UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
`Petitioner
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`v.
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`OPENTV, INC.
`Patent Owner
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`Case IPR2015-01031
`Patent 7,900,229
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`Patent Owner’s Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 7,900,229
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`

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`Case No. IPR2015-01031
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`TABLE OF CONTENTS
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`I. 
`
`II. 
`
`PRELIMINARY STATEMENT ..................................................................... 1 
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`ANTICIPATION IS A HIGH BAR ................................................................ 1 
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`III.  THE PETITION FAILS TO ESTABLISH ANTICIPATION OF THE
`INDEPENDENT CLAIMS ............................................................................. 2 
`
`A. 
`
`B. 
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`C. 
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`D. 
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`E. 
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`F. 
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`Claimed Configuration Part I: “update a user profile responsive
`to a first user activity, the first user activity being initiated via a
`first device corresponding to one of the remote unit and the set-
`top box” ................................................................................................. 5 
`
`Claimed Configuration Part II: “detect a second user activity,
`the second user activity being initiated via a second device
`corresponding to one of the remote unit and the set-top box, the
`second device being different from the first device” ............................ 7 
`
`Claimed Configuration Part III: “wherein either (i) the first user
`activity comprises an activity related to television viewing and
`the second user activity comprises an activity unrelated to
`television viewing, or (ii) the first user activity comprises an
`activity unrelated to television viewing and the second user
`activity comprises an activity related to television viewing” ............... 8 
`
`Claimed Configuration Part IV: “access the user profile in
`response to the second user activity” .................................................. 10 
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`Claimed Configuration Part V: “transmit data responsive to the
`second user activity, wherein the transmitted data is based at
`least in part on the user profile” .......................................................... 11 
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`Claimed Configuration Part VI: “wherein the first user activity
`affects a content of said data transmitted to the user responsive
`to the second user activity” ................................................................. 12 
`
`IV.  THE PETITION MAKES OBVIOUSNESS, NOT ANTICIPATION,
`ARGUMENTS FOR DEPENDENT CLAIMS 24 AND 31 ......................... 14 
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`V. 
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`CONCLUSION .............................................................................................. 15 
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`Case No. IPR2015-01031
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Iris Corp. Berhad v. United States,
`84 Fed. Cl. 12 (2008) ............................................................................................ 7
`
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) ...................................................................passim
`
`Schumer v. Lab. Computer Sys., Inc.,
`308 F.3d 1304 (Fed. Cir. 2002) ...................................................................passim
`
`Trintec Indus., Inc. v. Top-U.S.A. Corp.,
`295 F.3d 1292 (Fed. Cir. 2002) ............................................................................ 1
`
`Statutes
`
`35 U.S.C. § 312(a)(3) ................................................................................................. 7
`
`ii
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`Case No. IPR2015-01031
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`I.
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`PRELIMINARY STATEMENT
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`The Board instituted only one of the many grounds proposed in the
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`Petition—anticipation based on Tomioka. Inst. Dec. 18. The Petition, however,
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`fails to establish that Tomioka anticipates the claims because the Petition fails to
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`address all of the claim requirements and therefore cannot prove that Tomioka
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`discloses every claim element.
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`II. ANTICIPATION IS A HIGH BAR
`Anticipation is a high bar and, “with its strict identity requirement, [is] quite
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`rare.” See, e.g., Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1297 (Fed.
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`Cir. 2002). This is because a reference cannot anticipate “unless a reference
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`discloses within the four corners of the document not only all of the limitations
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`claimed but also all of the limitations arranged or combined in the same way as
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`recited in the claim. . . .” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371
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`(Fed. Cir. 2008) (emphasis added). The “arranged or combined in the same way”
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`requirement “applies to all claims and refers to the need for an anticipatory
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`reference to show all of the limitations of the claims arranged or combined in the
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`same way as recited in the claims, not merely in a particular order.” Id. at 1370.
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`Any “differences between the prior art reference and a claimed invention, however
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`slight, invoke the question of obviousness, not anticipation.” Id. at 1371 (emphasis
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`added). “Thus, it is not enough that the prior art reference discloses part of the
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`Case No. IPR2015-01031
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`claimed invention, which an ordinary artisan might supplement to make the whole,
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`or that it includes multiple, distinct teachings that the artisan might somehow
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`combine to achieve the claimed invention.” Id. (emphasis added).
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`III. THE PETITION FAILS TO ESTABLISH ANTICIPATION OF
`THE INDEPENDENT CLAIMS
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`The instituted claims include two independent claims—claims 14 and 26.
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`Claims 14 and 26 differ in scope but require similar functionality. Compare Ex.
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`1001, cl. 14 with cl. 26. The remaining challenged claims, claims 15, 16, 19, 21,
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`24, 28, 30, and 31, each depend from one of these independent claims. The Petition
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`does not present separate arguments for claim 26’s functionality, instead just
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`pointing to its discussion of claim 14. Pet. 31-32.
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`Claims 14 and 26 require a combination of elements not disclosed by
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`Tomioka. Specifically, Tomioka fails to disclose the combination of requirements
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`of system claim 14:
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`14. An interactive television system comprising:
`a remote unit; a set-top box; and
`a broadcast station coupled to convey a programming
`signal to the set-top box;
`wherein the system is configured to:
`update a user profile responsive to a first user
`activity, the first user activity being initiated via a first
`device corresponding to one of the remote unit and
`the set-top box;
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`Case No. IPR2015-01031
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`detect a second user activity, the second user activity
`being initiated via a second device corresponding to
`one of the remote unit and the set-top box, the second
`device being different from the first device,
`wherein either
`(i) the first user activity comprises an activity
`related to television viewing and the second user
`activity comprises an activity unrelated to
`television viewing, or
`(ii) the first user activity comprises an activity
`unrelated to television viewing and the second user
`activity comprises an activity related to television
`viewing;
`access the user profile in response to the second user
`activity; and
`transmit data responsive to the second user activity,
`wherein the transmitted data is based at least in part
`on the user profile, and
`wherein the first user activity affects a content of said
`data transmitted to the user responsive to the second
`user activity.
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`Ex. 1001, cl. 14 (emphasis added).
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`The Petition generally alleges that Tomioka discloses each of the claim
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`requirements by pointing to long, exemplary string citations to the reference. See,
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`e.g., Pet. 13. The problem with this approach is that Petition ignores the fact that
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`Tomioka differs from the claim requirements, and attempts to obfuscate the lack of
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`disclosure with lengthy citation. This is not sufficient to establish anticipation with
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`no “differences between the prior art reference and a claimed invention, however
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`slight.” Net MoneyIN, 545 F.3d at 1371.
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`Indeed, in an attempt to generalize the claim requirements, the Petition
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`wrongfully frames the reasons for allowance as the result of the Board reversing
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`the Examiner based on arguments that the prior art failed to disclose “a common
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`user profile.” Pet. 7. But, when reversing the Examiner, the Board properly focused
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`on the required elements of the claims, not “a common user profile” in general.
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`Specifically, the Board found that
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`Ellis is completely silent as to accessing “the user profile
`in response to the second user activity” (i.e., chat
`application) as required by all of the claims on appeal.
`Ellis is equally silent as to whether the first user activity
`of updating a user profile “affects a content of” data
`transmitted to a user “responsive to the second user
`activity” (i.e., chat application) as required by all of the
`claims on appeal.
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`Ex. 1002, 4. As discussed below, the Petition’s generalizations and failure to
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`address the actual claim language make the same errors previously corrected by the
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`Board. That is, even if Tomioka generally discloses an interactive television
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`system and user profiles, Tomioka does not disclose that the interaction television
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`system is configured in the claimed way.
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`The claims do not generically recite an interactive television system with a
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`“common user profile.” Instead, in addition to requiring “a remote unit,” “a set-top
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`box,” and “a broadcast station,” claim 14 requires that the interactive television
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`system exhibit certain behavior based on a particular configuration with multiple
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`parts, each discussed below.
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`Thus, because of its failure to address the claimed configuration in its
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`entirety, the Petition fails to establish that there are no “differences between”
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`Tomioka’s disclosed configuration and the claimed configuration, “however
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`slight.” Net MoneyIN, 545 F.3d at 1371.
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`A. Claimed Configuration Part I: “update a user profile
`responsive to a first user activity, the first user activity
`being initiated via a first device corresponding to one of the
`remote unit and the set-top box”
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`The claimed interactive television system requires configuration to “update a
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`user profile in response to a first user activity, the first user activity being initiated
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`via a first device corresponding to one of the remote unit and the set-top box.”
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`Ex.1001, cl. 14. For this requirement, the Petition provides a lengthy string cite to
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`eleven paragraphs, one claim, and four figures in Tomioka (Pet. 13), but only
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`substantively quotes from two paragraphs:
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`The ‘user description scheme is generated by direct user
`input, and by using a software that watches the user to
`determine his/her usage pattern and usage history.’ Id.
`¶ 0062-63.
`The scheme can be ‘updated in a dynamic fashion by the
`user or automatically,’ depending on user preferences
`¶¶ 0062-63, 0090-91, 0095, 0122.
`
`Pet. 13. The Petition also includes a claim chart section for this requirement that
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`simply parrots back the same paragraphs from above (and others) without further
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`explanation. Pet. 22-23. But the Petition never identifies the features of Tomioka
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`that Petitioner relies upon as disclosing the individual elements of this claim
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`requirement. For example, the Petition fails to identify the features of Tomioka it
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`relies upon to disclose that the update is “responsive to a first user activity” or to
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`disclose the elements in “the first user activity being initiated via a first device
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`corresponding to one of the remote unit and the set-top box.” These failures in the
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`Petition are compounded because the first part of the claimed configuration forms
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`the basis for the remainder of the claimed invention and its configuration. Even if
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`there were multiple options disclosed in Tomioka, the failure identify the features
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`relied upon for the individual elements of this claim requirement makes it
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`impossible to evaluate the later requirements of the claimed configuration which
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`build upon it (e.g., the latter requirements that include elements with antecedent
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`basis in this requirement). Indeed, the Petition’s general assertions (without
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`detailed explanation) are insufficient to establish anticipation. See, e.g., Schumer v.
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`Lab. Computer Sys., Inc., 308 F.3d 1304, 1315 (Fed. Cir. 2002) (holding that
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`proving anticipation typically requires a detailed explanation of how each claim
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`element is disclosed in the prior art reference and also holding that “It is not our
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`task, nor is it the task of the district court, to attempt to interpret confusing or
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`general testimony to determine whether a case of invalidity has been made out”)1.
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`Thus, the Petition fails to establish that Tomioka discloses each and every
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`element of the claimed invention and the Board should find that Petitioner failed to
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`establish the claims are anticipated by Tomioka.
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`B. Claimed Configuration Part II: “detect a second user
`activity, the second user activity being initiated via a second
`device corresponding to one of the remote unit and the set-
`top box, the second device being different from the first
`device”
`
`The second requirement of the claimed interactive television system requires
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`configuration to “detect a second user activity, the second user activity being
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`initiated via a second device corresponding to one of the remote unit and the set-
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`top box, the second device being different from the first device.” Ex. 1001, cl. 14.
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`1 While IPR does not require clear and convincing evidence, the distinction
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`between the burdens of proof should not change this requirement. Indeed, the IPR
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`statute requires pleading with particularity. See 35 U.S.C. § 312(a)(3); see also Iris
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`Corp. Berhad v. United States, 84 Fed. Cl. 12, 15-17 (2008).
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`For this requirement, the Petition provides a claim chart block quoting and string
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`citing twelve paragraphs and three figures of Tomioka. Pet. 24. The Petition’s short
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`prose section simply block quotes Tomioka without explaining how it teaches this
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`claim requirement. Pet. 13-14. At best, the Petition apparently asserts that the first
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`and second devices relate to a TiVo/set-top box and a radio. Id. As above, because
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`this second requirement forms the basis for the remainder of the claimed
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`configuration, Petitioner’s failure to identify which features are being relied upon
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`for the individual elements of this claim requirement similarly makes it impossible
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`to evaluate later requirements of the claimed configuration. Indeed, the Petition’s
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`general assertions (without detailed explanation) are insufficient to establish
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`anticipation. See, e.g., Schumer, 308 F.3d at 1315.
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`Thus, the Petition fails to establish that Tomioka discloses each and every
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`element of the claimed invention and the Board should find that Petitioner failed to
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`establish the claims are anticipated by Tomioka.
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`C. Claimed Configuration Part III: “wherein either (i) the first
`user activity comprises an activity related to television
`viewing and the second user activity comprises an activity
`unrelated to television viewing, or (ii) the first user activity
`comprises an activity unrelated to television viewing and the
`second user activity comprises an activity related to
`television viewing”
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`The third requirement of the claimed interactive television system
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`configuration requires that “either (i) the first user activity comprises an activity
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`related to television viewing and the second user activity comprises an activity
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`unrelated to television viewing, or (ii) the first user activity comprises an activity
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`unrelated to television viewing and the second user activity comprises an activity
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`related to television viewing.” Ex. 1001, cl. 14. For this requirement, the Petition
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`provides a claim chart block quoting and string citing fourteen paragraphs and four
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`figures of Tomioka. Yet, in the prose, the Petition only generally asserts that
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`“Tomioka’s user profile is based on a user’s various activities whether ‘related to
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`television viewing’ or ‘unrelated to television viewing.’” Pet. 15.
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`First, these general assertions without detailed explanation are insufficient to
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`establish anticipation. See, e.g., Schumer, 308 F.3d at 1315. Second, the Petition
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`never points to any embodiment disclosing using both activities “related to
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`television viewing” and “unrelated to television viewing” with regard to the user
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`profile. Instead of identifying a single embodiment disclosing both activities, the
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`linchpin of Petitioner’s argument is the empty assertion that “Tomioka discloses
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`description schemes that may be used across such services. Id. ¶ 0065.” Notably,
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`this sentence omits the word “user” from description scheme because the Petition
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`is pointing to features of the “program description scheme”—not the “user
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`description scheme.” See Ex. 1003, ¶ [0065] (discussing the “program description
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`scheme”). The program description scheme is not a user profile and attempting to
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`combine features of the program description scheme with a user profile would be
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`improper. Net MoneyIN, 545 F.3d at 1371 (holding anticipation cannot be based on
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`combining separate parts of a reference).
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`Thus, the Petition fails to establish that Tomioka discloses each and every
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`element of the claimed invention and the Board should find that Petitioner failed to
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`establish the claims are anticipated by Tomioka.
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`D. Claimed Configuration Part IV: “access the user profile in
`response to the second user activity”
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`The fourth requirement of the claimed interactive television system requires
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`configuration to “access the user profile in response to the second user activity.”
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`Ex. 1001, cl. 14. For this requirement, the Petition provides a claim chart block
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`quoting and string citing nine paragraphs and two figures of Tomioka. Pet. 26. In
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`the prose, however, the Petition never fully addresses how Tomioka discloses this
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`aspect of the claimed invention. See Pet. 13-14. Instead, the Petition only asserts
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`that “Tomioka discloses accessing the user profile to deliver content to the user on
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`multiple devices.” Id. A disclosure of “accessing the user profile to deliver content
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`to the user on multiple devices,” however, differs from “access[ing] the user
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`profile in response to the second user activity,” as required by the claims. Thus, the
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`Petition fails to address a limitation of this portion of the claim. Moreover, the
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`Petition’s general assertions (without detailed explanation) are insufficient to
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`establish anticipation. See, e.g., Schumer, 308 F.3d at 1315.
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`Thus, the Petition fails to establish that Tomioka discloses each and every
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`element of the claimed invention and the Board should find that Petitioner failed to
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`establish the claims are anticipated by Tomioka.
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`E. Claimed Configuration Part V: “transmit data responsive
`to the second user activity, wherein the transmitted data is
`based at least in part on the user profile”
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`The fifth requirement of the claimed interactive television system requires
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`configuration to “transmit data responsive to the second user activity, wherein the
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`transmitted data is based at least in part on the user profile.” Ex. 1001, cl. 14
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`(emphasis added). The Board previously looked at this part of the claimed
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`configuration and found that:
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`Petitioner argues that the system “records and presents to the
`user audio and video information based upon the user’s prior
`viewing and listening habits, preferences, and personal
`characteristics, generally referred to as user information.” Id.
`at 14–15 (quoting Ex. 1003 ¶ 40 (emphases added)). Further,
`Petitioner argues that Tomioka discloses an intelligent agent
`that can “consult with the user description scheme and
`obtain information that it needs for acting on behalf of the
`user,” and that the Tomioka system can “discover programs
`that fit the taste of the user, alert the user about such
`programs, and/or record them autonomously.” Id. at 15
`(quoting Ex. 1003 ¶ 63 (emphasis added)). Thus, Petitioner
`argues that Tomioka’s system “gathers and provides ‘user
`specific information’ used in ‘authoring and updating the
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`Case No. IPR2015-01031
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`user description scheme,’ and ‘[i]n this manner, desirable
`content may be provided to the user.’” Id. (quoting Ex. 1003
`¶ 55).
`Inst. Dec. 10-11. But neither the Board nor the Petition addressed the first part of
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`this claim requirement: the data is transmitted responsive to the second user
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`activity. Indeed, recording, presenting, and discovering differ from a singular claim
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`requirement of “transmitting.” And the claim also requires that the transmission be
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`effected responsive to the second user activity. This requirement is wholly lacking
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`in Tomioka. The Petition’s general assertions (without detailed explanation) are
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`simply insufficient to establish anticipation. See, e.g., Schumer, 308 F.3d at 1315.
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`Thus, the Petition fails to establish that Tomioka discloses each and every
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`element of the claimed invention and the Board should find that Petitioner failed to
`
`establish the claims are anticipated by Tomioka.
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`F. Claimed Configuration Part VI: “wherein the first user
`activity affects a content of said data transmitted to the user
`responsive to the second user activity”
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`The sixth requirement of the claimed interactive television system requires
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`that “the first user activity affects a content of said data transmitted to the user
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`responsive to the second user activity.” Ex. 1001, cl. 14. For this requirement, the
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`Petition relies upon Tomioka’s general disclosure of using a portable user
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`description scheme and usage of history information to update a profile. Pet. 12-31.
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`The Petition, however, never identifies how Tomioka discloses that “the first user
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`Case No. IPR2015-01031
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`activity affects a content of said data transmitted to the user responsive to the
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`second user activity” in the claimed context. For example, using the Petition’s
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`examples of television and radio from earlier parts of the claimed configuration,
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`the Petition fails to identify any example where history information for radio
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`activity is used to transmit content in response to television activity. See id.
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`The Petition also fails to mention that Tomioka expressly recognized that in
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`such situations (e.g., where the device or media types are different), there is a need
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`to “maintain multiple separate user preference descriptions.” See Ex. 1003, ¶¶
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`[0106], [0110]. Thus, even if Tomioka discloses recording history information
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`based on web-browsing, radio, and television usage, such a disclosure is different
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`from the combination required by the claims: Tomioka simply does not disclose
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`that the web-browsing or radio activity (first user activity) affects a content of data
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`transmitted to the user responsive to the television activity (second user activity).
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`Moreover, the Petition’s general assertions (without detailed explanation) are
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`insufficient to establish anticipation. See, e.g., Schumer, 308 F.3d at 1315.
`
`Thus, the Petition fails to establish that Tomioka discloses each and every
`
`element of the claimed invention and the Board should find that Petitioner failed to
`
`establish the claims are anticipated by Tomioka.
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`Case No. IPR2015-01031
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`IV. THE PETITION MAKES OBVIOUSNESS, NOT
`ANTICIPATION, ARGUMENTS FOR DEPENDENT CLAIMS
`24 AND 31
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`The Petition fails to sufficiently plead anticipation for dependent claims 24
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`and 31. While dependent claim 31 differs in scope, the Petition references back to
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`its arguments for claim 24 in alleging anticipation. Pet. 33. Claim 24 recites,
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`“wherein the system is further configured to update the user profile in response to
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`detecting a physical location of a user’s location trackable mobile unit.” In alleging
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`anticipation, the Petition merely cites to the disclosure of a purported location
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`attribute in Tomioka and asserts that “Tomioka discloses ‘mobile terminals’ and
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`‘cellular telephones’ which were well-known to have location tracking
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`capabilities.” Pet. 18. A location attribute, however, is different from being
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`“configured to update the user profile in response to detecting a physical location
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`of a user’s location trackable mobile unit.” And, even if it were well-known that
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`mobile terminals and cellular telephones could have location tracking abilities, this
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`argument would bear on obviousness, not anticipation. Net MoneyIN, 545 F.3d at
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`1371.
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`Thus, for these additional reasons, the Petition fails to establish that
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`Tomioka anticipates claims 24 and 31.
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`Case No. IPR2015-01031
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`V. CONCLUSION
`The Board should find that the Petition fails to establish that the claims are
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`anticipated. The claims should therefore be confirmed as patentable.
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`Dated: January 6, 2016
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`Respectfully submitted,
`
`By: /Joshua L. Goldberg/
`Joshua L. Goldberg, Backup Counsel
`Registration No. 59,369
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`Case No. IPR2015—O1031
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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 Response was served on January 6, 2016, Via FedEx and e-mail directed
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`to counsel of record for the Petitioner at the following:
`
`Mark E. Miller (markmil1er@omm.com)
`Brian M. Cook (bcook@omm.com)
`Xin—Yi Zhou (Vzhou@omm.com)
`John Kevin Murray (kmurray2@omm.com)
`Anne E. Huffsmith (ahuffsmith@omm.com)
`Ryan K. Yagura (ryagura@omrn.com)
`O’MELVENY & MYERS LLP
`
`Two Embarcadero Center, 28th Floor
`
`San Francisco, CA 94111-3823
`
`
`(z‘w;4’;7.Q/
`/Lauren K. Young
`
`
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, L.L.P.