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`Paper No.
`Filed: March 27, 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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`
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`Case IPR2014-00267
`Patent 7,409,437
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`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 7,409,437
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`Case No. IPR2014-00267
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`Table of Contents
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`I.
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`II.
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`Preliminary Statement ..................................................................................... 1
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`The Board Should Deny Netflix’s Petition Because All of the Grounds
`in the Petition are Uninstitutable ..................................................................... 3
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`A.
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`The Throckmorton grounds for claims 1-4 are uninstitutable
`because the petition fails to articulate information necessary to
`show obviousness .................................................................................. 4
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`1.
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`2.
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`3.
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`The petition fails to apply the cited art to the claims, as it
`proposes to construe them ........................................................... 5
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`The petition fails to articulate where each of the claim
`elements is found in the cited art ................................................ 6
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`The petition fails to articulate a complete obviousness
`analysis with respect to Throckmorton ....................................... 8
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`B.
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`The Palmer grounds for claims 1-4 are uninstitutable because
`the petition fails to articulate how the cited subject matter of
`Palmer is prior art ................................................................................ 13
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`III. Conclusion ..................................................................................................... 17
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`i
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`Table of Authorities
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`Case No. IPR2014-00267
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` Page(s)
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`Federal Cases
`Application of Klesper, 397 F.2d 882 (C.C.P.A. 1968) ........................................... 14
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`In re Giacomini, 612 F.3d 1380 (Fed. Cir. 2010) .................................................... 14
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`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) ................................................. 9
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`Federal Statutes
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`35 U.S.C. § 103 .......................................................................................................... 9
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`35 U.S.C. § 312 .................................................................................................passim
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`35 U.S.C. § 314 .......................................................................................................... 3
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`Regulations
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`37 C.F.R. § 42.6 ......................................................................................................... 8
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`37 C.F.R. § 42.22 ..............................................................................................passim
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`37 C.F.R. § 42.65 ..................................................................................................... 13
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`37 C.F.R. § 42.104 ............................................................................................passim
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`Other Authorities
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`77 Fed. Reg. 48620 (Aug. 14, 2012) ......................................................................... 4
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`IPR2013-00183, Paper 12 (Jul. 31, 2013) ........................................................... 9, 13
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`IPR2013-00186, Paper 34 (Oct. 23, 2013) .............................................................. 15
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`IPR2013-00510, Paper 9 (Feb. 12, 2014) .................................................................. 8
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`ii
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`Case No. IPR2014-00267
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`I.
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`Preliminary Statement
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`The patented technology at issue relates to Over-the-Top delivery of content
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`(such as movies, television, and other media) over the Internet, which forms a
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`foundation for Patent Owner OpenTV’s highly successful digital television
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`business. That business includes over 200 million digital set-top boxes and
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`televisions shipped to consumers with OpenTV software, and 80 worldwide
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`customers that run OpenTV solutions. Indeed, The Kudelski Group, of which
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`OpenTV is a subsidiary, has been innovating in the content industry for more than
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`60 years, and its founder, Stefan Kudelski, has received numerous awards for his
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`innovations in the industry, including recently being honored in memoriam as an
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`inventor by the Academy of Motion Picture Arts and Sciences at the 86th Annual
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`Academy Awards in March, 2014.
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`OpenTV formally notified Petitioner Netflix, Inc. that it was using
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`OpenTV’s patented technology in its streaming video service, and on December
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`19, 2012, after nearly 12 months of Netflix ignoring OpenTV’s repeated requests
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`for a license, OpenTV reluctantly filed a patent infringement lawsuit against
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`Netflix in Delaware. See OPENTV Exhibit 2002, Complaint in OpenTV, Inc., v.
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`Netflix, Inc. Netflix could no longer ignore OpenTV’s patents, but instead of
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`addressing the matter directly, Netflix continued its delay tactics, waiting until the
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`very last moment to file a flawed and incomplete petition for inter partes review of
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`Case No. IPR2014-00267
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`U.S. Patent No. 7,409,437, hoping to side-step liability from its continuing use of
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`OpenTV’s patented technology.
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`Netflix’s petition fails because, among other things, it fails to support its
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`proposed grounds of unpatentability with reasoning required by the statute and the
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`Board’s rules, with multiple fatal flaws in the proposed obviousness grounds for
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`every claim.
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`A petition for inter partes review “may be considered only if . . . the petition
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`identifies, in writing and with particularity, each claim challenged, the grounds on
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`which the challenge to each claim is based, and the evidence that supports the
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`grounds for the challenge to each claim.” 35 U.S.C. § 312. To ensure that this
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`statutory requirement is met, the Board’s rules specify detailed requirements for a
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`petition, including an identification of how each challenged claim is to be
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`construed, how each construed claim is unpatentable, and where each element of
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`the claim is found in the prior art. 37 C.F.R. § 42.104(b); see also 37 C.F.R.
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`§ 42.22(a)(2) (requiring a full statement of the reasons for the relief requested,
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`including a detailed explanation of the significance of the evidence including
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`material facts, and the governing law, rules, and precedent). Here, the petition’s
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`analysis is incomplete for these and other reasons, and such an incomplete analysis
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`cannot establish a reasonable likelihood of prevailing for any claim.
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`Case No. IPR2014-00267
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`Netflix’s petition requests the cancellation of claims 1-4 of U.S. Patent No.
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`7,409,437 based on alternative obviousness grounds, some relying on U.S. Patent
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`No. 5,818,441 to Throckmorton et al. (“Throckmorton”) and others relying on U.S.
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`Patent No. 5,905,865 to Palmer et al. (“Palmer” or “the Palmer patent”). All of
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`these grounds are uninstitutable, however, because the petition fails to articulate
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`information required by the statute and the Board’s rules. For the Throckmorton
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`grounds, the petition fails to apply the cited art to the claims, as the petition
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`proposes to construe them, fails to specify where each element of the claims is
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`found in the cited art, and fails to provide a complete obviousness analysis. For the
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`Palmer grounds, the petition fails to articulate how the portions of Palmer it relies
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`upon are even prior art.
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`Because Netflix’s petition is deficient in multiple ways, the Board should
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`deny it as uninstitutable for failing to establish a reasonable likelihood of
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`prevailing on any claim.
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`II. The Board Should Deny Netflix’s Petition Because All of the Grounds in
`the Petition are Uninstitutable
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`For a petition to be institutable, it must establish that there is “a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of the claims
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`challenged in the petition.” 35 U.S.C. § 314(a). To do so, the statute requires that
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`“the petition identif[y], in writing and with particularity, each claim challenged, the
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`Case No. IPR2014-00267
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`grounds on which the challenge to each claim is based, and the evidence that
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`supports the grounds for the challenge to each claim.” 35 U.S.C. § 312.
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`To implement the statute, the Board’s rules require that each petition include
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`“[a] full statement of the reasons for the relief requested, including a detailed
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`explanation on the significance of the evidence including material facts, and the
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`governing law, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). Compliance with
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`this rule is essential because “[v]ague arguments and generic citations to the record
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`are fundamentally unfair to an opponent and do not provide sufficient notice to an
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`opponent and creates inefficiencies for the Board.” 77 Fed. Reg. 48620 (Aug. 14,
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`2012).
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`Because Netflix’s petition fails to satisfy these requirements, inter partes
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`review should not be instituted.
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`A. The Throckmorton grounds for claims 1-4 are uninstitutable
`because the petition fails to articulate information necessary to
`show obviousness
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`The petition alleges that claims 1-4 are obvious over Throckmorton, alone or
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`in combination with other references. Pet. 7. These grounds are deficient for
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`several reasons: (i) the grounds fail to apply the cited art to the claims, as the
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`petition proposes to construe them; (ii) the grounds fail to specify where each
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`element of the claims is found in the cited art; and (iii) the grounds fail to provide a
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`complete obviousness analysis.
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`1. The petition fails to apply the cited art to the claims, as it
`proposes to construe them
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`Consistent with 35 U.S.C. § 312, which requires that “the petition identif[y],
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`in writing and with particularity, each claim challenged, the grounds on which the
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`challenge to each claim is based, and the evidence that supports the grounds for the
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`challenge to each claim,” Rule 42.104(b)(4) requires that the petition must set forth
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`“[h]ow the construed claim is unpatentable under the statutory grounds identified.”
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`(Emphasis added). The petition does not articulate how any of the claims, as it
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`proposes to construe them, are obvious over Throckmorton, alone or in
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`combination with other references, so it lacks the particularity required by the
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`statute and the rules.
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`The petition proposes construing the claim limitation “a processor which
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`automatically directs the web browser to establish a communications link with the
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`online information source” to mean “a processor which directs the web browser to
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`establish a communications link with the online information source, where the act
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`of directing occurs without human intervention.” Pet. 7. This limitation is recited
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`by every claim. In particular, it is part of claim elements discussed on pages 18-19
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`(element 1.4), 24 (element 2.4), 27-28 (element 3.4), and 32 (element 4.4) of the
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`petition. Even if the petition’s proposed construction were proper (which OpenTV
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`does not concede1), the petition fails to articulate how Throckmorton, alone or in
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`combination with other references, maps to the claims as construed. Indeed, the
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`petition fails to even make an allegation regarding any relationship between “the
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`act of directing occurs without human intervention” and the disclosures of the cited
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`references. To the contrary, the petition merely cites various lines of Throckmorton
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`with reference to the original claim language, not the proposed construction. Pet.
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`18-19, 24, 27-28, 32. The declaration filed with the petition repeats this error.
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`NTFX-1003 at 23-25. Thus, no explanation is provided of how any of the
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`construed claims are obvious over Throckmorton, alone or in combination with
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`other references, as required by 37 C.F.R. § 42.104(b)(4) and 35 U.S.C. § 312.
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`Therefore, the Throckmorton grounds proposed for claims 1-4 are all
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`uninstitutable.
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`2. The petition fails to articulate where each of the claim elements
`is found in the cited art
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`Consistent with 35 U.S.C. § 312, which requires that “the petition identif[y],
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`in writing and with particularity, each claim challenged, the grounds on which the
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`challenge to each claim is based, and the evidence that supports the grounds for the
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`challenge to each claim,” Rule 42.104(b)(4) requires that the “petition must specify
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`1 OpenTV is not currently proposing any claim constructions but reserves the right
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`to do so if inter partes review is instituted.
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`where each element of the claim is found in the prior art patents or printed
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`publications.” The petition does not articulate where each of the claim elements is
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`found in the cited art, so it lacks the particularity required by the statute and the
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`rules.
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`Every claim recites “a processor which automatically directs the web
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`browser to establish a communications link with the online information source.” In
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`particular, the limitation is part of claim elements discussed on pages 18-19
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`(element 1.4), 24 (element 2.4), 27-28 (element 3.4), and 32 (element 4.4) of the
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`petition. The petition never identifies where the “automatically” limitation is found
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`in the cited art, as required by Rule 42.104(b)(4) to satisfy 35 U.S.C. § 312.
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`Instead, the petition simply states:
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`Throckmorton teaches (i) a microprocessor that is
`connected to the two-way communication channel, (ii)
`the two-way communication channel is used to connect
`to an online service, (iii) the connection to the service is
`automatically performed by the system (which is
`controlled by the microprocessor), and (iv) the
`referenced online information is retrieved for display in
`the web browser, thereby disclosing “a processor which
`automatically directs the web browser to establish a
`communications link with the online information source
`identified by the address . . . .”
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`Pet. 18-19 (citing NTFX-1003 at 23-25) (emphasis added).
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`Instead of explaining where the “automatically” limitation is found in the
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`cited art, the petition cites only the declaration filed with it. Id. But arguments
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`presented in an expert declaration cannot cure the deficiencies of the petition. The
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`Board has previously “decline[d] to consider information presented in a supporting
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`declaration, but not discussed in a petition, because, among other reasons, doing so
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`would encourage the use of declarations to circumvent the page limits that apply to
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`petitions. Along those lines, [the Board’s] rules prohibit arguments made in a
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`supporting document from being incorporated by reference into a petition. See
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`37 C.F.R. § 42.6(a)(3).” IPR2013-00510, Paper 9 (Feb. 12, 2014), at 8-9. Indeed,
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`35 U.S.C. § 312 requires that “the petition identif[y], in writing and with
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`particularity, each claim challenged, the grounds on which the challenge to each
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`claim is based, and the evidence that supports the grounds for the challenge to each
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`claim.” (Emphasis added). Netflix’s petition fails to identify where at least the
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`“automatically” limitation of every claim is found in Throckmorton or any other
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`reference, so the Throckmorton grounds proposed for claims 1-4 are all
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`uninstitutable.
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`3. The petition fails to articulate a complete obviousness analysis
`with respect to Throckmorton
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`Consistent with 35 U.S.C. § 312, which requires that “the petition identif[y],
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`in writing and with particularity, each claim challenged, the grounds on which the
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`challenge to each claim is based, and the evidence that supports the grounds for the
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`challenge to each claim,” Rule 42.22(a)(2) requires that the petition set forth “[a]
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`full statement of the reasons for the relief requested, including a detailed
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`explanation of the significance of the evidence including material facts, and the
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`governing law, rules, and precedent.” Although all of the Throckmorton grounds
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`rely upon obviousness arguments under 35 U.S.C. § 103(a), the petition does not
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`provide a complete obviousness analysis, so it lacks the particularity required by
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`the statute and the rules.
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`To provide a complete obviousness analysis, a petition must include
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`“explanation of how the teachings of the references would be arranged or
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`combined or why a person of ordinary skill would have made the combination”
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`and “some reason why a person of ordinary skill in the art would have thought to
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`combine particular available elements of knowledge, as evidenced by the prior art,
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`to reach the claimed invention.” IPR2013-00183, Paper 12, at 9 (Jul. 31, 2013)
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`(citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). When, as here, a
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`petition’s analysis of obviousness is “incomplete,” it is “insufficient to demonstrate
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`a reasonable likelihood of prevailing on [the] obviousness challenge.” Id. at 10.
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`Netflix’s petition does not explain its proposed combination of disparate
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`portions of Throckmorton, so it lacks a complete analysis. The petition states that
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`its application of Throckmorton relies upon the teachings contained in two
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`embodiments of Throckmorton: “a one-way communication system and a two-way
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`communication system.” Pet. 12. It, however, fails to articulate how these different
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`systems would be combined or even which system teaches which claim element.
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`Instead, the petition merely cites sections of Throckmorton in the abstract, without
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`explaining whether each section addresses the one-way communication system or
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`the two-way communication system. See, e.g., Pet. 15. For example, with respect
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`to element 1.1, Netflix’s petition cites Throckmorton at 7:63-65 and 9:1-12. Pet.
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`15. The first citation refers to a section addressing the one-way communication
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`system of Throckmorton, while the second refers to a section addressing the two-
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`way communication system of Throckmorton. See NTFX-1004 at 8:16-24
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`(introducing the two-way communication system for the first time). The petition,
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`however, fails to articulate how the teachings of the different sections (which
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`address different systems) would be combined. See Pet. 15.
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`Worse, after contrasting the one-way communication system’s handling of
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`web pages with the two-way communication system’s handling of URLs2, Pet. 11,
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`Netflix’s petition cites the one-way communication system of Throckmorton at
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`7:63-65 for the proposition that “Throckmorton teaches that the associated data
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`(e.g., the URL) could be encoded into the television signal,” Pet. 15. Such internal
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`contradiction demonstrates why the petition’s failure to articulate how the different
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`2 Throckmorton only discuses a URL in the context of the two-way communication
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`system, not the one-way communication system. NTFX-1004 at 9:1-7.
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`systems would be combined or even which system teaches which claim element
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`cannot be overlooked.
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`The petition also fails to articulate any reasons why the different systems of
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`Throckmorton would be combined to achieve the subject matter of claims 1-4.
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`Instead, all of the purported “reasons to combine” are either unsupported attorney
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`argument or citations to a declaration that just parrots the language of the petition.
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`a)
`Netflix’s petition asserts, without citing any supporting evidence, that (i)
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`Unsupported attorney arguments to combine
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`“the combination amounts to simply combining elements contained in the same
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`reference in precisely the manner described in the reference,” (ii) “[c]ombining the
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`retrieving-internet-information-using-a-URL as described in the two-way
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`embodiment, with the known method of displaying a web page simultaneously
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`with a video program as described by the one-way embodiment, yields the
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`predictable result of displaying a web page retrieved with a URL simultaneously
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`with a video program,” and (iii) “[t]his implementation of the teachings of
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`Throckmorton would be desirable because it would allow the user to have direct
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`access to relevant online information during the program reception without the
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`need for changing screens.” Pet. 12-13. These unsupported reasons to combine
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`should be given no weight.
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`b)
`The rest of the purported “reasons to combine” are supported by only
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`“Reasons to combine” parroted by declaration
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`citations to a declaration filed with the petition. In particular, Netflix’s petition
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`asserts that (i) “[t]his result is predictable because Throckmorton specifically
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`teaches such a result,” and (ii) “Throckmorton specifically provides a motivation to
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`make this combination, because it was desirable to make an experience for viewers
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`that integrated data with television program reception.” Pet. 13. The declaration
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`merely parrots the petition without further explanation or even citation to
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`underlying evidence:
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`Pet. 13
`This result is predictable because
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`NTFX-1003 at 16
`This result is predictable because
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`Throckmorton specifically teaches such
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`Throckmorton specifically teaches such
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`a result. (NTFX-1003 at 16.)
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`a result.
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`Throckmorton specifically provides a
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`Throckmorton specifically provides a
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`motivation to make this combination,
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`motivation to make this combination,
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`because it was desirable to make an
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`because it was desirable to make an
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`experience for viewers that integrated
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`experience for viewers that integrated
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`data with television program reception.
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`data with television program reception.
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`(NTFX-1003 at 16.)
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`Rule 42.65 explains that expert testimony that does not disclose the underlying
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`facts or data on which the opinion is based is entitled to little to no weight. Here,
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`where the declaration simply parrots attorney argument, it should be entitled to no
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`weight.
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`Nowhere does Throckmorton specifically teach any result of combining its
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`different one-way and two-way communication systems, as alleged by the petition
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`and declaration. Nor does Throckmorton specifically provide a reason to make the
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`combination. Indeed, both systems of Throckmorton appear to individually fulfill
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`the purposes espoused by Throckmorton, so Throckmorton provides no reason to
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`combine them. At best, Throckmorton demonstrates that the systems are in the
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`same field of endeavor, which the Board has found to be insufficient to provide a
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`reason to combine. See, IPR2013-00183, Paper 12, at 9-10.
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`Because the obviousness presentation is incomplete, it is “insufficient to
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`demonstrate a reasonable likelihood of prevailing on [the] obviousness challenge.”
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`Id. at 10. Accordingly, the Throckmorton grounds proposed for claims 1-4 are all
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`uninstitutable for this additional reason.
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`B.
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`The Palmer grounds for claims 1-4 are uninstitutable because the
`petition fails to articulate how the cited subject matter of Palmer
`is prior art
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`The petition proposes two grounds based on U.S. Patent No. 5,905,865 to
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`Palmer et al. Pet. 7-8. The petition does not argue that the Palmer patent is prior art
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`to the ’437 patent on its own. Instead, the petition argues that “[t]he Palmer patent
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`is prior art to the extent that its subject matter is contained in [an] earlier filed
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`provisional patent application.” Pet. 33. However, the petition does not explain
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`how the cited subject matter of the Palmer patent is contained in the provisional
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`patent application even though that is the only way it can be prior art.3 See In re
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`Giacomini, 612 F.3d 1380, 1385 (Fed. Cir. 2010) (“Section 102(e) codified the
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`‘history of treating the disclosure of a U.S. patent as prior art as of the filing date
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`of the earliest U.S. application to which the patent is entitled, provided the
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`disclosure was contained in substance in the said earliest application.’”) (quoting
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`Application of Klesper, 397 F.2d 882, 885 (C.C.P.A. 1968)) (Underlining added).
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`Consistent with 35 U.S.C. § 312, which requires that “the petition identif[y],
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`in writing and with particularity, each claim challenged, the grounds on which the
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`challenge to each claim is based, and the evidence that supports the grounds for the
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`challenge to each claim,” Rule 42.22(a)(2) requires that the petition set forth “a
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`detailed explanation of the significance of the evidence.” The petition does not
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`articulate how the cited subject matter of the Palmer patent is prior art, so it lacks
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`the particularity required by the statute and the rules.
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`3 No other application leading to the Palmer patent was filed before March 8, 1996,
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`the effective filing date of the ’437 patent. NTFX-1007 at 1; NTFX-1001 at 1.
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`Case No. IPR2014-00267
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`Instead of explaining how the cited subject matter of the Palmer patent
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`relates to the earlier filed provisional patent application (“the Palmer provisional”),
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`the petition simply states, in a conclusory manner, that “[f]or each element of the
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`Palmer patent identified below, there is a corresponding teaching in the provisional
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`applications.” Pet. 33-34. While the petition does list a string of citations to
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`multiple pages of the Palmer provisional for some claim elements, see, e.g., Pet. 39
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`(“NTFX-1007 [the Palmer patent], 8:13-19; see NTFX-1008 [the Palmer
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`provisional], pp. 1, 3.”), these string citations are insufficient to establish grounds
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`with the particularity required by 35 U.S.C. § 312. Indeed, the Board previously
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`denied a request for rehearing premised on string citations in a petition because the
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`petition did “not point out with particularity [a portion of a prior art reference] or
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`how it satisfies certain claim limitations.” IPR2013-00186, Paper 34 (Oct. 23,
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`2013), at 3. Citing 37 C.F.R. § 42.104(b)(5), the Board noted that the petitioner
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`must identify in its petition “specific portions of the evidence that support the
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`challenge” and that “[t]he Board may exclude or give no weight to the evidence
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`where a party has failed to state its relevance or to identify specific portions of the
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`evidence that support the challenge.” Id. The Board should do so here, and rule that
`
`the petition has not established that the Palmer patent is prior art as of the filing
`
`date of the Palmer provisional.
`
`15
`
`
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`Case No. IPR2014-00267
`
`Even if the Board were inclined to consider the string citations and
`
`undertake its own analysis of the relationship between the Palmer patent and the
`
`Palmer provisional, the citations would be found lacking. For example, one string
`
`citation alleges that the Palmer patent’s recitation of “extracted by receiver 30 and
`
`provided to the computer” is contained somewhere in pages 1 and 3 of the Palmer
`
`provisional. See, e.g., Pet. 39:
`
`Palmer discloses “an address extractor which extracts the
`address from the programming signal” because it teaches
`that the URL embedded in the television broadcast can
`“be extracted by receiver 30 and provided to the
`computer.” NTFX-1007 [the Palmer patent], 8:13-19; see
`NTFX-1008 [the Palmer provisional], pp. 1, 3.
`
`But neither page 1 nor page 3 of the Palmer provisional even contains the word
`
`“extracted.” Netflix’s petition contains more than a dozen similar string citations
`
`spread across its arguments with respect to every claim. Pet. 35-56. Accordingly,
`
`the petition fails to prove that the Palmer patent is prior art as of the filing date of
`
`the Palmer provisional. Lacking a complete explanation of the significance of the
`
`Palmer patent (e.g., how any portion of it constitutes prior art) with respect to even
`
`one claim, as required by 37 C.F.R. § 42.22(a)(2) to satisfy 35 U.S.C. § 312, the
`
`petition is left wanting and the Palmer grounds proposed for claims 1-4 are all
`
`uninstitutable.
`
`16
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`
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`Case No. IPR2014-00267
`
`III. Conclusion
`For the reasons set forth above, the petition is deficient and institution
`
`should be denied.
`
`The undersigned attorneys welcome a telephone call should the Office have
`
`any requests or questions. If there are any fees due in connection with the filing of
`
`this paper, please charge the required fees to our deposit account no. 06-0916.
`
`
`
`Dated: March 27, 2014
`
`
`
`
`
`Respectfully submitted,
`
`
`By:
`Erika H. Arner
`Registration No. 57,540
`
`Joshua L. Goldberg
`Registration No. 59, 369
`
`Counsel for OpenTV, Inc.
`
`
`
`
`
`17
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`Case No. IPR2014-00267
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent
`
`Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent
`
`No. 7,409,437 and Exhibit 2002 were served on March 27, 2014 via FedEx and
`
`email directed to counsel of record for the Petitioner at the following:
`
`Andrew S. Ehmke
`andy.ehmke.ipr@haynesboone.com
`Scott Jarratt
`scott.jarratt.ipr@haynesboone.com
`HAYNES AND BOONE, LLP
`2323 Victory Ave., Suite 700
`Dallas, Texas 75219
`
`/s/ Ashley F. Cheung
`Ashley F. Cheung
`Case Manager
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`
`
`
`
`
`
`
`
`
`18
`
`
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