
`
`*10 Petitioner provides a description of Williams's teachings, a reason to combine Williams with Throckmorton, and a mapping
`of Williams to the additional limitation recited in claim 4. Id. at 39-42. Petitioner also describes Kerman's teachings, a reason
`to combine Kerman with Throckmorton, and a mapping of Kerman to the additional limitation recited in claim 5. Id. at 42-47.
`
`Patent Owner argues the Petition does not map the cited art to the claim language as construed by Petitioner, specifically the
`proposed construction of “so that the user has direct access to the online information.” Id. at 10-12. As discussed above, our
`construction is different from that proposed by Petitioner. Therefore, we look to Petitioner's application of the cited art to
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`the claim limitations as we have construed them. We have analyzed Petitioner's challenges to claims 1-12 and are persuaded
`that Petitioner has shown sufficiently that Throckmorton teaches the recited “so that the user has direct access to the online
`information,” as construed. Specifically, the cited portions of Throckmorton discuss establishing a connection between the
`consumer and the online information source, without the program provider, or any other entity, acting as an intermediary. Id.
`at 16-18 (citing Ex. 1004, 9:1-12).
`
`Patent Owner's primary contention regarding the teachings of the cited references is that Petitioner has not shown where the
`recited “automatic” or ““automatically,” in regards to establishing a connection, is found in Throckmorton. Prelim. Resp. 12-15.
`However, each of Petitioner's mappings identified by Patent Owner states that the connection is established automatically
`because the system performs the connection and retrieving. Id. at 13-14. As discussed above, in each of the automatically
`establishing limitations, the connection is established in response to some user initiated command. Thus, in this case, as
`discussed in our construction of the automatically establishing limitations, the “automatic” or “automatically” means that the
`connection is established without further input from the user after receipt of the user initiated command. Therefore, we are
`persuaded Petitioner has shown sufficiently that Throckmorton teaches the automatically establishing limitations.
`
`Patent Owner also argues that the Petition does not provide a complete obviousness analysis. Id. at 15-17. In particular, Patent
`Owner argues that the Petition cites to disparate sections of Throckmorton (i.e., both of Throckmorton's preferred embodiments)
`without explaining which of the embodiments is being relied on for the proposed ground or how the two embodiments would be
`combined to render the claims obvious. Id. at 16-17. Patent Owner also asserts the obviousness analysis is incomplete because
`the proposed motivation is conclusory and insufficient. Id. at 17-19.
`
`*11 We agree with the parties that Throckmorton teaches both a one-way communications embodiment and a two-way
`communications embodiment. Throckmorton's disclosure indicates that both embodiments provide a consumer with access to
`online information during the process of program reception. As discussed above, Throckmorton's description of the two-way
`communications embodiment explains that the two-way communications embodiment adds a two-way communication channel
`to the system described by the one-communications way embodiment. Ex. 1004, Abstract, 8:16-9:25; See Pet. 9. Therefore, for
`purposes of this decision, we are persuaded by Petitioner's argument that combining the two embodiments, for establishing a
`connection in response to a user initiated command, is “simply combining elements contained in the same reference in precisely
`the manner described in the reference.” Pet. 13.
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that Petitioner has shown a reasonable likelihood that it would prevail in demonstrating
`that: (1) claims 1-3 and 6-12 of the '736 patent are unpatentable as obvious in view of Throckmorton; (2) claim 4 is unpatentable
`as obvious in view of the combination of Throckmorton and Williams; and (3) claim 5 is unpatentable as obvious in view
`of the combination of Throckmorton and Kerman. The Board has not made a final determination on the patentability of any
`challenged claim.
`
`IV. ORDER
`
`For the reasons given, it is:
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review is hereby instituted as to claims 1-12 of the '736 patent;
`
`FURTHER ORDERED that the trial is limited to the stated grounds and no other grounds are authorized; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, the trial commences on the entry date of this
`decision, and notice is hereby given of the institution of a trial.
`
` © 2016 Thomson Reuters. No claim to original U.S. Government Works.
`
`8
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`

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`Case 5:15-cv-02008-EJD Document 81-16 Filed 03/29/16 Page 10 of 10
`NETFLIX, INC., PETITIONER v. OPENTV, INC., PATENT..., 2014 WL 2889586...
`
`Footnotes
`1
`Throckmorton et al. (“Throckmorton”), U.S. Patent No. 5,818,441, Oct. 6, 1998 (Ex. 1004).
`2
`Williams et al. (“Williams”), U.S. Patent No. 5,701,161, Dec. 23, 1997 (Ex. 1005).
`3
`Kerman, U.S. Patent No. 5,659,366, Aug. 19, 1997 (Ex. 1006).
`4
`Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C.
`§ 112, ¶ 6, as 35 U.S.C. § 112(f). Because the '736 patent has a filing date before September 16, 2012 (effective date of AIA), we
`use the citation § 112, ¶ 6.
`
`2014 WL 2889586 (Patent Tr. & App. Bd.)
`
`