`Filed: April 4, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NETFLIX, INC.
`Petitioner
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`v.
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`OPENTV, INC.
`Patent Owner
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`Case IPR2014-00274
`Patent 6,018,768
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`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 6,018,768
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`Case No. IPR2014-00274
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`Table of Contents
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`I.
`
`II.
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`Preliminary Statement ..................................................................................... 1
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`The Board Should Deny Netflix’s Petition Because All of the Grounds
`in the Petition are Uninstitutable ..................................................................... 3
`
`A. All of the grounds for claims 1-20 are uninstitutable because
`the petition fails to articulate material facts needed to construe
`portions of the claims identified by Netflix as means-plus-
`function .................................................................................................. 4
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`B. All of the grounds for claims 1-20 are uninstitutable because
`the petition fails to articulate information necessary to show
`obviousness ........................................................................................... 6
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`1.
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`2.
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`The petition fails to articulate where each of the claim
`elements is found in the cited art ................................................ 7
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`The petition fails to articulate a complete obviousness
`analysis with respect to Throckmorton ..................................... 10
`
`a)
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`b)
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`Unsupported attorney arguments to combine ................. 13
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`“Reasons to combine” parroted by the declaration ........ 13
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`III. Conclusion ..................................................................................................... 16
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`i
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`Case No. IPR2014-00274
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`
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`TABLE OF AUTHORITIES
`
`Cases
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ............................................................................................ 11
`
` Page(s)
`
`Statutes
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`35 U.S.C. § 103 ........................................................................................................ 10
`
`35 U.S.C. § 312 .................................................................................................passim
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`35 U.S.C. § 314 .......................................................................................................... 3
`
`Rules
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`37 C.F.R. § 42.6 ..................................................................................................... 5, 9
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`37 C.F.R. § 42.22 ......................................................................................... 2, 3, 6, 10
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`37 C.F.R. § 42.24 ....................................................................................................... 5
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`37 C.F.R. § 42.65 ..................................................................................................... 15
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`37 C.F.R. § 42.100 ..................................................................................................... 4
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`37 C.F.R. § 42.104 ............................................................................................passim
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`Other Authorities
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`77 Fed. Reg. 48620 (Aug. 14, 2012) ......................................................................... 4
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`77 Fed. Reg. 48688 (Aug. 14, 2012) ......................................................................... 4
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`IPR2013-00510, Paper 9 (Feb. 12, 2014) .............................................................. 5, 9
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`IPR2013-00183, Paper 12 (Jul. 31, 2013) ................................................... 10, 11, 16
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`
`ii
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`Case No. IPR2014-00274
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`I.
`
`Preliminary Statement
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`Netflix’s petition challenging OpenTV’s market leading invention fails to
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`satisfy the statutory and regulatory requirements for an inter partes review petition,
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`so it should be denied. The patented technology relates to Over-the-Top delivery of
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`content (such as movies, television, and other media) over the Internet, which
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`forms a 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. Just recently, Mr. Kudelski was honored in memoriam
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`as an inventor by the Academy of Motion Picture Arts and Sciences at the 86th
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`Annual Academy Awards in March, 2014.
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`OpenTV formally notified Petitioner Netflix, Inc., that it was using
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`OpenTV’s patented technology, including that of U.S. Patent No. 6,018,768, in its
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`streaming video service, and on December 19, 2012, after nearly 12 months of
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`Netflix ignoring OpenTV’s repeated requests for a license, OpenTV filed a patent
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`infringement lawsuit against Netflix in Delaware. See OPENTV Exhibit 2002,
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`Complaint in OpenTV, Inc., v. Netflix, Inc. Netflix could no longer ignore
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`Case No. IPR2014-00274
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`OpenTV’s patents, but instead of addressing the matter directly, Netflix continued
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`its delay tactics, waiting until the very last moment to file a flawed and incomplete
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`petition for inter partes review of the ’768 patent, hoping to side-step liability from
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`its continuing use of OpenTV’s patented technology.
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`Netflix’s petition requests the cancellation of claims 1-20 of U.S. Patent No.
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`6,018,768 based on multiple obviousness grounds, all relying on U.S. Patent No.
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`5,818,441 to Throckmorton et al. (“Throckmorton”). All of these grounds are
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`uninstitutable, however, because the petition fails to articulate material facts
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`needed to construe the claims, a failing that touches every challenged claim. It also
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`fails to specify where each element of the claims is found in the cited art, and fails
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`to provide a complete obviousness analysis, leaving the proposed obviousness case
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`for every claim fatally flawed in multiple respects.
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`A petition for inter partes review “may be considered only if . . . the petition
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`identifies, in writing and with particularity, each claim challenged, the grounds on
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`which the challenge to each claim is based, and the evidence that supports the
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`grounds for the challenge to each claim.” 35 U.S.C. § 312. To ensure that this
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`statutory requirement is met, the Board’s rules specify detailed requirements for a
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`petition, including an identification of how each challenged claim is to be
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`construed, how each construed claim is unpatentable, and where each element of
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`the claim is found in the prior art. 37 C.F.R. § 42.104(b); see also 37 C.F.R.
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`Case No. IPR2014-00274
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`§ 42.22(a)(2) (requiring a full statement of the reasons for the relief requested,
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`including a detailed explanation of the significance of the evidence including
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`material facts, and the governing law, rules, and precedent). Here, the petition does
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`not satisfy these requirements.
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`Because Netflix’s petition is deficient in multiple ways, the Board should
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`deny it as uninstitutable for failing to establish a reasonable likelihood of
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`prevailing on any claim.
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`II. The Board Should Deny Netflix’s Petition Because All of the Grounds in
`the Petition are Uninstitutable
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`For a petition to be institutable, it must establish that there is “a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of the claims
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`challenged in the petition.” 35 U.S.C. § 314(a). To do so, the statute requires that
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`“the petition identif[y], in writing and with particularity, each claim challenged, the
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`grounds on which the challenge to each claim is based, and the evidence that
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`supports the grounds for the challenge to each claim.” 35 U.S.C. § 312.
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`To implement the statute, the Board’s rules require that each petition include
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`“[a] full statement of the reasons for the relief requested, including a detailed
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`explanation on the significance of the evidence including material facts, and the
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`governing law, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). Compliance with
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`this rule is essential because “[v]ague arguments and generic citations to the record
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`are fundamentally unfair to an opponent and do not provide sufficient notice to an
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`Case No. IPR2014-00274
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`opponent and creates inefficiencies for the Board.” 77 Fed. Reg. 48620 (Aug. 14,
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`2012).
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`Because Netflix’s petition fails to satisfy these requirements, inter partes
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`review should not be instituted.
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`A. All of the grounds for claims 1-20 are uninstitutable because the
`petition fails to articulate material facts needed to construe
`portions of the claims identified by Netflix as means-plus-function
`For each claim challenged, a petition for inter partes review must explain
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`“[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104(b). According
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`to Netflix, claim terms are given “the broadest reasonable interpretation in light of
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`the specification.” Pet. 6 (citing 37 C.F.R. § 42.100(b)). Thus, one of the material
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`facts for construing claim terms is the patent’s specification. Indeed, for means-
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`plus-function terms, the rules explicitly require that “the construction of the claim
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`must identify the specific portions of the specification that describe the structure,
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`material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b).
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`This rule is “consistent with 35 U.S.C. § 312(a)(3), as amended, which requires
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`that the petition identify, in writing and with particularity, each claim challenged,
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`the grounds on which the challenge is based, and the evidence supporting the
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`challenge.” 77 Fed. Reg. 48688 (Aug. 14, 2012) (emphasis added).
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`The petition alleges five means-plus-function elements spread amongst
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`independent claims 1, 4, 12, and 19 (all of the independent claims) and dependent
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`claim 5. Pet. 7-9. At least one of the alleged means-plus-function elements is thus
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`recited by every claim in the ’768 patent, either directly or indirectly by virtue of a
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`dependence from one of independent claims 1, 4, 12, or 19. Despite contending
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`that the elements are means-plus-function elements, the petition fails to identify or
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`even cite any part of the specification in support of its proposed constructions for
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`these elements, instead only citing to exhibit NTFX-1003, which is a declaration.
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`Id.
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`To the extent that the petition purports to provide citations to a declaration in
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`support of its proposed claim constructions, the additional arguments presented in
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`the declaration cannot cure the deficiencies of the petition. The Board has
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`previously “decline[d] to consider information presented in a supporting
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`declaration, but not discussed in a petition, because, among other reasons, doing so
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`would encourage the use of declarations to circumvent the page limits that apply to
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`petitions. Along those lines, [the Board’s] rules prohibit arguments made in a
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`supporting document from being incorporated by reference into a petition. See
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`37 C.F.R. § 42.6(a)(3).”1 IPR2013-00510, Paper 9 (Feb. 12, 2014) at 8-9. Indeed,
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`35 U.S.C. § 312 requires that “the petition identif[y], in writing and with
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`particularity, each claim challenged, the grounds on which the challenge to each
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`1 Notably, the petition’s length in this case (59 pages) is very close to the 60-page
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`limit. 37 C.F.R. § 42.24(a)(1)(i).
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`claim is based, and the evidence that supports the grounds for the challenge to each
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`claim.” (emphasis added).2
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`Because the petition fails to provide support for its proposed construction of
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`the alleged means-plus-function elements, it lacks the particularity required by 35
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`U.S.C. § 312 and violates rules 42.104(b) and 42.22(a)(2). This lack of
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`particularity makes the proposed grounds for independent claims 1, 4, 12, and 19,
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`and their dependent claims 2, 3, 5-11, 13-18, and 20 uninstitutable. See 35 U.S.C.
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`§ 312.
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`B. All of the grounds for claims 1-20 are uninstitutable because the
`petition fails to articulate information necessary to show
`obviousness
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`The petition alleges that claims 1-20 are obvious over Throckmorton, alone
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`or in combination with other references. Pet. 5-6. These grounds are deficient at
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`least because: (i) they fail to articulate where each element of the claims is found in
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`the cited art; and (ii) they fail to articulate a complete obviousness analysis.
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`2 Patent Owner does not propose any claim construction at this time—or take any
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`position on whether the portions of the claims identified by Netflix as means-plus-
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`function are indeed means-plus-function— but reserves the right to do so if inter
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`partes review is instituted.
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`Case No. IPR2014-00274
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`1. The petition fails to articulate where each of the claim elements
`is found in the cited art
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`Consistent with 35 U.S.C. § 312, which requires that “the petition identif[y],
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`in writing and with particularity, each claim challenged, the grounds on which the
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`challenge to each claim is based, and the evidence that supports the grounds for the
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`challenge to each claim,” Rule 42.104(b)(4) requires that the “petition must specify
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`where each element of the claim is found in the prior art patents or printed
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`publications.” The petition does not articulate where each of the claim elements is
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`found in the cited art, so it lacks the particularity required by the statute and the
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`rules.
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`Every independent claim recites “a controller means” and “a web browser
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`[that] retrieves . . . requested Internet information segments under the direction and
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`control of the controller means.” These limitations are mentioned on pages 15-17
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`(elements 1.3 and 1.4), 25-26 (elements 19.7 and 19.8), 33-34 (elements 4.4 and
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`4.5), and 44-46 (elements 12.4 and 12.5) of the petition.3 But the petition cites
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`disparate portions of the art for the “controller means” and “web browser”
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`limitations, failing to explain how the alleged “web browser” is under the direction
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`and control of the alleged “controller means.” The petition thus never identifies
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`3 The “controller means” limitation is also mentioned on pages 55-56 (elements 1.3
`and 19.7), 56-57 (element 4.4), and page 58 (element 12.4) of the petition.
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`where the “web browser” limitation is found in the cited art, as required by Rule
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`42.104(b)(4) to satisfy 35 U.S.C. § 312.
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`According to Netflix’s petition, “Throckmorton discloses ‘a controller
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`means . . .’ because it teaches a ‘microprocessor’ . . . that controls an ‘associated
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`data protocol manager 60.’” See, e.g., Pet. 15-16 (citing NTFX-1007,
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`Throckmorton, at 6:13-14 and 6:54-60). The microprocessor discussed in the
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`quoted lines of Throckmorton is microprocessor 38. NTFX-1007 at 6:13-14.
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`The petition cites several portions of Throckmorton in support of its
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`argument that Throckmorton discloses “a web browser [that] retrieves . . .
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`requested Internet information segments under the direction and control of the
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`controller means.” Pet. 16-17. Notably, however, only one of the cited portions of
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`Throckmorton (6:13-14) even refers to microprocessor 38, the alleged “controller
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`means” that the petition identifies. In full, the cited portion states:
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`In the preferred embodiment, [receiver 36] is a broadcast
`television receiver or tuner inside of a personal computer.
`Connected to receiver 36 is a microprocessor 38.
`Connected to microprocessor 38 is memory 40 which
`would typically be semiconductor RAM.
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`NTFX-1007 at 6:11-15. Thus, the petition cites no portion of Throckmorton that in
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`any way links the “web browser” it identifies in Throckmorton to microprocessor
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`38, the “controller means” it identifies in Throckmorton, much less establishes that
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`Case No. IPR2014-00274
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`the browser “retrieves . . . requested Internet information segments under the
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`direction and control” of microprocessor 38. To the contrary, the petition merely
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`alleges that Throckmorton discloses the pertinent “web browser” limitations of the
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`claims, citing only a declaration attached to the petition that suffers from the same
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`deficiency as the petition itself.
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`There is one extra citation in the declaration that refers to microprocessor 38,
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`but it does not cure the deficiency of the petition because it does not refer to the
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`alleged “web browser.” NTFX-1003 at 34 (citing NTFX-1003 at 8:19-24).
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`Moreover, arguments presented in an expert declaration cannot cure the
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`deficiencies of the petition. The Board has previously “decline[d] to consider
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`information presented in a supporting declaration, but not discussed in a petition,
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`because, among other reasons, doing so would encourage the use of declarations to
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`circumvent the page limits that apply to petitions. Along those lines, [the Board’s]
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`rules prohibit arguments made in a supporting document from being incorporated
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`by reference into a petition. See 37 C.F.R. § 42.6(a)(3).” IPR2013-00510, Paper 9
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`(Feb. 12, 2014), at 8-9. Indeed, 35 U.S.C. § 312 requires that “the petition
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`identif[y], in writing and with particularity, each claim challenged, the grounds on
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`which the challenge to each claim is based, and the evidence that supports the
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`grounds for the challenge to each claim.” (Emphasis added). Netflix’s petition fails
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`to identify where at least the “web browser” limitation of every claim (including
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`Case No. IPR2014-00274
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`the “retrieves . . . requested Internet information segments under the direction and
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`control” portion of it) is found in Throckmorton or any other reference, so all of
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`the grounds proposed for claims 1-20 are uninstitutable.
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`2. The petition fails to articulate a complete obviousness analysis
`with respect to Throckmorton
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`Consistent with 35 U.S.C. § 312, which requires that “the petition identif[y],
`
`in writing and with particularity, each claim challenged, the grounds on which the
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`challenge to each claim is based, and the evidence that supports the grounds for the
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`challenge to each claim,” Rule 42.22(a)(2) requires that the petition set forth “[a]
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`full statement of the reasons for the relief requested, including a detailed
`
`explanation of the significance of the evidence including material facts, and the
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`governing law, rules, and precedent.” Although all of the grounds rely upon
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`obviousness arguments under 35 U.S.C. § 103(a), the petition does not provide a
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`complete obviousness analysis with respect to Throckmorton with respect to any of
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`the grounds, so it lacks the particularity required by the statute and the rules.
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`To provide a complete obviousness analysis, a petition must include an
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`“explanation of how the teachings of the references would be arranged or
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`combined or why a person of ordinary skill would have made the combination”
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`and “some reason why a person of ordinary skill in the art would have thought to
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`combine particular available elements of knowledge, as evidenced by the prior art,
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`to reach the claimed invention.” IPR2013-00183, Paper 12, at 9 (Jul. 31, 2013)
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`10
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`(citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).) When, as here, a
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`petition’s analysis of obviousness is “incomplete,” it is “insufficient to demonstrate
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`a reasonable likelihood of prevailing on [the] obviousness challenge.” IPR2013-
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`00183, paper 12, at 10.
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`Netflix’s petition does not explain its proposed combination of disparate
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`portions of Throckmorton, so it lacks a complete analysis. The petition states that
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`its application of Throckmorton relies upon the teachings contained in two
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`embodiments of Throckmorton: “a one-way communication system and a two-way
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`communication system.” Pet. 11-12. The petition, however, fails to articulate how
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`these different systems would be combined or even which system teaches which
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`claim element. Instead, the petition merely cites sections of Throckmorton in the
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`abstract, without explaining whether each section addresses the one-way
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`communication system or the two-way communication system. See, e.g., Pet. 14.
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`For example, with respect to element 1.1, Netflix’s petition cites Throckmorton at
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`4:13-20, 6:4-11, and 9:1-12. Pet. 14. The first two citations refer to sections
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`addressing the one-way communication system of Throckmorton, while the third
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`refers to a section addressing the two-way communication system of
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`Throckmorton. See NTFX-1007 at 8:16-24 (introducing the two-way
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`communication system for the first time). The petition, however, fails to articulate
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`Case No. IPR2014-00274
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`how the teachings of the different sections (which address different systems) would
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`be combined. See Pet. 14-15.
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`Worse, after contrasting the one-way communication system’s handling of
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`web pages with the two-way communication system’s handling of URLs4, Pet. 10,
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`Netflix’s petition appears to cite the one-way communication system of
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`Throckmorton at 6:13-14 and 6:54-60 for the proposition that Throckmorton
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`teaches:
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`the microprocessor in the consumer equipment that
`controls the data protocol manager (that is connected to
`the decoder) for converting the incoming associated data
`(e.g., URL) so that it can be used by the communications
`manager,
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`Pet. 15-16 (emphasis added). Such internal contradiction demonstrates why the
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`petition’s failure to articulate how the different systems would be combined or
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`even which system teaches which claim element cannot be overlooked.
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`The petition also fails to articulate any reasons why the different systems of
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`Throckmorton would be combined to achieve the subject matter of claims 1-20.
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`Instead, all of the purported “reasons to combine” are either unsupported attorney
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`4 Throckmorton only discusses a URL in the context of the two-way
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`communication system, not the one-way communication system. NTFX-1007 at
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`9:1-7.
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`Case No. IPR2014-00274
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`argument or citations to a declaration that just parrots the language of the petition.
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`Pet. 12; NTFX-1003 at 24-25.
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`a)
`Netflix’s petition asserts, without citing any supporting evidence, that “the
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`Unsupported attorney arguments to combine
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`combination amounts to simply combining elements contained in the same
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`reference in precisely the manner described in the reference.” Pet. 12. This
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`unsupported reason to combine should be given no weight.
`
`b)
`The rest of the purported “reasons to combine” are supported by only
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`“Reasons to combine” parroted by the declaration
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`citations to a declaration filed with the petition. In particular, Netflix’s petition
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`asserts that (i) “[c]ombining the retrieving-internet-information-using-a-URL as
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`described in the two-way embodiment, with the known method of displaying a web
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`page simultaneously with a video program as described by the one-way
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`embodiment, yields the predictable result of displaying a web page retrieved with a
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`URL simultaneously with a video program,” (ii) “[t]his result is predictable
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`because Throckmorton specifically teaches such a result,” (iii) “[t]his
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`implementation of the teachings of Throckmorton would be desirable because it
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`would allow the user to have direct access to relevant online information during the
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`program reception without the need for changing screens,” and (iv) “Throckmorton
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`specifically provides a motivation to make this combination, because it was
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`Case No. IPR2014-00274
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`desirable to make an experience for viewers that integrated data with television
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`program reception.” Pet. 12. The declaration merely parrots the petition without
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`further explanation or even citation to underlying evidence:
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`Pet. 12
`Combining the retrieving-internet-
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`NTFX-1003 at 24-25 (Declaration)
`Combining the retrieving-internet-
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`information-using-a-URL as described
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`information-using-a-URL as described
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`in the two-way embodiment, with the
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`in the two-way embodiment, with the
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`known method of displaying a web page
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`known method of displaying a web page
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`simultaneously with a video program as
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`simultaneously with a video program as
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`described by the one-way embodiment,
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`described by the one-way embodiment,
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`yields the predictable result of
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`yields the predictable result of
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`displaying a web page retrieved with a
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`displaying a web page retrieved with a
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`URL simultaneously with a video
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`URL simultaneously with a video
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`program. (NTFX-1003, pg. 24).
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`program.
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`This result is predictable because
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`This result is predictable because
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`Throckmorton specifically teaches such
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`Throckmorton specifically teaches such
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`a result. (NTFX-1003, pg. 24).
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`a result.
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`This implementation of the teachings of
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`This implementation of the teachings of
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`Throckmorton would be desirable
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`Throckmorton would be desirable
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`because it would allow the user to have
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`because it would allow the user to have
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`Case No. IPR2014-00274
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`Pet. 12
`direct access to relevant online
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`NTFX-1003 at 24-25 (Declaration)
`direct access to relevant online
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`information during the program
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`information during the program
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`reception without the need for changing
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`reception without the need for changing
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`screens. (NTFX-1003, pp. 23-24).
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`screens.
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`Throckmorton specifically provides a
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`Throckmorton specifically provides a
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`motivation to make this combination,
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`motivation to make this combination,
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`because it was desirable to make an
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`because it states that it was desirable to
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`experience for viewers that integrated
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`make an experience for viewers that
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`data with television program reception.
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`integrated data with television program
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`(NTFX-1003, pg. 25).
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`reception.
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`Rule 42.65 explains that expert testimony that does not disclose the underlying
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`facts or data on which the opinion is based is entitled to little to no weight. Here,
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`where the declaration simply parrots attorney argument, it should be entitled to no
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`weight.
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`Nowhere does Throckmorton specifically teach any result of combining its
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`different one-way and two-way communication systems, as alleged by the petition
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`and declaration. Nor does Throckmorton specifically provide a reason to make the
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`combination. Indeed, both systems of Throckmorton appear to individually fulfill
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`the purposes espoused by Throckmorton, so Throckmorton provides no reason to
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`Case No. IPR2014-00274
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`combine them. At best, Throckmorton demonstrates that the systems are in the
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`same field of endeavor, which the Board has found to be insufficient to provide a
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`reason to combine. See, IPR2013-00183, Paper 12, at 9 (“The fact that Murphy,
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`Khairkhahan, and Lane all concern human heart repair is not in itself sufficient
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`rationale for making the combination.”).
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`Because the obviousness presentation is incomplete, it is “insufficient to
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`demonstrate a reasonable likelihood of prevailing on [the] obviousness challenge.”
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`Id. at 10. Accordingly, all the grounds proposed for claims 1-20 are uninstitutable
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`for this additional reason.
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`III. Conclusion
`For the reasons set forth above, the petition is deficient and institution
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`should be denied.
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`The undersigned attorneys welcome a telephone call should the Office have
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`any requests or questions. If there are any fees due in connection with the filing of
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`this paper, please charge the required fees to our deposit account no. 06-0916.
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`Dated: April 4, 2014
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`Respectfully submitted,
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`By:
`Erika H. Arner
`Registration No. 57,540
`Joshua L. Goldberg
`Registration No. 59, 369
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`Counsel for OpenTV, Inc.
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`Case No. IPR2014-00274
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Patent
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`Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent
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`No. 6,018,768 was served on April 4, 2014 via FedEx and email directed to
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`counsel of record for the Petitioner at the following:
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`Andrew S. Ehmke
`andy.ehmke.ipr@haynesboone.com
`Scott Jarratt
`scott.jarratt.ipr@haynesboone.com
`HAYNES AND BOONE, LLP
`2323 Victory Ave., Suite 700
`Dallas, Texas 75219
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`
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`/s/ Ashley Cheung
`Ashley F. Cheung
`Case Manager
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
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