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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
`
`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 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
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`I.
`
`II.
`
`Preliminary Statement ..................................................................................... 1
`
`THE ’786 PATENT ......................................................................................... 1
`
`A.
`
`B.
`
`C.
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`Patented Technology ............................................................................. 1
`
`Prosecution of the ’786 Patent .............................................................. 5
`
`Person of Ordinary Skill in the Art ....................................................... 6
`
`III.
`
`“SECONDARY INFORMATION” MEANS “INFORMATION TO
`GENERATE SECONDARY CONTENT OR INFORMATION TO
`ACCESS SECONDARY CONTENT” ........................................................... 6
`
`A.
`
`B.
`
`C.
`
`D.
`
`The Plain Language of the Claims Supports That “Secondary
`Information” Does Not Mean “Secondary Content” ............................ 8
`
`The Specification Supports That “Secondary Information” Does
`Not Mean “Secondary Content” ..........................................................10
`
`The Specification’s “Definition” of “Secondary Information”
`Does Not Change That the Proper Construction of This Term
`Does Not Include “Secondary Content” .............................................15
`
`The Prosecution History Supports That “Secondary Information
`Does Not Include “Secondary Content” .............................................18
`
`IV. THE PETITION FAILS TO ESTABLISH THAT ANY CLAIM OF
`THE ’786 PATENT IS UNPATENTABLE ..................................................21
`
`A. Applying the Correct Claim Construction, Plotnick Does Not
`Disclose Every Feature of Claims 1-6 ................................................22
`
`1.
`
`2.
`
`Plotnick’s “alternate advertisement” is not the claimed
`“secondary information” under the correct construction
`of this term ................................................................................23
`
`Plotnick’s “ad metadata” is not the claimed “secondary
`information” ..............................................................................25
`
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`Case No. IPR2014-00252
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`3.
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`Plotnick’s “information signals” are not the claimed
`“secondary information” under the correct construction
`of this term ................................................................................29
`
`B.
`
`Plotnick In View Of Eldering Does Not Render Claim 7
`Obvious................................................................................................32
`
`V.
`
`Conclusion .....................................................................................................34
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`ii
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`

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`Table of Authorities
`
`Case No. IPR2014-00252
`
`
` Page(s)
`
`FEDERAL CASES
`Augume Techs., Inc. v. Yahoo! Inc.,
`__ F.3d __, 2014 WL 2782019 (Fed. Cir. 2014) .................................................. 8
`
`Baran v. Med. Device Techs., Inc.,
`616 F.3d 1309 (Fed. Cir. 2010) ...................................................................... 9, 14
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006) .............................................................................. 9
`
`Garmin Int’l Inc. v.Cuozzo Speed Tech. LLC,
`IPR2012-00001, (Paper 15) ...................................................................... 7, 18-19
`
`Heart Failure Tech. v. Cardiokintetix, Inc.,
`IPR2013-00183, (Paper 12) .................................................................... 32, 33-34
`
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) ........................... 32, 33-34
`
`Motorola Solutions, Inc. v. Mobile Scanning Tech., LLC,
`IPR2013-00093, (Paper 28) ............................................................................ 7, 19
`
`Process Control Corp. v. Hyderclaim Corp.,
`190 F.3d 1350 (Fed. Cir. 1999) ............................................................................ 9
`
`Xilink, Inc. v. Intellectual Ventures I LLC,
`IPR2013-00112, (Paper 14) ............................................................................ 7, 19
`
`Z4 Techs., Inc. v. Microsoft Corp.,
`507 F.3d 1340 (Fed. Cir. 2007) ........................................................................ 8-9
`
`ZTE Corp. & ZTE (USA) Inc. v. ContentGuard Holdings, Inc.,
`IPR2013-00134, (Paper 12) ............................................................................ 7, 19
`
`
`
`FEDERAL STATUTES
`
`35 U.S.C. § 312 ........................................................................................................ 22
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`iii
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`Case No. IPR2014-00252
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`35 U.S.C. § 314 ........................................................................................................ 32
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`35 U.S.C. § 316 .................................................................................................... 1, 21
`
`
`FEDERAL REGULATIONS
`
`37 C.F.R. § 42.100 ............................................................................................... 9, 14
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`iv
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`Case No. IPR2014-00252
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`I.
`
`Preliminary Statement
`
`All of the proposed grounds in the petition rely on an improper construction
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`of the claim term “secondary information” that is unreasonable in light of the
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`specification. This term appears in all of the ’786 patent’s independent claims, and
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`is therefore required by all of the claims. The Board has not yet construed this
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`claim term, but once it does, it will become apparent that the Petition’s proposed
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`grounds of unpatentability cannot be maintained.
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`Under the correct interpretation of “secondary information” the primary
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`reference, Plotnick, does not disclose several elements of claims 1-6. Accordingly,
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`the Petition’s anticipation ground must fail. The secondary reference, Eldering,
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`does not cure the deficiencies of Plotnick, nor has Netflix alleged that it does. The
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`Petition’s obviousness ground for claim 7 must therefore fail as well. Netflix has
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`not carried its “burden of proving . . . unpatentability by a preponderance of the
`
`evidence,” 35 U.S.C. § 316(e), so the Board should enter judgment against Netflix
`
`and terminate this proceeding.
`
`II. THE ’786 PATENT
`Patented Technology
`A.
`The ’786 patent relates to systems and methods for modifying playout or
`
`playback of primary content. Ex. 1001 at col. 1, ll. 7-6. More specifically, the ’786
`
`patent relates to systems and methods for responding to a trick mode request, such
`
`as a request to fast forward through the primary content. When a trick mode
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`Case No. IPR2014-00252
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`request is made, the receiving device responds by rendering secondary content on
`
`an output device. Id. at Abstract; Ex. 2011 at ¶ 10. For example, a trick mode
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`request might be a viewer fast forwarding through a commercial, and the device
`
`might respond by displaying a different commercial. In some embodiments, the
`
`receiving device uses secondary information to render the secondary content, while
`
`in other embodiments the receiving device renders secondary content to an output
`
`device directly, without using any other information. Compare Ex. 1001 at col. 4,
`
`ll. 13-36 with id. at col. 4, ll. 43-46. Ex. 2011 at ¶ 10.
`
`The specification states that “[s]econdary information in this document may
`
`include secondary content, information to generate secondary content or
`
`information to access secondary content.” Ex. 1001 at col. 3, ll. 39-41. In the
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`embodiments where “secondary information” is “secondary content,” the
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`specification describes that the receiving device renders the “secondary content” to
`
`an output device directly. See, e.g., id. at col. 10, l. 10-col. 11, l. 14, Fig. 6. Ex.
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`2011 at ¶ 21. However, in the embodiments where the “secondary information” is
`
`“information to generate secondary content” the specification describes that the
`
`receiving device uses the secondary information to render the secondary content.
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`See, e.g., Ex. 1001 at col. 14, l. 13-col. 15, l. 26, Fig. 8; Ex. 2011 at ¶ 20. Similarly,
`
`in embodiments where the “secondary information” is “information to access
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`secondary content,” the specification describes that the receiving device uses the
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`2
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`Case No. IPR2014-00252
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`secondary information to render the secondary content. See, e.g., Ex. 1001 at col.
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`25, l. 55-col. 30, l. 26, Fig. 24; Ex. 2011 at ¶ 19, fn 2.
`
`Independent claims 1, 4, and 7 are limited to the embodiments in which
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`secondary information is information to generate secondary content or information
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`to access secondary content. That is, claims 1, 4, and 7 cover embodiments in
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`which the receiving device uses the secondary information to render the secondary
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`content instead of the embodiments in which the receiving device renders the
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`secondary content directly. Each independent claim requires “the receiving device
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`to utilize the secondary information to render secondary non-derivative content.” 1
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`Ex. 2011 at ¶ 22. For example, independent claim 1 recites:
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`1. A system including:
`
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`1 For simplicity, this response uses “secondary content” interchangeably with
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`“secondary non-derivative content” since the specification makes clear that
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`“secondary non-derivative content” is a type of “secondary content.” See, e.g., Ex.
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`1001 at col. 3, ll. 47-51. Ex. 2011 at ¶ 19, fn 3. There is no dispute that the claims
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`cover embodiments in the specification directed to secondary non-derivative
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`content as opposed to embodiments covering secondary derivative content. See,
`
`e.g., Pet. at 3 (“Each of the independent claims is directed to rendering secondary
`
`non-derivative content at a receiving device . . . .”).
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`3
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`Case No. IPR2014-00252
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`a request module to receive a request for primary
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`content; and
`
`
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`a communication module to
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`communicate 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,
`
`associate the primary content to secondary
`
`
`information,
`
`communicate 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.
`
`
`
`
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`Thus, although the specification discloses different embodiments, the claims
`
`are limited to the embodiments in which secondary information is information to
`
`generate secondary content or information to access secondary content.
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`4
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`Case No. IPR2014-00252
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`Prosecution of the ’786 Patent
`
`B.
`The ’786 patent began as U.S. patent application no. 11/469,195, filed on
`
`August 31, 2006, with 88 claims. Ex. 1002 at 52-74. Prior to issuing a first Office
`
`Action, the Patent Office issued two Restriction Requirements. In the second
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`Restriction Requirement, the Patent Office required election between (among other
`
`groups) the group consisting of claims 7-9, 46-48, and 81, claims in which
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`“secondary information” was “secondary content,” and the group consisting of
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`claims 1-3, 40-42, and 79, claims in which “secondary information” was
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`“information to generate secondary content or information to access secondary
`
`content.” Ex. 1002 at 221-22; Ex. 2011 at ¶¶ 27-28. The Patent Office required
`
`election because these claim groups were directed to distinct inventions. Ex. 1002
`
`at 223-24. In response, Applicant acknowledged that these claim groups were
`
`directed to distinct inventions by electing to prosecute the group consisting of
`
`claims 1-3, 40-42, and 79 (where secondary information was information to
`
`generate secondary content or information to access secondary content) without
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`traverse and cancelling claims 7-9, 46-48, and 81 (among other claims). Ex. 1002
`
`at 227-33.
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`The Patent Office subsequently issued a first Office Action rejecting claims
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`1-3, 40-42, and 79 under 35 U.S.C. § 102(b) as being anticipated by U.S. Patent
`
`No. 6,028,726 (“Yanagihara”). Applicant overcame the rejection without
`
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`Case No. IPR2014-00252
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`amending the claims, and claims 1-3, 40-42, and 79 issued as claims 1-7, with
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`minor post allowance amendments not relevant to this proceeding. Ex. 1002 at
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`250-258, 276-278.
`
`Person of Ordinary Skill in the Art
`
`C.
`The parties agree that the hypothetical person of ordinary skill in the art at
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`the time of invention would have “(i) a B.S. degree in Electrical Engineering or
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`equivalent training, and (ii) approximately three years of direct experience in
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`developing subscriber television solutions and technologies. Relevant industry
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`experience would include experience with interactive television system
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`development and deployment, including development of head-end, transport, and
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`customer premise equipment in order to appreciate what was obvious and/or
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`anticipated in the industry and what a person having ordinary skill in the art would
`
`have thought at the time.” Ex. 1005 at ¶ 11; Ex. 2011 at ¶ 12.
`
`III. “SECONDARY INFORMATION” MEANS “INFORMATION TO
`GENERATE SECONDARY CONTENT OR INFORMATION TO
`ACCESS SECONDARY CONTENT”
`
`Comparing the parties’ constructions for “secondary information,” a term
`
`that the Board has not construed appearing in independent claims 1, 4, and 7, it is
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`undisputed that “secondary information” means “information to generate
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`secondary content or information to access secondary content.”
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`6
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`Case No. IPR2014-00252
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`Institution Decision
`Construction
`
`N/A
`
`
`OpenTV’s Proposed
`Construction
`Information to generate
`secondary content or
`information to access
`secondary content
`
`Netflix’s Proposed
`Construction
`Secondary content,
`information to generate
`secondary content or
`information to access
`secondary content
`
`
`
`The only issue is whether “secondary information” is properly construed to also
`
`mean “secondary content” as Netflix and its expert, Mr. Kramer, propose. See, e.g.,
`
`Pet. at 13, 16; Ex. 1005, ¶ 24, p. 20. The claims, specification, and prosecution
`
`history—intrinsic evidence not considered by Netflix or Mr. Kramer—make it
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`clear that “secondary information” is not properly construed to mean “secondary
`
`content.”2 Accordingly, the broadest reasonable construction in light of the
`
`
`2 The Board has relied on prosecution history statements to determine the broadest
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`reasonable construction of claims in numerous other inter partes reviews. See, e.g.,
`
`Garmin Int'l Inc. v. Cuozzo Speed Tech. LLC, IPR2012-00001, Paper No. 15 at 8
`
`(Jan. 9, 2013); Motorola Solutions, Inc. v. Mobile Scanning Tech., LLC, IPR2013-
`
`00093, Paper No. 28 at 10 (Apr. 29, 2013); ZTE Corp. & ZTE (USA) Inc. v.
`
`ContentGuard Holdings, Inc., IPR2013-00134, Paper No. 12 at 16 (June 19, 2013);
`
`Xilinx, Inc. v. Intellectual Ventures I LLC, IPR2013-00112, Paper No. 14 at 6 (June
`
`27, 2013). It should do so againhere.
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`7
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`Case No. IPR2014-00252
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`specification for “secondary information’ is “information to generate secondary
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`content or information to access secondary content.”
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`A. The Plain Language of the Claims Supports That “Secondary
`Information” Does Not Mean “Secondary Content”
`
`The plain language of the claims supports that “secondary information” does
`
`not mean “secondary content.” Each of independent claims 1, 4, and 7 recites a
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`“receiving device to utilize the secondary information to render secondary non-
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`derivative content to the output device.” Thus, the plain language of the claims
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`requires the receiving device to use the “secondary information” to render the
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`“secondary non-derivative content,” which means that the “secondary information”
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`and the “secondary non-derivative content” are distinct entities that are not the
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`same thing. Ex. 2011 at ¶ 17. Indeed, when a claim uses two different terms, those
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`terms are presumed to have different meanings. Augme Technologies, Inc. v.
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`Yahoo! Inc., __ F.3d __, 2014 WL 2782019, *4-*5 (Fed. Cir. 2014).
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`Nothing in the plain language of the claims rebuts the presumption that
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`“secondary information” does not mean “secondary content.” Construing the term
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`“secondary information” to mean “secondary content” would result in the claims
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`being interpreted to recite, for example, a “receiving device to utilize the secondary
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`non-derivative content to render secondary non-derivative content.” The language
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`of the claims does not reasonably or logically permit such a construction. Z4
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`Techs., Inc. v. Micorsoft Corp., 507 F.3d 1340, 1348 (Fed. Cir. 2007) (declining to
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`Case No. IPR2014-00252
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`construe the “computer” to mean “user” in a claim that recited “enabling the
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`software on a computer for use by a user” because the “‘user’ and the ‘computer’
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`are distinct entities.”). 37 C.F.R. § 42.100(b) (stating that in inter partes review,
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`claims are to be given their “broadest reasonable construction in light of the
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`specification”) (emphasis added).
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`Moreover, construing the term “secondary information” to mean “secondary
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`content” would impermissibly render the claim terms “to utilize the secondary
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`information” meaningless. Under this construction, the claims would recite a
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`“receiving device to utilize secondary non-derivative content to render secondary
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`non-derivative content.” It does not make technical sense to say that a receiving
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`device uses the secondary non-derivative content to render secondary non-
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`derivative content. A person of ordinary skill in the art would have instead said that
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`the receiving device renders secondary non-derivative content. Ex. 2011 at ¶ 18.
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`The claims could thus be rewritten to recite a “receiving device to utilize secondary
`
`information to render secondary non-derivative content” without changing their
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`meaning. Id. But that would impermissibly render the claim terms “to utilize the
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`secondary information” meaningless. Bicon, Inc. v. Straumann Co., 441 F.3d 945,
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`950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward giving effect to
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`all terms in the claim.”). Accordingly, a construction in which “secondary
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`information” means “secondary content” cannot be correct.
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`Case No. IPR2014-00252
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`B.
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`The Specification Supports That “Secondary Information” Does
`Not Mean “Secondary Content”
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`Construing “secondary information” as not including “secondary content” is
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`consistent with and supported by the specification. The specification discloses
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`embodiments in which “secondary information” is “secondary content” and other,
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`separate embodiments in which “secondary information” is not “secondary
`
`content.” But only the embodiments in which “secondary information” is not
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`“secondary content” are consistent with and track the language of claims 1, 4, and
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`7. Accordingly, claims 1, 4, and 7 cover only those embodiments, and “secondary
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`information” is not properly construed to mean “secondary content.” See, e.g.,
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`Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010) (“It is not
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`necessary that each claim read on every embodiment.”).
`
`The ’786 patent distinguishes between embodiments in which “secondary
`
`information” is “secondary content” and other, separate embodiments in which
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`“secondary information” is not “secondary content.” For example, the specification
`
`states that “secondary information in this document may include secondary
`
`content, information to generate secondary content, or information to receive
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`secondary content.” Ex. 1001 at col. 3, ll. 39-41. And the specification includes
`
`one figure with accompanying description directed to an embodiment in which
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`Case No. IPR2014-00252
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`“secondary information” is “secondary content” (“the Fig. 6 embodiment”),3 Ex.
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`1001 at Fig. 6, col. 10, l. 10-col. 11, l. 14; Ex. 2011 at ¶ 19, and a second figure
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`with accompanying description directed to another, separate embodiment in which
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`“secondary information” is not “secondary content” (“the Fig. 8 embodiment”).
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`Ex. 1001 at Fig. 8, col. 14, l. 13-col. 15, l. 26; Ex. 2011 at ¶ 19. Of the Fig. 6 and
`
`Fig. 8 embodiments, only the Fig. 8 embodiment is consistent with and tracks the
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`language of claims 1, 4, and 7.4
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`In embodiments where “secondary information” is not “secondary content,”
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`such as the Fig. 8 embodiment, the specification’s description of the embodiments
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`track the language of the claims. Ex. 2011 at ¶ 20. For example, in the Fig. 8
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`embodiment, the “secondary information” is an “entertainment application,” and
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`the “secondary content” is an “entertainment slide show.” Id; see also Ex. 1001 at
`
`
`3 Although Fig. 6 discusses “derivative secondary content,” the specification makes
`
`clear that this embodiment also applies to embodiments directed to “non-derivative
`
`content.” See, e.g., Ex. 1001 at col. 13, ll. 45-52; Ex. 2011 at ¶ 19, fn 1.
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`4 There are other embodiments beyond the Fig. 8 embodiment that track the
`
`language of the claims. See, e.g., Ex. 1001 at col. 25, l. 55-col. 30, l. 26; Ex. 2011
`
`at ¶ 19, fn 2. The Fig. 8 embodiment is used as an example in the text above for
`
`brevity.
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`11
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`Case No. IPR2014-00252
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`col. 8, ll. 23-31, col. 8, ll. 58-65. Just as in the claims, the specification describes
`
`that the Fig. 8 embodiment contains a “receiving device to utilize the secondary
`
`information to render secondary non-derivative content to the output device.” More
`
`specifically, the specification states:
`
`The receiving device 12 executes the appropriate version
`
`of the entertainment application 68 (e.g., 2xFF
`
`VERSION) to generate non-derivative secondary content
`
`in the form of an entertainment slide show 62. At
`
`operation 193, the receiving device 12 renders the
`
`entertainment slide show 62 to the output device 18.
`
`Ex. 1001 at col. 15, ll. 6-11; Ex. 2011 at ¶ 20. The two step process described in
`
`the specification of the receiving device (1) using the entertainment application
`
`(the secondary information) to generate the entertainment slideshow (the secondary
`
`content) so that the receiving device (2) renders the entertainment slide show (the
`
`secondary content) aligns with the clear recitation in the claims that the receiving
`
`device uses the secondary information to render the secondary non-derivative
`
`content. Id.
`
`In contrast, the specification’s description of embodiments in which the
`
`“secondary information” is the “secondary content,” such as the Fig. 6
`
`embodiment, does not track the language of the claims. In the Fig. 6 embodiment,
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`12
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`Case No. IPR2014-00252
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`the “secondary information” is an “advertisement recording,” and the “secondary
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`content” is also the “advertisement recording” Ex. 2011 at ¶ 21; see also Ex. 1001
`
`at col. 9, ll. 9-18. The specification’s description of the Fig. 6 embodiment
`
`diverges from the claim language by failing to describe the Fig. 6 embodiment as
`
`containing a “receiving device to utilize the secondary information to render
`
`secondary non-derivative content to the output device.” Instead of describing that
`
`the Fig. 6 embodiment utilizes the advertisement recording (the “secondary
`
`information”) to render the advertisement recording (the “secondary content”) as
`
`recited in the claims, the specification simply describes that the receiving device
`
`directly renders the advertisement recording. Ex. 2011 at ¶ 21; Ex. 1001 at col. 11,
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`ll. 1-2 (“the receiving 12 device may receive and render the advertisement
`
`recording 54”). This description makes technical sense because it is nonsensical to
`
`say that the receiving device uses secondary content to render secondary content,
`
`and further illustrates that the claims do not read on the Fig. 6 embodiment. Ex.
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`2011 at ¶ 21. Even Netflix’s expert, Mr. Kramer, was unable to explain how the
`
`Fig. 6 embodiment was related to the claims. Ex. 2005, Dep. Tr. of R. Kramer,
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`11:11-18.5
`
`
`5 Mr. Kramer’s inability to map the specification to the claims calls his entire claim
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`construction “analysis” into question. After all, in inter partes review claim terms
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`Case No. IPR2014-00252
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`The table below summarizes how the specification’s description of the Fig. 8
`
`embodiment is consistent with and covered by the claim language, while its
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`description of the Fig. 6 embodiment is inconsistent with and outside of scope of
`
`the claim language.
`
`Claim Language
`
`Fig. 8 Embodiment
`
`Fig. 6 Embodiment
`
`the receiving device to
`utilize the secondary
`information to render the
`secondary non-derivative
`content to the output
`device
`
`“the receiving 12 device
`may receive and render
`the advertisement
`recording 54.” Ex. 1001 at
`col. 11, ll. 1-2.
`
`“the receiving device 12
`executes the appropriate
`version of the
`entertainment application
`68 (e.g., 2xFF VERSION)
`to generate non-derivative
`secondary content in the
`form of an entertainment
`slide show 62. At
`operation 193, the
`receiving device 12
`renders the entertainment
`slide show 62 to the
`output device 18.
`Ex. 1001 at col. 15, ll. 6-
`11.
`
`
`For at least the foregoing reasons, the Fig. 8 embodiment is covered by the
`
`claim, while the Fig. 6 embodiment is not. “It is not necessary that each claim read
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`on every embodiment,” and that is the case here. See, e.g., Baran v. Med. Device
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`Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010). Accordingly, the specification
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`must be given their “broadest reasonable interpretation in light of the
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`specification.” 37 C.F.R. § 42.100(b) (emphasis added).
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`Case No. IPR2014-00252
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`supports that, as in the Fig. 8 embodiment, “secondary information” does not
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`include “secondary content,” and is properly construed to exclude it.
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`C. The Specification’s “Definition” of “Secondary Information” Does
`Not Change That the Proper Construction of This Term Does Not
`Include “Secondary Content”
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`Instead of analyzing the meaning of the term “secondary information” in the
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`context of the claim language and specification, Netflix and its expert, Mr. Kramer,
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`simply adopted a “definition” of the term in the specification as their construction.
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`See, e.g., Pet. at 13, 16; Ex. 1005, ¶ 24, p. 20. This is not correct. The
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`specification’s “definition” simply gives examples of what the “secondary
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`information” might be. And the use of the term “secondary information” in the
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`claims is narrower than the specification’s “definition” of this term. Construing
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`“secondary information” as the specification’s “definition” of that term is thus
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`inconsistent with the plain language of the claims. Accordingly, the specification’s
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`“definition” of “secondary information” does not change that this term is properly
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`construed to exclude “secondary content.”
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`At the outset, it should be noted that the Board has already acknowledged
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`that the “definitions” in the ’786 patent specification do not control the
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`construction of corresponding claim term by adopting a construction of “secondary
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`non-derivative content” different than the “definition” in the specification.
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`Institution Decision, Paper 13 at 6. In so doing, the Board made clear that “[t]he
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`Case No. IPR2014-00252
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`claims and the specification . . . of the ’786 patent provide additional context for
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`construing secondary non-derivative content.” The claims and specification
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`likewise provide additional context for construing “secondary information.”
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`Netflix and Mr. Kramer’s failure to consider this additional context highlight that
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`their construction cannot be correct.
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`The ’786 patent does contain a “Definitions” section listing, among other
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`things, the term “secondary information.” Ex. 1001 at col. 3, l. 24-col. 4, l. 5. But
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`the “definition” of “secondary information” states that “secondary information in
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`this document may include secondary content, information to generate secondary
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`content, or information to receive secondary content.” Ex. 1001 at col. 3, ll. 39-41
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`(emphasis added). By using the term “may include” the “definition” of “secondary
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`information” simply gives examples of what “secondary information” might be. It
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`does not require every instance of “secondary information” in the specification and
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`claims to include secondary content, information to generate secondary content,
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`and information to receive secondary content. Ex. 2011 at ¶ 23. Indeed, unlike the
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`“definition” of “secondary information,” every other definition in the ’786 patent
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`states that the term “in this document is intended to include” something. See, e.g.,
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`Ex. 1001 at col. 3, ll. 26-28 (“Primary content in this document is intended to
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`include content that may be played on a receiving device or interacted with on a
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`receiving device.”); Ex. 2011 at ¶ 23.
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`Case No. IPR2014-00252
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`Moreover, the plain language of the claims makes clear that “secondary
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`information” is something different than the separately recited “secondary non-
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`derivative content” because the “secondary information” is used to render the
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`“secondary non-derivative content.” See supra Part III.1; Ex. 2011 at ¶ 24. The
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`claims’ use of “secondary information” is thus narrower than the specification’s
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`“definition” of “secondary information” because the claims’ use of the term
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`prevents it from being synonymous with “secondary content.” Ex. 2011 at ¶ 25.
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`Construing “secondary information” as the “definition” for this term in the
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`specification would allow “secondary information” to be the same thing as the
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`separately recited, distinct “secondary content.” This is inconsistent with the plain
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`language of the claims. Ex. 2011 at ¶¶ 17-18. Thus, applying part of the
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`specification’s “definition” of “secondary information” to the claim would
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`incorrectly redefine “secondary information” to have a meaning contrary to the
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`claims’ use of the term. Process Control Corp. v. Hyderclaim Corp., 190 F.3d
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`1350, 1355-56 (Fed. Cir. 1999) (“Process Control argues that ‘discharge rate’ is
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`defined in the claims themselves to mean 'discharging [blended] material from said
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`common hopper to said processing machine at a discharge rate.’ The references in
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`the written description relied upon by the district court to redefine ‘discharge rate’
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`to mean ‘change in weight’ do not clearly redefine that term and, in any event,
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`Case No. IPR2014-00252
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`would redefine the term contrary to the explicit definition of that term in the claim
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`itself.”) (internal citations omitted).
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`For at least the foregoing reasons, the specification’s “definition” of
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`“secondary information” does not change that this term is properly construed to
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`exclude “secondary content.”
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`D. The Prosecution History Supports That “Secondary Information
`Does Not Include “Secondary Content”
`
`The prosecution history supports that the proper construction of “secondary
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`information” does not include “secondary content.” In particular, during
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`prosecution, the Patent Office required election between (among other groups)
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`claims in which “secondary information” included “secondary content” and claims
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`in which “secondary information” did not include “secondary content.” Applicant
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`elected to continue prosecution of the claims in which “secondary information” did
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`not include “secondary content” without traverse. Applicant’s election thus
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`supports that “secondary information” is not properly construed to include
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`“secondary content.”
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`At the outset, it should be noted that in inter partes review claim terms must
`
`be given their “broadest reasonable interpretation in light of the specification,” 37
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`C.F.R. § 42.100(b). To ascertain what is “reasonable,” the Board has relied on
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`prosecution history statements in construing claims in numerous o