Paper No.
`Filed: March __, 2014
`
`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 IPR2014-00269
`Patent 6,233,736
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`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 6,233,736
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`Filed: March __, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`NETFLIX, INC.
`Petitioner
`
`v.
`
`OPENTV, INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2014-00269
`Patent 6,233,736
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 6,233,736
`
`
`
`
`
`
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`
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`TABLE OF CONTENTS
`
`I.
`
`PRELIMINARY STATEMENT ................................................................... 1
`
`II. THE PETITION IS UNINSTITUTABLE BECAUSE IT LACKS
`MATERIAL FACTS AND EXPLANATIONS NECESSARY TO
`ESTABLISH WHETHER THERE IS A REASONABLE
`LIKELIHOOD THAT THE PETITIONER WOULD PREVAIL ............ 3
`
`A.
`
`The Petition is uninstitutable because it lacks material facts
`needed to construe the claims ................................................................ 4
`
`1.
`
`2.
`
`The Petition fails to cite any corresponding sections of
`the specification for the means-plus-function elements in
`claims 9-12 .................................................................................. 5
`
`The Petition also lacks material facts for the non-means-
`plus-function terms in all of the claims. ..................................... 6
`
`B.
`
`The Petition is uninstitutable because it lacks material facts to
`determine if the claims are obvious .................................................... 10
`
`1.
`
`2.
`
`3.
`
`The Petition fails to map the cited art to the proposed
`claim constructions as required by the statute and rules ........... 10
`
`The Petition fails to map each of the claimed features to
`the cited art as required by the statue and rules ........................ 12
`
`The Petition’s obviousness analysis is incomplete ................... 15
`
`III. THE BOARD SHOULD DENY THE PETITION PURSUANT
`TO 35 U.S.C. § 325(d) .................................................................................. 20
`
`A.
`
`B.
`
`The original Examiner identified at least two points of
`distinction over Throckmorton ............................................................ 21
`
`The Petition does not address the deficiencies identified by the
`Examiner, who allowed the patent over Throckmorton ...................... 26
`
`IV. CONCLUSION ............................................................................................ 28
`
`
`
`ii
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`TABLE OF AUTHORITIES
`
`Federal Cases
`In re Huang, 100 F.3d 135 (Fed. Cir. 1996) ...................................................... 18, 19
`
` Page(s)
`
`In re De Blauwe, 736 F.2d 699 (Fed. Cir. 1984) ............................................... 18, 19
`
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) ............................................... 16
`
`
`
`Federal Statutes
`
`35 U.S.C. § 103 .................................................................................................. 15, 21
`
`35 U.S.C. § 312 .................................................................................................passim
`
`35 U.S.C. § 314 .......................................................................................................... 3
`
`35 U.S.C. § 325 .............................................................................................. 3, 20, 27
`
`
`
`Regulations
`
`37 C.F.R. § 42.6 ................................................................................................passim
`
`37 C.F.R. § 42.22 ................................................................................................... 3, 6
`
`37 C.F.R. § 42.65 ..................................................................................................... 19
`
`37 C.F.R. § 100 .......................................................................................................... 4
`
`37 C.F.R. § 42.104 ............................................................................................passim
`
`
`
`iii
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`
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`
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`
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`
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`Other Authorities
`
`Page(s)
`
`77 Fed. Reg. 48688 (Aug. 14, 2012). ...............................................................passim
`
`IPR2013-00183, Paper 12 (Jul. 31, 2013) ................................................... 16, 17, 20
`
`IPR2013-00361, Paper 8 (Dec. 13, 2013) .......................................................... 18, 19
`
`IPR2013-00494, Paper 10 (Feb. 6, 2014) ................................................................ 20
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`IPR2013-00510, Paper 9 (Feb. 12, 2014) .........................................................passim
`
`iv
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`Case No. IPR2014-00269
`
`
`I.
`
`PRELIMINARY STATEMENT
`
`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 OpenTV’s
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`patented technology in its streaming video service, including the ‘736 patent, and
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`on December 19, 2012, after nearly 12 months of Netflix ignoring OpenTV’s
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`repeated requests for a license, OpenTV reluctantly filed a patent infringement
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`lawsuit against Netflix in Delaware. See OPENTV Exhibit 2002, Complaint in
`
`OpenTV, Inc., v. Netflix, Inc. Netflix could no longer ignore OpenTV’s patents, but
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`instead of addressing the matter directly, Netflix continued its delay tactics,
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`waiting until the very last moment to file a flawed and incomplete petition for inter
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`Case No. IPR2014-00269
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`partes review of U.S. Patent No. 6,233,736, hoping to side-step liability from its
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`continuing use of OpenTV’s patented technology.
`
`Netflix’s Petition fails because, among other things, it leaves many of its
`
`proposed claim constructions with no support, a failing that touches every
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`challenged claim. It also fails to support its proposed ground of unpatentability
`
`with reasoning required by the statute and rules, with multiple fatal flaws in the
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`proposed obviousness case for every claim.
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`A petition for inter partes review may be considered “only if” the petition
`
`“identifies, in writing and with particularity, each claim challenged, the grounds on
`
`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(a). To ensure that this
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`statutory requirement is met, the Board rules specify detailed requirements for a
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`petition, including an explanation of how each challenged claim is to be construed
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`and how each construed claim is unpatentable. 37 C.F.R. § 42.104. The Petition’s
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`obviousness analysis is incomplete for these and other reasons, and an incomplete
`
`obviousness analysis cannot establish a reasonable likelihood of prevailing for any
`
`claim.
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`More importantly, Netflix’s Petition relies solely on a prior art reference—
`
`Throckmorton—that was previously considered by the Examiner. The Petition,
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`however, does not cite any new evidence and it does not explain why the
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`Case No. IPR2014-00269
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`Examiner’s identification of distinguishing features was incorrect. Accordingly,
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`the Board should exercise its discretion under 35 U.S.C. § 325(d) and deny the
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`Petition for this reason as well.
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`Because the Petition is incomplete and rests on prior art already considered
`
`by the Patent Office in allowing the ‘736 patent in the first instance, the Board
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`should deny this Petition as uninstitutable, failing to establish a reasonable
`
`likelihood of prevailing for any claim, and/or based on its discretion to not institute
`
`petitions on grounds that were already considered.
`
`II. THE PETITION IS UNINSTITUTABLE BECAUSE IT LACKS
`MATERIAL FACTS AND EXPLANATIONS NECESSARY TO
`ESTABLISH WHETHER THERE IS A REASONABLE
`LIKELIHOOD THAT THE PETITIONER WOULD PREVAIL
`
`For a petition to be institutable, it must establish that there is “a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the claims
`
`challenged in the petition.” 35 U.S.C. § 314(a). The statutes further require that
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`“the petition identif[y], in writing and with particularity, each claim challenged, the
`
`grounds on which the challenge to each claim is based, and the evidence that
`
`supports the grounds for the challenge to each claim.” 35 U.S.C. § 312.
`
`Consistent with the statute, the Board’s rules require that each petition
`
`include “[a] full statement of the reasons for the relief requested, including a
`
`detailed explanation of the significance of the evidence including material facts,
`
`and the governing law, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). Compliance
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`Case No. IPR2014-00269
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`with this rule is essential because “[v]ague arguments and generic citations to the
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`record are fundamentally unfair to an opponent and do not provide sufficient notice
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`to an opponent and creates inefficiencies for the Board.” 77 Fed. Reg. 48620 (Aug.
`
`14, 2012).
`
`Because the Petition filed by Netflix fails to satisfy these requirements, inter
`
`partes review should not be instituted.
`
`A. The Petition is uninstitutable because it lacks material facts
`needed to construe the claims
`For each claim challenged, a petition for inter partes review must explain
`
`“[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104(b). As Netflix
`
`acknowledges, claim terms are given “the broadest reasonable interpretation in
`
`light of the specification.” Pet. 6 (Citing 37 C.F.R. § 42.100(b)). Thus, one of the
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`material facts for construing claim terms is the patent’s specification. Indeed, for
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`means-plus-function terms, the rules explicitly require that “the construction of the
`
`claim must identify the specific portions of the specification that describe the
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`structure, material, or acts corresponding to each claimed function.” 37 C.F.R.
`
`§ 42.104(b). This rule is “consistent with 35 U.S.C. § 312(a)(3), as amended,
`
`which requires that the petition identify, in writing and with particularity, each
`
`claim challenged, the grounds on which the challenge is based, and the evidence
`
`supporting the challenge.” 77 Fed. Reg. 48688.
`
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`4
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`Case No. IPR2014-00269
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`1.
`
`The Petition fails to cite any corresponding sections of the
`specification for the means-plus-function elements in claims
`9-12
`
`The Petition alleges four means-plus-function elements. Pet. 7-9. Two of
`
`these terms are from independent claim 9 and two are from dependent claim 10. Id.
`
`Two of these terms are also recited in claims 11 and 12 by virtue of their
`
`dependence from claim 9. Despite contending that these are means-plus-function
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`elements, the Petition does not identify any part of the specification to support the
`
`provided constructions, but only cites to a declaration attached as NTFX-1003. Id.
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`To the extent that the Petition purports to provide citations to a declaration in
`
`support of its proposed claim constructions, the additional arguments presented in
`
`the declaration cannot cure the deficiencies of the Petition. Previously, the Board
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`stated that it:
`
`decline[d] to consider information presented in a
`supporting declaration, but not discussed in a petition,
`because, among other reasons, doing so would encourage
`the use of declarations to circumvent the page limits that
`apply to petitions. Along those lines, [the Board’s] rules
`prohibit arguments made in a supporting document from
`being incorporated by reference into a petition. See
`37 C.F.R. § 42.6(a)(3).
`
`IPR2013-00510, Paper 9 (Feb. 12, 2014), at 8-9. Indeed, 35 U.S.C. § 312 requires
`
`that “the petition identif[y], in writing and with particularity, each claim
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`Case No. IPR2014-00269
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`challenged, the grounds on which the challenge to each claim is based, and the
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`evidence that supports the grounds for the challenge to each claim.” (Emphasis
`
`added).
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`Because the Petition fails to provide support for its proposed construction of
`
`these terms, it lacks the particularity required by 35 U.S.C. § 312 and violates rules
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`42.104(b) and 42.22(a)(2). This lack of particularity makes the proposed grounds
`
`for claim 9 and its dependent claims (claims 10-12) uninstitutable. See 35 U.S.C.
`
`§ 312.
`
`2.
`
`The Petition also lacks material facts for the non-means-
`plus-function terms in all of the claims.
`a.
`
` “automatically establishing, in response to a user
`initiated command, a direct communication link with
`the online information source”
`
`The Petition proposes that this term, which is recited in independent claim 1
`
`and indirectly in claims 2-5, means “in response to a user initiated command,
`
`establishing a communication link to an online information source without the user
`
`performing additional steps.” Pet. 7. The Petition does not explain why this
`
`construction is correct or cite any support in the patent specification. Instead, the
`
`Petition cites to a declaration. Id.
`
`To the extent that the Petition purports to provide citations to a declaration in
`
`support of its proposed claim constructions, the additional arguments presented in
`
`
`
`6
`
`
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`the declaration cannot cure the deficiencies of the Petition. Previously, the Board
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`Case No. IPR2014-00269
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`stated that it:
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`decline[d] to consider information presented in a
`supporting declaration, but not discussed in a petition,
`because, among other reasons, doing so would encourage
`the use of declarations to circumvent the page limits that
`apply to petitions. Along those lines, [the Board’s] rules
`prohibit arguments made in a supporting document from
`being incorporated by reference into a petition. See 37
`C.F.R. § 42.6(a)(3).
`
`IPR2013-00510, Paper 9, at 8-9. Indeed, 35 U.S.C. § 312 requires that “the petition
`
`identif[y], in writing and with particularity, each claim challenged, the grounds on
`
`which the challenge to each claim is based, and the evidence that supports the
`
`grounds for the challenge to each claim.”
`
`Because the Petition fails to cite the patent specification or any proper
`
`evidence, it lacks the material facts for determining the broadest reasonable claim
`
`construction in light of the specification. The lack of particularity makes the
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`grounds for claim 1 and its dependent claims (claims 2-5) uninstitutable. See 35
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`U.S.C. § 312.
`
`Independent claims 6-9, while different in scope, recite similar limitations
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`that include the “automatic” element that was added as part of the claim
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`amendment that resulted in the claims being allowed over Throckmorton—the
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`Case No. IPR2014-00269
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`same reference applied in the Petition. See infra Part III. Specifically, independent
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`claim 6 recites “automatically using said extracted address to establish a direct
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`communication link with the online information source associated with said
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`extracted address”; independent claim 7 recites “automatically using said address,
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`in response to a user initiated command, to transmit a signal to connect said user
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`directly with the online information source associated with said address”;
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`independent claim 8 recites “automatically and directly electronically accessing
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`said online information associated with said link in response to a user initiated
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`command”; and independent claim 9 recites “for automatically establishing, in
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`response to a user initiated command, a direct link with the online information
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`source.” The Petition is completely silent as to how, if at all, the construction of
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`“automatically establishing, in response to a user initiated command, a direct
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`communication link with the online information source” relates to these similar
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`terms, which makes its positions as to those claims unclear. Because of this lack of
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`particularity, the Petition is uninstitutable.
`
`b.
`
`“so that the user has direct access to the online
`information”
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`The Petition proposes that this term, which is recited in each independent
`
`claim and indirectly in all of the dependent claims, should be construed as
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`“displaying online information without the user leaving the screen to access the
`
`online information.” Pet. 7. The Petition does not explain why this construction is
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`
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`8
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`
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`correct or cite any support in the patent specification. Instead, the Petition cites to a
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`Case No. IPR2014-00269
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`declaration. Id.
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` To the extent that the Petition purports to provide citations to a declaration
`
`in support of its proposed claim constructions, the additional arguments presented
`
`in the declaration cannot cure the deficiencies of the Petition. Previously, the
`
`Board stated that it:
`
`decline[d] to consider information presented in a
`supporting declaration, but not discussed in a petition,
`because, among other reasons, doing so would encourage
`the use of declarations to circumvent the page limits that
`apply to petitions. Along those lines, [the Board’s] rules
`prohibit arguments made in a supporting document from
`being incorporated by reference into a petition. See
`37 C.F.R. § 42.6(a)(3).
`
`IPR2013-00510, Paper 9, at 8-9. Indeed, 35 U.S.C. § 312 requires that “the petition
`
`identif[y], in writing and with particularity, each claim challenged, the grounds on
`
`which the challenge to each claim is based, and the evidence that supports the
`
`grounds for the challenge to each claim.”
`
`Because the Petition fails to cite the patent specification or any proper
`
`evidence, it lacks the material facts for evaluating the claim construction. The lack
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`of particularity makes the petition uninstitutable. See 35 U.S.C. § 312.
`
`
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`Case No. IPR2014-00269
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`B.
`
`The Petition is uninstitutable because it lacks material facts to
`determine if the claims are obvious
`1.
`
`The Petition fails to map the cited art to the proposed claim
`constructions as required by the statute and rules
`Rule 42.104(b)(4) requires that a petition must set forth “[h]ow the
`
`construed claim is unpatentable under the statutory grounds identified.”
`
`(Emphasis added). This rule is consistent with 35 U.S.C. § 312 and “provides an
`
`efficient means for identifying the legal and factual basis for satisfying the
`
`threshold for instituting inter partes review and provides the patent owner with
`
`notice as to the basis for the challenge to the claims.” 77 Fed. Reg. 48688. The
`
`Petition does not map the prior art to the claims as proposed to be construed, so it
`
`lacks the particularity requires by the statute and the rules.
`
`For example, the Petition proposes a construction for the phrase “so that the
`
`user has direct access to the online information,” which is recited in each
`
`independent claim, as “displaying online information without the user leaving the
`
`screen to access the online information.” Pet. 7. This term is part of claim elements
`
`discussed on pages 16-18 (labeled 1.2b), 21-23 (labeled 6.3), 27-28 (labeled 7.2b),
`
`30-31 (labeled 8.2), and 34-36 (labeled 9.2b) of the Petition. Even if Netflix’s
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`proposed construction (which the Petition lacks the facts to adopt, see supra
`
`Part II.A) were adopted, the Petition does not specify where each element of the
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`claim—as proposed to be construed—is found in the reference relied upon. This
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`Case No. IPR2014-00269
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`specificity is required to meet the particularity requirements of 35 U.S.C. § 312
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`and 37 C.F.R. § 42.104(b). Instead, the Petition parrots the claim language and
`
`cites NTFX-1004, 1:59-67 without mentioning the proposed limitation of
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`“displaying online information without the user leaving the screen to access the
`
`online information.” Pet. 17, 22. And even if arguments from the declaration could
`
`cure this fatal flaw in the Petition, the declaration also makes no mention of the
`
`proposed construction of “displaying online information without the user leaving
`
`the screen to access the online information.” NTFX-1003 at 26-28, 35-56.
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`Similarly, for elements 7.2b, 8.2, and 9.2b, respectively, the Petition does
`
`not include any citations to Throckmorton for these features. Pet. 27, Pet. 30, Pet.
`
`35. At best, the Petition cites to NTFX-1003, pg. 42 (for element 7.2b), pp. 45-47
`
`(for element 8.2), and pp. 51-53 (for element 9.2b), respectively, for these features.
`
`Even if argument from the declaration could cure this fatal flaw in the Petition,
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`these sections of the declaration also make no mention of the proposed
`
`construction, “displaying online information without the user leaving the screen to
`
`access the online information.”
`
`In view of this lack of particularity, the Petition fails to identify the grounds
`
`for challenging claims 1-12 and is uninstitutable. To the extent that the Petition
`
`purports to provide citations to a declaration to cure this deficiency, the additional
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`
`
`11
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`
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`arguments presented in the declaration cannot cure the deficiencies of the Petition.
`
`Previously, the Board stated that it
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`Case No. IPR2014-00269
`
`
`decline[d] to consider information presented in a
`supporting declaration, but not discussed in a petition,
`because, among other reasons, doing so would encourage
`the use of declarations to circumvent the page limits that
`apply to petitions. Along those lines, [the Board’s] rules
`prohibit arguments made in a supporting document from
`being incorporated by reference into a petition. See 37
`C.F.R. § 42.6(a)(3).
`
`IPR2013-00510, Paper 9, at 8-9. Indeed, 35 U.S.C. § 312 requires that “the petition
`
`identif[y], in writing and with particularity, each claim challenged, the grounds on
`
`which the challenge to each claim is based, and the evidence that supports the
`
`grounds for the challenge to each claim.”
`
`2.
`
`The Petition fails to map each of the claimed features to the
`cited art as required by the statue and rules
`
`Consistent with 35 U.S.C. § 312, Rule 42.104(b)(4) requires that the
`
`“petition must specify where each element of the claim is found in the prior art
`
`patents or printed publications.” This “provides an efficient means for identifying
`
`the legal and factual basis for satisfying the threshold for instituting inter partes
`
`review and provides the patent owner with notice as to the basis for the challenge
`
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`12
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`Case No. IPR2014-00269
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`to the claims.” 77 Fed. Reg. 48688. The Petition fails to identify the basis for the
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`alleged unpatentability of claims 1-12, so the Petition is uninstitutable.
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`The term “automatic” or “automatically” is recited in every independent
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`claim and indirectly in every dependent claim. Although the Petition purports to
`
`address this feature multiple times, it never specifies where the element is found in
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`the cited reference, as required by Rule 42.104 to satisfy 35 U.S.C. § 312. Instead,
`
`the Petition only cites to the declaration (NTFX-1003) for the “automatic” features
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`of each independent claim, as shown in the table below:
`
`Element 1.0
`
`“Since the system performs the connection and retrieving, the link
`
`(Pet. 15)
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`with the online source is ‘automatic.’ NTFX-1003, pg. 22-23.”
`
`Element 1.2b
`
`“Since ‘the system’ performs the connection and retrieving, the
`
`(Pet. 17)
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`link with the online source is ‘automatically established.’ NTFX-
`
`1003, pg. 26.”
`
`Element 6.0
`
`“Since the system performs the connection and retrieving, the link
`
`(Pet. 20)
`
`with the online source is ‘automatic.’ NTFX-1003, pp. 31-33.”
`
`Element 6.3
`
`“Since ‘the system’ performs the connection and retrieving using
`
`(Pet. 22)
`
`the URL, the URL is being used ‘automatically.’ NTFX-1003, pp.
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`35-36.”
`
`Element 7.0
`
`“Since the system performs the connection and retrieving, the link
`
`(Pet. 24)
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`with the online source is ‘automatic.’ NTFX-1003, pp. 37-38.”
`
`
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`13
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`
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`Element 7.2b
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`“Since ‘the system’ performs the connection and retrieving using
`
`(Pet. 27)
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`the URL, the URL is being used ‘automatically.’ NTFX-1003, pg.
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`Case No. IPR2014-00269
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`41.”
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`Element 8.0
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`“Since the system performs the connection and retrieving, the link
`
`(Pet. 28)
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`with the online source is ‘automatic.’ NTFX-1003, pp. 42-44.”
`
`Element 8.2
`
`“Since the system performs the connection and retrieving, the link
`
`(Pet. 30)
`
`with the online source is ‘automatic.’ NTFX-1003, pp. 45-47.”
`
`Element 9.0
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`“Since the system performs the connection and retrieving, the link
`
`(Pet. 32)
`
`with the online source is ‘automatic.’ NTFX-1003, pp. 47-49.”
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`Element 9.2b
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`“Since the system performs the connection and retrieving, the link
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`(Pet. 35)
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`with the online source is ‘automatic.’ NTFX-1003, pp. 51 -53.”
`
`Even if arguments in the declaration could cure the Petition’s failure to map
`
`the claim element to the cited art (which it cannot) the declaration also does not
`
`explain how “the system performing the connection and retrieving” relates to
`
`recited elements or the construction of those elements. Instead, the citations simply
`
`direct the reader to the corresponding claim chart in the declaration. This further
`
`violates Rule 42.104(b)(5), which requires the identification of specific portions of
`
`supporting evidence.
`
`In view of this lack of particularity, the Petition fails to explain the grounds
`
`for challenging claims 1-12 and is uninstitutable. To the extent that the Petition
`14
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`Case No. IPR2014-00269
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`purports to provide citations to a declaration to cure this deficiency, the additional
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`arguments presented in the declaration cannot cure the deficiencies of the Petition.
`
`Previously, The Board stated that it:
`
`decline[d] to consider information presented in a
`supporting declaration, but not discussed in a petition,
`because, among other reasons, doing so would encourage
`the use of declarations to circumvent the page limits that
`apply to petitions. Along those lines, [the Board’s] rules
`prohibit arguments made in a supporting document from
`being incorporated by reference into a petition. See 37
`C.F.R. § 42.6(a)(3).
`
`IPR2013-00510, Paper 9, at 8-9. Indeed, 35 U.S.C. § 312 requires that “the petition
`
`identif[y], in writing and with particularity, each claim challenged, the grounds on
`
`which the challenge to each claim is based, and the evidence that supports the
`
`grounds for the challenge to each claim.”
`
`The Petition’s obviousness analysis is incomplete
`
`3.
`All of the proposed grounds are based on alleged obviousness under 35
`
`U.S.C. § 103(a) over Throckmorton. To provide a complete obvious analysis, a
`
`petition must include “explanation of how the teachings of the references would be
`
`arranged or combined or why a person of ordinary skill would have made the
`
`combination” and “some reason why a person of ordinary skill in the art would
`
`have thought to combine particular available elements of knowledge, as evidenced
`
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`15
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`Case No. IPR2014-00269
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`by the prior art, to reach the claimed invention.” IPR2013-00183, Paper 12, at 9
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`(Jul. 31, 2013)(citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).)
`
`When, as here, a petition’s presentation of obvious is “incomplete,” it is
`
`“insufficient to demonstrate a reasonable likelihood of prevailing on [the]
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`obviousness challenge.” Id. at 10.
`
`The Petition does not explain its proposed modifications of the
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`Throckmorton reference, so it lacks a complete analysis. The Petition’s proposed
`
`grounds all rest on combining a “one-way communication system” and a “two-way
`
`communication system” purportedly disclosed by Throckmorton. Pet. 13. It,
`
`however, (i) fails to explain which elements of these two different systems are
`
`being relied upon to teach the different elements of the claims and how the
`
`elements of these two systems that purportedly teach the different elements that are
`
`being combined and (ii) fails to explain any reason for combining the features of
`
`the two systems.
`
`a.
`
`The Petition cites disparate sections of Throckmorton
`without any explanation of which system is being
`relied upon to support the proposed ground
`
`Rather than explain which of the different systems in Throckmoton is being
`
`relied upon for each element of the claims and how the two systems are being
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`combined in the proposed grounds, the Petition cites disparate sections of
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`Throckmorton without any explanation of which system is being relied upon to
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`Case No. IPR2014-00269
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`support the proposed ground. For example, in element 1.1, the Petition cites to
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`Throckmorton at 1:59-67, 7:61-65 and 9:1-14. Pet. 15-16. These citations,
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`however, appear to include portions of both the first system of Throckmorton and
`
`the second system of Throckmorton. The Petition does not ascertain the teachings
`
`and scope of each cited system of Throckmorton or explain how they would be
`
`combined to render the claims obvious.
`
`b.
`
`The Petition’s obviousness analysis is also incomplete
`because it fails to offer any reasons to combine the
`separate systems of Throckmorton to achieve the
`proposed combination
`
`The Petition admits that its proposed ground of obviousness relies on two
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`different embodiments of Throckmorton, but does not explain a reason to combine
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`the specific parts of each embodiment. Pet. 13-14. Instead, the Petition asserts that
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`“Throckmorton specifically provides a motivation to make this combination,
`
`because it was desirable to make an experience for viewers where accessing the
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`data was ‘an integral part of the experience desired by the program producers.’
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`(NTFX-1004, 1:59-67; NTFX-1003, pg. 22.).” Id. This citation, however, appears
`
`to be the purpose that is achieved by either embodiment, and does not explain how
`
`or why one would combine the selected parts of each embodiment. At best, this
`
`shows that the two embodiments of Throckmorton are in the same field of
`
`endeavor, which the Board has found to be insufficient to provide a reason to
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`combine. IPR2013-00183, Paper 12 at 9-10.
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`Case No. IPR2014-00269
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`The Petition also asserts that “the combination amounts to simply combining
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`elements contained in the same reference in precisely the manner described in the
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`reference.” Pet. 13. The Petition, however, provides no citation to any evidence to
`
`support this assertion. Accordingly, at best, this is conclusory attorney argument.
`
`The Board has previously found that conclusory attorney argument is not sufficient
`
`to establish a reasonable likelihood that the petitioner would prevail. IPR2013-
`
`00361, Paper 8 (Dec. 13, 2013), at 21(citing In re Huang, 100 F.3d 135, 139-40
`
`(Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)).
`
`Next, the Petition asserts that it is “[c]ombining the retrieving-internet-
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`information-using-a-URL as described in the two-way embodiment, with the
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`known method of displaying a web page retrieved with a URL simultaneously with
`
`a video program.” Pet. 13. The only support for this statement, however, is a
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`citation to a declaration which parrots the Petition without further explanation.
`
`Compare Pet. 13. (“Combining the retrieving-internet-information-using-a-URL as
`
`described in the two-way embodiment, with the known method of displaying a web
`
`page retrieved with a URL simultaneously with a video program”) with NTFX-
`
`1003 at 21-22 (“Combining the retrieving-internet-information-using-a-URL as
`
`described in the two-way embodiment, with the known method of displaying a web
`
`page retrieved with a URL simultaneously with a video program”). Rule 42.65
`
`
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`Case No. IPR2014-00269
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`explains that expert testimony that does not disclose the underlying facts or data on
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`which the opinion is based is entitled to little to no weight.
`
`The Petition also asserts that “[t]his result is predictable because
`
`Throckmorton specifically teaches such a result.” The only support for this
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`statement, however, is a citation to a declaration which parrots the Petition without
`
`further explanation. Compare Pet. 13. (“This result is predictable because
`
`Throckmorton specifically teaches such a result.”) with NTFX-1003 at 22 (“This
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`result is predictable because Throckmorton specifically teaches such a result.”).
`
`Rule 42.65 explains that expert testimony that does not disclose the underlying
`
`facts or data on which the opinion is base
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