Trials@uspto.gov
`Tel: 571-272-7822
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`
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`
`
`
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` Paper 14
`
`
`Entered: August 14, 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
`_______________
`
`
`
`
`Before SALLY C. MEDLEY, JAMES T. MOORE, and JUSTIN BUSCH,
`Administrative Patent Judges.
`
`
`MOORE, Administrative Patent Judge
`
`
`
`
`
`DECISION ON REHEARING
` 37 C.F.R. § 42.71(c)
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
` Paper 14
`
`
`Entered: August 14, 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
`_______________
`
`
`
`
`Before SALLY C. MEDLEY, JAMES T. MOORE, and JUSTIN BUSCH,
`Administrative Patent Judges.
`
`
`MOORE, Administrative Patent Judge
`
`
`
`
`
`DECISION ON REHEARING
` 37 C.F.R. § 42.71(c)
`
`
`
`
`
`
`IPR2014-00274
`Patent 6,018,768
`
`
`I. INTRODUCTION
`Petitioner, Netflix, Inc., filed a Petition requesting an inter partes
`review of claims 1-20 of U.S. Patent No. 6,018,768 (Ex. 1001, “the
`’768 Patent”). Paper 1 (“Pet.”). Patent Owner, OpenTV, Inc., filed a Patent
`Owner Preliminary Response. Paper 10 (“Prelim. Resp.”). We entered a
`decision denying inter partes review on June 30, 2014. Paper 12. Petitioner
`filed a Request for Rehearing on July 30, 2014. Paper 13 (“Reh’g. Req.”).
`The standard for requesting rehearing is set forth in 37 CFR
`§ 41.71(c):
`A party dissatisfied with a decision may file a request for
`rehearing. The burden of showing a decision should be
`modified lies with the party challenging the decision. The
`request must specifically identify all matters the party believes
`the Board misapprehended or overlooked, and the place where
`each matter was previously addressed in a motion, an
`opposition, or a reply…
`
`We grant the request to reconsider the decision insofar as we have
`reconsidered the decision, but decline to modify our previous decision.
`II. THE REHEARING REQUEST
`A. Claim Construction
`The Petitioner argues that the Board erred in its claim construction.
`Reh’g. Req. 2-6.
`The Petitioner provided their initial claim construction in the petition,
`pages 6-9. The Petitioner’s claim construction section in the petition did
`not specifically address the recitation in claim 1 that “the browser retrieves
`the requested Internet information segments under the direction and control
`of the controller means.”
`
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`IPR2014-00274
`Patent 6,018,768
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`The Petitioner’s analysis equated this requirement to a web browser
`being “under the control of the microprocessor.” Pet. 17, 34. As for the
`controller means, the Petitioner said only that its function was to “interpret
`the uniform resource locators” and its structure was “hardware or software.”
`Pet. 8, 34.
`We determined in our initial Decision, at page 11, that “the showing
`fails to provide sufficient persuasive evidence that Throckmorton’s browser
`retrieves the requested Internet segments under the direction and control of
`the controller means.” Decision 11.
`Petitioner now urges that we take into consideration the ‘768 Patent
`specification which describes another embodiment where it states that the
`user can drive the presentation of a web page from a URL. Reh’g Req. 3.
`Another section on the screen is also preferably used to
`represent an operational control panel. This control panel provides a
`list of the URLs that have been broadcast and correspondingly
`received by the computer 16. This control panel is updated to add a
`URL code each time a new URL code is received by the PC 16. This
`list gives the subscriber the flexibility to go back and retrieve
`particularly informative or interesting Web pages that have already
`been displayed earlier in the program, or alternatively, to print them
`out for future reference. Furthermore, the list could include URLs
`referring to Web pages not displayed with the broadcast program, but
`that provide further information on a certain topic of interest to the
`viewer.
`
`Reh’g. Req. 3-4 citing Ex. 1001, col. 8:27-40.
`Petitioner would now have us read the controller means language in
`claims 1, 4, and 19 to include this “control panel” which may be operated by
`the user in an alternative embodiment, stating that we overlooked the second
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`IPR2014-00274
`Patent 6,018,768
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`embodiment. Reh’g. Req. 4.
`This argument does not persuade us to alter our earlier decision.
`The newly proposed interpretation is inconsistent with the plain
`language of claim 1 reciting that the “browser retrieves the requested
`Internet information segments under the direction and control of the
`controller means.” Ex. 1001, col. 13:60-63. An embodiment allowing a
`user the flexibility to go back to access a list of URLs at the user’s leisure
`after the presentation does not alter the requirement that the controller means
`drives the presentation during the audio or video program.
`Next, the Petitioner argues that independent claims 1, 4, 12, and 19
`each must encompass that the display means can present “video and audio
`signals concurrently with or independently from the Internet information
`segments.”1 Reh’g. Req. 5-6. We agree with this portion of the Petitioner’s
`argument.
`However, we disagree with the next logical leap, where the Petitioner
`urges that the display means limitation broadens the claim language to
`encompass the second embodiment identified by the Petitioner where the
`user may select a URL to direct the retrieval of a web page in the absence of
`video and audio. Reh’g. Req. 5.
`The petitioner specifically urges that:
`Because each independent claim encompasses presenting web pages
`
`1 Claim 5, which depends from claim 4 and thus must be encompassed by
`claim 4, recites “[t]he system of claim 4 further comprising a display means,
`connected to the controller and receiver, for presenting the video
`concurrently with or independently from the Internet information segments."
`Ex. 1001, col. 14: 31-34.
`
`
`
`4
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`IPR2014-00274
`Patent 6,018,768
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`independent from the audio and video signals, and the support in the
`specification for presenting audio and video signals independent from
`web pages is the embodiment where the presentation of web pages are
`user-driven, the broadest reasonable construction of the claims must
`include the embodiment where presentation of a web page is user-
`driven. Accordingly, the construction adopted in the Decision that
`excludes user-driven presentation of web pages is not the broadest
`reasonable interpretation in light of the claims and should be
`reconsidered.
`
`Id. at 6.
`The display means limitation does not remove the requirement from
`claims 1, 4, 12, or the other independent claims19, that the controller means
`direct and control the retrieval of the Internet information segments.
`The Petitioner reads the claim language in a strained manner to
`achieve their interpretation. The display means can display the video and
`audio independently from the internet information segment. How the
`information is received is not governed by this claim element.
`Thus, we find that the evidence of record supports the interpretation of
`the claim limitation that the “browser retrieves the requested Internet
`information segments under the direction and control of the controller
`means” as requiring the controller means to drive the program presentation
`by the URLs received.
`The recitation of the display means limitation in claims 1, 5, 12, and
`19 is not inconsistent with this interpretation.
`B. Throckmorton
`Petitioner urges, even under the Board’s claim interpretation, that
`Throckmorton’s Figure 5 discloses the ability to retrieve a web page under
`the direction and control of a controller means. Reh’g Req. 8.
`5
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`IPR2014-00274
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`This argument also fails to persuade us. The Petitioner urges that the
`Throckmorton system in Throckmorton’s Figure 5 contains a “real time
`trigger” 76 which is said to receive commands from the video and audio
`stream to display a page without the user asking for it. Reh’g. Req. 8-9. We
`agree that a real time trigger 76 is shown in Figure 5, but the evidence does
`not persuade us that it is contemplated for use in the two-way embodiment to
`drive the associated data presentation.
`Figure 5 is said to be a “high level block diagram showing further
`details of the system of Figure 4. Reference numerals common to FIGS. 2
`and 4 reference the same matter.” Ex. 1007, col. 8:25-27.
`On its surface, Figure 5 might appear to be combining the two
`separate embodiments. However, in the description of Figure 5, the “real
`time trigger” is not discussed. The only mention is the specification stating
`that the numerals reference the same matter from Figures 2 and 4.
`As we found earlier, the two embodiments are discrete. The simple
`addition of selected, manipulated, relevant data sent to a user to be cached
`on the user’s computer for viewing is suggested by Figures 2 and 4.
`Figure 5 suggests the addition of a two-way channel for interactivity and
`does describe a two-way data path. Id. at col 8:30-34.
`However, the inclusion of aspects of the one-way embodiment in a
`figure describing the Figure 4 two-way embodiment, to our view, does not
`provide sufficient evidence for us to find that the real time trigger would be
`incorporated into the two way embodiment in the manner of the instant
`claims. Rather, the real time trigger outputs a command causing a page of
`information previously sent by the broadcaster to be displayed. Such a
`
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`IPR2014-00274
`Patent 6,018,768
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`trigger is not a “control means controlling and directing the browser” to
`retrieve the requested information to drive the presentation over a two way
`embodiment. Throckmorton itself requires “clicking on a reference” in the
`two-way embodiment. Id. at col9:12-13.
` III. CONCLUSION
`Accordingly, we conclude that the Petitioner has not met its burden to
`show it is more likely than not to prevail. We, therefore, deny the request
`for reconsideration.
`
`FOR PETITIONER:
`
`Andrew Ehmke
`Andy.ehmke.ipr@haynesboone.com
`
`Scott Jarratt
`Scott.jaratt.ipr@haynesboon.com
`
`FOR PATENT OWNER:
`
`Erika Arner
`Erika.arner@finnegan.com
`
`Joshua Goldberg
`Joshua.goldberg@finnegan.com
`
`Russell Levine
`Russell.levine@kirkland.com
`
`Eugene Goryunov
`Eugene.goryunov@kirkland.com
`
`
`
`
`7
`
`
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