`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 13
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` Entered: June 24, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`OPENTV, INC.,
`Patent Owner.
`_______________
`
`IPR2014-00252
`Patent 8,107,786
`_______________
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-00252
`Patent 8,107,786
`
`I.
`
`INTRODUCTION
`
`A.
`
`Background
`
`Netflix, Inc. (“Petitioner”) filed a Petition requesting an inter partes
`
`review of claims 1-7 of U.S. Patent No. 8,107,786 (Ex. 1001, “the ’786
`
`patent”) on December 16, 2013. Paper 2 (“Pet.”). OpenTV, Inc. (“Patent
`
`Owner”) filed a Patent Owner Preliminary Response on March 26, 2014.
`
`Paper 11 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. §§ 6(b)
`
`and 314.
`
`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 1-7 of the ’786 patent and,
`
`accordingly, institute an inter partes review of claims 1-7.
`
`
`
`2
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`
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`IPR2014-00252
`Patent 8,107,786
`
`
`B.
`
`Related Proceedings
`
`Petitioner indicates that the ’786 patent was asserted against
`
`Petitioner in OpenTV, Inc. v. Netflix, Inc., No. 1:12-cv-01733 (D. Del.).
`
`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 IPR2014-00267 (PTAB Dec. 17, 2013); Netflix, Inc. v. OpenTV, Inc.,
`
`Case IPR2014-00269 (PTAB Dec. 18, 2013); and Netflix, Inc. v. OpenTV,
`
`Inc., Case IPR2014-00274 (PTAB Dec. 19, 2013).
`
`C.
`
`The ’786 Patent (Ex. 1001)
`
`The ’786 patent describes a method and system for displaying, upon a
`
`trick mode request, alternate content associated with primary content. Ex.
`
`1001, Abstract. The ’786 patent explains that a trick mode request is a
`
`request to play the primary content at something other than regular speed,
`
`such as a request to fast forward, reverse, or skip the primary content. See
`
`id. at Abstract, 2:52-53. 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. Id. at 2:53-61.
`
`Of the challenged claims, claims 1, 4, and 7 are independent claims.
`
`Claim 4 is directed to a method, claim 1 is directed to a system with
`
`elements for executing the method of claim 4, and claim 7 is directed to a
`
`computer readable medium storing instructions to execute the method of
`
`claim 4. Illustrative claim 4 is reproduced as follows:
`
`
`
`3
`
`
`
`IPR2014-00252
`Patent 8,107,786
`
`
`A method including:
`
`4.
`
`
`receiving a request for primary content;
`communicating primary content to a receiving device, the
`receiving device to render the primary content to an output device
`at a normal speed of the primary content;
`associating the primary content to secondary information;
`
`and
`
`communicating the secondary information to the receiving
`device, the receiving device to utilize the secondary information to
`render secondary non-derivative content to the output device
`instead of the primary content, the secondary non-derivative
`content not being derived from the primary content, the receiving
`device to render the secondary non-derivative content responsive
`to receipt of a request to render the primary content at the
`receiving device at an accelerated speed of the primary content.
`
`Asserted Grounds of Unpatentability
`
`D.
`
`Petitioner asserts the following grounds of unpatentability under
`
`35 U.S.C. §§ 102 and 103:
`
`Reference[s]
`Plotnick1
`Plotnick and Eldering2
`
`
`Basis
`
`§ 102(b)
`
`§ 103(a)
`
`Challenged Claims
`
`1-6
`
`7
`
`
`1 Plotnick et al. (“Plotnick”), U.S. Pat. Pub. No. 2005/0097599, published
`May 5, 2005 (Ex. 1003).
`2 Eldering et al. (“Eldering”), U.S. Pat. No. 6,820,277, Nov. 16, 2004 (Ex.
`1004).
`
`
`
`4
`
`
`
`IPR2014-00252
`Patent 8,107,786
`
`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 claims 1, 4, and 7 each recite “the receiving device to
`
`utilize the secondary information to render secondary non-derivative
`
`content to the output device.” The ’786 patent provides a definition section
`
`listing seven definitions, including a definition for non-derivative secondary
`
`content. Ex. 1001, 3:26-4:5. The ’786 patent defines non-derivative
`
`secondary content as “includ[ing] secondary content that is not generated
`
`from the associated primary content.” Id. at 3:47-49. The ’786 patent
`
`further explains that “[non-]derivative secondary content does not include
`
`samples (e.g., audio and/or visual) from the associated primary content.” Id.
`
`
`
`5
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`IPR2014-00252
`Patent 8,107,786
`
`at 3:49-51.3 Thus, Petitioner proposes adopting these two sentences as the
`
`construction of secondary non-derivative content. Pet. 8.
`
`The definition provided in the ’786 patent states that secondary non-
`
`derivative content includes secondary content not generated from the
`
`associated primary content. The claims and the specification (including the
`
`definitions provided for the terms primary content, secondary content,
`
`secondary information, and derivative secondary content) of the ’786 patent
`
`provide additional context for construing secondary non-derivative content.
`
`Therefore, in light of the specification and the claims, we determine the
`
`broadest reasonable interpretation of “secondary non-derivative content” is
`
`content that is not generated using any information or content contained in
`
`the primary content.
`
`B.
`
`Asserted Anticipation Ground Based on Plotnick
`
`1. Overview of Plotnick (Ex. 1003)
`
`Plotnick explains that video cassette recorders (VCRs) and personal
`
`video recorders (PVRs), which allow viewers to record programming and
`
`skip or fast forward through recorded advertisements, may leave “little
`
`chance [for advertisements] to make an impression on the viewer.” Ex. 1003
`
`¶ 58. Plotnick describes a system and method for displaying alternative
`
`advertising in place of a recorded advertisement upon receipt of a trick play
`
`
`3 As pointed out by Mr. Kramer, the ’786 patent appears to have a
`typographical error where the example given under the definition of “Non-
`Derivative Secondary Content” inadvertently omits the “non-” preceding
`“derivative” at line 49 of column 3. See Ex. 1005 ¶ 27.
`6
`
`
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`
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`IPR2014-00252
`Patent 8,107,786
`
`event. Ex. 1003, Abstract, ¶ 59. Plotnick explains that the alternate
`
`advertisement may be displayed either in conjunction with or instead of the
`
`recorded advertisement and that the alternate may take various forms,
`
`including a logo, a portion of the recorded advertisement, or an “entirely
`
`unrelated advertisement.” Ex. 1003, Abstract, ¶¶ 31, 59, 60. Plotnick
`
`describes a PVR as “any type of device which digitally stores and plays back
`
`programming, and can include devices located in the residence, the head-end
`
`or central office, in the distribution network, as part of the Internet, or
`
`distributed over any or all of these locations.” Ex. 1003 ¶ 96. Plotnick
`
`provides descriptions of PVRs, their functionality, and various PVR
`
`systems. Ex. 1003 ¶¶ 95-129.
`
`2. Analysis of Asserted Anticipation Ground Based on Plotnick
`
`Petitioner contends that claims 1-6 are anticipated by Plotnick. Pet. 8-
`
`35. Petitioner alleges that Plotnick anticipates claim 1 and maps a portion of
`
`Plotnick to each limitation of independent claim 1. Id. at 9-20. Petitioner
`
`also maps portions of Plotnick to each of the limitations in dependent claims
`
`2 and 3 (id. at 20-23), which depend from claim 1, as well as independent
`
`claim 4 and dependent claims 5 and 6 (id. at 23-35), which depend from
`
`claim 4.
`
`Patent Owner alleges Petitioner fails to meet the statutory and
`
`regulatory requirements for an inter partes review to be instituted based on
`
`the anticipation challenges. Prelim. Resp. 3-4. Specifically, Patent Owner
`
`argues review should not be instituted because “the Petition simply
`
`
`
`7
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`
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`IPR2014-00252
`Patent 8,107,786
`
`paraphrases and cites Plotnick without further elucidation” and the Petition
`
`does not present a prima facie case of anticipation. Id. at 4.
`
`a.
`
`Claims 1-3: A Request Module and a Communication
`Module
`
`With respect to claims 1-3, Patent Owner first argues the Petition does
`
`not show sufficiently how disparate disclosures within Plotnick meet the
`
`recited limitations, as arranged. Prelim. Resp. 6-9. Patent Owner argues
`
`that Petitioner cites to Plotnick’s video dial tone gateway, which is directed
`
`to aspects of video on demand (VoD), as disclosing the recited request
`
`module, and to Plotnick’s video source that transmits video to a PVR, as
`
`disclosing the recited communication module. Id. at 6-7. Patent Owner
`
`argues that the portion of Plotnick cited for disclosing the video source does
`
`not discuss VoD and is directed to a different embodiment of Plotnick. Id. at
`
`7-8. Patent Owner asserts Petitioner has cited “two disparate citations for
`
`the claimed system, [but] the Petition does not explain whether or how video
`
`source 1200, the alleged ‘communication module,’ is part of the same VoD
`
`system that allegedly contains the video dial tone gateway and the return
`
`transport path allegedly comprising the ‘request module.’” Id. at 8. Finally,
`
`Patent Owner argues that neither the Petition nor the cited portions of
`
`Plotnick clearly indicate that the two cited elements are arranged in a single
`
`system, as recited in claim 1. Id.
`
`Plotnick provides descriptions of different types of PVRs that may be
`
`used in Plotnick’s system. See Ex. 1003 ¶¶ 94-122. For example, Plotnick
`
`states “[b]efore describing the generation or contents of the alternative
`8
`
`
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`
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`IPR2014-00252
`Patent 8,107,786
`
`advertisement in detail, a detailed description of multiple variations of a
`
`PVR will first be described.” Ex. 1003 ¶ 94. Plotnick subsequently
`
`describes PVRs in general (id. at ¶¶ 95-75), PVR functionality (id. at ¶¶ 98-
`
`103), residential PVRs (integrated into set-top boxes or residential gateways)
`
`(id. at ¶¶ 104-109), VoD (including PVR functionality such as pause, fast
`
`forward, rewind, and stop) (id. at ¶¶ 110-117), and finally head-end based
`
`PVRs or personal video channels (id. at ¶¶ 118-120). Subsequently,
`
`Plotnick begins describing advertising opportunities on PVRs. Id. at ¶¶ 121-
`
`122.
`
`Of particular note, Plotnick states that, as used in the specification,
`
`“the term PVR refers to any type of device which digitally stores and plays
`
`back programming, and can include devices located in the residence, the
`
`head-end or central office, in the distribution network, as part of the Internet,
`
`or distributed over any or all of these locations.” Ex. 1003 ¶ 96. The section
`
`of Plotnick describing VoD, portions of which the Petitioner maps to the
`
`request module, also explains that “[a] true VoD system also includes the
`
`ability to pause the movie, fast forward through the movie, rewind, or stop at
`
`any point in the programming.” Id. ¶ 111. Additionally, Petitioner cites
`
`paragraph 112 of Plotnick, which provides a description of Figure 4 and
`
`explains that the VoD service includes video servers that provide storage
`
`capability, a head end, and a video dial tone gateway.
`
`Regarding the communication module, Petitioner points to the portion
`
`of Plotnick that explains that “a program source (video source) 1200
`
`
`
`9
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`
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`IPR2014-00252
`Patent 8,107,786
`
`transmits a program stream (video stream) 1210 . . . to a PVR” and further
`
`discloses that “[t]he video source 1200 may be a satellite, a head-end, a
`
`networked video server, [or other source].” Pet. 10-11 (citing Ex. 1003 ¶
`
`167). Patent Owner’s argument that Plotnick’s VoD system would not
`
`include elements from Plotnick’s PVR systems does not appear to consider
`
`Plotnick’s disclosures that a VoD system is a type of PVR and that a
`
`networked video server (such as those in the disclosed VoD systems) is one
`
`example of a video source transmitting a video stream. Therefore, on this
`
`record, we agree with Petitioner’s argument that Plotnick discloses a single
`
`integrated VoD system, including both a video dial tone gateway (alleged to
`
`meet the recited request module) and video server (alleged to meet the
`
`recited communication module).
`
`b.
`
`Claims 1-3: Communication Module Associating Content
`
`Petitioner argues that three items disclosed in Plotnick each
`
`independently meet the recited secondary information: “an alternative
`
`advertisement, metadata used to access secondary content, and information
`
`signals communicated to the PVR used to generate secondary content.” Pet.
`
`12-13. Petitioner further argues that Plotnick teaches associating each of
`
`those items with the primary content at least because each of those items is
`
`transmitted with the primary content. Id. at 13-15.
`
`Patent Owner argues the Petition fails to show sufficiently that
`
`Plotnick discloses “a communication module to . . . associate the primary
`
`content to secondary information,” as recited in claims 1-3. Prelim. Resp. 9-
`
`
`
`10
`
`
`
`IPR2014-00252
`Patent 8,107,786
`
`14. In particular, Patent Owner alleges there is no explanation of how
`
`Plotnick’s video source (argued by Petitioner as meeting the recited
`
`communication module) associates advertisements with an alternative
`
`advertisement, metadata, or information signals. Id. at 9. Patent Owner
`
`presents various arguments regarding a lack of clarity as to whether the cited
`
`portions of Plotnick for the secondary information are related to Plotnick’s
`
`video source and as to how the alleged secondary information is associated
`
`with the primary content. Id. at 10-14. Patent Owner also argues the
`
`Petition does not explain what entity is performing the associating function.
`
`Id.
`
`Petitioner’s argument that the video server (alleged to meet the
`
`communication module) associates the secondary advertisement with the
`
`primary content is persuasive. Petitioner argues, and Patent Owner does not
`
`dispute, that Plotnick’s video source sends the primary and secondary
`
`advertisements in a single video stream. See Ex. 1003 ¶ 167. Based on the
`
`evidence presented, we are persuaded that a video source transmitting two
`
`items of content together in a single stream (in order for one item to be
`
`played in response to a play mode and the other item to be played in
`
`response to a fast forward mode, as depicted in Figure 12), meets the recited
`
`associating language.
`
`
`
`11
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`IPR2014-00252
`Patent 8,107,786
`
`
`c.
`
`Claims 4-6: Receiving a Request for Primary Content
`and Associating the Primary Content to Secondary
`Information
`
`Petitioner cites to similar portions of Plotnick, identified with respect
`
`to claims 1-3, as disclosing the corresponding limitations in claims 4-6. Pet.
`
`23-35.
`
`Patent Owner argues the primary content requested in Plotnick is not
`
`the same content that is associated with secondary information. Prelim.
`
`Resp. 15-18. In particular, Patent Owner argues that, based on Petitioner’s
`
`mapping of the VoD system to the recited “receiving a request for primary
`
`content,” the primary content in Plotnick would be video content delivered
`
`by the VoD system. Id. at 15-16. Patent Owner further argues the Petition
`
`does not allege that video delivered by the VoD system is associated with
`
`secondary information. Id. at 16. Patent Owner also presents the same
`
`arguments presented with respect to claims 1-3 regarding the failure of the
`
`Petition to indicate clearly what element of Plotnick performs the associating
`
`step.
`
`However, as discussed above, the video source in Plotnick’s VoD
`
`system is one embodiment of a video source that delivers advertisements
`
`along with programming. Ex. 1003 ¶ 167. Therefore, we agree with
`
`Petitioner’s position that, when content is requested in the VoD system, the
`
`primary advertisement is also being requested. The requested primary
`
`content (including the primary advertisement) is described as being
`
`associated with the secondary information, at least to the extent that the
`
`
`
`12
`
`
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`IPR2014-00252
`Patent 8,107,786
`
`video source is sending, in the same video stream, an alternate advertisement
`
`to be played upon a trick play event.
`
`d.
`
`Claims 1-6: Remaining Limitations
`
`We have reviewed Petitioner’s arguments regarding the limitations
`
`not argued in Patent Owner’s Preliminary Response and find Petitioner’s
`
`arguments persuasive. Thus, on this record, we conclude that Petitioner has
`
`demonstrated a reasonable likelihood that claims 1-6 are unpatentable under
`
`35 U.S.C. § 102(b) as anticipated by Plotnick.
`
`C.
`Asserted Obviousness Ground Based on Plotnick and
`Eldering (Claim 7)
`
`1. Overview of Eldering (Ex. 1004)
`
`Eldering describes an “Ad Management System (AMS) for managing
`
`sales and insertion of targeted advertisements into advertising opportunities
`
`(‘avails’).” Ex. 1004, Abstract. Eldering discloses implementing the AMS
`
`on a server using software means. Ex. 1004, 9:66-10:7. Eldering is
`
`incorporated by reference into Plotnick. Ex. 1003 ¶ 15. Plotnick also
`
`describes incorporating the AMS, which is further described in Eldering,
`
`into Plotnick’s system. Ex. 1003 ¶¶ 142-145, Fig. 7.
`
`
`
`13
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`IPR2014-00252
`Patent 8,107,786
`
`
`2. Analysis of Asserted Obviousness Ground Based on Plotnick
`and Eldering (Claim 7)
`
`Claim 7 recites a “tangible machine readable medium storing a set of
`
`instructions that, when executed by a machine, cause the machine to”
`
`perform the method steps recited in claim 4.
`
`Petitioner contends that claim 7 would have been obvious in view of
`
`Plotnick and Eldering. Pet. 35-49. Petitioner introduces Eldering because
`
`Plotnick does not state explicitly that the servers may include software
`
`instructions. Id. at 36. Petitioner presents reasons to combine Eldering with
`
`Plotnick, including that Eldering was incorporated by reference into
`
`Plotnick, that Eldering provides details regarding an Ad Management
`
`System, referenced in Plotnick, and that combining Plotnick and Eldering is
`
`merely “combining prior art elements according to known methods to yield
`
`predictable results.” Id. at 37-38. Petitioner’s declarant, Mr. Kramer, further
`
`states that software and processing power were placed in servers in order to
`
`make systems more secure and simpler to maintain. Ex. 1005 ¶ 37.
`
`Petitioner then maps each limitation of independent claim 7 to Eldering and
`
`Plotnick. Pet. 39-49.
`
`Similar to arguments with respect to the anticipation challenges,
`
`Patent Owner alleges that Petitioner fails to meet the statutory and regulatory
`
`requirements for an inter partes review to be instituted based on the
`
`obviousness challenge. Prelim. Resp. 3-5. Patent Owner argues “the
`
`Petition fails to explain whether and how the disparate disclosures of
`
`Plotnick that it relies on as the basis for its obviousness challenge could be
`14
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`IPR2014-00252
`Patent 8,107,786
`
`combined” and “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.” Id. at 4-5, 18. Patent Owner argues that the
`
`proposed combination does not teach the recited tangible computer readable
`
`medium storing instructions and reiterates the argument that the content
`
`requested is not the same content associated with the secondary information.
`
`We credit the declaration of Mr. Kramer that it was common practice,
`
`and thus obvious to a person of ordinary skill in the art, to include software
`
`on servers for various commercial reasons. Therefore, Petitioner has shown
`
`sufficiently that a person of ordinary skill in the art would have found it
`
`obvious to include software in the video server to execute the functions
`
`disclosed in Plotnick. We have addressed Patent Owner’s contention that
`
`the primary content is not associated with the secondary information. The
`
`same analysis applies to claim 7.
`
`Therefore, on this record, we conclude that Petitioner has
`
`demonstrated a reasonable likelihood that claim 7 is unpatentable under 35
`
`U.S.C. § 103(a) as obvious in view of Plotnick and Eldering.
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that the information
`
`presented in the Petition establishes a reasonable likelihood that Petitioner
`
`would prevail in establishing the unpatentability of claims 1-6 of the ’786
`
`patent under 35 U.S.C. § 102(b) as anticipated by Plotnick and the
`
`
`
`15
`
`
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`IPR2014-00252
`Patent 8,107,786
`
`unpatentability of claim 7 of the ’786 patent under 35 U.S.C. § 103(a) as
`
`obvious in view of Plotnick and Eldering.
`
`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 1-7 of the ’786 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.
`
`
`
`16
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`IPR2014-00252
`Patent 8,107,786
`
`
`
`
`PETITIONER:
`
`Andrew S. Ehmke
`andy.ehmke.ipr@haynesboone.com
`
`Dustin Johnson
`dustin.johnson.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
`
`
`
`
`
`
`17
`
`
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