U.S. Patent No. 7,900,229
`IPR2015-01031
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`OPENTV, INC.
`Patent Owner
`
`
`
`Case IPR2015-01031
`Patent 7,900,229
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`

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`U.S. Patent No. 7,900,229
`IPR2015-01031
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` TABLE OF CONTENTS
`
`I.
`II.
`
`INTRODUCTION............................................................................................................ 1
`PATENT OWNER’S RESPONSE TURNS ANTICIPATION INTO AN
`IPSISSIMIS VERBIS TEST THAT IGNORES THE UNDERSTANDING
`AND INFORMATION TOMIOKA PROVIDES TO ONE SKILLED IN
`THE ART .......................................................................................................................... 1
`THE PETITION EXPLAINS HOW TOMIOKA ANTICIPATES CLAIMS
`14 AND 26 ......................................................................................................................... 2
`A.
`Claim 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” ...................................................................... 3
`Claim 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” ............. 5
`Claim 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” ............. 7
`Claim Part IV: “access the user profile in response to the second user
`activity” .................................................................................................................. 9
`Claim Part V: “transmit data responsive to the second user activity,
`wherein the transmitted data is based at least in part on the user profile” ........... 10
`Claim Part VI: “wherein the first user activity affects a content of said data
`transmitted to the user responsive to the second user activity” ........................... 12
`TOMIOKA ANTICIPATES DEPENDENT CLAIMS 24 AND 31 ........................... 14
`CONCLUSION .............................................................................................................. 17
`
`ii
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`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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`III.
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`IV.
`V.
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`

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`TABLE OF AUTHORITIES
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`U.S. Patent No. 7,900,229
`IPR2015-01031
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`
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`Page(s)
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`Cases
`
`In re Bond,
`910 F.2d 831 (Fed. Cir. 1990)....................................................................................................2
`
`Kennametal, Inc. v. Ingersoll Cutting Tool Co.,
`780 F.3d 1376 (Fed. Cir. 2015)..................................................................................................2
`
`In re Preda,
`401 F.2d 825 (CCPA 1968) .................................................................................................2, 15
`
`Schumer v. Lab. Computer Sys., Inc.,
`308 F.3d 1304 (Fed. Cir. 2002)..............................................................................................4, 5
`
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008)................................................................................................15
`
`Statutes
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`35 U.S.C. § 102 ..............................................................................................................................16
`
`Other Authorities
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`77 Fed. Reg. 48,763 (Aug. 14, 2012)...............................................................................................5
`
`iii
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`U.S. Patent No. 7,900,229
`IPR2015-01031
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`I.
`
`
`INTRODUCTION
`
`The Petition establishes that Tomioka anticipates Claims 14–16, 19, 21, 24,
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`26, 28, 30, and 31 (the “Challenged Claims”) of U.S. Patent No. 7,900,229 (“the
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`’229 Patent”). See Paper 1 (“Pet.”) at 11–33. Patent Owner’s Response provides
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`no evidence to the contrary, and does not even mention Claims 15, 16, 19, 21, 28,
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`and 30. Id. The Board should, therefore, cancel the Challenged Claims.
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`
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`Patent Owner fails to explain how Tomioka differs from the Challenged
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`Claims, instead vaguely complaining that the Petition cites too many paragraphs
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`from Tomioka and implying that those citations correspond to multiple
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`embodiments. Paper 14 (“Resp.”) at 3–4, 9. But the Board already found that the
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`Petition provided adequate explanation and argument regarding how the cited
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`portions of Tomioka anticipate the claims, and also found that the cited portions of
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`Tomioka relate to a single embodiment. Paper 10 (“Inst. Dec.”) at 11–12.
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`II.
`
`PATENT OWNER’S RESPONSE TURNS ANTICIPATION INTO AN
`IPSISSIMIS VERBIS TEST THAT IGNORES THE
`UNDERSTANDING AND INFORMATION TOMIOKA PROVIDES
`TO ONE SKILLED IN THE ART
`
`The Petition explained the direct correspondence between the teachings of
`
`Tomioka and each of the limitations of the Challenged Claims. Pet. 11–33. That
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`showing of anticipation was supported by expert testimony demonstrating how one
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`skilled in the art would understand Tomioka and the ’229 Patent. Id. (citing Apple
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`1016). Patent Owner’s Response ignores most of the showing in the Petition and
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`1
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`U.S. Patent No. 7,900,229
`IPR2015-01031
`the teachings of Tomioka, instead making conclusory assertions that Tomioka does
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`not contain the exact same words as the Challenged Claims. See, e.g., Resp. 12
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`(alleging without explanation that the words of Tomioka differ from the Claim
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`term “transmitting”). But anticipation “is not an ipsissimis verbis test.” Inst. Dec.
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`7, citing In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). “[I]t is proper to take into
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`account not only specific teachings of the reference but also the inferences which
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`one skilled in the art would reasonably be expected to draw therefrom.” Inst. Dec.
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`7–8, quoting In re Preda, 401 F.2d 825, 826 (CCPA 1968); see also Inst. Dec. 12,
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`citing Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed.
`
`Cir. 2015). By failing to consider the application of these cases, Patent Owner
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`incorrectly ignores the teachings of Tomioka, in violation of In re Bond, and
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`ignores the understanding of one of ordinary skill, in violation of In re Preda and
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`Kennametal. Patent Owner’s arguments were rejected by the Board in its
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`Institution Decision (Inst. Dec. 10–12) and should be rejected again.
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`III. THE PETITION EXPLAINS HOW TOMIOKA ANTICIPATES
`CLAIMS 14 AND 26
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`Patent Owner’s argument that the Petition generalizes Claims 14 and 26 by
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`summarizing the prosecution history is wrong. See Resp. at 4–5. The Petition did
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`not generalize the claims—the Petition explained how Tomioka discloses each
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`limitation expressly and separately. See Pet. 11–33.
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`2
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`U.S. Patent No. 7,900,229
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`Patent Owner does not present separate arguments for Claim 26. See Resp.
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`2. Thus, if the Board finds Claim 14 anticipated, it should also find Claim 26
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`anticipated. Claim 26 is broader with respect to the hardware elements recited in
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`the claim (compare Apple 1001 Claim 14 with Claim 26) and Patent Owner does
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`not dispute that Tomioka discloses a computer readable medium. See generally,
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`Resp.
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`A. Claim 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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`
`
`Contrary to Patent Owner’s assertions (Resp. 5–7), Tomioka discloses a
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`system that includes a “first user activity” and a “first device corresponding to one
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`of the remote unit and the set-top box.” Pet. 11–13, 22–24. First, Tomioka
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`discloses a “first user activity” of browsing audio content on a “first device”
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`which is a “remote unit,” a car audio player. Pet. 23 (citing Apple 1003 ¶ 0097).
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`Tomioka states that “the user’s preferences are readily movable to different
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`devices, such as a personal video recorder, a TiVo player, a RePlay Networks
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`player, a car audio player, or other audio and/or video appliance.” Id. (emphasis
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`added). Tomioka identifies other user activities on remote units and set-top boxes.
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`See, e.g., Apple 1003 ¶ 37. Tomioka discloses users conducting activities such as
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`“select[ing], record[ing], and play[ing] the video and/or audio content” on “many
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`sources of audio and video information, such as multiple television sets, multiple
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`3
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`U.S. Patent No. 7,900,229
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`VCRs, a home stereo, a home entertainment center, cable television, satellite
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`television, internet broadcasts, world wide web, data services, specialized internet
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`services, portable radio devices, and a stereo in each of their vehicles.” Id.
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`
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`Second, Tomioka discloses that the user activities are used to “update”
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`Tomioka’s user profile “responsive to a first user activity.” Tomioka discloses a
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`“user description scheme” that “is generated by direct user input, and by using a
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`software that watches the user to determine his/her usage pattern and usage
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`history” on any of various devices. Apple 1003 ¶¶ 62 (emphasis added), 58, 37,
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`38, 97; Pet. 13, 22–24. In other words, user activities are “watched” and, in
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`response, the user profile is updated to reflect user preferences. See Apple 1003
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`¶ 46 (describing the “user description scheme”). Tomioka specifically discloses
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`that “the user preference description 500 may be updated in accordance with the
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`user’s browsing, filtering, searching, and device preferences.” Id. (emphasis
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`added).
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`
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`Patent Owner fails to identify any differences between Tomioka’s disclosure
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`and this limitation of Claim 14. See Resp. 5–7. Patent Owner’s Response
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`repeatedly cites Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1315 (Fed.
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`Cir. 2002), for the erroneous proposition that more detailed explanations were
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`required. See, e.g., Resp. 7, 8, 9. Schumer is inapplicable because the decision is
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`based on a motion for summary judgment of anticipation under the clear and
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`U.S. Patent No. 7,900,229
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`convincing evidence standard. See Schumer, 308 F.3d at 1315–16. Here, the
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`standard is preponderance of the evidence. And, regardless, Patent Owner is
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`wrong—the Petition is adequately detailed, as explained above, and as the
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`Institution Decision recognized. Inst. Dec. 9–12. As required by the Trial Practice
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`Guide, the Petition contains “concise, well organized, easy-to-follow arguments
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`supported by readily identifiable evidence of record.” 77 Fed. Reg. 48,763 (Aug.
`
`14, 2012).
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`B. Claim 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 Petition identifies a “second device” in Tomioka consisting of a “set-top
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`box”—a TiVo player. Tomioka discloses that “the user’s preferences are readily
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`movable to different devices, such as a personal video recorder, a TiVo player, a
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`RePlay Networks player, a car audio player, or other audio and/or video
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`appliance.” Pet. 12, 24 (citing Apple 1003 ¶ 97) (emphasis added). Petitioner’s
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`expert testimony confirms that a TiVo player was a well-known product that could
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`act as a set-top box. Apple 1016 ¶ 67, Apple 1010 at 282; Apple 1011 at 168–169.
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`Tomioka also discloses other second devices: “[m]any households today
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`have many sources of audio and video information, such as multiple television
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`sets, multiple VCR's, a home stereo, a home entertainment center, cable television,
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`satellite television, internet broadcasts, world wide web, data services, specialized
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`5
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`U.S. Patent No. 7,900,229
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`Internet services, portable radio devices, and a stereo in each of their vehicles.”
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`Apple 1003 ¶ 37; see also ¶¶ 58, 97; Pet. 13–14, 24.
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`Patent Owner’s Response specifically identifies a TiVo player as a second
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`device for a conducting a second user activity, but offers no explanation for its
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`argument that this claim limitation is not disclosed in Tomioka. Resp. 8. And
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`Patent Owner ignores the Board’s finding that “Tomioka discloses the use of
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`activity both related and unrelated to television viewing from different devices to
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`create or update a user profile.” Inst. Dec. 11 (emphasis added).
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` Tomioka also discloses a “second activity”—watching television through
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`the second device (as explained above, a TiVo player). In Tomioka, all of the
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`devices detect many user activities, including first, second, and subsequent
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`activities, and those activities are used to create and update the common user
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`description scheme. Apple 1003 ¶ 61. Tomioka discloses users conducting
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`activities such as “select[ing], record[ing], and play[ing] the video and/or audio
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`content” on the various disclosed devices. Id. at ¶ 37.
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`In sum, Tomioka discloses this claim limitation. Pet. 13–14, 24.
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`U.S. Patent No. 7,900,229
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`C. Claim 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”
`
` The prosecution history identified certain activities as related or unrelated to
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`television viewing. Pet. 8–9. The first user activity on a first device consisting of
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`a remote unit—browsing audio content on a car audio player—is “unrelated to
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`television viewing.” See id. The second user activity on a second device
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`consisting of a set-top box—watching TV using a TiVo player—is “related to
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`television viewing.” Id. Tomioka’s disclosure of both types of activities satisfies
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`this claim limitation. Patent Owner offers no explanation for how any of the
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`activities disclosed in Tomioka would not properly be termed related or unrelated
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`to television viewing. Resp. 8–10. And Patent Owner ignores the Board’s finding
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`that “Tomioka discloses the use of activity both related and unrelated to television
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`viewing from different devices to create or update a user profile.” Inst. Dec. 12.
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`Tomioka discloses many other user activities that are also related or
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`unrelated to television viewing. Apple 1003 ¶¶ 58, 37, 38. Tomioka discloses,
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`inter alia, watching basketball games, web browsing, and reading the news. Pet.
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`15 (citing Apple 1003 ¶ 57). Patent Owner’s argument that the Petition did not
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`disclose this claim element ignores the Petition’s detailed explanation and the
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`disclosure of Tomioka. See Pet. 15–17, 22–24, Apple 1016 ¶¶ 73–76.
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`7
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`Patent Owner’s vague implication that the Petitioner’s citations relate to
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`different embodiments is wrong. See Resp. 9. The Board already scrutinized
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`Tomioka as a whole and found that the cited portions of Tomioka disclose one
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`embodiment along with possible variations of that embodiment, rather than
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`multiple different embodiments. Inst. Dec. 11–12.
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`Patent Owner’s assessment of the “linchpin” of Petitioner’s argument is a
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`mischaracterization of the Petition. See Resp. 9. For this claim element, what is
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`most relevant is that Tomioka discloses many user activities that are “related” or
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`“unrelated” to “television viewing,” including, for example, the disclosure of a
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`user conducting activities such as watching TV using a TiVo player or browsing
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`audio content on a car audio device, which are done under a common user profile.
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`Pet. 15 (citing Apple 1003 ¶ 57); see also Apple 1003 ¶ 37.
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`The distinction Patent Owner attempts to draw between program description
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`schemes and user description schemes is irrelevant because Tomioka specifically
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`discloses that user description schemes are portable across services and devices.
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`See, e.g., See Resp. 9; Apple 1003 ¶ 46 (“When user description scheme is
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`standardized among different manufacturers or products, user preferences become
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`portable. For example, a user can personalize the television receiver in a hotel
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`room permitting users to access information they prefer at any time and anywhere.
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`In a sense, the user description scheme is persistent and timeless based.”); ¶ 61 (“It
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`is noted that in a networked system the user description scheme may be transported
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`over the network.”); see also ¶¶ 40, 62, 88, 89, 94, 109.
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`D. Claim Part IV: “access the user profile in response to the second
`user activity”
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`The Petition establishes that this claim limitation is disclosed in Tomioka.
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`See Pet. 13–14, 26. In the Tomioka system, when a user watches television on a
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`TiVo player, the system will access the user description scheme in order to
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`“present[] to the user audio and video information based upon the user’s prior
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`viewing and listening habits, preferences, and personal characteristics . . . .” Apple
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`1003 ¶ 40; Pet. 14. Thus, the user profile is accessed in response to the activity of
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`watching television.
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`Tomioka discloses a user profile that is accessed and used to “intelligently”
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`send content to users (Pet. 22–23) on many different devices (Apple 1003 ¶ 37, 38,
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`97, 40) in response to users using those devices (see, e.g., Apple 1003 ¶ 57 (“The
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`user starts interacting with the system with a pointer or voice commands to indicate
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`a desire to view recorded sporting programs”)). Patent Owner ignores this
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`evidence and offers no evidence or explanation of how Tomioka’s disclosure
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`differs from this claim element. See Resp. 10–11.
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`9
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`U.S. Patent No. 7,900,229
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`E. Claim 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 Petition establishes that Tomioka discloses the ‘transmit data’ aspect of
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`this claim limitation. Pet. 14–15, 26–28. When the user watches television
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`through a TiVo player, the television content is being transmitted to the user. The
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`Petition explains that the Tomioka system “records and presents to the user audio
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`and video information based upon the user’s prior viewing and listening habits,
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`preferences, and personal characteristics, generally referred to as user
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`information.” Apple 1003 ¶ 40 (emphasis added). The Petition also explains that
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`“content may be automatically provided to the user for viewing.” Pet. 27 (citing
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`Apple 1003 ¶¶ 91–92) (emphasis added). And the system gathers and provides
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`“user specific information” used in “authoring and updating the user description
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`scheme,” and “[i]n this manner, desirable content may be provided to the user.”
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`Apple 1003 ¶ 55 (emphasis added). Patent Owner does not identify any
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`meaningful difference between “transmitting” and “providing” or “presenting,”
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`and there is none. See Resp. at 12. Additionally, Tomioka explicitly discloses that
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`“the user preferences may be stored in a server and the content adaptation can be
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`performed according to user descriptions at the server and then the preferred
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`content is transmitted to the user.” Apple 1003 ¶ 104 (emphasis added). Thus,
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`Tomioka satisfies even an incorrect ipsissimis verbis anticipation test. Patent
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`10
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`Owner’s arguments to the contrary are unsupported by explanation or evidence.
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`See Resp. 12.
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`Tomioka also discloses that the data is transmitted “responsive to the second
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`user activity.” Specifically, a user watching TV through a TiVo player would
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`receive targeted advertising in response to the content the user browsed on the car
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`audio player. Tomioka explains that “[t]hrough the intelligent agent, the system
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`acts on behalf of the user to discover programs that fit the taste of the user, alert the
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`user about such programs, and/or record them autonomously.” See Pet. 27 (citing
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`Apple 1003 ¶ 63). And “data regarding usage patterns may be made available to
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`other sources. The data may be used for any purpose, such as for example,
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`providing targeted advertising or programming on the device based on such data.”
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`Apple 1003 ¶ 93.
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`In other words, Tomioka discloses a system in which a user activity, such as
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`television viewing or web browsing (see Pet. 19–20 (citing Apple 1003 ¶ 52)) on
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`any device “suitable” for television viewing or web browsing (id.) would trigger
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`targeted advertising content being sent to the user. Pet. 27 (citing Apple 1003 ¶
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`93). Thus, the type of advertising data transmitted to the user is selected by
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`checking the preferences and history information in the user’s profile, which
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`reflects the user’s interests based on past user activities. Pet. 22–23 (describing the
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`content of the user profile in Tomioka). Patent Owner makes no effort to explain
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`how these disclosures differ from what is required by this element of Claim 14, and
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`there is no difference.
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`F. Claim 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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`Tomioka discloses this claim limitation by disclosing description schemes
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`that are used to distribute content to the user on various devices in a particular
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`manner. Pet. 14–15, 22–23. Browsing audio content on a car audio player causes
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`the user description scheme to be updated with the user’s content preferences, and
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`then advertising that is targeted based on those preferences in sent to the user in
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`response to the user engaging in watching television on a TiVo player. Tomioka
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`discloses this interaction because its system uses an “intelligent software agent”
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`which “records and presents to the user audio and video information based upon
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`the user’s prior viewing and listening habits, preferences, and personal
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`characteristics.” Apple 1003 ¶ 40, 46, 37. These “prior viewing and listening
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`habits” constitute the “first user activity” required by claim 14, and they are used to
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`create/update the user’s profile. Apple 1003 ¶ 46. Tomioka explains that “[t]he
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`user description scheme 20 preferably includes the user’s personal preferences, and
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`information regarding the user’s viewing history such as for example browsing
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`history . . . .” Id. Thus, these early user activities affect the content transmitted to
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`the viewer in response to a later user activity (such as watching television). See,
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`
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`12
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`e.g., Apple 1003 ¶ 68. Specifically, Tomioka explains that “[t]he user description
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`scheme can be used in prioritizing the results of the user query during
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`presentation.” Id. In other words, Tomioka’s “intelligent software agents” make
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`“smart inferences regarding the user’s preferences” in order to “personalize” the
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`content transmitted to the user on various devices. Apple 1003 ¶¶ 58–60.
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`Tomioka’s “intelligent software agent” tracks user preferences (indicated by
`
`their activities) and uses those preferences to distribute user-targeted content. See,
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`e.g., Apple 1003 ¶ 93. Specifically, “[t]he data may be used for any purpose, such
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`as for example, providing targeted advertising or programing on the device based
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`on such data.” Id. (emphasis added). While the ’229 Patent uses the word “affect”
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`in Claims 14 and 26, and Tomioka uses the phrase “based on,” the phrases are
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`equivalent. Patent Owner identifies no meaningful difference between the
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`disclosure of Tomioka and this last element of Claim 14, and there is none.
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` Patent Owner is wrong in its argument that Tomioka requires maintenance
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`of separate user preference descriptions. Resp. 13. Tomioka discloses that one
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`option for the system is to maintain multiple user profiles in some situations, such
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`as where the user has “different emotional states . . . (e.g., happy mood versus tired
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`or sad).” Apple 1003 ¶ 106. But Tomioka does not require any particular type of
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`user profiles to be maintained separately in all situations. Indeed, the majority of
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`Tomioka focuses on using one user description scheme across all devices. See,
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`13
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`U.S. Patent No. 7,900,229
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`e.g., Apple 1003 ¶ 46. Tomioka explains that “the user description scheme is
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`modular and portable so that users can carry or port it from one device to another,
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`such as . . . [being] transported over a network connecting multiple devices.” Id.;
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`see also id. ¶ 58.
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`IV. TOMIOKA ANTICIPATES DEPENDENT CLAIMS 24 AND 31
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`Contrary to Patent Owner’s arguments, the Petition demonstrates how
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`Tomioka anticipates claims 24 and 31. Pet. 31–33. Petitioner’s expert explained
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`why “[o]ne of ordinary skill would . . . understand that the Tomioka system
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`updates the user profile based on a detected location.” Apple 1016 ¶ 91. The user
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`preference description includes a “PreferenceType” description that defines
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`preferences based on a “place” such as the “office.” Apple 1016 ¶ 91 (citing Apple
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`1003 ¶ 0127). And Tomioka discloses that “a user may have different preferences
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`depending on the user’s situation, location, time, season . . . .” Apple 1003 ¶ 128
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`(emphasis added). Thus, Tomioka’s system is configured to update the “location
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`attribute” in the “user preference description” based on the user’s “location.” Id. at
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`Claim 5, ¶¶ 90, 127. As explained above, the information (including the location
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`of the user) in Tomioka’s the user preference description is used to determine what
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`content to send to users. See supra, Part III.F.
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`
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`Additionally, Tomioka discloses “cellular telephones,” which one of
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`ordinary skill in the art of 2002 knew to constitute the “location trackable mobile
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`14
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`units” referenced in Claim 24. Apple 1016 ¶¶ 37, 92. Patent Owner does not
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`contest the Petitioner’s expert testimony. See In re Preda, 401 F.2d at 826
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`(explaining that the inference one of skill in the art would draw from a reference
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`bears on the anticipation analysis). Patent Owner instead argues that Tomioka’s
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`disclosure of cellular telephones bears on obviousness, not anticipation. Resp. 14.
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`For that proposition, Patent Owner cites Net MoneyIN, Inc. v. VeriSign, Inc., 545
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`F.3d 1359, 1371 (Fed. Cir. 2008), which is inapposite because it involves a
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`situation where there are “differences between the prior art reference and a claimed
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`invention.” Id. Here, in contrast, there are no material differences—Tomioka and
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`the ’229 Patent both disclose mobile units with location tracking abilities which are
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`used to update a user profile. Compare Apple 1001 at 2:35–:43 with Apple 1016
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`¶¶ 91–92.
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`Claim 31 requires that “the data to be transmitted” be “selected” “at least in
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`part on the detected physical location of the second device.” Tomioka discloses
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`this limitation because it discloses a first device (a TiVo Player that constitutes a
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`set-top box) on which a user engages in a first activity (watching television). See
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`supra, Part III.B (explaining Tomioka’s disclosure of that device/activity pair in
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`the context of a second activity/device, but which can also be a first
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`activity/device). This first activity is related to television viewing. See Pet. 8–9.
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`Watching television programs, such as sports, causes the user description scheme
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`U.S. Patent No. 7,900,229
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`to be updated to reflect a preference for watching sports. See supra, Part III.A,
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`Apple 1003 ¶ 57. Tomioka also discloses a second device (a cellular telephone
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`that constitutes a remote unit) on which a user engages in a second activity
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`(browsing the internet). Pet. 10 (discussing remote unit); Apple 1003 ¶ 58
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`(discussing activity of browsing the internet). The second activity is not related to
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`television viewing. See Pet. 8–9. When the user engages in the second activity,
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`the Tomioka system accesses the user description scheme and transmits targeted
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`advertising consisting of local sports advertising (i.e., the date and time of a local
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`basketball game). See supra, Part III.F; Apple 1003 ¶ 57. The user’s location is
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`determined using the location of the cellular telephone, which is calculated with
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`the cellular telephone’s GPS unit and is stored in the user description scheme, as
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`described above.
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`In sum, Tomioka discloses a system that anticipates Claims 24 and 31, and
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`Patent Owner provides no explanation of any alleged difference between Tomioka
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`and Claims 24 and 31. See Pet. 18, 31 (explaining Tomioka’s disclosure of
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`dependent Claims 24 and 31).
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`V. CONCLUSION
`The Board should invalidate Claims 14–16, 19, 21, 24, 26, 28, 30, and 31 of
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`the ’229 patent under 35 U.S.C. § 102(a) as anticipated by Tomioka.
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`Respectfully Submitted,
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`/Mark E. Miller/
`Mark E. Miller (Reg. No. 31401)
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`CERTIFICATE OF SERVICE
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` hereby certify that on April 6, 2016, I caused a true and correct copy of the
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`foregoing materials:
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`• Petitioner’s Reply to Patent Owner’s Response
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`to be served via Express Mail or an equivalent service on the following attorney of
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`record as listed on PAIR:
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`Eric Andersland
`Schwegman Lundberg & Woessner/Open TV
`P.O. BOX 2938
`Minneapolis, MN 55402-0938
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` courtesy copy was also sent to the Patent Owner’s litigation counsel at the
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`following address:
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`Robert F. McCauley; Jacob A. Schroeder; Gerald F. Ivey;
`Smith R. Brittingham IV; Elizabeth A. Niemeyer; John M. Williamson;
`Aliza A. George; Robert D. Wells; Stephen E. Kabakoff
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`3300 Hillview Avenue
`Palo Alto, CA 94304-1203
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`/s/ Shari L. Gordon
`Shari L. Gordon
`Case Manager
`O’MELVENY & MYERS LLP
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