Paper 13
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`Entered: June 24, 2014
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`
`
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NETFLIX, INC.
`Petitioner
`
`v.
`
`OPENTV, INC
`Patent Owner
`_______________
`
`Case IPR2014-00267
`Patent 7,409,437 B2
`_______________
`
`
`
`
`Before SALLY C. MEDLEY, JAMES T. MOORE, and JUSTIN BUSCH,
`Administrative Patent Judges.
`
`
`MOORE, Administrative Patent Judge
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`Entered: June 24, 2014
`
`
`
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NETFLIX, INC.
`Petitioner
`
`v.
`
`OPENTV, INC
`Patent Owner
`_______________
`
`Case IPR2014-00267
`Patent 7,409,437 B2
`_______________
`
`
`
`
`Before SALLY C. MEDLEY, JAMES T. MOORE, and JUSTIN BUSCH,
`Administrative Patent Judges.
`
`
`MOORE, Administrative Patent Judge
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2014-00267
`Patent 7,409,437 B2
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`I. INTRODUCTION
`
`Petitioner, Netflix, Inc., filed a Petition requesting an inter partes
`
`review of claims 1- 4 of U.S. Patent No. 7,409,437 (Ex. 1001, “the ’437
`
`Patent”). Paper 1 (“Pet.”). Patent Owner, OpenTV, Inc., filed a Patent
`
`Owner Preliminary Response. Paper 11 (“Prelim. Resp.”). We have
`
`jurisdiction under 35 U.S.C. § 314.
`
`The standard for instituting an inter partes review is set forth in 35
`
`U.S.C.
`
`§ 314(a):
`
`THRESHOLD – The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311
`and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Pursuant to § 314(a), the Board institutes an inter partes review of
`
`claims
`
`1-4 of the ’437 Patent.
`
`
`
`A. Related Proceedings
`
`The ’437 Patent is involved in litigation in the U.S. District Court for
`
`the District of Delaware. See Pet. 1 (citing OpenTV Inc. v. Netflix, Inc., 1-
`
`12-cv-01733 (D. Del.)). Petitioner describes the Delaware proceeding as an
`
`infringement action asserted against Petitioner’s real party-in-interest,
`
`Netflix, Inc. Pet 1. In addition to this proceeding, related inter partes
`
`review petitions Netflix, Inc. v. OpenTV, Inc., Case IPR2014-00252 (PTAB
`
`Dec. 16, 2013) of U.S. Patent 8,107,786 B2; Netflix, Inc. v. OpenTV, Inc.,
`
`
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`2
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`IPR2014-00267
`Patent 7,409,437 B2
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`Case IPR2014-00269 (PTAB Dec. 18, 2013) of U.S. Patent 6,233,736 B1;
`
`and Netflix, Inc. v. OpenTV, Inc., Case IPR2014-00274 (PTAB Dec. 19,
`
`2013) of U.S. Patent 6,018,768 are before the Patent Trial and Appeal Board
`
`(the “Board”) involving the same parties and related patents.
`
`
`
`B. The ’437 Patent
`
`The ’437 Patent describes a system for integrating video programming
`
`with the information resources of the Internet. A computer-based system
`
`receives a video program with embedded uniform resource locators
`
`(“URLs”), which are the electronic addresses of locations on the Internet.
`
`The URLs are interpreted by the system and direct the system to the Web
`
`site locations to retrieve related Web pages, which then may be
`
`synchronized to the video content for display. See Ex. 1001, Abstract.
`
`
`
`C. Claims
`
`Claims 1-4 are independent claims. Claim 4 is illustrative and is
`
`reproduced below:
`
`4. A system for receiving a programming signal containing an
`embedded address, the address identifying a source of at least one
`online information segment related to the programming signal, the
`system comprising:
`
`a receiver for receiving a programming signal and the
`embedded address, the address identifying the source of the online
`information segment which relates to the programming signal;
`
`an address extractor which extracts the address from the
`programming signal;
`
`a web browser;
`a processor which automatically directs the web browser to
`establish a communications link with the online information source
`identified by the address, whereby the processor retrieves the online
`
`
`
`3
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`IPR2014-00267
`Patent 7,409,437 B2
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`information segment from the online information source via the
`communications link; and
`a display monitor for presenting the programming signal,
`comprising a video signal or an audio signal concurrently with the
`online information segment;
`wherein the programming signal comprises the video signal and
`the video signal and the online information segment are presented on
`the display monitor.
`
`Claims 1-3 recite roughly the same limitations as claim 4, differing
`
`
`
`only in the presentation of the video signal and the online information
`
`segment.
`
`Claim 1 recites that the video signal and the online information
`
`segment are presented on the display monitor in a picture-in-picture format.
`
`Claim 2 recites that the video signal is presented on one half, and the
`
`online information segment is presented on the opposite half, of a split-
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`screen display.
`
`Claim 3 recites that the video signal is presented in a first window and
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`the online information segment is presented in a second window in a
`
`multiple window display format.
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`
`
`D. References Relied Upon
`
`Petitioner relies upon the following references:
`
`Romesburg
`
`US 5,113,259
`
`May 12, 1992
`
`Ex. 1005
`
`Batchelor
`
`
`
`US 5,724,103
`
`March 3, 1998
`
`Ex. 1006
`
`Throckmorton US 5,818,441 October 6, 1998 Ex. 1004
`
`Palmer
`
`
`
`US 5,905,865
`
`May 18, 1999
`
`Ex. 1007
`
`
`
`4
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`E. The Asserted Grounds
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`Petitioner asserts the following grounds of unpatentability under 35
`
`U.S.C. § 103:
`
`Reference[s]
`
`Throckmorton and Romesburg
`
`Throckmorton and Batchelor
`
`Throckmorton
`
`Palmer and Romesburg
`
`Basis Challenged Claims
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`1
`
`2 and 3
`
`4
`
`1
`
`Palmer and Batchelor
`
`§ 103
`
`2, 3, and 4
`
`
`
`
`
`II. ANALYSIS
`
`
`
`A. Claim Construction
`
`In an inter partes review, “[a] claim in an unexpired patent shall be
`
`given its broadest reasonable construction in light of the specification of the
`
`patent in which it appears.” 37 C.F.R. § 42.100(b); see also Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012) (Claim
`
`Construction).
`
`Petitioner proposes a specific definition for one term in various
`
`claims. Pet. 9. Patent Owner declines to do so at this time. Prelim. Resp. 6,
`
`n.1.
`
`Referring to all claims, Petitioner proposes to construe the term “a
`
`processor which automatically directs the web browser to establish a
`
`communications link with the online information source” to mean that the
`
`act of directing the web browser occurs “without intervention by a human
`
`
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`5
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`operator.” Pet. 9 (citing Ex. 1009, Webster’s New World Dictionary of
`
`Computer Terms, 4th Ed. 1992, p. 20). This construction of the specific term
`
`is not unreasonably broad. The Specification of the ’437 Patent includes
`
`language relieving consumers of the burden of finding information. E.g.,
`
`Ex. 1001, 2:45-49.
`
`However, Petitioner also asserts that the claim places no limits on
`
`human intervention before or after the processor directing the web browser.
`
`Pet. 9. We disagree.
`
`Claim 4 recites as a required element:
`
`a processor which automatically directs the web browser
`to establish a communications link with the online information
`source identified by the address, whereby the processor
`retrieves the online information segment from the online
`information source via the communications link;
`
`
`We read claim 4 as requiring the processor to direct the web browser
`
`to communicate with the address extracted and retrieve the online
`
`information, absent human intervention. The act of a user clicking a button
`
`to direct the processor is not “automatic” direction of the web browser.
`
`Reading “automatic” to cover only the processor in isolation would be
`
`contrary to the Specification’s consistent description of synchronized display
`
`of web pages to the content of the programming. For example, the Abstract
`
`notes that:
`
`The actual retrieved web pages are time stamped to also be
`displayed, on another portion of the display screen, when
`predetermined related video content is displayed in the video
`window. As an alternative, the computer-based system receives
`the URLs directly through an internet connection, at times
`specified by TV broadcasters in advance. The system interprets
`the URLs and retrieves the appropriate web pages. The web
`
`
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`6
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`pages are synchronized to the video content for display in
`conjunction with a television program being broadcast to the
`user at that time.
`
`Ex. 1001, Abstract, lines 11-20; see also id. at 2:47-49, 3:46-47, 4:17-20.
`
`This construction stays true to the overall claim language and aligns with the
`
`description contained within the Specification. Allowing user intervention
`
`in place of the automatic presentation of synchronized information would
`
`remove the limitation’s meaning. Thus, the broadest reasonable construction
`
`of “a processor which automatically directs the web browser to establish a
`
`communications link with the online information source” means that the
`
`processor directs the web browser “without intervention by a human
`
`operator” from receipt of the URL to display of the Internet page.
`
`
`
`B. Asserted Grounds of Unpatentability
`
`
`
`1. Claim 1 as unpatentable under 35 U.S.C § 103(a) over
`Throckmorton and Romesburg, claims 2 and 3 as unpatentable under 35
`U.S.C § 103(a) over Throckmorton and Batchelor, and claim 4 as
`unpatentable under 35 U.S.C § 103(a) over Throckmorton
`
`According to Patent Owner, for “the Throckmorton grounds, the
`
`petition fails to apply the cited art to the claims, as the petition proposes to
`
`construe them, fails to specify where each element of the claims is found in
`
`the cited art, and fails to provide a complete obviousness analysis.” Prelim.
`
`Resp. 3.
`
`More specifically, to the first point, citing 37 C.F.R. § 42.104(b)(4),
`
`Patent Owner urges that the Petition and Declaration of Kramer (Ex. 1003)
`
`
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`merely cite various lines of Throckmorton with reference to the original
`
`claim language, not the proposed construction. Id. at 6.
`
`To the second point, Patent Owner urges that the Petition does not
`
`articulate where each of the claim elements is found in the cited art, and as
`
`such, lacks the particularity required by the statute and the rules. Id. at 7.
`
`Patent Owner states that the Petition fails to identify where the
`
`“automatically” limitation of every claim is found in Throckmorton or any
`
`other reference, and as a consequence, the Throckmorton grounds proposed
`
`for claims 1-4 are all “uninstitutable.” Id. at 8.
`
`To the third point, Patent Owner urges that the Petition fails to
`
`provide a complete obviousness analysis with respect to Throckmorton. Id.
`
`Patent Owner contends that the Petition does not explain its proposed
`
`combination of portions of Throckmorton. Specifically, Patent Owner
`
`criticizes the Petition for not articulating how the two embodiments of
`
`Throckmorton, a one-way communication system and a two-way
`
`communication system would be combined, or which system teaches which
`
`claim element. Id. at 9-10.
`
`Finally, Patent Owner takes issue with the lack of reasons to combine,
`
`asserting that the stated reasons are unsupported attorney argument or the
`
`“parrot[ing]” of the language of the Petition by the Declarant. Id. at 11.
`
`With these concerns in mind, we turn to the Petition.
`
`Petitioner contends that Throckmorton teaches a system to enable
`
`broadcasting and entertainment companies to broadcast streams of data to
`
`consumers. Pet. 10 (citing Ex. 1003 at 14). In operation, the two
`
`Throckmorton streams are a “primary data stream” and an “associated data
`
`stream.” The “primary data stream” is said to contain programming content.
`
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`Pet. 11 (citing Ex. 1004, 3:45-50; Ex. 1003 at 14). The “associated data
`
`stream” has two embodiments. In the first embodiment, Throckmorton
`
`teaches a one-way communication system, in which the “associated data
`
`stream” contains World Wide Web pages. Id. (citing Ex. 1004, 3:36-37,
`
`3:55-62, 6:61-63). In the second embodiment, Throckmorton teaches a two-
`
`way communication system, in which the “associated data stream” contains
`
`uniform resource locators, or “URLs.” Id. (citing Ex. 1004, 9:1-5; Ex. 1003
`
`at 14).
`
`
`
`In use, Petitioner urges that the delivered data can be “interactively
`
`displayed and manipulated by consumers.” Pet. 12 (citing Ex. 1004, 1:59-
`
`67). As a result, the “consumer receives and has access to the relevant data
`
`during the process of program reception. Therefore the data becomes an
`
`integral part of the experience desired by the program producers.” Id. (citing
`
`Ex. 1004, 1:59-67).
`
`
`
`Regarding the receiver of claim 4, Petitioner urges that Throckmorton
`
`describes a personal computer for “receiving the primary data stream” and
`
`for “receiving the associated data.” The primary data stream is said to be
`
`programming content (id. at 16 (citing Ex. 1004, 3:45-50)) and the
`
`“associated data” to be a URL (id. (citing Ex. 1004, 9: 1-12)). Finally,
`
`Petitioner urges that Throckmorton teaches that the associated data can be
`
`encoded into the television signal. Id. (citing Ex. 1004, 7:63-65).
`
`
`
`Regarding the address extractor of claim 4, Petitioner states that
`
`Throckmorton discloses a data protocol manager that extracts the different
`
`forms of associated data, such as a URL, from the incoming digital data
`
`stream. Id. at 17 (citing Ex. 1004, 6:56-60, 9:1-12).
`
`
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`9
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`Regarding the web browser, Petitioner states that Throckmorton
`
`discloses a web browser, because it specifically teaches that a web browser
`
`may be used to display data pages from the World Wide Web. Exemplary
`
`browsers are said to include Netscape Communications Corp., America
`
`Online, Spyglass, and others. Id. at 17 (citing Ex. 1004, 7:42-45).
`
`
`
`Regarding the processor which automatically directs the web browser,
`
`Petitioner states that Throckmorton describes a computer having a
`
`microprocessor connected to a two-way communications channel to provide
`
`interactive access to remote computers. Id. at 18, (citing Ex. 1004, 6:5-15,
`
`8:19-24).
`
`Importantly for this determination, Petitioner asserts that the two-way
`
`communication channel, connected to the microprocessor, also allows a
`
`consumer to access online services. According to Petitioner, the system
`
`connects to and retrieves the referenced information on the browser from the
`
`appropriate source when the user selects the URL. Id. (citing Ex. 1004,
`
`7:42-45, 9:1-14).
`
`Regarding the display monitor concurrently displaying the
`
`information, Petitioner asserts that Throckmorton describes a monitor or
`
`standard television that presents programming content. Id. at 19 (citing Ex.
`
`1004, 6: 17-20). Petitioner further asserts that Throckmorton describes the
`
`online data is associated by its relevancy to its subject matter and can be
`
`displayed interactively and manipulated by consumers on a real-time basis
`
`during the process of program reception. Id. (citing Ex. 1004, 1:59-67).
`
`Finally, regarding the final wherein clause limitation concerning the
`
`signals being displayed on the monitor, Petitioner asserts Throckmorton
`
`
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`10
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`describes displaying a television signal and online information on a display
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`monitor. Pet. 20 (citing Ex. 1004, 1:59-67).
`
`In response, Patent Owner focuses on the element of each independent
`
`claim of the ’437 Patent that requires a processor which automatically
`
`directs the web browser to establish a communications link with the online
`
`information source (the “automatically directing limitation”). Prelim. Resp.
`
`7. Patent Owner observes that the Petition does not identify where the
`
`“automatically” limitation is found in the cited art.
`
`As discussed above in the claim construction section, Petitioner
`
`construes the automatically directing limitation to mean that the directing
`
`“occurs without human intervention.” Ex. 1003 ¶ 28 (emphasis added). As
`
`explained above in the claim construction section, the broadest reasonable
`
`construction means that the processor directs the web browser “without
`
`intervention by a human operator.” That is, the processor begins the
`
`directing process without human intervention.
`
`But the sections of Throckmorton relied upon for support of the
`
`automatically directing limitation all require human intervention to start the
`
`processing and directing. See Ex. 1003, 24 (“by clicking on a reference, the
`
`system actually connects to;” “receives commands from human interface
`
`88”).
`
`The Kramer Declaration states:
`
`Accordingly, in Throckmorton’s system after a user clicks a
`URL/pointer reference, the processor 38 automatically executes
`software, such as the remote data manager 92, to connect to and
`retrieve information from remote computers hosting WWW
`pages and online services via the two-way communication
`channel.
`
`Ex. 1003, 25.
`
`
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`11
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`Based on the evidence of record, we conclude that Petitioner has not
`
`shown sufficiently that Throckmorton discloses the automatically directing
`
`limitation in claims 1- 4. Nor has Petitioner shown Romesburg or Batchelor
`
`discloses this limitation. Pursuant to the foregoing discussion, Petitioner
`
`fails to establish a reasonable likelihood of prevailing on the grounds of
`
`unpatentability of claims 1-4 as rendered obvious over Throckmorton, and
`
`Throckmorton and Romesburg, or Throckmorton and Batchelor.
`
`
`
`2. Claim 1 as unpatentable under 35 U.S.C. § 103(a) over Palmer
`and Romesburg and claims 2, 3, and 4 as unpatentable under 35 U.S.C. §
`103(a) over Palmer and Batchelor (Challenges 4 and 5)
`
`Petitioner relies on Palmer 5,905,865 (“Palmer”) as a reference in
`
`
`
`these two proposed grounds. Palmer issued May 18, 1999 from application
`
`08/739,796, filed October 30, 1996. Ex. 1007, p. 1. The application claimed
`
`benefit of provisional application 60/008,111 filed October 30, 1995. Id. at
`
`1:6-7. The provisional application was incorporated into Palmer by
`
`reference. Id. at 8:33-34.
`
`
`
`The ’437 Patent was filed as application 10/299,335 on November 18,
`
`2002. It has a lengthy family tree, but claims priority through a chain of
`
`applications to application 08/613,144 filed March 8, 1996. See Ex. 1001,
`
`col. 1.
`
`
`
`For purposes of this decision, we assume the ’437 Patent is entitled to
`
`a filing date of March 8, 1996.
`
`Patent Owner asserts that the Petition fails to show how the cited
`
`subject matter of Palmer is prior art. Prelim. Resp. 13. That is, Patent
`
`Owner criticizes the Petition’s citation to Palmer because it does not explain
`
`how the cited subject matter of Palmer is contained in the provisional
`
`
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`application. Id. at 14. By way of example, Patent Owner argues that
`
`Petitioner’s reliance on pages 1 and 3 of the Palmer provisional application
`
`is deficient because the cited portions do not disclose an “extractor,” as
`
`required by claims 1-4. Id. at 16.
`
`We turn now to the grounds. Claims 2-4 are asserted to be
`
`unpatentable over Palmer and Batchelor, and claim 1 is asserted to be
`
`unpatentable over Palmer and Romesburg.
`
`Petitioner asserts that Palmer describes a method and apparatus for
`
`connecting a computer to electronic addresses in sync with an audio/video
`
`broadcast. Pet. 37 (citing Ex. 1007, Abstract, Ex. 1008, 1, 3, 6, 9, 10, and
`
`Figure 1).
`
`In order for Palmer (Ex. 1007) to be applicable as prior art, it must be
`
`accorded the benefit of the filing date of its provisional application (Ex.
`
`1008). A patent is entitled to the benefit of an earlier filing date only if the
`
`subject matter relied on is disclosed in the earlier application.
`
`We turn to the provisional application (Ex. 1008), as relied on by
`
`Petitioner for the effective filing date of the Palmer patent. The Petition
`
`refers somewhat generically to five separate pages of the provisional
`
`application—1, 3, 6, and 9-10, along with Figure 1. Pet. 37. The important
`
`analysis is that pertaining to the provisional application. Pet. 34-35.
`
` Figure 1 of the Palmer provisional application, as annotated by
`
`Petitioner, is reproduced below.
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`Figure 1 of the provisional application, as annotated by petitioner, is a
`perspective view of a system
`displaying both broadcast and Internet information.
`
`
`
`Figure 1 of the Palmer provisional application shows a system which
`
`receives and displays broadcast information from the Internet.
`
`Palmer’s provisional application describes the system as follows:
`
`The present invention ("the System") allows broadcasters
`and intercasters, including: AM & FM radio stations, television
`stations, cable systems, all other audio and video broadcasters,
`video playback system such as video cassettes, laser disc
`players, audio playback systems such as Compact Discs and
`mini discs and all other forms of digital or analog transmission
`to transmit alpha-numeric URL (Uniform Resource Locators)
`and Internet addresses as well as other computer data to a
`personal computer such as an IBM-PC or compatible, a Mac,
`Powermac or other computers equipped with the appropriate
`hardware and software.
`Computers receiving transmitted addresses and other data
`can be automatically directed to advertiser or broadcaster
`
`
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`specific sites on the World Wide Web, FTP's or other Internet
`sites in relative synchronicity to the broadcast signal.
`The System includes both automatic & history stack
`browse modes and can bring all broadcasters & intercasters into
`the communication age by broadcasting Internet addresses to
`participating computers using FM subcarrier signals, television
`VBI codes or direct connections.
`For any computer receiving transmitted addresses and
`other data, the System software can automatically or manually
`send a request that more information to be sent to the subscriber
`from the advertiser, promoter, broadcaster, or anyone
`generating the transmitted information sent to the subscriber.
`
`Ex. 1008, 1.
`
`According to Petitioner, this description encompasses a system that
`
`
`
`receives and displays broadcast information and information obtained from
`
`the Internet. This is said to include the transmission of a URL in the vertical
`
`blanking interval of a television broadcast. Pet. 34-35.1
`
`
`
`
`
`We are directed next to page 6 of the provisional application, which
`
`recites:
`
`SOFTWARE RECEIVERS
`In one embodiment, the software loads the address from the
`receiver and uses the address to connect with a service on the WWW
`(World Wide Web). The primary software resident in the receiver is a
`WWW compatible browser, such as Mosaic™ or NetscapeTM. The
`software may also be a TSR (Temporary Stay Resident) program
`which will work in conjunction with Web Browser software packages.
`The software may have two modes: Automatic & History Stack.
`These modes will be user setable and self-running.
`
`HOW THE SOFTWARE WORKS
`In one embodiment, the System software runs in the
`
`1 Although Petitioner cites to page 19 of Exhibit 1008, we observe that there
`is a description of VBI encoding on page 3, and disregard the typographical
`error.
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`IPR2014-00267
`Patent 7,409,437 B2
`
`
`background on host computers. It is constantly looking at, for
`example, a user-selectable COM port for compatible alpha-numeric
`data. When the software sees an Internet address, it stores the address
`in memory and writes it to a file on the computer's hard drive. If the
`user is running the software in Auto-mode, the System instructs the
`Web Browser to go the specific URL. In history-stack mode, the
`URL is stored along with a brief description of the website.
`
`The software also allows the user to interrupt the automatic
`address system at any time by clicking anywhere in a given Web
`page. This action automatically switches the software to history stack
`mode and allows the user to explore a preferred website. The user
`may switch back to Auto-mode at any time by clicking the appropriate
`icon.
`
`
`Ex. 1008, 6.
`
`Petitioner urges that this passage describes extracting the URL,
`
`providing it to the computer, and automatically connecting to an Internet
`
`site. Pet. 35.
`
`
`
`One particularly pertinent section of the provisional application cited
`
`is the example described on Page 3. The pertinent portion of page 3 is
`
`reproduced as follows:
`
`
`
`
`
`AN EXAMPLE OF HOW THE SYSTEM WORKS
`
`
`In one embodiment, the broadcaster transmits an alpha-numeric
`message containing anAutoURL code over a common
`broadcast paging network or via FM subcarrier. RF or satellite
`slightly in advance of the broadcast programming. The
`computer program to transmit the Internet address is part of the
`System. If the System uses VBI video encoding, the signal can
`be synchronously broadcast with the television signals. Other
`means of broadcasting are also possible.
`A plurality of receivers in accordance with the invention
`are attached to computers in the broadcast area: local, regional,
`nationwide or worldwide.
`
`16
`
`
`
`IPR2014-00267
`Patent 7,409,437 B2
`
`
`When a receiver receives an AutoURL transmission,
`the alpha-numeric data (usually a Web URL address) is
`stored in computer memory and an Internet browser will
`automatically contact the broadcasters desired Internet site.
`This allows a broadcaster to control the Internet destination
`of the receiver’s computer. The receiving computer should
`have access to the Internet, either through a modem and POTS
`telephone line or by other means. The receiving computer user
`can either use their own Internet account or sign-on to a service
`associated with the invention.
`
`
`Ex. 1008, 3 (emphasis added).
`
`
`
`Petitioner equates this description to extraction of the URL, provision
`
`of the URL to the computer, and allowing the web browser to automatically
`
`contact the Internet site. Pet. 35.
`
`Finally, Petitioner states that the provisional application describes the
`
`display of this Internet information to correspond with television
`
`programming. Id.
`
`As stated in Ex. 1008, page 9:
`
`Preferably, the transmitter also transmits audio and/or video
`information and the on-line service provides information related to the
`audio and/or video information to the computer while the computer is
`accessing the on-line service. The information provided by the on-line
`service may also change in synchronicity with the audio and/or video
`information.
`
`Regarding the “extractor” limitation, we note that claims 1-4 use
`
`functional language to describe the extractor. The specification of the ’437
`
`patent describes the function in a plurality of embodiments as removing the
`
`URL from incoming transmissions or other signals. “The client software
`
`106 retrieves URLs from the video program (embodiment of FIG. 1) or
`
`directly from the Internet connection (embodiments of FIGS. 2 and 4),
`
`
`
`17
`
`
`
`IPR2014-00267
`Patent 7,409,437 B2
`
`interprets these URLs and directs the JAVA enabled browser 98 to retrieve
`
`the particular relevant Web pages 102, and synchronizes the retrieved Web
`
`pages to the video content for display on the user's computer 16, as shown in
`
`FIGS. 3 and 4 and explained in more detail below.” Ex. 1001, 7:48-55.
`
`A fair reading of Palmer’s provisional application indicates that it uses
`
`software to extract the URL from the incoming signal, by specific example
`
`of a transmitted URL in a vertical blanking interval. This extracted
`
`information is then used to direct the browser.
`
`Accordingly, on this record, given the cited portions of the Palmer
`
`provisional application, we are persuaded that the Palmer priority document
`
`Ex. 1008 describes all elements relied on by Petitioner in the Palmer patent.
`
`Therefore, for purposes of this decision, we are persuaded that the Palmer
`
`patent is entitled to the filing date of the Palmer provisional application.
`
`In addition, for purposes of this decision, we are persuaded that
`
`Batchelor describes multiple window formats for the display of data. Pet.
`
`38-39; Ex. 1006 Fig 2. Similarly, we are persuaded that Romesburg
`
`describes picture-in picture displays. Pet. 35-36; Ex. 1005 1:38-44.
`
`Moreover, it appears to us that each reference would logically commend
`
`itself to the person of ordinary skill in the art.
`
`On this record, when Palmer is considered with the display options of
`
`Batchelor, together with the reasons Petitioner provides for combining the
`
`teachings of these references, we are persuaded that Petitioner has
`
`established a reasonable likelihood of prevailing with respect to claims 2-4.
`
`Similarly, when Palmer is considered with the display options of
`
`Romesburg, together with the reasons Petitioner provides for combining the
`
`
`
`18
`
`
`
`IPR2014-00267
`Patent 7,409,437 B2
`
`teachings of these references, we are persuaded that Petitioner has
`
`established a reasonable likelihood of prevailing with respect to claim 1.
`
`We therefore are persuaded that petitioner has established a
`
`reasonable likelihood of prevailing on claims 1- 4.
`
`III. CONCLUSION
`
`Petitioner does not demonstrate a reasonable likelihood of prevailing
`
`on the following grounds of unpatentability of the ’437 Patent:
`
`Claim 1 as unpatentable under 35 U.S.C. § 103(a) over Throckmorton
`
`in view of Romesburg.
`
`Claims 2 and 3 as unpatentable under 35 U.S.C. § 103(a) over
`
`Throckmorton in view of Batchelor.
`
`Claim 4 as unpatentable under 35 U.S.C. § 103(a) over Throckmorton.
`
`Petitioner does demonstrate a reasonable likelihood of prevailing on
`
`the following grounds of unpatentability of the ’437 Patent:
`
`Claim 1 as unpatentable under 35 U.S.C. § 103(a) over Palmer and
`
`Romesburg.
`
`Claims 2-4 as unpatentable under 35 U.S.C. § 103(a) over Palmer and
`
`Batchelor.
`
`The Board has not made a final determination on the patentability of
`
`any challenged claims.
`
`In consideration of the foregoing, it is hereby:
`
`IV. ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 314, the petition for an inter
`
`partes review is hereby granted as to the following grounds:
`
`1. Claim 1 as unpatentable under 35 U.S.C. § 103(a) over Palmer and
`
`Romesburg.
`
`
`
`19
`
`
`
`IPR2014-00267
`Patent 7,409,437 B2
`
`
`2. Claims 2- 4 as unpatentable under 35 U.S.C. § 103(a) over Palmer
`
`and Batchelor.
`
`FURTHER ORDERED that the trial is limited to the grounds listed
`
`above—no other ground is authorized.
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and 37
`
`C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`
`commencing on the entry date of this decision.
`
`20
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-00267
`Patent 7,409,437 B2
`
`
`PETITIONER:
`
`Andrew S. Ehmke
`andy.ehmke.ipr@haynesboone.com
`
`Scott Jarratt
`scott.jarratt.ipr@haynesboone.com
`
`PATENT OWNER:
`
`Erika H. Arner
`erika.arner@finnegan.com
`
`Joshua L. Goldberg
`joshua.goldberg@finnegan.com
`
`Russell Levine
`russell.levine@kirkland.com
`
`Eugene Goryunov
`eugene.goryunov@kirkland.com
`
`
`
`21
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