Paper No.
`Filed: April 4, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
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`
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`NETFLIX, INC.
`Petitioner
`
`v.
`
`OPENTV, INC.
`Patent Owner
`
`
`
`
`
`
`
`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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`
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`
`
`Filed: April 4, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`NETFLIX, INC.
`Petitioner
`
`v.
`
`OPENTV, INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2014-00274
`Patent 6,018,768
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 6,018,768
`
`
`
`
`
`
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`
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`Case No. IPR2014-00274
`
`Table of Contents
`
`I.
`
`II.
`
`Preliminary Statement ..................................................................................... 1
`
`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
`
`B. All of the grounds for claims 1-20 are uninstitutable because
`the petition fails to articulate information necessary to show
`obviousness ........................................................................................... 6
`
`1.
`
`2.
`
`The petition fails to articulate where each of the claim
`elements is found in the cited art ................................................ 7
`
`The petition fails to articulate a complete obviousness
`analysis with respect to Throckmorton ..................................... 10
`
`a)
`
`b)
`
`Unsupported attorney arguments to combine ................. 13
`
`“Reasons to combine” parroted by the declaration ........ 13
`
`III. Conclusion ..................................................................................................... 16
`
`
`
`
`
`
`
`i
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`Case No. IPR2014-00274
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`
`
`TABLE OF AUTHORITIES
`
`Cases
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ............................................................................................ 11
`
` Page(s)
`
`Statutes
`
`35 U.S.C. § 103 ........................................................................................................ 10
`
`35 U.S.C. § 312 .................................................................................................passim
`
`35 U.S.C. § 314 .......................................................................................................... 3
`
`Rules
`
`37 C.F.R. § 42.6 ..................................................................................................... 5, 9
`
`37 C.F.R. § 42.22 ......................................................................................... 2, 3, 6, 10
`
`37 C.F.R. § 42.24 ....................................................................................................... 5
`
`37 C.F.R. § 42.65 ..................................................................................................... 15
`
`37 C.F.R. § 42.100 ..................................................................................................... 4
`
`37 C.F.R. § 42.104 ............................................................................................passim
`
`Other Authorities
`
`77 Fed. Reg. 48620 (Aug. 14, 2012) ......................................................................... 4
`
`77 Fed. Reg. 48688 (Aug. 14, 2012) ......................................................................... 4
`
`IPR2013-00510, Paper 9 (Feb. 12, 2014) .............................................................. 5, 9
`
`IPR2013-00183, Paper 12 (Jul. 31, 2013) ................................................... 10, 11, 16
`
`
`
`
`
`ii
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`
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`Case No. IPR2014-00274
`
`I.
`
`Preliminary Statement
`
`Netflix’s petition challenging OpenTV’s market leading invention fails to
`
`satisfy the statutory and regulatory requirements for an inter partes review petition,
`
`so it should be denied. The patented technology relates to Over-the-Top delivery of
`
`content (such as movies, television, and other media) over the Internet, which
`
`forms a foundation for Patent Owner OpenTV’s highly successful digital television
`
`business. That business includes over 200 million digital set-top boxes and
`
`televisions shipped to consumers with OpenTV software and 80 worldwide
`
`customers that run OpenTV solutions. Indeed, The Kudelski Group, of which
`
`OpenTV is a subsidiary, has been innovating in the content industry for more than
`
`60 years, and its founder, Stefan Kudelski, has received numerous awards for his
`
`innovations in the industry. Just recently, Mr. Kudelski was honored in memoriam
`
`as an inventor by the Academy of Motion Picture Arts and Sciences at the 86th
`
`Annual Academy Awards in March, 2014.
`
`OpenTV formally notified Petitioner Netflix, Inc., that it was using
`
`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
`
`Netflix ignoring OpenTV’s repeated requests for a license, OpenTV filed a patent
`
`infringement lawsuit against Netflix in Delaware. See OPENTV Exhibit 2002,
`
`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
`
`its delay tactics, waiting until the very last moment to file a flawed and incomplete
`
`petition for inter partes review of the ’768 patent, hoping to side-step liability from
`
`its continuing use of OpenTV’s patented technology.
`
`Netflix’s petition requests the cancellation of claims 1-20 of U.S. Patent No.
`
`6,018,768 based on multiple obviousness grounds, all relying on U.S. Patent No.
`
`5,818,441 to Throckmorton et al. (“Throckmorton”). All of these grounds are
`
`uninstitutable, however, because the petition fails to articulate material facts
`
`needed to construe the claims, a failing that touches every challenged claim. It also
`
`fails to specify where each element of the claims is found in the cited art, and fails
`
`to provide a complete obviousness analysis, leaving the proposed obviousness case
`
`for every claim fatally flawed in multiple respects.
`
`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
`
`grounds for the challenge to each claim.” 35 U.S.C. § 312. To ensure that this
`
`statutory requirement is met, the Board’s rules specify detailed requirements for a
`
`petition, including an identification of how each challenged claim is to be
`
`construed, how each construed claim is unpatentable, and where each element of
`
`the claim is found in the prior art. 37 C.F.R. § 42.104(b); see also 37 C.F.R.
`
`2
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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,
`
`including a detailed explanation of the significance of the evidence including
`
`material facts, and the governing law, rules, and precedent). Here, the petition does
`
`not satisfy these requirements.
`
`Because Netflix’s petition is deficient in multiple ways, the Board should
`
`deny it as uninstitutable for failing to establish a reasonable likelihood of
`
`prevailing on any claim.
`
`II. The Board Should Deny Netflix’s Petition Because All of the Grounds in
`the Petition are Uninstitutable
`
`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). To do so, the statute 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.” 35 U.S.C. § 312.
`
`To implement 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 on the significance of the evidence including material facts, and the
`
`governing law, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). Compliance with
`
`this rule is essential because “[v]ague arguments and generic citations to the record
`
`are fundamentally unfair to an opponent and do not provide sufficient notice to an
`
`3
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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,
`
`2012).
`
`Because Netflix’s petition fails to satisfy these requirements, inter partes
`
`review should not be instituted.
`
`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
`
`“[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104(b). According
`
`to Netflix, 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 material
`
`facts for construing claim terms is the patent’s specification. Indeed, for 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 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 (Aug. 14, 2012) (emphasis added).
`
`The petition alleges five means-plus-function elements spread amongst
`
`independent claims 1, 4, 12, and 19 (all of the independent claims) and dependent
`
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`Case No. IPR2014-00274
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`claim 5. Pet. 7-9. At least one of the alleged means-plus-function elements is thus
`
`recited by every claim in the ’768 patent, either directly or indirectly by virtue of a
`
`dependence from one of independent claims 1, 4, 12, or 19. Despite contending
`
`that the elements are means-plus-function elements, the petition fails to identify or
`
`even cite any part of the specification in support of its proposed constructions for
`
`these elements, instead only citing to exhibit NTFX-1003, which is 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
`
`the declaration cannot cure the deficiencies of the petition. The Board has
`
`previously “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).”1 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 challenged, the grounds on which the challenge to each
`
`1 Notably, the petition’s length in this case (59 pages) is very close to the 60-page
`
`limit. 37 C.F.R. § 42.24(a)(1)(i).
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`Case No. IPR2014-00274
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`claim is based, and the evidence that supports the grounds for the challenge to each
`
`claim.” (emphasis added).2
`
`Because the petition fails to provide support for its proposed construction of
`
`the alleged means-plus-function elements, it lacks the particularity required by 35
`
`U.S.C. § 312 and violates rules 42.104(b) and 42.22(a)(2). This lack of
`
`particularity makes the proposed grounds for independent claims 1, 4, 12, and 19,
`
`and their dependent claims 2, 3, 5-11, 13-18, and 20 uninstitutable. See 35 U.S.C.
`
`§ 312.
`
`B. All of the grounds for claims 1-20 are uninstitutable because the
`petition fails to articulate information necessary to show
`obviousness
`
`The petition alleges that claims 1-20 are obvious over Throckmorton, alone
`
`or in combination with other references. Pet. 5-6. These grounds are deficient at
`
`least because: (i) they fail to articulate where each element of the claims is found in
`
`the cited art; and (ii) they fail to articulate a complete obviousness analysis.
`
`
`2 Patent Owner does not propose any claim construction at this time—or take any
`
`position on whether the portions of the claims identified by Netflix as means-plus-
`
`function are indeed means-plus-function— but reserves the right to do so if inter
`
`partes review is instituted.
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`6
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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
`
`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
`
`challenge to each claim is based, and the evidence that supports the grounds for the
`
`challenge to each claim,” 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.” The petition does not articulate where each of the claim elements is
`
`found in the cited art, so it lacks the particularity required by the statute and the
`
`rules.
`
`Every independent claim recites “a controller means” and “a web browser
`
`[that] retrieves . . . requested Internet information segments under the direction and
`
`control of the controller means.” These limitations are mentioned on pages 15-17
`
`(elements 1.3 and 1.4), 25-26 (elements 19.7 and 19.8), 33-34 (elements 4.4 and
`
`4.5), and 44-46 (elements 12.4 and 12.5) of the petition.3 But the petition cites
`
`disparate portions of the art for the “controller means” and “web browser”
`
`limitations, failing to explain how the alleged “web browser” is under the direction
`
`and control of the alleged “controller means.” The petition thus never identifies
`
`
`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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`Case No. IPR2014-00274
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`where the “web browser” limitation is found in the cited art, as required by Rule
`
`42.104(b)(4) to satisfy 35 U.S.C. § 312.
`
`According to Netflix’s petition, “Throckmorton discloses ‘a controller
`
`means . . .’ because it teaches a ‘microprocessor’ . . . that controls an ‘associated
`
`data protocol manager 60.’” See, e.g., Pet. 15-16 (citing NTFX-1007,
`
`Throckmorton, at 6:13-14 and 6:54-60). The microprocessor discussed in the
`
`quoted lines of Throckmorton is microprocessor 38. NTFX-1007 at 6:13-14.
`
`The petition cites several portions of Throckmorton in support of its
`
`argument that Throckmorton discloses “a web browser [that] retrieves . . .
`
`requested Internet information segments under the direction and control of the
`
`controller means.” Pet. 16-17. Notably, however, only one of the cited portions of
`
`Throckmorton (6:13-14) even refers to microprocessor 38, the alleged “controller
`
`means” that the petition identifies. In full, the cited portion states:
`
`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.
`
`NTFX-1007 at 6:11-15. Thus, the petition cites no portion of Throckmorton that in
`
`any way links the “web browser” it identifies in Throckmorton to microprocessor
`
`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
`
`direction and control” of microprocessor 38. To the contrary, the petition merely
`
`alleges that Throckmorton discloses the pertinent “web browser” limitations of the
`
`claims, citing only a declaration attached to the petition that suffers from the same
`
`deficiency as the petition itself.
`
`There is one extra citation in the declaration that refers to microprocessor 38,
`
`but it does not cure the deficiency of the petition because it does not refer to the
`
`alleged “web browser.” NTFX-1003 at 34 (citing NTFX-1003 at 8:19-24).
`
`Moreover, arguments presented in an expert declaration cannot cure the
`
`deficiencies of the petition. The Board has previously “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 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.” (Emphasis added). Netflix’s petition fails
`
`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
`
`the grounds proposed for claims 1-20 are uninstitutable.
`
`2. The petition fails to articulate a complete obviousness analysis
`with respect to Throckmorton
`
`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
`
`challenge to each claim is based, and the evidence that supports the grounds for the
`
`challenge to each claim,” Rule 42.22(a)(2) requires that the petition set forth “[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.” Although all of the grounds rely upon
`
`obviousness arguments under 35 U.S.C. § 103(a), the petition does not provide a
`
`complete obviousness analysis with respect to Throckmorton with respect to any of
`
`the grounds, so it lacks the particularity required by the statute and the rules.
`
`To provide a complete obviousness analysis, a petition must include an
`
`“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 by the prior art,
`
`to reach the claimed invention.” IPR2013-00183, Paper 12, at 9 (Jul. 31, 2013)
`
`10
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`Case No. IPR2014-00274
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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
`
`a reasonable likelihood of prevailing on [the] obviousness challenge.” IPR2013-
`
`00183, paper 12, at 10.
`
`Netflix’s petition does not explain its proposed combination of disparate
`
`portions of Throckmorton, so it lacks a complete analysis. The petition states that
`
`its application of Throckmorton relies upon the teachings contained in two
`
`embodiments of Throckmorton: “a one-way communication system and a two-way
`
`communication system.” Pet. 11-12. The petition, however, fails to articulate how
`
`these different systems would be combined or even which system teaches which
`
`claim element. Instead, the petition merely cites sections of Throckmorton in the
`
`abstract, without explaining whether each section addresses the one-way
`
`communication system or the two-way communication system. See, e.g., Pet. 14.
`
`For example, with respect to element 1.1, Netflix’s petition cites Throckmorton at
`
`4:13-20, 6:4-11, and 9:1-12. Pet. 14. The first two citations refer to sections
`
`addressing the one-way communication system of Throckmorton, while the third
`
`refers to a section addressing the two-way communication system of
`
`Throckmorton. See NTFX-1007 at 8:16-24 (introducing the two-way
`
`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
`
`be combined. See Pet. 14-15.
`
`Worse, after contrasting the one-way communication system’s handling of
`
`web pages with the two-way communication system’s handling of URLs4, Pet. 10,
`
`Netflix’s petition appears to cite the one-way communication system of
`
`Throckmorton at 6:13-14 and 6:54-60 for the proposition that Throckmorton
`
`teaches:
`
`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,
`
`Pet. 15-16 (emphasis added). Such internal contradiction demonstrates why the
`
`petition’s failure to articulate how the different systems would be combined or
`
`even which system teaches which claim element cannot be overlooked.
`
`The petition also fails to articulate any reasons why the different systems of
`
`Throckmorton would be combined to achieve the subject matter of claims 1-20.
`
`Instead, all of the purported “reasons to combine” are either unsupported attorney
`
`4 Throckmorton only discusses a URL in the context of the two-way
`
`communication system, not the one-way communication system. NTFX-1007 at
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`9:1-7.
`
`12
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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.
`
`Pet. 12; NTFX-1003 at 24-25.
`
`a)
`Netflix’s petition asserts, without citing any supporting evidence, that “the
`
`Unsupported attorney arguments to combine
`
`combination amounts to simply combining elements contained in the same
`
`reference in precisely the manner described in the reference.” Pet. 12. This
`
`unsupported reason to combine should be given no weight.
`
`b)
`The rest of the purported “reasons to combine” are supported by only
`
`“Reasons to combine” parroted by the declaration
`
`citations to a declaration filed with the petition. In particular, Netflix’s petition
`
`asserts that (i) “[c]ombining 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 by the one-way
`
`embodiment, yields the predictable result of displaying a web page retrieved with a
`
`URL simultaneously with a video program,” (ii) “[t]his result is predictable
`
`because Throckmorton specifically teaches such a result,” (iii) “[t]his
`
`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,” and (iv) “Throckmorton
`
`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
`
`further explanation or even citation to underlying evidence:
`
`Pet. 12
`Combining the retrieving-internet-
`
`NTFX-1003 at 24-25 (Declaration)
`Combining the retrieving-internet-
`
`information-using-a-URL as described
`
`information-using-a-URL as described
`
`in the two-way embodiment, with the
`
`in the two-way embodiment, with the
`
`known method of displaying a web page
`
`known method of displaying a web page
`
`simultaneously with a video program as
`
`simultaneously with a video program as
`
`described by the one-way embodiment,
`
`described by the one-way embodiment,
`
`yields the predictable result of
`
`yields the predictable result of
`
`displaying a web page retrieved with a
`
`displaying a web page retrieved with a
`
`URL simultaneously with a video
`
`URL simultaneously with a video
`
`program. (NTFX-1003, pg. 24).
`
`program.
`
`This result is predictable because
`
`This result is predictable because
`
`Throckmorton specifically teaches such
`
`Throckmorton specifically teaches such
`
`a result. (NTFX-1003, pg. 24).
`
`a result.
`
`This implementation of the teachings of
`
`This implementation of the teachings of
`
`Throckmorton would be desirable
`
`Throckmorton would be desirable
`
`because it would allow the user to have
`
`because it would allow the user to have
`
`14
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`
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`Case No. IPR2014-00274
`
`Pet. 12
`direct access to relevant online
`
`NTFX-1003 at 24-25 (Declaration)
`direct access to relevant online
`
`information during the program
`
`information during the program
`
`reception without the need for changing
`
`reception without the need for changing
`
`screens. (NTFX-1003, pp. 23-24).
`
`screens.
`
`Throckmorton specifically provides a
`
`Throckmorton specifically provides a
`
`motivation to make this combination,
`
`motivation to make this combination,
`
`because it was desirable to make an
`
`because it states that it was desirable to
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`experience for viewers that integrated
`
`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.
`
`
`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
`
`weight.
`
`Nowhere does Throckmorton specifically teach any result of combining its
`
`different one-way and two-way communication systems, as alleged by the petition
`
`and declaration. Nor does Throckmorton specifically provide a reason to make the
`
`combination. Indeed, both systems of Throckmorton appear to individually fulfill
`
`the purposes espoused by Throckmorton, so Throckmorton provides no reason to
`
`15
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`Case No. IPR2014-00274
`
`combine them. At best, Throckmorton demonstrates that the systems are in the
`
`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,
`
`Khairkhahan, and Lane all concern human heart repair is not in itself sufficient
`
`rationale for making the combination.”).
`
`Because the obviousness presentation is incomplete, it is “insufficient to
`
`demonstrate a reasonable likelihood of prevailing on [the] obviousness challenge.”
`
`Id. at 10. Accordingly, all the grounds proposed for claims 1-20 are uninstitutable
`
`for this additional reason.
`
`III. Conclusion
`For the reasons set forth above, the petition is deficient and institution
`
`should be denied.
`
`The undersigned attorneys welcome a telephone call should the Office have
`
`any requests or questions. If there are any fees due in connection with the filing of
`
`this paper, please charge the required fees to our deposit account no. 06-0916.
`
`Dated: April 4, 2014
`
`
`
`
`
`Respectfully submitted,
`
`By:
`Erika H. Arner
`Registration No. 57,540
`Joshua L. Goldberg
`Registration No. 59, 369
`
`Counsel for OpenTV, Inc.
`
`16
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`Case No. IPR2014-00274
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent
`
`Owner’s Preliminary Response to Petition for Inter Partes Review of U.S. Patent
`
`No. 6,018,768 was served on April 4, 2014 via FedEx and email directed to
`
`counsel of record for the Petitioner at the following:
`
`Andrew S. Ehmke
`andy.ehmke.ipr@haynesboone.com
`Scott Jarratt
`scott.jarratt.ipr@haynesboone.com
`HAYNES AND BOONE, LLP
`2323 Victory Ave., Suite 700
`Dallas, Texas 75219
`
`
`
`/s/ Ashley Cheung
`Ashley F. Cheung
`Case Manager
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`
`
`
`
`
`
`
`
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`
`
`17
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