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`Paper No.
`Filed: November 6, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NETFLIX, INC.
`Petitioner
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`v.
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`OPENTV, INC.
`Patent Owner
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`Case IPR2014-00252
`Patent 8,107,786
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`Patent Owner’s Contingent Motion to Amend
`Under 37 C.F.R § 42.121
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`Case No. IPR2014-00252
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`Table of Contents
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`I.
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`II.
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`Statement of Relief Requested ........................................................................ 1
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`Listing of Amendments ................................................................................... 1
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`A.
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`Claim Listing Under Rule 42.121(b) .................................................... 1
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`III.
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`Support for the Substitute Claims .................................................................... 4
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`IV. Claim Construction Under 37 C.F.R. § 42.100(b) .......................................... 7
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`V.
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`Substitute Claims 8-14 Are Patentable Over the Prior Art ............................. 7
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`A.
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`B.
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`Substitute Claims 8-14 Are Not Anticipated ........................................ 7
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`Substitute Claims 8-14 Would Not Have Been Obvious ...................... 8
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`1.
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`2.
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`3.
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`4.
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`The Level of Ordinary Skill in the Art ....................................... 8
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`Scope and Content of the Prior Art ............................................. 9
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`The Differences Between Substitute Claims 8-14 and the
`Prior Art ....................................................................................10
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`It Would Not Have Been Obvious to receive and use
`information to generate or access content in order to
`render content in the prior art ....................................................11
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`VI. Conclusion .....................................................................................................14
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`i
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`Table of Authorities
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`Case No. IPR2014-00252
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` Page(s)
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`FEDERAL CASES
`Ariad Pharma. v. Eli Lilly & Co., 598 F.3d 1336
`598 F.3d 1336 (Fed. Cir. 2010) ............................................................................ 5
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`
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`FEDERAL STATUTES
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`35 U.S.C. § 316 .......................................................................................................... 1
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`FEDERAL REGULATIONS
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`37 C.F.R. § 42.22 ....................................................................................................... 1
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`37 C.F.R. § 42.100 ..................................................................................................... 7
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`37 C.F.R. § 42.121 ........................................................................................... 1, 4, 14
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`ii
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`Case No. IPR2014-00252
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`I.
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`Statement of Relief Requested
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`Under Rule 42.121, OpenTV moves to amend the ’786 patent contingent on
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`the outcome of the trial. If original claims 1, 4, and 7 are found unpatentable, the
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`Board is requested to cancel claims 1-7, and replace them with proposed substitute
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`claims 8-14. See 37 C.F.R. §42.22(a)(2); 35 U.S.C. § 316(d).
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`II. Listing of Amendments
`One substitute claim is proposed for each canceled claim. 37 C.F.R. §
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`42.121(a)(3). The proposed substitute claims are not broader than the original
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`claims; the amendments only add features to the claims and do not remove any
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`limitations. 35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2).
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`A. Claim Listing Under Rule 42.121(b)
`Cancel claims 1-7, if found unpatentable.
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`8.
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`(Substitute for original claim 1, if found unpatentable) A system
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`including a request module to receive a request for primary content; and a
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`communication module to
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`communicate primary content to a receiving device, the receiving device to
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`render the primary content to an output device at a normal speed of the primary
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`content,
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`associate the primary content to secondary information,
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`communicate the secondary information to the receiving device, the
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`receiving device to utilize the secondary information to generate or access
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`secondary non-derivative content in order to render the secondary non-derivative
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`content to the output device instead of the primary content, the secondary non-
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`derivative content not being derived from the primary content, the receiving device
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`to render the secondary non-derivative content responsive to receipt of a request to
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`render the primary content a the receiving device at an accelerated speed of the
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`primary content.
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`9.
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`(Substitute for original claim 2, if found unpatentable) The system of
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`claim [[1]] 8, wherein the communication module communicates the primary
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`content to the receiving device to store the primary content to a local storage
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`device, the receiving device to retrieve the primary content from the local storage
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`device before the receiving device is to render the primary content to the output
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`device at the normal speed of the primary content.
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`10.
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`(Substitute for original claim 3, if found unpatentable) The system of
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`claim [[1]] 8, wherein the communication module is to associate the primary
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`content to a secondary application that is utilized by the communication module to
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`generate the secondary content.
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`11.
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`(Substitute for original claim 4, if found unpatentable) A method
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`including receiving a request for primary content;
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`communicating primary content to a receiving device, the receiving device
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`to render the primary content to an output device at a normal speed of the primary
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`content;
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`associating the primary content to secondary information; and
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`communicating the secondary information to the receiving device, the
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`receiving device to utilize the secondary information to generate or access
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`secondary non-derivative content in order to render the secondary non-derivative
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`content to the output device instead of the primary content, the secondary non-
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`derivative content not being derived from the primary content, the receiving device
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`to render the secondary non-derivative content responsive to receipt of a request to
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`render the primary content a the receiving device at an accelerated speed of the
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`primary content.
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`12.
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`(Substitute for original claim 5, if found unpatentable) The method of
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`claim [[4]] 11, wherein the communicating primary content to the receiving device
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`includes the receiving device to store the primary content to a local storage device
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`and to retrieve the primary content from the local storage device before the
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`receiving device is to render the primary content to an output device at the normal
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`speed of the primary content.
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`13.
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`(Substitute for original claim 6, if found unpatentable) The method of
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`claim [[4]] 11, wherein the request includes a trick mode request and wherein the
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`trick mode request includes any one from a group of trick mode requests including
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`a fast forward request and a rewind request.
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`14.
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`(Substitute for original claim 7, if found unpatentable) A tangible
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`machine readable medium storing a set of instructions that, when executed by a
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`machine, cause the machine to:
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`receive a request for primary content;
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`communicate primary content to a receiving device, the receiving device to
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`render the primary content to an output device at a normal speed of the primary
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`content;
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`associate the primary content to secondary information; and
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`communicate the secondary information to the receiving device, the
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`receiving device to utilize the secondary information to generate or access
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`secondary non-derivative content in order to render the secondary non-derivative
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`content to the output device instead of the primary content, the secondary non-
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`derivative content not being derived from the primary content, the receiving device
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`to render the secondary non-derivative content responsive to receipt of a request to
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`render the primary content a the receiving device at an accelerated speed of the
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`primary content.
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`III. Support for the Substitute Claims
`Substitute claims 8-14 find section 112 support in the disclosure of
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`Application No. 11/469,195 (“the ’195 application,”), and no new matter is added.
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`See 37 C.F.R. §§ 42.121(a)(2)(ii), (b)(1). The ’195 application reasonably conveys
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`to one of ordinary skill that the inventor had possession of the subject matter
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`claimed in substitute claims 8-14 as of August 31, 2006 (the filing date). Ariad
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`Pharma. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
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`Proposed substitute independent claims 8, 11, and 14 include all of the
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`limitations of original independent claims 1, 4, and 7, respectively, as well as
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`additional elements (underlined below). In particular, the additional elements of
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`proposed substitute independent claims 8, 11, and 14 recite “the receiving device
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`to utilize the secondary information to generate or access secondary non-derivative
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`content in order to render the secondary non-derivative content to the output device
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`instead of the primary content.” Proposed substitute dependent claims 9, 10, 12,
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`and 13 include the new additional elements listed above because they depend from
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`proposed substitute independent claim 8 or 11.
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`Support for the proposed substitute claims 8, 11, and 14 can be found in at
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`least ¶¶ [00107]-[00116], ¶¶ [00178]-[00198], Fig. 8, and Fig. 24. Ex. 1002 at 23-
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`24, 41-46, 82, 93; Ex. 2011 at ¶¶ 61-64. For example, the ’195 application
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`supports the recitation of “the receiving device to utilize secondary information to
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`generate secondary non-derivative content in order to render the secondary non-
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`derivative content,” by disclosing an embodiment where the “secondary
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`information” is an “entertainment application.” Ex. 1002 at 23-24, ¶¶ [00107]-
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`[00116]; Ex. 2011 at ¶ 63. In that embodiment, a receiving device “executes the
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`appropriate version of the entertainment application . . . to generate secondary non-
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`derivative content in the form of an entertainment slideshow.” Ex. 1002 at 24,
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`¶ [00116]; Ex. 2011 at ¶ 63. The receiving device then “renders the entertainment
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`slide show 62.” Ex. 1002 at 24, ¶ [00116]; Ex. 2011 at ¶ 63.
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`The ’195 application also supports the recitation of “the receiving device to
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`utilize secondary information to access secondary non-derivative content in order
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`to render the secondary non-derivative content,” by disclosing an embodiment
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`where the “secondary information” is a “secondary information identifier.” Ex.
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`1002 at 41-46, ¶¶ [00178]-[00198]; Ex. 2011 at ¶ 64. In that embodiment, the
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`secondary information is “a secondary information identifier” that “identif[ies] the
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`secondary information 34 as located in a video stream 327 and an audio stream 329
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`of a channel . . . .” Ex. 1002 at 42, ¶ [00185]; Ex. 2011 at ¶ 63. The “secondary
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`information identifier” can also “identify other locations from which to retrieve
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`secondary information” such as “the local storage device 309 or remote storage
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`device 316.” Ex. 1002 at 43-44, ¶ [00192]; Ex. 2011 at ¶ 63. In some
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`embodiments, the “secondary information” that the “secondary information
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`identifier” is used to access is “secondary content,” which the receiving device
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`immediately renders. Compare Ex. 1002 at 46, ¶ [00198] with id. at 43,
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`¶¶ [00186]-[00187]; Ex. 2011 at ¶ 63.
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`IV. Claim Construction Under 37 C.F.R. § 42.100(b)
`The construction below is consistent with the broadest reasonable
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`interpretation. 37 C.F.R. § 42.100(b).
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`“secondary information to generate or access secondary non-derivative
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`content in order to render secondary non-derivative content”: One of ordinary
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`skill would understand that this phrase refers to information that allows for the
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`creation of the secondary non-derivative content or identifies the location of the
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`secondary non-derivative content so that the secondary non-derivative content can
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`be rendered. Ex. 2011 at ¶¶ 58-60. This comports with the plain and ordinary
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`meaning of the phrase in light of the specification. See e.g., Ex. 1001 at col. 15, ll.
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`6-11, col. 26, ll. 59-63. Ex. 2011 at ¶ 59.
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`V.
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`Substitute Claims 8-14 Are Patentable Over the Prior Art
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`The proposed substitute claims are patentable over the prior art applied in
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`the Petition and known to OpenTV. Patentability is supported by the declaration of
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`Dr. Charles Eldering, who has over 20 years of experience in fiber optic and cable-
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`based telecommunication systems. Ex. 2011 at ¶ 6. Dr. Eldering has designed and
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`developed products for targeted advertising and presenting alternative
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`advertisements upon fast forwarding. Id. He is a named inventor on 20 patents in
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`these areas generally. Id. at ¶ 7.
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`Substitute Claims 8-14 Are Not Anticipated
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`A.
`No known prior art anticipates substitute claims 8-14. Petitioner proposed an
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`anticipation ground for original claims 1-6 based on Plotnick. Paper 1. Plotnick,
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`however, does not teach or suggest “the receiving device to utilize the secondary
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`information to generate or access secondary non-derivative content in order to
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`render the secondary non-derivative content to the output device instead of the
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`primary content.” Ex. 2011 at ¶ 75. Instead, Plotnick discloses a system in which
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`an alternate advertisement is transmitted to a receiving device with a default
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`advertisement, and the alternate advertisement is directly rendered by the receiving
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`device if a user fast forwards through the default advertisement. Ex. 1003 at
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`¶¶ [0167]-[0169]. Ex. 2011 at ¶ 34. And although Plotnick discloses an ad
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`management system in which metadata, such as ad metadata is transmitted to a set-
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`top box, none of the metadata is used to generate or access an advertisement in
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`order to render the advertisement. The ad metadata is used to generate an ad queue,
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`which is just a data structure that organizes advertisements. Ex. 1003 at ¶¶ [0149]-
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`[0150], ¶ [0139]. Ex. 2011 at ¶¶ 38-44.
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`B.
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`Substitute Claims 8-14 Would Not Have Been Obvious
`1.
`The art relevant to the ’786 patent concerns modifying the play out or
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`The Level of Ordinary Skill in the Art
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`playback of primary content on a receiving device. Ex. 1001 at col 8, ll. 5-8. At
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`the time of the invention in 2006, a person of ordinary skill would have had (i) a
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`B.S. degree in Electrical Engineering or equivalent training, and (ii) approximately
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`three years of direct experience in developing subscriber television solutions and
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`technologies. Relevant industry experience would include experience with
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`interactive television system development and deployment, including development
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`of head-end, transport, and customer premise equipment. Ex. 2011 at ¶ 12.
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`Scope and Content of the Prior Art
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`2.
`Before the ’786 patent, the prior art recognized digital video recording
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`technology as a disruptive technology that gave program content viewers the
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`ability to fast forward or skip advertisements in a recorded program. Ex. 2011 at ¶
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`9; Ex. 1003, Ex. 2010 (Unger), Ex. 2007 (Barton). The prior art combatted this
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`disruptive technology by providing systems in which digital video recorders
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`(“DVRs”) stored advertisements that could be displayed to a user instead of an
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`intended advertisement if a user fast forwarded through the intended
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`advertisement. Ex. 2011 at ¶ 9; see, e.g., Ex. 1003, Ex. 2009 (Krapf), Ex. 2010
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`(Unger).The prior art alternatively disclosed targeted advertising systems in which
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`rules to select advertisements based on user preferences, advertisements, or both,
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`were stored on digital video recorders. Ex. 2011 at ¶ 9; see, e.g., Ex. 1003; Ex.
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`2008 (Rosenberg); Ex. 1004 (Eldering). In these targeted advertising systems, the
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`hope was that by selecting an advertisement based on user preferences, the user
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`would not fast forward through the advertisement. Ex. 2011 at ¶ 9. These prior art
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`solutions were designed to deal with viewers fast forwarding through
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`advertisements on digital video recorders and leveraged the vast storage capacity
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`of DVRs, which often included 10 to 30 GB hard disk drives. Ex. 2011 at ¶ 9; Ex.
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`2009 (Krapf); Ex. 2007 (Barton).
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`3.
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`The Differences Between Substitute Claims 8-14 and the
`Prior Art
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`In addition to the prior art in the Petition, Dr. Eldering reviewed several
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`other prior art references, but none suggested combating the problem of viewers
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`fast forwarding through advertisements on a DVR as proposed in claims 8-14. Ex.
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`2011 at ¶¶ 65-79. In particular, none of the prior art discloses “the receiving device
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`to utilize the secondary information to generate or access secondary non-derivative
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`content in order to render the secondary non-derivative content to the output device
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`instead of the primary content,” as recited by substitute claims 8, 11, and 14 and as
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`required by substitute claims 9, 10, 12, and 13. Id. at ¶ 76. For example, Unger
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`simply discloses displaying content (advertisements) upon receiving a fast-forward
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`command from the subscriber by fetching a stored advertisement that was
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`previously communicated to the receiving device. Ex. 2010 (Unger) at Abstract;
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`Ex. 2011 at ¶¶ 66. Similarly, Yanagihara only discloses displaying an abbreviated
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`version of an advertisement previously communicated to the receiving device in
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`response to a fast forward request by fetching the abbreviated ad from memory.
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`Ex. 2011 (Yanagihira) at col. 7, ll. 12-18; Ex. 2011 at ¶ 69. And Krapf and
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`Rosenberg, which are generally directed to a rules-based targeted advertisement
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`system, also only disclose displaying a targeted advertisement by fetching a stored
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`advertisement previously communicated to the DVR from the DVR’s memory. Ex.
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`2009 (Krapf) at ¶ [0028]; Ex. 2008 (Rosenberg) at p. 6, ll. 1-12. Ex. 2011 at ¶ 72.
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`OpenTV considers Plotnick to be the closest prior art because it discloses
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`both the storage of alternate advertisements to be displayed instead of an intended
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`advertisement if a user fast forwards through the intended advertisement, and ad
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`management system in which ad metadata is received by a set top box and used to
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`construct ad queues that are stored at the set top box in order to display targeted
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`advertisements to a viewer. Ex. 1003 at ¶¶ [0167]-[0160]. Ex. 2011 at ¶¶ 38-44. As
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`discussed above, however, neither disclosure teaches or suggests a receiving
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`device receiving and using secondary information to generate or access content,
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`such as an advertisement, in order to render that content as required by substitute
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`claims 8-14. See supra Part V.A; Ex. 2011 at ¶ 75.
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`4.
`
`It Would Not Have Been Obvious to receive and use
`information to generate or access content in order to render
`content in the prior art
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`None of the prior art considered by Dr. Eldering discloses “the receiving
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`device to utilize the secondary information to generate or access secondary non-
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`derivative content in order to render the secondary non-derivative content to the
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`output device instead of the primary content,” as required by substitute claims 8-
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`14. It would not have been obvious to modify any of the prior art references to
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`include this feature. Ex. 2011 at ¶ 76-80.
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`The prior art solutions to the problem of viewers fast forwarding through
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`advertisements on digital video recorders all leveraged the vast storage capacity of
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`DVRs, which often included 10 to 30 GB hard disk drives. Ex. 2011 at ¶ 77; Ex.
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`2009 (Krapf); Ex. 2007 (Barton). Indeed, each of Plotnick, Unger, Yanagihara
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`Krapf, and Rosenberg disclose receiving and storing advertisements on a DVR.
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`See, e.g., Ex. 1003 at ¶¶ [0149]-[0150]; [0167]-[0169]; Ex. 2010 (Unger) at
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`Abstract; Ex. 2011 (Yanagihira) at col. 7, ll. 12-18; Ex. 2009 (Krapf) at ¶ [0028];
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`Ex. 2008 (Rosenberg) at p. 6, ll. 1-12; Ex. 2011 at ¶¶ 66, 69, 72. Storing
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`advertisements on a DVR necessarily reduces the quantity of programming that
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`can be stored on the device, creating a problem that none of the prior art
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`recognized as disadvantageous. Ex. 2011 at ¶ 77.
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`In contrast, substitute claims 8-14 recognize the space savings, flexibility,
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`and storage/bandwidth efficiency of communicating secondary information to
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`generate or access secondary non-derivative content to the receiving device such
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`that “the receiving device [is] to utilize the secondary information to generate or
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`access secondary non-derivative content in order to render the secondary non-
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`derivative content to the output device instead of the primary content.”
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`Communicating secondary information instead of communicating the secondary
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`content itself results in much less information being sent and stored on the
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`receiving device because the secondary content can be located anywhere, even at
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`locations remote from the receiving device. Ex. 2011 at ¶ 78. This would allow the
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`secondary information to access content on a variety of remote devices, including a
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`streaming server, which would in turn, allow the receiving device to be a device
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`with limited storage capacity and/or limited processing power. Id. Additionally, if
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`there turns out to be no need to access the secondary content, there is no wasted
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`storage or bandwidth, since the secondary information is small in comparison to
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`the secondary content, which does not need to be transmitted to or stored at the
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`receiving device. Id. The prior art did not contemplate this solution because it
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`focused on leveraging the vast storage capacities of DVRs. Id.
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`Moreover, this solution was non-obvious because the prior art taught away
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`from systems in which receiving devices needed to be constantly connected to
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`remote content sources to generate an alternate advertisement in response to a user
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`fast forwarding through content. Ex. 2008 (Rosenberg) at 3, ll. 1-9. Ex. 2011 at ¶
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`79. Accordingly, substitute claims 8-14 were not obvious at the time of the
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`invention.
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`Case No. IPR2014-00252
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`VI. Conclusion
`Each amendment to claims 8-14 distinguishes the claims over the art and
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`responds to a ground of rejection. 37 C.F.R. § 42.121(a)(2)(i). Accordingly, if
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`claims 1-7 are found unpatentable, the Board should grant this motion to amend
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`and confirm the patentability of claims 8-14.
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`
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`Respectfully submitted,
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`
`
`By: /Erika H. Arner/
`Erika H. Arner, Lead Counsel
`Registration No. 57,540
`Joshua L. Goldberg, Backup Counsel
`Registration No. 59,369
`FINNEGAN, HENDERSON,
`FARABOW, GARRETT & DUNNER,
`L.L.P.
`11955 Freedom Drive
`Reston, VA 20190
`
`Counsel for OpenTV, Inc.
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`Dated: November 6, 2014
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`CERTIFICATE OF SERVICE
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`Case No. IPR2014-00252
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`The undersigned hereby certifies that a copy of the foregoing Contingent
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`Motion to Amend was served on November 6, 2014 via email directed to counsel
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`of record for the Petitioner at the following:
`
`Andrew S. Ehmke
`andy.ehmke.ipr@haynesboone.com
`Dustin Johnson
`dustin.johnson.ipr@haynesboone.com
`Scott Jarratt
`scott.jarratt.ipr@haynesboone.com
`
`
`
`
`/William J. Esper/
`William J. Esper
`Legal Assistant
`
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`
`
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`15
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