UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Netflix, Inc.,
`
`Petitioner,
`
`V.
`
`OpenTV, Inc.
`Patent Owner
`
`PETITION FOR INTER PARTES REVIEW
`
`OF
`
`US. PATENT NO. 8,107,786
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Netflix, Inc.,
`
`Petitioner,
`
`V.
`
`OpenTV, Inc.
`Patent Owner
`
`PETITION FOR INTER PARTES REVIEW
`
`OF
`
`US. PATENT NO. 8,107,786
`
`
`
`Petition for Inter Panes Review of US. Patent No. 8.l07.786
`
`TABLE OF CONTENTS
`
`I. Mandatory Notices .......................................................................................... 1
`
`A. Real Party-in-Interest ................................................................................. 1
`
`B. Related Matters .......................................................................................... 1
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`C. Lead and Backup Counsel and Service Information ................................... 1
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`II. Grounds for Standing ....................................................................................... 1
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`III. Relief Requested .............................................................................................. 2
`
`IV. The Reasons for the Requested Relief.............................................................. 2
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`A. Summary of Reasons ................................................................................. 2
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`B. The ’786 Patent .......................................................................................... 3
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`1. Overview .............................................................................................. 3
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`2. Prosecution History ............................................................................... 5
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`C.
`
`Identification of Challenges ....................................................................... 6
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`1. Challenged Claims ................................................................................ 6
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`2. Statutory Grounds for Challenges ......................................................... 6
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`3. Claim Construction ............................................................................... 7
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`4.
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`Identification of How the Claims Are Unpatentable .............................. 8
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`i. Challenge #1: Claims 1-6 are anticipated by Plotnick ..................... 8
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`ii. Challenge #2: Claim 7 is obvious over Plotnick in view of Eldering35
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`V. Conclusion ...................................................................................................... 50
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`
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`Petition for Inter Panes Review of US. Patent No. 8,l07,786
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`l.
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`Mandatory Notices
`
`A.
`
`Real Party-in—lnterest
`
`The real party-in-interest is Netfiix, Inc.
`
`B.
`
`Related Matters
`
`As of the filing date of this petition, the ’786 Patent was asserted against the
`
`party-in-interest in Open?”V Inc- v. Negflix, Ina, 1:12-cv-01733 (D. Del.).
`
`C.
`
`Lead and Backup Counsel and Service Information
`
`Lead Counsel
`
`Andrew S. Ehmke
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Phone: (214) 651-5116
`Fax: (214) 200-0853
`andy.ehmke.ipr@haynesboone.com
`USPTO Reg. No. 50,271
`
`Backup Counsel
`
`Dustin Johnson
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Phone: (972) 739-6969
`Fax: (214) 200-0853
`dustin.johnson@haynesboone.com
`USPTO Reg. No. 47,684
`
`ll.
`
`Grounds for Standing
`
`Petitioner certifies that it is not estopped or barred fi'om requesting inter
`
`partes review of the ’786 Patent. Petitioner was served with a complaint asserting
`
`infringement of the ’786 Patent on December 19, 2012, which is less than one year
`
`before the filing of this Petition. Petitioner has not initiated a civil action
`
`challenging validity of any claim of the ’786 Patent. Petitioner also certifies that
`
`the ’786 Patent is eligible for inter partes review.
`
`
`
`
`Petition for Inter Panes Review of U.S. Patent No. 8,l07,786
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`[1]. Relief Requested
`
`Petitioner asks that the Board review the accompanying prior art and
`
`analysis, institute a trial for inter partes review of claims 1-7 (all claims) of the
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`”786 Patent, and cancel those claims as invalid.
`
`IV.
`
`The Reasons for the Requested Relief
`
`The full statement of the reasons for the relief requested is as follows:
`
`A.
`
`Summary of Reasons
`
`The ’786 Patent relates to a system, a method, and a tangible machine
`
`readable medium for modifying the playout or playback of audio/visual content.
`
`In
`
`general, the ”786 Patent describes a system that delivers primary content, such as
`
`audio/visual content for display on an output device at a normal speed. The system
`
`also delivers secondary content that is not derived fi'om the primary content.
`
`In
`
`response to a request to render the primary content at an accelerated rate, as may
`
`occur when the user attempts to fast forward the primary content, the system
`
`renders the secondary content to the output device.
`
`These features were all well known in the prior art in 2006 when the
`
`application that issued as the ’786 Patent was filed.
`
`The references cited in this petition, alone or in combination, either
`
`anticipate or render obvious the claims of the ”786 Patent. For example, U.S.
`
`Patent Publication 2005/0097599 to Plotnick, et a1. discloses a system that renders
`
`primary content as an advertisement for display to a viewer, and in response to user
`
`2
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`Petition for Inter Panes Review of US. Patent No. 8,l07.786
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`request to fast forward the primary content, displays an alternative advertisement
`
`in place of the default advertisement.
`
`Consequently, this petition demonstrates that claims 1-7 simply claim
`
`features that were well known in the prior art and are therefore, either anticipated
`
`by or rendered obvious over the references presented in this petition.
`
`B.
`
`The ’786 Patent
`
`1.
`
`Overview
`
`The ’786 Patent has three independent claims (claims 1, 4, and 7) and a total
`
`of 7 claims. Each of the independent claims is directed to rendering secondary non-
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`derivative content at a receiving device in response to a request to render primary
`
`content at an accelerated speed.
`
`The system, such as a video on demand system, includes a streaming server
`
`28 having a request module 36 and a communication module 38. NTFX-lOOl,
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`6:42-43, Fig. l.
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`
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`Petition for Inter Partes Review of US. Patent No. 8,l0?,786
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`NTFX-1001, Fig. 1
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`The request module 36 receives a request for delivery of primary content to
`
`a receiving device 12 that may be a set-top box or DVR. NTFX-lOOl , 6:43-48,
`
`10:14-25. The communication module 38 then communicates the primary content
`
`to the receiving device (NTFX-l 001 , 6:54-60, 10:27-30) so that the receiving
`
`device renders the primary content to an output device at a normal speed. NTFX-
`
`1001, 10:31-34, Fig. 6.
`
`The communication module 38 also associates the primary content with
`
`secondary information and communicates the secondary information to the
`
`receiving device. NTFX-lOOl, 10:54-67. The secondary information in the ”786
`
`Patent is defined as “secondary content, information to generate secondary content
`
`or information to access secondary content.” NTFX-l 001, 3 :39-41. The receiving
`
`4
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`Petition for Inter Panes Review of U.S. Patent No. 8,l07,786
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`device utilizes the secondary information to render secondary non-derivative
`
`content to the output device instead of the primary content. NTFX-1001, 15:6-11.
`
`The receiving device 12 then renders the secondary non-derivative content
`
`in response to a receipt of a request to render the primary content at the receiving
`
`device 12 at an accelerated speed. NTFX-1001, 14:55-15:11. The request may be
`
`a fast forward request or a rewind request. NTFX-1001, 14:44-51.
`
`None of these features were novel and nonobvious when the application that
`
`issued as the ’786 Patent was filed on August 31, 2006.
`
`2.
`
`Prosecution History
`
`The ’786 Patent issued on January 31, 2012, from U.S. Patent Application
`
`No. 11/469,195 (“the ’195 application”) filed by Esteban Sardera on August 31,
`
`2006.
`
`The first Office Action on the merits] rejected all of the claims as being
`
`anticipated under 35 U.S.C. § 102(b) by U.S. Patent No. 6,028,726 to Yanagihara
`
`(“Yanagihara”). Without amending the claims, the Patentees argued that
`
`Yanagihara did not teach all the limitations of the claims because the same content
`
`' While much of the specification of the ’195 application describes a system that
`
`using “secondary derivative content” derived fiom primary content, the Patent
`
`Office restricted the original claims and the Patentees chose to prosecute claims
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`relating to “secondary non-derivative content.”
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`Petition for Inter Panes Review of US. Patent No. 8.l07.786
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`rendered in the prior art (e.g., a picture) “could not possibly constitute ‘secondary
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`information’ and ‘secondary nonderivatt've content ’ and ‘primary content.
`
`999
`
`NTFX-1002, Amendments and Response Under 37 C.F.R. 1.111, dated July 14,
`
`2011, p. 8 (emphasis in original).
`
`In response to the Applicant’s arguments, the Examiner allowed the claims
`
`without providing reasons for allowance. Subsequently, the Applicant amended
`
`each of the independent claims after allowance by removing the words “at the
`
`receiving device” from each allowed independent claim in the following manner:
`
`“the receiving device to render the secondary non-
`
`derivative content responsive to receipt of a request at—t—he
`
`4-‘eeeiv+ng—deviee to render the primary content at the
`
`receiving device at an accelerated speed of the primary
`
`content.”
`
`NTFX-1002, Amendment under 37 C.F.R. § 1.312, dated October 7, 2011, pp. 2-3.
`
`C.
`
`Identification of Challenges
`
`1.
`
`Challenged Claims
`
`Claims 1-7 of the ’786 Patent are challenged in this petition.
`
`2.
`
`Statutory Grounds for Challenges
`
`Challenge #1: Claims 1-6 are anticipated under 35 U.S.C. § 102(b) over
`
`US. Patent Publication No. 2005/0097599 to Plotnick, et a1. (“Plotnick”).
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`Petition for Inter Partes Review of U.S. Patent No. 8,107,786
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`Plotnick published May 5, 2005, and is prior art under 35 U.S.C. § 102(b).
`
`Challenge #2: Claim 7 is obvious under 35 U.S.C. § 103(a) over Plotnick in
`
`view of U.S. Patent No. 6,820,277 to Eldering et al. (“Eldering”). Plotnick
`
`published May 5, 2005, and is prior art under 35 U.S.C. § 102(b). Eldering issued
`
`November 16, 2004, and is prior art under 35 U.S.C. § 102(b).
`
`3.
`
`Claim Construction
`
`This petition presents claim analysis in a manner that is consistent with the
`
`broadest reasonable interpretation in light of the specification. See 37 CPR. §
`
`42.100(b). Claim terms are given their ordinary and accustomed meaning as would
`
`be understood by one of ordinary skill in the art, unless the inventor, as a
`
`lexicographer, has set forth a special meaning for a term. Multiform Desiccants,
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`Inc. v. Medzam, Ltd, 133 F.3d 1473, 1477 (Fed. Cir. 1998); York Prods, Inc- v.
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`Central Tractor Farm & Family Ctr, 99 F.3d 1568, 1572 (Fed. Cir. 1996).
`
`In the ’786 Patent, the inventors set forth a “DEFINITIONS” section that
`
`provides a specific definition for a number of the claim terms. The ’786 Patent,
`
`3:23-45. Since the inventors explicitly provided these definitions, these
`
`definitions should be used in interpreting the claims. NTFX-1005, 1125. All other
`
`claim terms should be given their ordinary and custom meaning as understood by a
`
`person of ordinary skill in the art and as set forth below. See id.
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`Petition for Inter Panes Review of U.S. Patent No. 8,l07,786
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`“Secondary non—derivative content” (Claims 1, 4, and 7)
`
`The specification explicitly defines the term “non-derivative secondary
`
`content” in the DEFINITIONS section.2 NTFX-IOOI, 3:47-51.
`
`In accordance with
`
`the DEFINITIONS section, secondary non-derivative content means “secondary
`
`content that is not generatedfrom the associated primary content. For example,
`
`non—derivative secondary content does not include samples (e.g., audio achor
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`visual) from the associated primary content.” NTFX-l 005, 1l28.
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`The foregoing proposed claim construction is presented by Petitioner using
`
`the broadest reasonable interpretation standard applied for purposes of inter partes
`
`review. Petitioner reserves the right to advocate a different claim interpretation in
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`district court or any other forum in accordance with the claim construction
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`standards applied in such forum.
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`4.
`
`Identification of How the Claims Are Unpatentable
`
`i. Challenge #1: Claims 1-6 are anticipated by Plotnick
`
`Claims 1-6 are anticipated under 35 U.S.C. § 102(b) by U.S. Patent
`
`Publication No. 2005/0097599 to Plotnick et al. (“Plotnick”). Plotnick (NTFX-
`
`1003) published on May S, 2005, and is prior art under 35 U.S.C. § 102(b).
`
`2 The claimed term “secondary non-derivative content” should be properly
`
`construed to have the same meaning as the defined term “non-derivative secondary
`
`content,” corrected to compensate for a typographical error. NTFX-IOOS, 111125-28.
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`Petition for Inter Panes Review of US. Patent No. 8,l07,786
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`Plotnick discloses a video on demand system that provides an alternative,
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`brief advertisement when a viewer chooses to fast-forward through or skip an
`
`advertisement associated with the original programming, such as a recorded
`
`advertisement. NTFX-1005, 113 0. The Plotnick system teaches the transmission of
`
`a program stream including programming and both an advertisement and an
`
`alternative advertisement. NTFX-l 005, 1131. The alternative advertisement may
`
`be a targeted advertisement and may be “entirely unrelated” to the original content
`
`or original advertisement. NTFX-1005, 1131. When a user fast forwards through
`
`the original advertisement, Plotnick’s receiver renders the secondary non-
`
`derivative content instead of the original content. NTFX-1005, 1131.
`
`The following discussion describes how Plotnick anticipates each and every
`
`element of at least claims 1-6:
`
`m [
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`1.0] A system including:
`
`Plotnick discloses a “system” because it teaches servers 400, an archive 402,
`
`a backbone network 410, a switching office 420, a subscriber network 430 and set-
`
`tops 440. (NTFX-1005, p. 15; NTFX-1003, paragraph [011]], Fig. 4.) Thus,
`
`Plotnick discloses “a system” as recited in the claim. (NTFX-1005, p. 15.)
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`Petition for Inter Panes Review of US. Patent No. 8,l07,786
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`[1.1] a request module to receive a requestfor primary content
`
`Plotnick discloses “a request module to receive a request for primary
`
`content” because it teaches a video dial tone gateway 426 and a return channel
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`transport that receive requests for video content. (NTFX-1005, pp. 15-17; NTFX-
`
`1003, paragraph [0112]—[0013].) The video dial tone gateway 426 presents a menu
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`that permits a subscriber to select the appropriate video content. (NTFX-1005, p.
`
`16; NTFX-1003, paragraph [0112].) In addition, the return channel conveys
`
`requests and commands from the set-tops 440 to the head-end system 428.
`
`(NTFX-1005, pp. 16-17; NTFX-1003, paragraph [0113].)
`
`Thus, Plotnick’s disclosure of a video dial tone gateway that allows the
`
`subscriber to select the appropriate video content, and the disclosure of a return
`
`channel transporting requests from the set-tops to the head-end system, is a
`
`teaching of “a request module to receive a request for primary content” as recited
`
`in the claim. (NTFX-1005, p. 17.)
`
`[1 .2(a)] a communication module to
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`Plotnick discloses “a communication module” because it teaches “a program
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`source (video source) 1200” such as a “head-end” that transmits a program stream
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`or video stream 1210 to a personal video recorder (“PVR”). (NTFX-1005, p. 17;
`
`NTFX-1003, paragraph [0167].) The program stream or video stream includes
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`10
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`Petition for inter Fortes Review of US. Patent No. 8.l07.786
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`programming 1220 with both an advertisement 1230 and an alternative
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`advertisement 1240. (1d) Thus, Plotnick’s disclosure of a video source 1200 that
`
`transmits programming including an advertisement and an alternative
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`advertisement is a teaching of “a communication module” as recited in the claim.
`
`(NTFX-1005, p. 17.)
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`[1 .2(b)] communicate primary content to a receiving device, the receiving device
`
`to render the primary content to an output device at a normal speed ofthe
`
`primary content
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`First, Plotnick discloses the communication module to “communicate
`
`primary content to a receiving device” because it discloses that the video source
`
`(the communication module) transmits the program or video with a default
`
`advertisement to the PVR.
`
`(NTFX-IOOS, p. 17-20; NTFX-1003, paragraph [0167],
`
`[0169], [0107]). The term “primary content” is defined in part in the ’786 Patent
`
`as “content that may be played on a receiving device or interacted with on a
`
`receiving device.” (NTFX-IOOS, p. 18]; NTFX-1001 at 3:26-31.) Plotnick’s
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`advertisement is “primary content” communicated to a PVR as a receiving device.
`
`(NTFX-1005, pp. 17-20; NTFX-1003, paragraph [0167]; Fig. 12A). Accordingly,
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`the system of Plotnick communicates primary content as an advertisement to a
`
`receiving device. (NTFX-IOOS, pp. 17-20.)
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`Petition for inter Partes Review of US. Patent No. 8,107,786
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`Second, Plotnick discloses “the receiving device rendering the primary
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`content to an output device at a normal speed of the primary content.” (NTFX-
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`1005, pp. 17-20.) Plotnick teaches sending the signals from the PVR to inputs on a
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`television.
`
`(NTFX-IOOS, pp. 19-20; NTFX-1003, paragraphs [0107], [0169], Fig.
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`3.) The program and advertisement playback can occur at normal speed. (NTFX-
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`1005, pp. 17-20; NTFX-1003, paragraph [0169].)
`
`Thus, the video source delivering the advertisement in the video stream to
`
`the PVR and the PVR displaying the programming and advertisement back at
`
`normal speed on a television, as taught by Plotnick, discloses a communication
`
`module to “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” as recited in the claim.
`
`(NTFX-IOOS, p. 20).
`
`[12(0)] associate the primary content to secondary information
`
`Plotnick discloses a communication module to “associate the primary
`
`content to secondary information” because it teaches associating multiple types of
`
`information to the primary advertising content. (NTFX-1005, pp. 20-26.) For
`
`example, Plotnick discloses associating each of the following to the primary
`
`content: an alternative advertisement, metadata used to access secondary content,
`
`and information signals communicated to the PVR used to generate secondary
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`12
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`Petition for Inter Panes Review of US. Patent No. 8,107,786
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`content. (See id.) Each of these meet the definition for “secondary information”
`
`defined to “include secondary content, information to generate secondary content
`
`or information to access secondary content.” NTFX-1001 at 3 :39-41.
`
`With respect to Plotnick’s teaching of an alternative advertisement as
`
`the “secondary information,” Plotnick discloses “associat[ing] the primary
`
`content to secondary information” when it teaches associating the alternative
`
`advertisement (the secondary information) with the default advertisement (primary
`
`content) in a common video stream. (NTFX-1005, p. 21). The video stream
`
`includes both an advertisement as primary content and an alternative advertisement
`
`as secondary information associated in the same location in the stream. (NTFX-
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`1005, p. 21; NTFX-1003, paragraph [0167], Fig. 12A.)
`
`With respect to Plotnick’s teaching of metadata as the “secondary
`
`information,” Plotnick discloses “associat[ing] the primary content to secondary
`
`information” when it teaches associating the default advertisement with ad
`
`metadata used to access the alternative advertisement. (NTFX-1005, pp. 21-23).
`
`Plotnick discloses that content and metadata are delivered to a set-top box PVR.
`
`(NTFX-1005, pp. 21-22; NTFX-1003, paragraph [0159], [0160], Fig. 12A.) The
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`metadata includes times for displaying the advertisements and therefore includes
`
`information about when to generate the advertisements. The metadata is sent in
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`13
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`Petition for Inter Panes Review of US. Patent No. 8,l07,786
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`the video stream and therefore is transmitted with the primary advertisement.
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`(NTFX-1005, p. 22-23; NTFX-1003, paragraph [0164], [0167], Fig. 12A.)
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`With respect to Plotnick’s teaching of information signals as the
`
`“secondary information,” Plotnick discloses “associat[ing] the primary content to
`
`secondary information” when it teaches sending, with the default advertisement,
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`information signals used to generate alternative advertisement. (NTFX-l 005, p.
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`26.) Plotnick discloses video signals representing the video stream of both the
`
`default advertisement and the alternative advertisement and are transmitted across
`
`networks to the set-top PVR. (NTFX-1005, pp. 23-25; NTFX-1003, paragraph
`
`[0114], [0167], Fig. 12A.) This transports the information used to generate the
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`alternative advertisement to the set-top PVR. (See id.)
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`In addition, Plotnick discloses “associat[ing] the primary content to
`
`secondary information” because it teaches streaming of signals representing the
`
`default advertisement and the metadata for the alternative advertisement to the
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`same target audience. (NTFX-1005, pp. 24-25.) Specifically, Plotnick teaches that
`
`its system targets advertisements to subscribers and associates targeted
`
`advertisements (primary content) with targeted alternative advertisements.
`
`(NTFX-IOOS, pp. 24-25; NTFX-1003, paragraph [0171].) The ad servers associate
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`the default advertisements and the alternative advertisements based on targeted
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`Petition for inter Fortes Review of US. Patent No. 8,107,786
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`subscribers and based on marketing objectives. (NTFX-1005, pp. 24-25; NTFX-
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`1003, paragraphs [0171], [0159], [0143], [0144], [0164].)
`
`Thus, transmitting information that is used to generate or used to access the
`
`alternative advertisement 1240, as taught by Plotnick, are teachings of
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`“associat[ing] the primary content to secondary information,” as recited in the
`
`claim. (NTFX-1005, pp. 20-26).
`
`[1.2(d)] communicate the secondary information to the receiving device
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`Plotnick discloses “communicat[ing] the secondary information to the
`
`receiving device.” (NTFX-1005, pp. 26-27.) As explained above, it teaches
`
`communicating many different types of secondary information to the PVR. For
`
`example, it teaches communicating the alternative advertisement, the metadata,
`
`and information signals representing alternative advertisements to the PVR.
`
`(NTFX-1005, pp. 26-27.)
`
`Alternative advertisements are transmitted to the PVR with a program or
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`video stream. (NTFX-1005, pp. 26-27; NTFX-1003, paragraph [0167].) Metadata
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`is transmitted to the PVR with the ads themselves based on an ad schedule.
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`(NTFX-1005, pp. 26-27; NTFX-1003, paragraph [0164].) And information signals
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`representing the ads are transmitted over communication networks.
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`(NTFX-IOOS,
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`pp. 26-27; NTFX-1003, paragraph [0114].)
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`Thus, communicating information that:
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`is the alternative advertisement, is
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`information signals used to generate the alternative advertisement, or is metadata
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`to generate or access the alternative advertisement, as taught by Plotnick, is a
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`teaching of “communicat[ing] the secondary information to the receiving device,”
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`as recited in the claim. (NTFX-l 005, p. 26-27.)
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`[1.3] the receiving device to utilize the secondary information to render
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`secondary non-derivative content to the output device instead ofthe primary
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`content, the secondary non-derivative content not being derivedfrom the primary
`
`content
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`“Secondary information” is defined by the ”786 Patent to mean “secondary
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`content, information to generate secondary content or information to access
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`secondary content.” NTFX-lOO], col. 3, lines 39-41.
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`“Non-Derivative Secondary Content” is defined by the ’786 Patent to
`
`mean “include secondary content that is not generated from the associated primary
`
`content. For example, non-derivative secondary content does not include samples
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`(e- g, audio and/or visual) from the associated primary content.” NTFX-lOO], col.
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`3, lines 47-51;NTFX-1005, 'fl28.
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`First, Plotnick discloses that its PVR utilizes secondary information, such as
`
`the alternative advertisement, the ad metadata, and the information signals to
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`render the alternative advertisement to a television instead of the default
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`advertisement.
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`(NTFX-IOOS, pp. 27-33.) The alternative advertisement is
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`rendered instead of the default advertisement when the subscriber fast forwards the
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`default advertisement. (NTFX-IOOS, pp. 27-32; NTFX-1003, Abstract, paragraph
`
`[0107].)
`
`With respect to Plotnick’s teaching of the alternative advertisement as
`
`the “secondary information,” Plotnick discloses that its PVR utilizes the
`
`alternative advertisement when it renders the alternative advertisement because the
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`alternative advertisement is displayed on a subscriber’s television. (NTFX-1005,
`
`pp. 27-28; NTFX-1003, paragraph [0169], [0107], Abstract.) The alternative
`
`advertisements may be entirely unrelated to the default advertisement. (NTFX-
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`1005, p. 28; NTFX-1003, Abstract.)
`
`With respect to Plotnick’s teaching of the metadata as the “secondary
`
`information,” Plotnick discloses that its PVR utilizes the metadata when it renders
`
`the alternative advertisement because the metadata can include descriptors or
`
`identifying information associated with the program or ad. (NTFX-l 005, pp. 28-
`
`31; NTFX-1003, paragraphs [0164], [0105], [0107].) The metadata can also
`
`include information identifying the viewer which is then used to select one of
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`multiple alternative advertisements. (NTFX-l 005, pp. 28-31; NTFX-1003,
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`paragraphs [0163], [0167].) The server may use metadata to determine which
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`alternative advertisement should be rendered. (ld.)
`
`With respect to Plotnick’s teaching of information signals representing
`
`the alternative advertisement as the “secondary information,” Plotnick
`
`discloses that its PVR utilizes the information signals when it renders the
`
`alternative advertisement to the set-top box, and then ultimately to a television.
`
`(NTFX-IOOS, pp. 31-32.) The video signals are transmitted across a network to
`
`the PVR, and then modulated by the PVR to a television channel.
`
`(NTFX-IOOS,
`
`pp. 31-32; NTFX-1003, paragraphs [0114], [0107].) The alternative advertisement
`
`may be unrelated to the default advertisement. (NTFX-1005, pp. 31-32; NTFX-
`
`1003, Abstract, paragraphs [0114], [0107].)
`
`Accordingly, Plotnick discloses that information about the alternative
`
`advertisement (such as the alternative advertisement, metadata, and information
`
`signals such as video and audio signals that represent the alternative advertisement)
`
`is used to render the alternative advertisement onto the TV connected to the PVR
`
`instead of the default advertisement. (NTFX-1005, pp. 27-31.)
`
`Second, Plotnick discloses “the secondary non-derivative content not being
`
`derived from the primary content” because the alternative advertisement can be
`
`“entirely unrelated” to the original advertisement.
`
`(NTFX-IOOS, pp. 32-33;
`
`NTFX-1003, paragraphs [0167], [0166], Abstract).
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`Petition for inter Partes Review of US. Patent No. 8,l07,786
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`Thus, Plotnick’s disclosure of utilizing an alternative advertisement,
`
`metadata, and information signals to render an unrelated alternative advertisement
`
`to the television instead of the default advertisement teaches “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 fi'om the primary content,” as claimed. (NTFX-lOOS, p.
`
`33).
`
`[1.4] 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 ofthe primary content
`
`Plotnick discloses the “receiving device [rendering] 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” because it
`
`discloses that when a subscriber fast forwards the advertisement, the alternative
`
`advertisement is displayed.
`
`(NTFX-IOOS, pp. 33-34; NTFX-1003, paragraph
`
`[0169].)
`
`Thus, Plotnick’s teaching of rendering the alternative advertisement (the
`
`secondary non-derivative content) to the viewer in response to a request to fast
`
`forward the original advertisement (primary content) is a teaching of “the receiving
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`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
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`speed of the primary content,” as claimed. (NTFX-1005, pp. 33-34.)
`
`Claim 2
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`[2.1] wherein the communication module communicates the primary content to
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`the receiving device to store the primary content to a local storage device
`
`First, Plotnick discloses the receiving device has “a local storage device”
`
`because it teaches that the PVR-enabled set-top box can store digital video
`
`programming and includes RAM, flash memory, and storage on a disk drive.
`
`(NTFX-1005, p. 35; NTFX-1003, paragraphs [0105], [0107], Fig. 3.)
`
`Second, Plotnick discloses “the communication module communicates the
`
`primary content to store the primary content to a local storage device.” (NTFX-
`
`1005, pp. 35-36.) For example, Plotnick discloses that a program having an
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`original advertisement can be recorded while a user pauses viewing a program, and
`
`also discloses replacing a “recorded” advertisement in response to a trick play
`
`event. (NTFX-1005, pp. 35-36; NTFX-1003, paragraph [0142], [0099], Abstract.)
`
`Thus, the PVR recording a paused program having original advertisements
`
`and the memory present on the set-top PVR as taught by Plotnick, is a teaching of
`
`“the communication module communicates the primary content to the receiving
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`device to store the primary content to a local storage device,” as recited in the
`
`claim.
`
`(NTFX-IOOS, p. 36.)
`
`[2.2] the receiving device to retrieve the primary contentfrom the local storage
`
`device before the receiving device is to render the primary content to the output
`
`device at the normal speed ofthe primary content
`
`Plotnick discloses “the receiving device to retrieve the primary content from
`
`the local storage device before the receiving device is to render the primary content
`
`to the output device at the normal speed of the primary content” because it teaches
`
`that the PVR retrieves the recorded advertisement fi'om memory for playing on a
`
`television at normal speed.
`
`(NTFX-IOOS, pp. 36-38; NTFX-1003, paragraph
`
`[0092], [0099], [0107].) Plotnick teaches that a subscriber can play back
`
`programming recorded on the PVR.
`
`(NTFX-IOOS, pp. 36-38; NTFX-1003,
`
`paragraph [0092], [0099].)
`
`Thus, playing a recorded program with recorded advertisements from the
`
`memory of the PVR at a normal speed, as taught by Plotnick, discloses “the
`
`receiving device to retrieve the primary content from the local storage device
`
`before the receiving device is to render the primary content to the output device at
`
`the normal speed of the primary content” as recited in claim 2.
`
`(NTFX-IOOS, pp.
`
`38.)
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`Claim 3
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`[3.1] wherein the communication module is to associate the primary content to a
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`secondary application that is utilized by the communication module to generate
`
`the secondary content.
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`First, Plotnick discloses “the communication module is to associate the
`
`primary content to a secondary application” because it teaches that the “head-end”
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`handles the delivery of targeted advertisements.
`
`In particular, the ad sales
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`application is associated with the primary content to generate secondary non-
`
`derivative advertisements. (NTFX-IOOS, p. 38; NTFX-1003, paragraph [0159],
`
`[0174].) The ad sales application delivers the targeted advertisements and
`
`metadata to targeted subscribers, thereby associating the primary content to the
`
`seco
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