Paper No.
`Filed: March 26, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NETFLIX, INC.
`Petitioner
`
`v.
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`OPENTV, INC.
`Patent Owner
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`
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`
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`
`
`Case IPR2014-00252
`Patent 8,107,786
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`
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`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 8,107,786
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`
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`Filed: March 26, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`NETFLIX, INC.
`Petitioner
`
`v.
`
`OPENTV, INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2014-00252
`Patent 8,107,786
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 8,107,786
`
`
`
`
`
`
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`
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`Case No. IPR2014-00252
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`Table of Contents
`
`I.
`
`II.
`
`Preliminary Statement ..................................................................................... 1
`
`The Board Should Not Institute an Inter Partes Review Because the
`Petition Fails to Establish a Reasonable Likelihood of Prevailing On
`Any Challenged Claim .................................................................................... 3
`
`A.
`
`The Anticipation Grounds for Claims 1-6 Fail Because the
`Petition Does Not Explain How Plotnick Discloses the Claim
`Elements as Arranged in the Claims ..................................................... 5
`
`1.
`
`2.
`
`3.
`
`“A system including: a request module and a
`communication module” (Claims 1-3) ....................................... 6
`
`“[C]ommunication module to . . . associate the primary
`content to secondary information” (Claims 1-3) ........................ 9
`
`“[R]eceiving a request for primary content” and
`“associating the primary content to secondary
`information” (Claims 4-6) ......................................................... 15
`
`B.
`
`The Obviousness Ground for Claim 7 Fails Because the Petition
`Does Not Explain Facts Necessary to Determine the Scope and
`Content of the Prior Art ....................................................................... 18
`
`1.
`
`2.
`
`“A tangible computer readable medium storing a set of
`instructions” .............................................................................. 18
`
`“receive a request for primary content” and “associate the
`primary content to secondary information” .............................. 21
`
`III. Conclusion ..................................................................................................... 25
`
`
`
`
`
`
`
`i
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`
`
`Table of Authorities
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`Case No. IPR2014-00252
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`
` Page(s)
`
`FEDERAL CASES
`Dominion Dealer Solutions, Inc. v. Autoalert, Inc.,
`IPR2013-00220, (Paper 9) .................................................................................... 6
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................ 5, 18, 21, 23
`
`Heart Failure Techs., LLC v. Cardiokinetix, Inc.,
`IPR2013-00183, (Paper 12) .......................................................................... 18, 24
`
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) ...................................................................passim
`
`Norman Noble, Inc. v. Nutech Ventures,
`
`IPR2013-00101, (Paper 6) ................................................................................... 5
`
`
`FEDERAL STATUTES
`
`35 U.S.C. § 312 .......................................................................................................... 3
`
`35 U.S.C. § 314(a) ..................................................................................................... 3
`
`35 U.S.C. § 315(b) ..................................................................................................... 1
`
`FEDERAL REGULATIONS
`
`37 C.F.R. § 42.6(a) ..................................................................................................... 7
`
`37 C.F.R. § 42.104(b) .......................................................................................passim
`
`OTHER AUTHORITY
`
`77 Fed. Reg. 48688 (Aug. 14, 2012) ..................................................................... 2, 4
`
`
`
`ii
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`Case No. IPR2014-00252
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`
`I.
`
`Preliminary Statement
`
`On December 19, 2012, after months of waiting and hearing no response to
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`numerous communications regarding a potential license agreement, Patent Owner
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`OpenTV, Inc. filed a seven-patent willful infringement lawsuit against Petitioner
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`Netflix, Inc. See OPENTV Exhibit 2001, Complaint in OpenTV, Inc., v. Netflix,
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`Inc. All seven patents relate to Over-the-Top delivery of content (such as movies,
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`television, and other media) over the Internet, and relate to OpenTV’s highly
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`successful digital television business that includes over 200 million digital set-top
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`boxes and televisions shipped to consumers with OpenTV software and 80
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`worldwide customers that run OpenTV solutions. Between December 16, 2013
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`and December 19, 2013 (the last day possible under the statutory deadline
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`established in 35 U.S.C. § 315(b)) Netflix filed petitions requesting Inter Partes
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`Review of four of the seven asserted patents, including U.S. Patent No. 8,107,786
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`(the “Petition”). The Petition challenged all seven claims of the ’786 Patent.
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`The filing of this Petition is simply another attempt by Netflix to circumvent
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`the patent system and continue its business without any regard for the intellectual
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`property rights of its competitors. Indeed, Netflix’s refusal to compensate OpenTV
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`for its ongoing patent infringement is part of Netflix’s deliberate strategy to ignore
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`intellectual property of others. Netflix has even gone so far as to publicly state that
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`“[w]e have not searched patents relative to our technology,” despite knowing that
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`Case No. IPR2014-00252
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`many companies are devoting significant resources to develop patents that could
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`potentially affect Petitioner’s business. OPENTV Exhibit 2002, Netflix, Inc. Form
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`8-K Dated January 29, 2013, p. 15. Netflix’s attempt to now challenge the ’786
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`patent, after knowing about its relevance to Netflix’s business for over 15 months,
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`similarly ignores the plain rules of the patent system. Specifically, the Petition
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`fails to meet this Board’s requirement that a Petition “must specify where each
`
`element of the claim is found in the prior art patents or printed publications.” 37
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`C.F.R. § 42.104(b)(4). Consequently, the Petition fails to “provide[] an efficient
`
`means for identifying the legal and factual basis for satisfying the threshold for
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`instituting inter partes review and provide[] the patent owner with notice as to the
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`basis for the challenge to the claims.” 77 Fed. Reg. 48688 (Aug. 14, 2012).
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`Unsurprisingly, given the last-minute filing of the Petition, both grounds
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`raised in the Petition—alleged anticipation of claims 1-6 by Plotnick and alleged
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`obviousness of claim 7 over Plotnick in view of Eldering—are wholly deficient.
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`The Petition’s anticipation argument fails to explain whether or how Plotnick
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`discloses that each and every feature of claims 1-6 are arranged as recited in the
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`claims, a requirement of any prima facie case of anticipation. To the contrary,
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`Netflix’s Petition fails to even disclose the existence of the disparate disclosures in
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`the primary reference it relies on for anticipation. See, e.g., Net MoneyIN, Inc. v.
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`VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Moreover, the obviousness
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`ground in the Petition for claim 7 cannot establish a prima facie case of
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`obviousness because it fails to explain facts necessary to determine the scope and
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`content of the prior art.
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`Because the Petition’s asserted grounds neither comply with the Rules nor
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`establish prima facie cases of anticipation or obviousness, Netflix cannot
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`demonstrate a reasonable likelihood of prevailing for any claim of the ’786 patent.
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`Accordingly, the Board should not institute this proceeding.
`
`II. The Board Should Not Institute an Inter Partes Review Because the
`Petition Fails to Establish a Reasonable Likelihood of Prevailing On
`Any Challenged Claim
`
`The Board need not waste its resources on Netflix’s attempt to challenge the
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`’786 patent because Netflix’s Petition fails to show a reasonable likelihood that it
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`will prevail on any of the seven challenged claims. 35 U.S.C. § 314(a). For the
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`Board to determine if the “reasonable likelihood” standard is satisfied, a Petition
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`must identify, “with particularity, each claim challenged, the grounds on which the
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`challenge to each claim is based, and the evidence that supports the grounds for the
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`challenge to each claim.” 35 U.S.C. § 312. Netflix’s Petition fails to satisfy these
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`statutory requirements in a number of ways, so the Petition cannot be instituted.
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`In its rules implementing the statute, the Board requires that a Petition “must
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`specify where each element of the claim is found in the prior art patents or printed
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`publications.” 37 C.F.R. § 42.104(b)(4). This “provides an efficient means for
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`identifying the legal and factual basis for satisfying the threshold for instituting
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`inter partes review and provides the patent owner with notice as to the basis for the
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`challenge to the claims.” 77 Fed. Reg. 48688 (Aug. 14, 2012).
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`The Petition violates these statutory and regulatory requirements in both of
`
`its proposed grounds. First, instead of explaining whether or how Plotnick
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`discloses claim features as arranged in claims 1-6, as required to show anticipation,
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`the Petition simply paraphrases and cites Plotnick without further elucidation. This
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`contravenes 37 C.F.R. § 42.104(b)(4), which requires a Petition to “specify where
`
`each element of the claim is found in the prior art patents or printed publications.”
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`37 C.F.R. § 42.104(b)(4). Moreover, rule 42.104(b)(4) cannot be disregarded
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`because a prima facie case of anticipation requires that “a reference discloses
`
`within the four corners of the document not only all of the limitations claimed but
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`also all of the limitations arranged or combined in the same way as recited in the
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`claim.” Net MoneyIN, 545 F.3d at 1369 (emphasis added). Thus, beyond failing
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`to follow the Rules, the Petition fails to present a prima facie case of anticipation.
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`Second, regarding the proposed obviousness ground, the Petition fails to
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`explain whether and how the disparate disclosures of Plotnick that it relies on as
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`the basis for its obviousness challenge could be combined. In so doing, the
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`Petition does not “specify where each element of the claim is found in the prior art
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`patents or printed publications.” 37 C.F.R. § 42.104(b)(4). Further, this lack of
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`explanation is fatal, because it illustrates that the Petition fails to explain facts
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`necessary to determine the scope and content of the prior art, which is required to
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`establish a prima facie case of obviousness. Graham v. John Deere Co., 383 U.S.
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`1, 17-18 (1966). Thus, the Petition’s assertions fail to present a prima facie case of
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`obviousness and fail to follow the Rules. Accordingly, the Board should not
`
`institute this proceeding.
`
`A. The Anticipation Grounds for Claims 1-6 Fail Because the
`Petition Does Not Explain How Plotnick Discloses the Claim
`Elements as Arranged in the Claims
`
`Netflix’s Petition contains fatally flawed, conclusory allegations that
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`Plotnick anticipates claims 1-6 of the ’786 patent. In particular, the Petition
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`paraphrases Plotnick and cites to disparate parts of Plotnick in a way that does
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`nothing to illuminate whether or how Plotnick’s teachings allegedly disclose claim
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`features as arranged in claims 1-6. Simple paraphrasing and unsupported reliance
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`on disparate citations cannot establish a prima facie case of anticipation. Norman
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`Noble, Inc. v. Nutech Ventures, IPR2013-00101, (Paper 6), at 10. Instead, a prima
`
`facie case of anticipation requires that “a reference discloses within the four
`
`corners of the document not only all of the limitations claimed but also all of the
`
`limitations arranged or combined in the same way as recited in the claim.” Net
`
`MoneyIN, 545 F.3d at 1369. Without this, the Petition contravenes 37 C.F.R.
`
`§ 42.104(b)(4), which requires that a Petition “specify where each element of the
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`claim is found in the prior art patents or printed publications.” 37 C.F.R.
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`§ 42.104(b)(4). Significantly, the Board has declined to institute inter partes
`
`review where a Petition fails to explain whether or how disparate disclosures in a
`
`reference teach a claim element as arranged in the claim. Dominion Dealer
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`Solutions, Inc. v. Autoalert, Inc., IPR2013-00220, (Paper 9), at 12-13 (finding that
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`separate disclosures in a reference do not anticipate a claim reciting actions in a
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`specific manner, particularly where a Petition “does not explain adequately how
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`the disparate disclosures” satisfy the claim). It should do so again here.
`
`1.
`
`“A system including: a request module and a
`communication module” (Claims 1-3)
`
`Claim 1 recites “[a] system including: a request module to receive a request
`
`for primary content; and a communication module.” Claims 2-3 also recite these
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`elements by virtue of their dependence from claim 1. The system of claims 1-3
`
`therefore includes both a “request module” and a “communication module.” But in
`
`mapping the claimed system including a “request module and communication
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`module” to Plotnick, the Petition purports to find the “request module” in one
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`place and the “communication module” in another, as if they stand alone,
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`independent of each other, instead of being part of a single system as claimed.
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`Regarding the “request module” of the claimed system, the Petition alleges
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`that “Plotnick discloses ‘a request module to receive a request for primary content’
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`because it teaches a video dial tone gateway 426 and a return channel transport that
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`receives requests for video content. (NTFX-1005, pp. 15-17; NTFX-1003,
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`paragraph [0112]-[0013].)” Pet. at 10. The cited portion of Plotnick is
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`unquestionably directed to aspects of a video on demand (“VoD”) system.1 See,
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`e.g., NTFX-1003, paragraph [0112] (“Within the switching office 420 various
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`components are used to provide the VoD service . . . .”). Yet, the Petition does not
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`allege that the VoD system of Plotnick discloses the “communication module” that
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`is included in the claimed system.
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`Regarding the “communication module,” the Petition instead alleges that
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`Plotnick discloses this element “because it teaches a ‘program video source (video
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`source) 1200’ such as a ‘head-end’ that transmits a program stream or video stream
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`1210 to a personal video recorder (‘PVR’). (NTFX-1005, p. 17; NTFX-1003,
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`paragraph [0167].)” The cited portion of Plotnick does not discuss a VoD system,
`
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`1 It is unclear why the Petition cites to paragraph [0013] of Plotnick, which
`
`refers to a PCT application. Netflix’s expert declaration cites to paragraph [0113]
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`of Plotnick instead of paragraph [0013] cited in the Petition. NTFX-1005 at 16-17.
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`This part of the expert declaration should be given no weight, however, because
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`the rules preclude incorporation of arguments by reference. 37 C.F.R. § 42.6(a)(3)
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`(“Arguments must not be incorporated by reference from one document into
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`another document.”).
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`but instead is directed to “an embodiment where a program source (video source)
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`1200 transmits a program stream (video stream) 1210 including programming
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`1220 and both an advertisement 1230 and an alternative advertisement 1240 (in a
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`preferred embodiment a related alternative ad) to a PVR 1250.” NTFX-1003,
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`paragraph [0167]. Despite providing two disparate citations for the claimed
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`system, the Petition does not explain whether or how video source 1200, the
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`alleged “communication module,” is part of the same VoD system that allegedly
`
`contains the video dial tone gateway and the return transport path allegedly
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`comprising the “request module.” Instead, the Petition merely states that
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`“Plotnick’s disclosure of a video source 1200 that transmits programming
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`including an advertisement and an alternative advertisement is a teaching of a
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`‘communication module’ as recited in the claim.” Pet. at 11.
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`It is not self-evident from the portions of Plotnick cited by the Petition that
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`the alleged “request module” and “communication module” in the reference are
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`part of the same system, as arranged in the claims. And the Petition itself does not
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`even explain whether or how the alleged “request module” and “communication
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`module” of Plotnick are part of the same VoD system. The Petition therefore does
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`not demonstrate that the Plotnick reference discloses the claim elements as
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`arranged in claim 1, as would be needed to support a case of anticipation. Net
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`MoneyIN, 545 F.3d at 1371. Accordingly, the Petition fails to specify where each
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`Case No. IPR2014-00252
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`element of the claim is found in the prior art as required by 37 C.F.R.
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`§ 42.104(b)(4) and fails to establish a prima facie case of anticipation. Id. The
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`Petition therefore fails to establish a reasonable likelihood that independent claim
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`1, and its dependent claims (claims 2-3), are anticipated by Plotnick.
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`2.
`
` “[C]ommunication module to . . . associate the primary
`content to secondary information” (Claims 1-3)
`The Petition also fails to explain whether or how Plotnick discloses claim
`
`1’s “communication module to . . . associate the primary content to the secondary
`
`information” as arranged in the claim. The Petition asserts that Plotnick’s video
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`source 1200 is the claimed “communication module.” Pet. at 10. The Petition
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`further alleges that Plotnick’s advertisement, as described in paragraph [0167], is
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`the claimed “primary content.” Pet. at 11. The Petition then provides three
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`mappings for the claimed “secondary information,” asserting that Plotnick’s
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`alternative advertisement, ad metadata, or information signals are, individually, the
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`“secondary information.” Pet. at 12-15. But neither the cited portions of Plotnick
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`nor the Petition explain whether or how Plotnick’s video source (the alleged
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`communication module) associates Plotnick’s advertisement (the alleged primary
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`content) with any of Plotnick’s alternative advertisement, ad metadata, or
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`information signals as required by claim 1.
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`a)
`The Petition does not explain how the alleged “communication module” of
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`Plotnick’s Alternative Advertisement
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`Plotnick associates an “advertisement” with an “alternative advertisement.”
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`Regarding the alternate advertisement as “secondary information,” the Petition
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`alleges that “Plotnick discloses ‘associat[ing] the primary content to the secondary
`
`information’ when it teaches associating the alternative advertisement (the
`
`secondary information) with the default advertisement (primary content) in a
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`common video stream. (NTFX-1005, p. 21). The video stream includes both an
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`advertisement as a primary content and an alternative advertisement as secondary
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`information associated in the same location in the stream. (NTFX-1005, p. 21;
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`NTFX-1003, paragraph [0167], Fig. 12A).” Pet. at 13.
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`But paragraph [0167] of Plotnick does not explain whether or how video
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`source 1200 associates Plotnick’s advertisement with its alternative advertisement.
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`It does not does not even use the term “associate.” And the Petition only states that
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`Plotnick teaches associating these two things without explaining what entity
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`performs the associating function or how it is done. See Pet. at 12. Thus, the
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`Petition’s allegation of Plotnick’s alternative advertisement as the “secondary
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`information” falls flat because it does not explain whether or how the relied-upon
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`teachings of Plotnick disclose that the “communication module . . . associate[s] the
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`primary content to the secondary information,” as recited by claim 1.
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`Plotnick’s ad metadata
`b)
`Regarding the ad metadata of Plotnick as the alleged “secondary
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`information,” the Petition is even more lacking. The Petition states:
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`Plotnick discloses ‘associat[ing] the primary content to
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`secondary information’ when it teaches associating the
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`default advertisement with ad metadata used to access the
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`alternative advertisement. (NTFX-1005, pp. 21-23).
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`Plotnick discloses that content and metadata are delivered
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`to a set-top box PVR. (NTFX-1005, pp. 21-22; NTFX-
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`1003, paragraph [0159], [0160], Fig. 12A.) . . . . The
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`metadata is sent in the video stream and therefore is
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`transmitted with the primary advertisement. (NTFX-
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`1005, p. 22-23; NTFX-1003, paragraph [0164], [0167],
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`Fig. 12A.)
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`Pet. at 13-14.
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`The Petition does not explain whether or how Plotnick’s video source 1200
`
`associates Plotnick’s advertisement with ad metadata. Instead, it relies on
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`disparate disclosures of Plotnick to make a conclusory allegation that the
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`“communication module . . . to associate” element of claim 1 is taught by Plotnick
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`without explaining if or how these unrelated disclosures could be linked together.
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`For example, paragraphs [0159], [0160], and [0164] of Plotnick, relied on in the
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`Petition, appear to relate to an ad management system that provides ad metadata.
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`But they do not mention video source 1200. NTFX-1003, paragraphs [0159],
`
`[0160], and [0160]. And paragraph [0167] of Plotnick, also cited in the Petition,
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`mentions video source 1200, but is completely silent regarding metadata, let alone
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`ad metadata, and does not mention an ad management system. Id. at paragraph
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`[0167]. Yet, the Petition does not explain whether or how these disparate
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`disclosures of Plotnick’s are related to each other or whether or how they disclose
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`that Plotnick’s video source 1200 associates an advertisement with ad metadata.
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`Pet. at 13.
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`Moreover, the Petition does not even allege video source 1200 (the
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`purported “communication module”) associates the advertisement with ad
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`metadata. Instead, the Petition simply states that Plotnick teaches associating these
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`two things without explaining what, if any, entity performs the associating
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`function, or how it is done. Pet. at 13-14. Claim 1’s express recitation that the
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`“communication module . . . associate[s] the primary content to the secondary
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`information” highlights the deficiency in the Petition created by this lack of
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`explanation.
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`Plotnick’s information signals
`c)
`Regarding Plotnick’s alleged disclosure of information signals as “secondary
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`information,” the Petition provides two contentions as to why this disclosure
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`satisfies the “communication module . . . to associate” claim element. First, the
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`Petition states that “Plotnick discloses ‘associat[ing] the primary content to
`
`secondary information’ when it teaches sending, with the default advertisement,
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`information signals used to generate alternative advertisement. (NTFX-1005, p.
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`26.)” Pet. at 14. Second, the Petition states that Plotnick teaches this claim
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`element “because it teaches streaming of signals representing the default
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`advertisement and the metadata for the alternative advertisement to the same target
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`audience. (NTFX-1005, pp. 24-25.)” Pet. at 14.
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`The Petition fails to explain whether or how video source 1200 associates
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`Plotnick’s advertisement with the information signal in either of these contentions.
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`With respect to the first contention, the Petition is completely silent regarding what
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`entity performs the “associat[ing]” function, or how it is done. This lack of
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`explanation is surprising in the face of the Petition’s citation to paragraphs [0114]
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`and [0167] of Plotnick , which do not use the term “associate” and appear to be
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`disparately directed to information signals and video source 1200, respectively.
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`NTFX-1003, paragraphs [0114], [0167].
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`Case No. IPR2014-00252
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`Regarding the second contention, the Petition states that “ad servers
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`associate the default advertisements and the alternative advertisements.” Pet. at
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`14-15. But this is not an explanation of how Plotnick’s video source 1200, the
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`alleged “communication module,” performs the claimed “associat[ing].” Indeed,
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`the Petition does not in any way link video source 1200 to an ad server. Id. Thus,
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`the Petition fails to explain whether and how Plotnick discloses that the
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`“communication module . . . associate[s] the primary content to the secondary
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`information” as arranged in claim 1.
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`As shown above, neither the cited portions of Plotnick nor the Petition
`
`explain whether or how Plotnick’s video source (the alleged communication
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`module) associates Plotnick’s advertisement (the alleged primary content) with any
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`of Plotnick’s alternative advertisement, ad metadata, or information signals
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`(individually, the alleged secondary information) as arranged in claim 1. The
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`Petition therefore does not demonstrate that Plotnick discloses this claim element
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`as arranged in the claim, as would be needed to support a case of anticipation, Net
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`MoneyIN, 545 F.3d at 1371. The Petition thus fails to specify where each claim
`
`element is found in the prior art as required by 37 C.F.R. § 42.104(b)(4) and fails
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`to establish a prima facie case of anticipation. The Petition therefore fails to
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`establish a reasonable likelihood that independent claim 1, and its dependent
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`claims (claims 2-3), are anticipated by Plotnick.
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`3.
`
`“[R]eceiving a request for primary content” and
`“associating the primary content to secondary information”
`(Claims 4-6)
`
`Claim 4 recites “[a] method including: receiving a request for primary
`
`content; [and] associating the primary content to secondary information.” Claims
`
`5-6 also recite these elements by virtue of their dependence on claim 4. By its
`
`plain language, claim 4 requires the same primary content for which a request is
`
`received to be associated with secondary information. Much like its treatment of
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`the components of the system of claim 1, the Petition maps the “receiving” and
`
`“associating” steps of claim 4 to disparate disclosures in Plotnick, and does not
`
`explain how the same primary content that is requested in the “receiving step” is
`
`also associated to secondary information in the “associating” step.
`
`The Petition asserts that Plotnick discloses the “receiving” step of claim 4
`
`“because it teaches that the head-end and video dial tone gateway, together
`
`forming a part of the switching office, receive requests for video content. (NTFX-
`
`1005, pp. 40-42; NTFX-1003, paragraphs [0112]-[0113].)” Pet. at 23. The cited
`
`portions of Plotnick are indisputably directed to aspects of a video on demand
`
`(VoD) system that delivers video content, such as a movie. See, e.g., NTFX-1003,
`
`paragraph [0112] (“Within the switching office 420 various components are used
`
`to provide VoD services” such as allowing a “subscriber [to] select appropriate
`
`video content.”); id. at paragraph [0111] (“A VoD system allows a subscriber to
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`15
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`Case No. IPR2014-00252
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`retrieve a movie at any time.”) And the “primary content” in the Petition’s
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`mapping of the “receiving” step is the “requested video content.” Pet. at 23. Yet,
`
`the Petition does not allege that the video content delivered by the VoD system of
`
`Plotnick is the “primary content” that is “associat[ed] . . . to secondary
`
`information” as in the claimed method.
`
`Regarding the “primary content,” the Petition alleges that Plotnick’s
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`advertisement, rather than its video content, is the “primary content.” Pet. at 24
`
`(“Plotnick’s advertisement is ‘primary content’ communicated to a PVR as a
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`receiving device. (NTFX-1005, pp. 42-44; NTFX-1003, paragraph [0167].)”). The
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`Petition then contends that Plotnick discloses the “associating” step of claim 4
`
`because it discloses associating the advertisement with an alternative
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`advertisement, metadata, and information signals (individually alleged to be the
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`claimed “secondary information”) in a video stream sent by video source 1200.
`
`See Pet. at 25-27 (citing Plotnick, paragraph [0167]).
`
`The cited portion of Plotnick does not discuss the video content delivered by
`
`the VoD server, and instead is directed to “an embodiment where program source
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`(video source) 1200 transmits a program stream (video stream) 1210 including
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`programming 1220 and both an advertisement 1230 and an alternative
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`advertisement 1240 . . . to a PVR.” NTFX-1003, paragraph [0167]. Despite
`
`providing two disparate disclosures for the “primary content” of the claimed
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`Case No. IPR2014-00252
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`method’s “receiving” and “associating” steps, the Petition does not explain
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`whether or how the video content, the alleged “primary content” requested in the
`
`alleged “receiving” step, is the same as the advertisement, the alleged “primary
`
`content” associated to secondary information in the alleged “associating” step.
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`Instead, the Petition merely states that “Plotnick discloses a communication
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`module to [sic] ‘associate the primary content to secondary information’ because it
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`teaches associating multiple types of information to the primary advertising
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`content. (NTFX-1005, 44-49).” Pet. at 25.
`
`It is not self-evident from the portions of Plotnick cited by the Petition that
`
`the alleged “primary content” requested in the “receiving” step and the alleged
`
`“primary content” of the “associating” step are the same. And the Petition itself
`
`does not even explain whether or how Plotnick’s video content (the alleged
`
`“primary content” requested in the “receiving” step) and its advertisement (the
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`alleged “primary content” of the “associating” step) are the same. The Petition
`
`therefore does not demonstrate that the reference discloses the claim elements as
`
`arranged in claim 4, as would be needed to support a case of anticipation. Net
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`MoneyIN, 545 F.3d at 1371. Moreover, the Petition fails to specify where each
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`element of the claim is found in Plotnick as required by 37 C.F.R. § 42.104(b)(4)
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`and fails to establish a prima facie case of anticipation. Id. The Petition therefore
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`Case No. IPR2014-00252
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`fails to establish a reasonable likelihood that independent claim 4, and its
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`dependent claims (claims 5-6), are anticipated by Plotnick.
`
`B.
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`The Obviousness Ground for Claim 7 Fails Because the Petition
`Does Not Explain Facts Necessary to Determine the Scope and
`Content of the Prior Art
`
`The Petition similarly fails to explain—as required by the statute and this
`
`Board’s rules—how to reach the alleged obviousness combination that forms the
`
`basis for this proposed ground. The proposed obviousness ground further fails to
`
`explain how Eldering can be tacked on to the disclosures of Plotnick. This lack of
`
`explanation is fatal, because it illustrates that the Petition fails to explain facts
`
`necessary to determine the scope and content of the prior art, which is required to
`
`establish a prima facie case of obviousness. Graham v. John Deere Co., 383 U.S.
`
`1, 17-18 (1966). Significantly, the Board has declined to institute inter partes
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`review where a Petition fails to explain how the teachings of the references would
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`be arranged or combined, Heart Failure Techs., LLC v. Cardiokinetix, Inc.
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`IPR2013-00183, (Paper 12), at 9-10. It should do so again here.
`
`1.
`
`“A tangible computer readable medium storing a set of
`instructions”
`
`Claim 7 recites “[a] tangible computer readable medium storing a set of
`
`instructions that, when executed by a machine, cause the machine to . . . .” The
`
`Petition contends that Plotnick in view of Eldering discloses this claim element.
`
`Petition at 39. But the Petition relies on two unrelated disclosures of Plotnick
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`Case No. IPR2014-00252
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`without explaining whether and how they could be combined, and then uses this
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`unexplained combination as the basis for combining Plotnick with Eldering to
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`conclude that this element is disclosed by the combination of references.
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`More specifically, the Petition alleges that Plotnick discloses a video source
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`1200 that transmits advertisements and alternative advertisements to a PVR. Pet.
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`at 39. The Petition further asserts that Plotnick discloses that video source 1200
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`can be the server side ad management system 700, which includes an ad server
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`716. Id. Finally, the Petition contends that because Eldering also discloses an ad
`
`
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