`Petition for Inter Partes Review of US. Patent No. 7,409,437
`
`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. 7,409,437
`
`

`

`Petition for Inter l’artes Review of US. Patent No. 7,409,437
`
`TABLE OF CONTENTS
`
`I. Mandatory Notices .......................................................................................... 1
`
`A. Real Party-in-Interest ................................................................................. 1
`
`B. Related Matters .......................................................................................... 1
`
`C. Lead and Back-up Counsel and Service Information .................................. 1
`
`II. Grounds for Standing ....................................................................................... 1
`
`III. Relief Requested .............................................................................................. 2
`
`IV. The Reasons for the Requested Relief.............................................................. 2
`
`A. Summary of Reasons ................................................................................. 2
`
`B. The ’43”! Patent .......................................................................................... 4
`
`1. Overview .............................................................................................. 4
`
`2. Prosecution History ............................................................................... 5
`
`C.
`
`Identification of Challenges ....................................................................... 7
`
`1. Challenged Claims ................................................................................ 7
`
`2. Statutory Grounds for Challenges ......................................................... 7
`
`3. Claim Construction ............................................................................... 8
`
`4.
`
`Identification of How the Claims Are Unpatentable ............................ 10
`
`is obvious over Throckmorton in view of
`i. Challenge #1: Claim 1
`Romesburg............................................................ 10
`
`ii. Challenge #2: Claims 2 and 3 are obvious over Throckmorton in
`view of Batchelor .................................................. 21
`
`iii. Challenge #3: Claim 4 is obvious over Throckmorton .................. 29
`
`ii
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`Petition for Inter Partes Review of US. Patent No. 7,409,437
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`is obvious over Palmer in view of
`iv. Challenge #4: Claim 1
`Romesburg............................................................ 33
`
`v. Challenge #5: Claims 2-4 are obvious over Palmer in view of
`Batchelor. ............................................................. 44
`
`V. Conclusion ...................................................................................................... 58
`
`iii
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`

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`Petition for Inter Partes Review of US. Patent No. 7,409,437
`
`I.
`
`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 ’437 patent was asserted against the
`
`real party-in-interest in Open?“V Inc- v. Negflix, Ina, 1:12-cv-01733 (D. Del.).
`
`C.
`
`Lead and Back-up 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
`
`Back-up Counsel
`
`Scott Jarratt
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Phone: (972) 739-8663
`Fax: (214) 200-0853
`scott.jarratt.ipr@haynesboone.com
`USPTO Reg. No. 70,297
`
`ll.
`
`Grounds for Standing
`
`Petitioner certifies that it is not estopped or barred fi'om requesting inter
`
`partes review of the ’437 Patent. Petitioner was served with a complaint asserting
`
`infringement of the ’437 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 ’437 patent. Petitioner also certifies that
`
`the ’437 patent is eligible for inter partes review.
`
`

`

`Petition for Inter Partes Review of US. Patent No. 7,409,437
`
`[1]. Relief Requested
`
`Petitioner asks that the Board review the accompanying prior art and
`
`analysis, institute a trial for inter partes review of claims 1-4 (all claims) of the
`
`”437 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 ’43”! Patent relates to a system “for receiving a video program along
`
`with embedded uniform resource locators.” (NTFX-lOOl, 4:56-58). The uniform
`
`resource locators point to “address locations, or Web sites, on the Internet” having
`
`“Web pages [that] correspond to the video presentation.” (NTFX-l 001 , 4:58-61).
`
`After the system extracts the URL, it “directs the particular Web browser to
`
`retrieve the identified Web pages from the Internet.” (NTFX-lOOl, 5:60-62; 3:46-
`
`47). Upon receipt of the web pages, the system “presents the Web pages on one
`
`portion of the computer screen with the television video signal.” (NTFX-lOOl ,
`
`3:50-51).
`
`These features were all well known in the prior art in 1996, when the
`
`application from which the’437 patent claims priority was filed. The references
`
`cited in this petition, alone or in combination, either anticipate or render obvious
`
`the claims of the ’437 patent.
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`

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`Petition for Inter l’artes Review of U.S. Patent No. 7,409,437
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`For example, U.S. Patent No. 5,818,441 to Throckmorton et al. discloses a
`
`system that receives a video program with an embedded URL, where the URL
`
`points to Internet content particularly relevant to the video program. After the
`
`system extracts the URL fi'om the video program, the system connects to remote
`
`computers and retrieves the referenced information for display with a web browser.
`
`Throckmorton teaches that the online content can be accessed and interactively
`
`displayed as an integral part of the video program.
`
`As another example, U.S. Patent No. 5,905,865 to Palmer et al. discloses a
`
`system that receives television programming with an embedded URL, where the
`
`URL identifies an online service that contains information about the programming.
`
`After the system extracts the URL, a web browser contacts and receives
`
`information from the website associated with the URL. A computer screen
`
`displays the information so as to simultaneously correspond with the television
`
`programming.
`
`Consequently, this petition demonstrates that claims 1-4 simply claim
`
`features that were well known in the prior art and are therefore, are either
`
`anticipated by or rendered obvious over the references presented in this petition.
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`

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`Petition for Inter Partes Review of US. Patent No. 7,409,437
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`B.
`
`The ’437 Patent
`
`1.
`
`Overview
`
`The ’43”! Patent has four independent claims and no dependent claims.
`
`In
`
`general, the ”437 Patent describes a “a computer based system for receiving a
`
`video program along with embedded uniform resource locators (URLs)—which
`
`direct the user’s computer 16 to address locations, or Web sites, on the Internet 20
`
`to retrieve related Web pages.” (NTFX-lOOl, 4:45-49).
`
`The system described in the ’43”! Patent includes “receiver station,” such as
`
`a “standard computer workstation,” that is “connected to either a cable and/or
`
`broadcast television connection.” (NTFX-l 001, 5:39-44).
`
`In addition, the receiver
`
`station has a connection to the Internet. (N TFX-l 001, 5:50-53).
`
`URLs can be transmitted to the receiver station “over the same transmission
`
`line” as the video program. (NTFX-l 001, 53-5).
`
`In one embodiment, the “URLs
`
`are encoded onto eight fields of line 21 of the VB] [vertical blanking interval].”
`
`(NTFX-lOOIl, 4:63-64). The Web pages associated with the URLs “correspond to
`
`the video presentation.” (NTFX-l 001 , 4:58-61).
`
`A “local URL decoder 12 receives the cable video television program” and
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`“extracts the URLs, preferably embedded in the vertical blanking interval, with the
`
`use of any conventional VBl decoder device.” (NTFX-l 001 , 5:58-62). Once the
`
`URLs are extracted from the VB], client software “directs the JAVA enabled
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`Petition for Inter l’artes Review of U.S. Patent No. 7,409,437
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`browser 98 to retrieve the particular relevant Web pages.” (NTFX-lOOl , 7:34-55).
`
`The retrieved information can then be displayed while the viewer is watching the
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`television program. (NTFX-l 001 , 8:41-56). “[F]or example, while the viewer is
`
`watching the music video, biographical information on the band can also be
`
`displayed adjacently to the video window.” (NTFX-l 001, 8:51-54).
`
`The general operation of the ’43”! Patent is shown in Fig. l:
`
`20
`
`CONTENT
`CREATION
`
`
`
`URL
`ENCODEFI
`
`VIDEO
`
`
`
`
`SUBCFIIBER SITE
`
`
`
` LOCAL
`PERSONAL
`COMPUTER
`
`12
`
`
`
`None of these features were novel and nonobvious when the application to
`
`which the ”437 patent claims priority was filed on that issued as the ’437 patent
`
`was filed on March 8, 1996.
`
`2.
`
`Prosecution History
`
`The ’43”! Patent issued on August 5, 2008, from U.S. Patent Application No.
`
`10/299,335 (“the ’335 application”) filed on November 18, 2002, by Craig Ullman,
`
`

`

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`Petition for Inter l’artes Review of U.S. Patent No. 7,409,437
`
`Jack D. Hidary, and Nova T. Spivack. The ’437 Patent is purportedly a
`
`continuation of U.S. Application Ser. No. 09/998,590, filed Nov. 16, 2001, now
`
`abandoned, which is a continuation of U.S. Application Ser. No. 09/633,351 filed
`
`Aug. 4, 2000, now abandoned, which is a continuation of U.S. Application Ser.
`
`No. 09/472,385 filed Dec. 23, 1999, now abandoned, which is a continuation of
`
`U.S. Patent No. 6,018,768, which is a continuation-in-part of U.S. Patent No.
`
`5,778,181 filed on March 14, 1996, which, in turn, is a continuation-in-part of U.S.
`
`Patent Application No. 08/613,144 filed on March 8, 1996, now abandoned.
`
`During prosecution, the Examiner rejected the independent claims of the
`
`’437 Patent over U.S. Patent No. 5,905,865 to Palmer, while objecting to four
`
`dependent claims that recited various display formats.
`
`In response, Patent Owner
`
`did not attempt to overcome Palmer and instead rewrote the four dependent claims
`
`to incorporate all of the limitations of the independent claims. Accordingly, the
`
`Patent Office has already determined that Palmer discloses all of the limitations for
`
`each of the claims of the ’437 patent, except for the limitations reciting various
`
`display formats previously found in the dependent claims. However, as shown
`
`below, the specific display formats upon which allowance was granted were
`
`previously disclosed in prior art references.
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`

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`Petition for Inter Partes Review of U.S. Patent No. 7,409,437
`
`C.
`
`Identification of Challenges
`
`1.
`
`Challenged Claims
`
`Claims 1-4 of the ’43”! Patent are challenged in this petition.
`
`2.
`
`Statutory Grounds for Challenges
`
`Challenge #1: Claim 1 is obvious under 35 U.S.C. § 103(a) over U.S. Patent
`
`No. 5,818,441 to Throckmorton et a1. (“Throckmorton”) in view of U.S. Patent
`
`No. 5,113,259 to Romesburg et a1. (“Romesburg”). Throckmorton is an issued
`
`patent filed June 15, 1995, and is prior art under 35 U.S.C. § 102(e). Romesburg is
`
`an issued patent filed April 15, 1990, and is prior art under 35 U.S.C. § 102(b).
`
`Challenge #2: Claims 2 and 3 are obvious under 35 U.S.C. § 103(a) over
`
`Throckmorton in view of U.S. Patent No. 5,724,103 to Batchelor (“Batchelor”).
`
`Batchelor is an issued patent filed Nov. 13, 1995, and is prior art under 35 U.S.C. §
`
`102(c).
`
`Challenge #3: Claim 4 is obvious under 35 U.S.C. § 103(a) over
`
`Throckmorton.
`
`Challenge #4: Claim 1 is obvious under 35 U.S.C. § 103(a) over U.S. Patent
`
`No. 5,905,865 to Palmer et a1. (“Palmer”) in view of Romesburg. Palmer is an
`
`issued patent filed October 30, 1996 that claims priority to U.S. Provisional
`
`Application No. 60/008,111 (“Palmer Provisional”) filed October 30, 1995, and is
`
`prior art under at least 35 U.S.C. § 102(e). The Palmer provisional is explicitly
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`Petition for inter l’artes Review of US. Patent No. 7,409,437
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`incorporated by reference into the Palmer patent.
`
`Challenge #5: Claims 2-4 are obvious under 35 U.S.C. § 103(a) over Palmer
`
`in view Batchelor.
`
`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,
`
`Inc. v. Medzam, Ltd, 133 F.3d 1473, 1477 (Fed. Cir. 1998); York Prods, Inc- v.
`
`Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572 (Fed. Cir. 1996).
`
`In the ’437 Patent, the inventor did not act as a lexicographer and did not
`
`provide a special meaning for any of the claim terms. Accordingly, using the
`
`broadest reasonable interpretation standard, the terms should be given their
`
`ordinary and customary meaning as understood by a person of ordinary skill in the
`
`art:
`
`0 “a processor which automatically directs the web browser to establish a
`
`communications link with the online information source” (claims 1-4): a
`
`processor which directs the web browser to establish a communications link
`
`with the online information source, where the act of directing occurs without
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`Petition for Inter l’artes Review of US. Patent No. 7,409,437
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`human intervention
`
`The specification does not provide any specific definition for “a processor
`
`which automatically directs the web browser to establish a communications link
`
`with the online information source.” The specification does, however, state that
`
`the “system then directs the particular Web browser to retrieve the identified Web
`
`pages from the Internet” (NTFX-lOO], 3:46-47), and also that “client software 106
`
`retrieves URLs fi'om the video program
`
`and directs the JAVA enabled browser
`
`98 to retrieve the particular relevant Web pages 102.” (NTFX-lOOl, 7:48-54).
`
`With respect to “automatically directs,” the specification provides no
`
`definition or description for automatically directing a web browser.
`
`In Webster’s
`
`New World Dictionary of Computer Terms, “automatic” is defined as “pertaining
`
`to a process or device that, under specified conditions, functions without
`
`intervention by a human operator.” (NTFX-1009, pg. 20). Accordingly,
`
`“automatically directs” in the context of this claim language, means that the
`
`specific act of directing the web browser occurs without human intervention.
`
`(NTFX-1003 at 13.) The claim does not place any limits on human intervention
`
`before or after the processor directing of the web browser. (1d)
`
`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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`

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`Petition for Inter l’artes Review of U.S. Patent No. 7,409,437
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`district court or any other forum in accordance with the claim construction
`
`standards applied in such forum.
`
`4.
`
`Identification of How the Claims Are Unpatentable
`
`i. Challenge #1: Claim 1 is obvious over Throckmorton
`in view of Romesburg.
`
`Claim 1
`
`is obvious under 35 U.S.C. § 103(a) over U.S. Patent No. 5,818,441
`
`to Throckmorton et al. (“Throckmorton”) in view of U.S. Patent No. 5,1 13,259 to
`
`Romesburg et al. (“Romesburg”). Throckmorton was filed on June 15, 1995,
`
`issued October 6, 1998, and is prior art under 35 U.S.C. § 102(e). Romesburg was
`
`filed April 19, 1990, issued May 12, 1992, and is prior art under 35 U.S.C. §
`
`102(b).
`
`(a) BriefSummary of Throckmorton
`
`Throckmorton teaches a system to enable broadcasting and entertainment
`
`companies to broadcast streams of data to consumers. (NTFX-1003 at 14). The
`
`Throckmorton system supplies “information associated with a broadcast television
`
`program to a consumer such that said consumer perceives the associated data as the
`
`result of two way interactivity with external sources of such as
`
`the Internet.”
`
`(NTFX-1004, Abstract). The system includes a “personal computer capable of
`
`receiving the television program.” (NTFX-1004, Abstract). And, “interactivity
`
`may be achieved by adding an actual two way communication channel to the
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`Petition for Inter l’artes Review of US. Patent No. 7,409,437
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`personal computer so that online services or the Internet may be accessed.”
`
`(NTFX-1004, Abstract).
`
`In operation, the Throckmorton system provides a “primary data stream” and
`
`an “associated data stream.” The “primary data stream” contains programming
`
`content. (NTFX-1004, 3:45-50; NTFX-1003 at 14.) With respect to the associated
`
`data stream, Throckmorton teaches two embodiments.
`
`In the first embodiment,
`
`Throckmorton teaches a one-way communication system, in which the “associated
`
`data stream” contains “World Wide Web pages.” (NTFX-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 “URLs”
`
`(which are references to web pages). (NTFX-1004, 9:1-5; NTFX-1003 at 14.)
`
`Throckmorton further describes that “the primary data stream could be
`
`delivered by broadcast television and the associated data could be delivered over a
`
`high speed digital network.” (NTFX-1003 at 15; NTFX-1004, 4:1-20). When the
`
`delivered data reaches the receiver, the receiver “decodes the signal, separates the
`
`primary data fi'om the associated data and passes the associated data on to the
`
`processor.” (NTFX-1003 at 15; NTFX-1004, 4:21-25).
`
`The viewer may interact with the received associated data (which could be a
`
`World Wide Web page or a URL to such a page) with a keyboard and mouse.
`
`(NTFX-1004, 4:27-30). For instance, when a user clicks on a URL, the system
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`Petition for Inter l’artes Review of US. Patent No. 7,409,437
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`“connects to and retrieves the referenced information from the appropriate source,”
`
`which may be viewed in a “web browser.” (NTFX-1004, 9:1-14; 7:42-45).
`
`Additionally, Throckmorton teaches that the delivered data “could be interactively
`
`displayed and manipulated by consumers.” (NTFX-1004, 1:59-67). Further, 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.” (NTFX-1004, 1:59-67).
`
`(b) BriefSummary ofRomesburg
`
`Romesburg is provided to supplement the teachings of Throckmorton with
`
`respect to displaying a video signal concurrently with information received fi'om
`
`remote, networked computers in a picture-in-picture format.
`
`(0)
`
`Reasons to Combine
`
`As previously discussed, Throckmorton discusses two embodiments: a one-
`
`way communication system and a two-way communication system. The
`
`application of Throckmorton relies upon the teachings contained in each of these
`
`embodiments.
`
`A person of ordinary skill in the art, when reading Throckmorton would be
`
`motivated to combine the features of the two systems in Throckmorton for a
`
`number of reasons. For example, the combination amounts to simply combining
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`Petition for Inter l’artes Review of US. Patent No. 7,409,437
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`elements contained in the same reference in precisely the manner described in the
`
`reference. Combining the retrieving-internet-information-using-a-URL as
`
`described in the two-way embodiment, with the known method of displaying a web
`
`page simultaneously with a video program as described in the one-way
`
`embodiment, yields the predictable result of displaying a web page retrieved with a
`
`URL simultaneously with a video program. This result is predictable because
`
`Throckmorton specifically teaches such a result. (NTFX-1003 at 16.)
`
`This implementation of the teachings of Throckmorton would be desirable
`
`because it would allow the user to have direct access to relevant online information
`
`during the program reception without the need for changing screens. Throckmorton
`
`specifically provides a motivation to make this combination, because it was
`
`desirable to make an experience for viewers that integrated data with television
`
`program reception. (NTFX-1003 at 16.)
`
`Further, a person of ordinary skill in the art would have modified
`
`Throckmorton in view of Romesburg for a number of reasons. For example, the
`
`combination amounts to the use of a known technique to improve similar devices
`
`in the same way. (NTFX-1003 at 16.)
`
`As already discussed, Throckmorton teaches displaying a television signal
`
`and online information on a display monitor. (NTFX-1003 at17; see id. at 14-15.)
`
`As shown by the teachings of Romesburg, it was known by persons of
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`Petition for Inter l’artes Review of US. Patent No. 7,409,437
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`ordinary skill in the art at the time of the invention of the ”437 patent to display a
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`video signal concurrently with information received from remote, networked
`
`computers in a picture-in-picture format. Romesburg further notes that:
`
`“Many modern television receivers have picture-in-picture (PIP, or
`
`PlX-lN-PIX) capability, that is, the capability to receive video signals
`
`from two different sources and combine them to produce a signal
`
`which when displayed includes a first program in a main viewing
`
`area, and a second program in a secondary (inset) viewing area of the
`
`same display screen.” (NTFX-l 005, 1:38-44.)
`
`Picture-in-picture, separate/split screens, overlay displays, and the rendering
`
`of windows including video on PCs were common place in the industry. (NTFX-
`
`1003 at 17.) One of ordinary skill in the art would have therefore modified
`
`Throckmorton’s display monitor so that it displayed the primary data stream (e.g.,
`
`a television signal) in a main viewing area and displayed the online information
`
`retrieved via the URL/pointer in a secondary (inset) viewing area of the same
`
`display screen (i.e., in a picture-in-picture format). This modification would have
`
`yielded the predictable and desirable result of the users of Throckmorton’s system
`
`being able to concurrently view online information related to the main video signal
`
`without the main video signal being completely obscured. (NTFX-1003 at 17-18.)
`
`The following discussion describes how Throckmorton in view of
`
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`Petition for inter Fortes Review of US. Patent No. 7,409,437
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`Romesburg renders obvious each and every limitation of at least claim 1 :
`
`Claim 1
`
`[1.0] “A systemfor receiving a programming signal containing an embedded
`
`address, the address identifiiing a source of at least one online information
`
`segment related to the programming signal”
`
`Throckmorton discloses “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” because it teaches a
`
`system to enable “producers of mass market broadcast programming to deliver data
`
`associated by its relevancy to its subject matter that could be interactively
`
`displayed and manipulated by consumers on a real time basis. What is meant by
`
`real time is that 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.” NTFX-1004, 1:59-67. A
`
`consumer can access online services through use of “uniform resource locations
`
`(“URL”) which are WWW page references” NTFX-1004, 9:1-12. Further,
`
`Throckmorton teaches that the associated data (e.g., the URL) could be encoded
`
`into the television signal. NTFX-1004, 7:63 -65
`
`Thus, the system for receiving a television signal containing an embedded
`
`URL that identifies WWW pages relevant to the television programming, as taught
`
`by Throckmorton, discloses “a system for receiving a programming signal
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`Petition for inter l’artes Review of US. Patent No. 7,409,437
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`containing an embedded address, the address identifying a source of at least one
`
`online information segment related to the programming signal,” as recited in the
`
`claim. NTFX-1003 at 18-20.
`
`[1.1] “a receiverfor receiving a programing signal and the embedded address,
`
`the address identifying the source ofthe online information segment which
`
`relates to the programming signal”
`
`Throckmorton discloses “a receiver for receiving a programming signal and
`
`the embedded address, the address identifying the source of the online information
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`segment which relates to the programming signal” because it teaches a receiver
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`device, such as a personal computer for “receiving the primary data stream” and
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`for “receiving the associated data.” The primary data stream could be
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`“programming content” (NTFX-1004, 3:45-50) and the “associated data” can be a
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`URL. NTFX-1004, 9:1-12. A consumer can access online services through use of
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`“uniform resource locations (“URL”) which are WWW page references” NTFX-
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`1004, 9:1-12. Further, Throckmorton teaches that the associated data (e.g., the
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`URL) could be encoded into the television signal. NTFX-1004, 7:63-65.
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`Thus, a receiver for receiving programming content that contains an
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`embedded URL, wherein the URL/pointer specifies online information such as
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`WWW pages that are relevant to the programming content, as taught by
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`Throckmorton, discloses “a receiver for receiving a programming signal and the
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`embedded address, the address identifying the source of the online information
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`segment which relates to the programming signal,” as recited in the claim. NTFX-
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`1003 at 20-22.
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`[1.2] “an address extractor which extracts the addressfrom the programing
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`signal”
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`Throckmorton discloses “an address extractor which extracts the address
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`from the programming signal” because it teaches a data protocol manager that
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`“extract[s] the different forms of associated data fi'om the incoming digital data
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`stream.” NTFX-1004, 6:56-60. Further, Throckmorton teaches that the “associated
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`data” can be a URL. NTFX-1004, 9:1-12.
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`Thus, the associated data protocol manager that extracts associated data
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`(e.g., URLs) from an incoming digital data stream, as taught by Throckmorton,
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`discloses “an address extractor which extracts the address fi'om the programming
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`signal,” as recited in the claim. NTFX-1003 at 22-23.
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`[1.3] “a web browser”
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`Throckmorton discloses “a web browser” because it teaches that a “‘Web
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`Browser’ may be used to display data pages from the World Wide Web (the
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`‘WWW’). Providers of WWW browsers include Netscape Communications Corp.,
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`America Online, Spyglass and others.” NTFX-1004, 7:42-45.
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`Thus, the web browser taught by Throckmorton discloses “a web browser,”
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`as recited in the claim. NTFX-1003 at 23.
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`[1.4] “a processor which automatically directs the web browser to establish a
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`communications link with the online information source identified by the
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`address, whereby the processor retrieves the online information segmentfrom
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`the online information source via the communications link”
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`Throckmorton discloses “a processor which automatically directs the web
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`browser to establish a communications link with the online information source
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`identified by the address, whereby the processor retrieves the online information
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`segment fi'om the online information source via the communications link” because
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`it teaches a “computer” having a “microprocessor.” NTFX-1004, 6:5-15. The
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`microprocessor is connected to a “two-way communication channel” to provide
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`“interactive access to remote computers.” NTFX-1004, 8:19-24. The two-way
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`communication channel (which is connected to the microprocessor) “allows a
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`consumer to also access online services.” The system “connects to and retrieves
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`the referenced information from the appropriate source,” when the user selects the
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`URL. NTFX-1004, 9:1-14. Throckmorton teaches that one way for the referenced
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`information to be displayed is the “web browser.” NTFX-1004, 7:42-45
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`Thus, Throckmorton teaches (i) a microprocessor that is connected to the
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`two-way communication channel, (ii) the two-way communication channel is used
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`to connect to an online service, (iii) the connection to the service is automatically
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`performed by the system (which is controlled by the microprocessor), and (iv) the
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`referenced online information is retrieved for display in the web browser, thereby
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`disclosing “a processor which automatically directs the web browser to establish a
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`communications link with the online information source identified by the address,
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`whereby the processor retrieves the online information segment from the online
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`information source via the communications link,” as recited in the claim. NTFX-
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`1003 at 23-25.
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`[1.5] “a display monitorfor presenting the programing signal, comprising a
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`video signal or an audio signal, concurrently with the online information
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`segment”
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`Throckmorton discloses “a display monitor for presenting the programming
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`signal, comprising a video signal or an audio signal, concurrently with the online
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`information segment” because it teaches a “monitor” or “standard television” that
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`presents programming content. NTFX-1004, 6:17-20. Further, Throckmorton
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`teaches that the online data is “associated by its relevancy to its subject matter that
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`could be interactively displayed and manipulated by consumers on a real time
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`basis. What is meant by real time is that the consumer receives and has access to
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`the relevant data during the process of program reception. Therefore the data
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`becomes an integral part of the experience desired by the program producers.
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`NTFX-1004, 1:59-67.
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`Thus, the display (e.g., monitor or standard television) that presents online
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`information, such as WWW pages, as taught by Throckmorton’s two-way
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`embodiment, in view of the display that presents information related to a video
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`program in real time so that the user has access to the data during the video
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`program reception, as taught by Throckmorton’s one-way embodiment, discloses
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`“a display monitor for presenting the programming signal, comprising a video
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`signal or an audio signal, concurrently with the online information segment,” as
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`recited in the claim. NTFX-1003 at 26-28.
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`[1.6] “wherein the programming signal comprises the video signal and the video
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`signal and the online information segment are presented on the display monitor
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`in a picture-in-pictareformat”
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`Throckmorton in view of Romesburg discloses “wherein the programming
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`signal comprises the video signal and the video signal and the online information
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`segment are presented on the display monitor in a picture-in-picture format”
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`because it (i) Throckmorton teaches displaying a television signal and online
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`information on a display monitor (NTFX-1004, 1:59-67), and (ii) Romesburg
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`teaches displaying a video signal and information received from a remote,
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`networked computer in a picture-in-picture format. NTFX-1005, 3:38-42. For
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`example, Romesburg depicts a main video program being displayed with an image
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`“received from other, distant computers via a standard computer modem.” NTFX-
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`1005, 5:13-17. Fig. l of Romesburg shows the picture-picture format:
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` Inset image received
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`from remote
`computer
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`signal
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`
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`NTFX-IOOS, Fig. 1 (annotated); NTFX-1003, pg. 29
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`Thus, the system of Throckmorton that interactively displays programming
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`content and online information in real time, in view of the teachings of Romesburg,
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`where a television displays a main video signal and a video image received from a
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`remote, networked computer in a picture-in-picture format, render obvious
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`“wherein the programming signal comprises the video signal and the video signal
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`and the online information segment are presented on the display monitor in a
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`picture-in-picture format,” as recited in the claim. NTFX-1003 at 28-30.
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`ii. Challenge #2: Claims 2 and 3 are obvious over
`Throckmorton in view of Batchelor.
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`Claims 2 and 3 are obvious under 35 U.S.C. § 103(a) over U.S. Patent No.
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`Throckmorton in view of U.S. Patent No. 5,724,103 to Batchelor (“Batchelor”).
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`Batchelor is presented to supplement the teachings of Throckmorton with respect
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`2]
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`to (i) performing a split scre