U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
`
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`OPENTV, Inc.
`Patent Owner.
`
`Case No. ______
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,900,229 CHALLENGING CLAIMS 14-16, 19, 21, 24,
`26, 28, 30 and 31 UNDER 35 U.S.C. §321, 37 C.F.R. §42.104
`
`

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`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`
`
`TABLE OF CONTENTS
`
`
`Page
`INTRODUCTION ....................................................................................................... 1
`I.
`II. GROUNDS FOR STANDING AND FEE AUTHORIZATION .................... 1
`III. MANDATORY NOTICES (37 C.F.R. §42.8) ......................................................... 1
`IV.
`SUMMARY OF CHALLENGES .............................................................................. 2
`V.
`THE CHALLENGED PATENT.............................................................................. 3
`A. Overview of the ’229 Patent ............................................................................ 3
`B.
`Summary of the ’229 Patent Prosecution History ........................................ 5
`C.
`Level of Ordinary Skill in the Art .................................................................... 7
`VI. CLAIM CONSTRUCTION ....................................................................................... 8
`A.
`“activity related to television viewing” and “activity unrelated to
`television viewing” (Claims 14 and 26) ........................................................... 8
`“remote unit” (Claims 14, 16, 21, and 28).................................................... 10
`B.
`“set-top box” and “broadcast station” (Claims 14, 16, and 21) ............... 10
`C.
`VII. CLAIMS 14-16, 19, 21, 24, 26, 28, 30 AND 31 ARE
`UNPATENTABLE .................................................................................................... 10
`A. Ground 1: Claims 14-16, 19, 21, 24, 26, 28, 30 and 31 of the ’229
`Patent Are Anticipated by Tomioka (Apple 1003) ..................................... 11
`1.
`Tomioka Anticipates Independent Claim 14 and
`Dependent Claims 15-16, 19, 21, and 24 .......................................... 11
`Tomioka Anticipates Independent Claim 24 and
`Dependent Claims 26, 28, and 30-31 ................................................ 31
`Ground 2: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are
`Obvious Under 35 U.S.C. §103(a) in View of Tomioka (Apple
`1003) ................................................................................................................... 33
`Ground 3: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are
`Obvious Under 35 U.S.C. §103(a) over Tomioka (Apple 1003) in
`View of Schiller (Apple 1004) ........................................................................ 34
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`2.
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`B.
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`C.
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`TABLE OF CONTENTS
`(continued)
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`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`
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`Page
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`D. Ground 4: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are
`Obvious Under 35 U.S.C. §103(a) over Tomioka (Apple 1003) in
`View of Kotani (Apple 1005) ......................................................................... 36
`E. Ground 5: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are
`Anticipated Under 35 U.S.C. §102 by Cristofalo (Apple 1006) ................ 38
`1.
`Cristofalo Anticipates Independent Claim 14 and
`Dependent Claims 15-16, 19, 21, and 24 .......................................... 39
`Cristofalo Anticipates Independent Claim 26 and
`Dependent Claims 28, 30, and 31 ...................................................... 54
`Ground 6: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are
`Obvious Under 35 U.S.C. §103(a) in View of Cristofalo (Apple
`1006) ................................................................................................................... 56
`G. Ground 7: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are
`Obvious Under 35 U.S.C. §103(a) over Cristofalo (Apple 1006) in
`View of Eldering (Apple 1007) ...................................................................... 57
`VIII. CONCLUSION........................................................................................................... 60
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`F.
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`2.
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`TABLE OF AUTHORITIES
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`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
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`Page
`
`CASES
`In re ICON Health & Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007) ........................................................................................ 10
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) ........................................................................................ 10
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`134 S. Ct. 2120 (2014) ....................................................................................................... 11
`STATUTES
`35 U.S.C. §102 .......................................................................................................................... 44
`35 U.S.C. §102(a) .............................................................................................................. 12, 40
`35 U.S.C. §102(b) ........................................................................................................ 12, 40, 42
`35 U.S.C. §102(e) .............................................................................................................. 44, 63
`35 U.S.C. §103(a) ............................................................................................................. passim
`OTHER AUTHORITIES
`77 Fed. Reg. 48764 (Aug. 14, 2012) ...................................................................................... 11
`REGULATIONS
`37 C.F.R. §42.100(b) ............................................................................................................... 10
`
`
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`iii
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`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`
`
`
`LIST OF EXHIBITS
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`Apple 1001 ………………...……… U.S. Patent No. 7,900,229 (“the ’229 Patent”)
`
`Apple 1002 ………………...……… Excerpts from File History for U.S. Patent
`Application No. 10/271,801, which
`ultimately issued as U.S. Patent No.
`7,900,229
`
`Apple 1003 ………………...……… European Patent Application No.
`00124464.9, Publication No. EP 11 00268
`A2 to Tomioka (“Tomioka”)
`
`Apple 1004 ………………...……… Excerpts from Jochen Schiller, Mobile
`Communications (2000) (“Schiller”)
`
`Apple 1005 ………………...……… Certified English Translation of Japanese
`Unexamined Patent Application Publication
`H11-7453 to Kotani, and Japanese language
`reference (“Kotani”)
`
`Apple 1006 ………………...……… U.S. Patent No. 7,305,691 (“Cristofalo”)
`
`Apple 1007 ………………...……… U.S. Patent Application Publication No.
`2002/0111154 (“Eldering”)
`
`Apple 1008 ………………...……… U.S. Patent Application Publication No.
`2002/0111172 (“DeWolf”)
`
`Apple 1009 ………………...……… U.S. Patent No. 5,861,881 (“Freeman”)
`
`Apple 1010 ………………...……… Excerpts from Gerard O’Driscoll, The
`Essential Guide to Set-Top Boxes and
`Interactive TV (2000) (“O’Driscoll”)
`
`Apple 1011 ………………...……… Andrew Tokmakoff and Harry van Vliet,
`“Home Media Server Content Management,”
`Internet Multimedia Management Systems II,
`Proceedings of SPIE Vol. 4519 (July 2001)
`(“Tokmakoff”)
`
`iv
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`

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`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`Apple 1012 ………………...……… Matt Carmichael, “This Ad’s for You,”
`Advertising Age (April 17, 2000)
`(“Carmichael”)
`
`Apple 1013 ………………...……… “Introduction to MPEG-7 (v3.0)” (Neil Day
`and José Martinez eds.), ISO/IEC
`JTC1/SC29/ WG11, Singapore (March
`2001)
`
`Apple 1014 ………………...……… Introduction to MPEG-7 Multimedia
`Content Description Interface (B.S.
`Manjunath, Philippe Salembier and Thomas
`Sikora eds.) (2002, reprinted 2003)
`
`Apple 1015 ………………...……… Excerpts from Tomasz Imielinski and Julio
`C. Navas, “GPS-Based Geographic
`Addressing, Routing, and Resource
`Discovery,” Communications of the ACM
`(April 1999)
`
`Apple 1016 ………………...……… Declaration of Charles A. Knutson in
`Support of Apple Inc.’s Petition for Inter
`Partes Review of U.S. Patent No. 7,900,229
`
`Apple 1017 ………………...……… Curriculum vitae of Charles D. Knutson,
`Ph.D.
`
`Apple 1018 ………………...……… Joint Claim Construction and Prehearing
`Statement filed in OpenTV Inc. v. Apple
`Inc., Case No. 3:14-cv-01622-JST, ECF Nos.
`95 and 95-1 (N.D. Cal. Dec. 19, 2014)
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`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`
`I.
`
`INTRODUCTION
`
`Apple Inc. petitions the United States Patent and Trademark Office to institute
`
`an inter partes review of U.S. Patent No. 7,900,229 (“the ’229 Patent”) Claims 14-16,
`
`19, 21, 24, 26, 28, 30, and 31, pursuant to 37 C.F.R. §42.100, et seq. The ’229 Patent is
`
`assigned to OpenTV, Inc. (“Patent Owner”) and claims a system and method for
`
`utilizing user profiles in an interactive television system. Apple 1001 cover, Abstract.
`
`The ’229 Patent claims are anticipated or rendered obvious based on references that
`
`were not considered by the Patent Office during prosecution. Each invalidity ground
`
`is non-cumulative and reasonably likely to prevail, and the petition should be granted.
`
`II. GROUNDS FOR STANDING AND FEE AUTHORIZATION
`Under 37 C.F.R. §42.104(a), Petitioner certifies that the ’229 Patent is available
`
`for inter partes review, and Petitioner is not barred or estopped from requesting review
`
`on the grounds presented. This Petition is timely filed under 37 C.F.R. §42.102(a)(2).
`
`Pursuant to 37 C.F.R. §42.103(a), the Office is authorized to charge $23,400 to
`
`Deposit Account No. 50-0639 for fees under 37 C.F.R. §42.15(a) and any other fees.
`
`III. MANDATORY NOTICES (37 C.F.R. §42.8)
`Real Party-In-Interest: The real party-in-interest is Apple Inc.
`
`Notice of Related Matters: OpenTV, Inc. asserts the ’229 Patent against Apple in
`
`Northern District of California Case No. 3:14-cv-01622-HSG, filed on April 9, 2014
`
`and Apple was served on April 10, 2014.
`
`Petitioner’s Lead and Back-up Counsel:
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`1
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`

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`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`Lead Counsel: Mark E. Miller (Reg. No. 31,401), O’Melveny & Myers LLP,
`
`Two Embarcadero Center, 28th Floor, San Francisco, CA 94111. (Telephone: 415-
`
`984-8700; Fax: 415-984-8701; Email: markmiller@omm.com.)
`
`Backup Counsel: Anne E. Huffsmith (Reg. No. 57,041),O’Melveny & Myers,
`
`San Francisco (address, telephone, and fax above; Email: ahuffsmith@omm.com) and
`
`J. Kevin Murray (Reg. No. 69,529) and Xin-Yi Zhou (Reg. No. 63,366), O’Melveny &
`
`Myers LLP, 400 S. Hope Street, Los Angeles, CA 90071 (Telephone: 213-430-6000;
`
`Fax: 213-430-6407; Emails: kmurray2@omm.com and vzhou@omm.com).
`
`
`
`Service Information: Counsel may be served at O’Melveny & Myers LLP,
`
`Two Embarcadero Center 28th Floor, San Francisco, CA 94111-3823, copies to
`
`markmiller@omm.com, ahuffsmith@omm.com, kmurray2@omm.com, and
`
`vzhou@omm.com. Counsel may be called at 415-984-8700 or faxed at 415-984-8701.
`
`IV. SUMMARY OF CHALLENGES
`Apple challenges the patentability of ’229 Patent Claims 14-16, 19, 21, 24, 26,
`
`28, 30, and 31 on the following grounds, described in detail in Section VII, below:
`
`Ground 1: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are Anticipated Under
`
`35 U.S.C. §102(a) and (b) by Tomioka (Apple 1003)
`
`Ground 2: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are Obvious Under
`
`35 U.S.C. §103(a) in View of Tomioka (Apple 1003)
`
`Ground 3: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are Obvious Under
`
`35 U.S.C. §103(a) over Tomioka (Apple 1003) in View of Schiller (Apple 1004)
`
`2
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`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`Ground 4: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are Obvious Under
`
`35 U.S.C. §103(a) over Tomioka (Apple 1003) in View of Kotani (Apple 1005)
`
`Ground 5: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are Anticipated Under
`
`35 U.S.C. §102(e) by Cristofalo (Apple 1006)
`
`Ground 6: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are Obvious Under
`
`35 U.S.C. §103(a) in View of Cristofalo (Apple1006)
`
`Ground 7: Claims 14-16, 19, 21, 24, 26, 28, 30, and 31 Are Obvious Under
`
`35 U.S.C. §103(a) over Cristofalo (Apple 1006) in View of Eldering (Apple 1007)
`
`V. THE CHALLENGED PATENT
`A. Overview of the ’229 Patent
`The ’229 Patent was filed October 15, 2002, and claims “a system and method
`
`for utilizing user profiles in an interactive television system.” Apple 1001 cover. The
`
`system may create or update a user profile based on user’s activity on a first device
`
`and select data to transmit to a user on a second device based at least in part on the
`
`profile. Id. Abstract. Interactive television systems were known for providing content
`
`besides television and for allowing user input and personalization. Id. 1:15-18, 30-45.
`
`It was known that systems frequently include “a set-top box connected to a television
`
`set and a recording device, but may consist of any number of suitable devices.” Id.
`
`The ’229 Patent claims a system and method in which a “user may access the
`
`system through various means” and the system “creat[es] and maintain[s] a user
`
`profile which reflects activity of the user within the system.” Id. 1:63-2:1. A user’s
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`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`activity “such as television viewing” may create or update “a user profile which
`
`reflects the user’s viewing activities” and includes other activities such as “cell phone
`
`or other mobile unit activities and communications.” Id. 2:1-6; 2:59-66, 7:18-42; see id.
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`13:1-3 (“Web surfing”). Information is conveyed to a user based at least in part on
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`the user profile across devices; for example, “a user’s cell phone activity may affect the
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`information the user receives at home on their television, and vice versa.” Id. 2:6-10.
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`The user profile includes “basic personal information, … usage history and
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`viewer preference filters.” Id. 10:50-52. The information may be “combined with
`
`location information” and other information to select data which may be presented.
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`Id. 10:53-60. The user profile may be created automatically based on a user’s “viewing
`
`habits” and “usage history” or based on other user input. Id. 10:61-67, 11:43-46.
`
`Independent Claim 14 recites known elements of interactive television systems
`
`including a remote unit, set-top box, and broadcast station. See id. Claim 14. The
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`claim also requires the system to be configured to update a user profile responsive to
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`a first user activity on first device, detect a second user activity on a second device,
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`access the user profile, and transmit data to the user based at least in part on the user
`
`profile, where the first user activity affects a content of the transmitted data. Id. The
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`claim includes an “activity related to television viewing” and an “activity unrelated to
`
`television viewing,” performed on separate devices. Id. The specification states,
`
`“Ultimately, all user interaction with the system may affect the user profile which may
`
`in turn affect the information the user receives from any accessing device.” Id. 13:3-6.
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`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`When a user accesses the system, the system accesses the user profile and
`
`
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`“based on the user profile, specific information may be selected for presentation to
`
`the user.” Id. 11:50-58. For example, the system may present options for sports
`
`programming, and the user may choose football. Id. 11:18-24. “Usage history
`
`incorporated into the user profile may then cause a preference filters to be updated
`
`such that other (non-football) sports-related programs are not presented to the user.”
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`Id. 11:24-31. The system may also then present football scores by default. Id. As
`
`other examples, news or scores concerning the team may be sent along with requested
`
`data. Id. 12:40-47. The user profile also may be used to send targeted advertising. Id.
`
`The “user profile may be created and/or updated based on accesses from any device
`
`within the system” and the “user profile may be used to select information to
`
`presentation to any device within the system.” Id. 12:1-4.
`
`Independent Claim 26 recites the same steps as Claim 14, but recites a
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`“computer readable storage medium” with program instructions, and claims a first
`
`and second device that are not limited to a “remote unit” or “set-top box.” Id. Claims
`
`14 and 26. The challenged dependent claims recite additional aspects such as
`
`transmitting non-requested data to a user (Claims 19 and 30) and updating a user
`
`profile and transmitting data based on the location of a user’s device (Claims 24 and
`
`31). Every element is disclosed by the prior art, as discussed in Section V, below.
`
`Summary of the ’229 Patent Prosecution History
`
`B.
`Application No. 10/271,801 was filed on October 15, 2002 with 32 claims,
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`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`including independent Claims 14 and 26. See Apple 1002 at 210-258. Original Claims
`
`14 and 26 of the ’801 Application correspond to the issued claims. Id. at
`
`In a September 9, 2004 Office Action, the examiner rejected the pending
`
`claims on several grounds. Claims 1-10, 12-22, and 24-25 were rejected as anticipated
`
`by U.S. Patent No. 6,177,931 (“Alexander”), and Claims 11, 23, and 26-32 were
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`rejected as obvious in view of Alexander. Apple 1002 at 199-209. The Applicant
`
`admitted that Alexander discloses an electronic programming guide (“EPG”) that
`
`“records the viewer’s actions and the circumstances surrounding” the interactions. Id.
`
`at 192-193. The Applicant argued that Alexander does not disclose multiple activities
`
`performed on multiple devices; instead, viewer activity is associated with the television
`
`EPG and is “directed to a viewer sitting in front of their television set.” Id. The
`
`Applicant also argued that the ‘801 Application disclosed a user profile that is
`
`“common to both of the differing accesses by different devices.” Id. at 193.
`
`On June 15, 2005, the examiner rejected Claims 1-4, 6-9, 12-17, 19-21, 24-27,
`
`29, 31 and 32 as anticipated by U.S. Patent Application Publication No. 2005/
`
`0028208 (“Ellis”), and Claims 5, 18, and 28 as obvious based on Ellis and U.S. Patent
`
`No. 6,571,279 (“Hertz”). Id. at 174-184. The examiner found that Ellis disclosed a
`
`remote unit, set-top box, and broadcast station and performed Claim 14’s then-recited
`
`functions. Id. at 175-179. In response, the Applicant amended the claims to add
`
`limitations “activity related to television viewing” and “activity unrelated to television
`
`viewing.” Id. at 160-165. The Applicant then admitted that Ellis discloses activities
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`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`“related to television viewing,” such as accessing program listings, scheduling program
`
`reminders, adjusting parental control settings, accessing an interactive television
`
`program guide and scheduling recordings, and Ellis discloses other activities such as
`
`web browsing, a stock ticker application, and e-mail. Id. at 167-170. The Applicant
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`argued that Ellis does not disclose that activities may share a “common user profile,
`
`exchange data, or affect each other’s operation in any way.” Id.
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`The examiner maintained the rejections, finding that Ellis disclosed activities
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`“related to television viewing” and “unrelated to television viewing.” Id. at 146-158.
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`(The examiner rejected the claims based on Ellis on June 15, 2005, November 16,
`
`2005, May 9, 2006, December 22, 2006, and May 24, 2007. Id. at 7.) In response, the
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`Applicant argued that in the claims, “a user profile is recited which is common to
`
`disparate activities,” and “[w]hile Ellis discloses non-television viewing related activity
`
`such as shopping or email, Ellis does not disclose or suggest that this activity updates
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`a user profile which is later used for transmitting data responsive to television viewing
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`related activity.” Id. at 141-142. After a final rejection, the Applicant appealed,
`
`arguing that Ellis only discloses that a user may adjust settings for a given application
`
`and never discloses a common user profile. Id. at 14-42. The rejection was reversed
`
`and the claims ultimately allowed. Id. at 1-13. In allowing the claims, the Patent
`
`Office did not consider the references cited in this Petition. Apple 1001 cover, 2.
`
`Level of Ordinary Skill in the Art
`
`C.
`One of ordinary skill in the art related to the ’229 Patent at the time of the
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`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`application had a bachelor’s degree or higher in computer science, computer
`
`engineering, or the equivalent, plus two or more years of experience in the field of
`
`networking and data communications, or a similar field. See Apple 1016 ¶¶ 37-38.
`
`VI. CLAIM CONSTRUCTION
`In an inter partes review, claim terms in an unexpired patent are given their
`
`“broadest reasonable construction.” 37 C.F.R. §42.100(b); see also In re ICON Health &
`
`Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Absent special definitions, terms
`
`are given their ordinary meaning to one of ordinary skill in the art based on the
`
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`Petitioner proposes the following constructions for this Petition, reserving the
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`right to pursue other constructions in district court where different standards apply.
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`Any other terms should be given their broadest reasonable construction. To the
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`extent Patent Owner contends that a claim term has a different meaning, the Patent
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`Owner should seek to amend the claims. See 77 Fed. Reg. 48764 (Aug. 14, 2012).
`
`A.
`
`“activity related to television viewing” and “activity unrelated to
`television viewing” (Claims 14 and 26)
`
`The ’229 Patent never defines an “activity related to television viewing” or an
`
`“activity unrelated to television viewing,” and provides no guidance regarding the
`
`boundary between the terms. During prosecution, the Applicant admitted that prior
`
`art disclosed certain activities “related to television viewing,” such as watching
`
`television, setting a user’s favorite channels, scheduling program reminders, accessing
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`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`program listings, adjusting parental control settings, accessing an interactive television
`
`program guide, scheduling recordings. See, e.g., Apple 1002 at 192-93, 167-169. The
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`Applicant also admitted that the prior art disclosed certain activities “unrelated to
`
`television viewing,” such as web browsing, shopping, using a stock ticker application,
`
`gaming, e-mail, chat application, and banking. Id. at 140-42, 169-170. These arbitrary
`
`examples do not define the boundary between an “activity related to television
`
`viewing” and an “activity unrelated to television viewing.” The claims and
`
`specification “fail to inform, with reasonable certainty, those skilled in the art about
`
`the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120,
`
`2123 (2014). Instead, the terms’ boundaries are unclear. See Apple 1016 ¶¶ 40-42.
`
`The indefiniteness of the terms impedes Apple’s ability to propose precise
`
`definitions. Apple recognizes, however, that indefiniteness is not a proper ground for
`
`rejection in this Petition. For purposes of this Petition, Apple proposes that the terms
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`should at least include activities that the Applicant admitted during prosecution would
`
`disclose claim elements: “activity related to television viewing” should include at least
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`watching television, setting a user’s favorite channels, setting and scheduling program
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`reminders, accessing program listings, adjusting parental control settings, accessing an
`
`interactive television program guide, and scheduling recordings, and “activity
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`unrelated to television viewing” should include at least web browsing, shopping, using
`
`a stock ticker, gaming activity, e-mail, chat, and banking. Of course, prior art also may
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`disclose other activities “related” or “unrelated” to television viewing.
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`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
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`“remote unit” (Claims 14, 16, 21, and 28)
`
`B.
`Apple proposes based on the ’229 Patent specification that a “remote unit”
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`should include at least a “mobile unit” (such as a cellular phone, personal digital
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`assistant, portable computer, or device “configured for wireless communications”)
`
`and a “fixed unit” (such as a personal computer or device at a person’s office). See,
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`e.g., Apple 1001 Abstract, 2:11-15, 28-30, 5:45-6:4, Fig. 3, 12:66-13:1 (“mobile or other
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`remote unit”); see also Apple 1016 ¶¶ 43-44. The scope also should include “[o]ther
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`embodiments of mobile unit 305” not specifically disclosed. Apple 1001 6:1-3.
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`“set-top box” and “broadcast station” (Claims 14, 16, and 21)
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`C.
`In co-pending litigation, Patent Owner proposes that a “set-top box” is “a
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`device that receives a programming signal and outputs audio and video signals for
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`presentation on a display.” See Apple 1018 at 16. Apple proposes that a “set-top
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`box” also decodes and tunes programming signals, as was well-known in the art. Id.;
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`see also, e.g., Apple 1010 at 2, 30-32, Apple 1016 ¶ 45. Set-top boxes were known
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`under any definition, but if there is a dispute of the “broadest reasonable
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`construction,” Apple proposes that Patent Owner’s broader definition be used. The
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`parties dispute whether a “broadcast station” transmits to all destinations
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`simultaneously. See Apple 1018 at 17. The dispute is immaterial, because cited
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`references disclose “broadcast.” See, e.g., Section VII, infra; see also Apple 1016 ¶ 46.
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`VII. CLAIMS 14-16, 19, 21, 24, 26, 28, 30 AND 31 ARE UNPATENTABLE
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`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`A. Ground 1: Claims 14-16, 19, 21, 24, 26, 28, 30 and 31 of the ’229
`Patent Are Anticipated by Tomioka (Apple 1003)
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`European Published Patent Application EP 1 100 268 A2 (“Tomioka”), filed
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`on August 11, 2000 and published on May 16, 2001, is prior art under at least 35
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`U.S.C. §§102(a) and (b). Tomioka was not considered during prosecution of the ’229
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`Patent. See, e.g., Apple 1001 cover and page 2.
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`1.
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`Tomioka Anticipates Independent Claim 14 and Dependent
`Claims 15-16, 19, 21, and 24
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`
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`Tomioka discloses a system and method for utilizing a user profile in an
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`interactive media system to transmit data to users based on user preferences derived
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`from user input and usage history. For example, Tomioka proposes improvements to
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`known interactive television and computer systems such as TiVo, ReplayTV, and
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`ACTV, described in U.S. Patent No. 5,861,881 (“Freeman”). See Apple 1003 ¶¶ 0003-
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`06; see also Apple 1009 2:2-14 and 2:47-3:14. Tomioka notes that users have “an ever
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`increasing number of multimedia devices, such as a home audio system, a car stereo,
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`several home television sets, web browsers,” and discloses making user preferences
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`portable across devices and activities, using a user description scheme. Apple 1003
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`¶¶ 0052, 0058, 0061. The scheme “enables modeling of the user by providing a
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`central storage for the user’s listening, viewing, browsing preferences, and user’s
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`behavior,” and may be shared through “a wired or wireless network connection” or
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`using a portable storage card. Id. ¶ 0058. Tomioka also discloses combining schemes
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`to “provide an interactivity not previously achievable.” Id. ¶ 0042.
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`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`Tomioka discloses a “remote unit,” a “set-top box” and a “broadcast station
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`coupled to convey a programming signal to the set-top box” as recited by Claim 14.
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`A program “may originate at any suitable source, such as for example broadcast
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`television, cable television, satellite television, digital television, Internet broadcasts,
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`world wide web, digital video discs, still images, video cameras, laser discs, magnetic
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`media, computer hard drive, video tape, audio tape, data services, radio broadcasts,
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`and microwave communications.” Apple 1003 ¶ 0052. The system “may include any
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`device(s) suitable to receive any one or more of such programs.” Id. Tomioka also
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`discloses using “products similar to those from TiVo and Replay TV in order to
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`extend their entertainment informational value” while also handling “programs
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`coming from sources other than television broadcasts for which TiVo and Replay TV
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`are not designed to handle.” Id. ¶ 0070. TiVo and ReplayTV were well-known
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`products that could act as advanced set-top boxes or at a minimum worked with set-
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`top boxes. Apple 1016 ¶ 67, Apple 1010 at 282; Apple 1011 at 168-169. Indeed, the
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`’229 Patent refers to programming a set-top box “to record programming.” Apple
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`1001 9:52-53. Tomioka also refers to “an audio and/or video program receiver with
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`persistent storage,” Apple 1003 ¶0104, which one of ordinary skill would understand
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`includes a set-top box, because a set-top box was known to be an audio/video
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`receiver that could include storage. Apple 1016 ¶ 67; Apple 1010 at 32, 39.
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`Tomioka disclosed achieving portability of a user profile among devices,
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`including remote units. Tomioka states, for example, “the user information should be
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`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`portable between and usable by different devices so that other devices may likewise be
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`configured automatically to the user’s preferences.” Apple 1003 ¶ 0040. As a few
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`examples, Tomioka mentions a “mobile terminal,” cellular telephones, devices for
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`receiving internet and web browsing, remote controls, portable radio devices,
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`handheld electronic devices, networked devices, car stereos, and other appliances. Id.
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`¶¶ 0037-38, 0046, 0052, 0058, 0060-61, 0091, 0097, 0106. The user profile may be
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`updated based on activities on multiple devices including a “mobile terminal” and
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`devices encountered while traveling. Id. ¶¶ 0038, 0091, 0094-95. The “user’s
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`preferences are readily movable to different devices” and are updated. Id. ¶ 0097.
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`The Tomioka system is configured to “update a user profile in response to a
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`first user activity, the first user activity being initiated via a first device corresponding
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`to one of the remote unit and the set-top box,” as Claim 14 recites. See, e.g., id.
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`¶¶ 0046, 0055, 0058, 0062-63, 0090-91, 0094, 0097-98, 0122, Claim 12, Figs. 2, 25, 27,
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`28. The “user description scheme 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 history.”
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`Id. ¶ 0062-63. The scheme can be “updated in a dynamic fashion by the user or
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`automatically,” depending on user preferences ¶¶ 0062-63, 0090-91, 0095, 0122.
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`The Tomioka system also is configured to “detect a second user activity, the
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`second user activity being initiated via a second device corresponding to one of the
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`remote unit and the set-top box, the second device being different from the first
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`device” and to “access the user profile in response to the second user activity,” as
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`U.S. Patent No. 7,900,229
`Petition for Inter Partes Review
`Claim 14 recites. Video, image, or audio information may be presented to the user
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`using a device such as a television or radio. Apple 1003 ¶ 0042, Figs. 1, 2. The user
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`interacts with the system and has “preferences to define which audio, image, and/or
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`video information is obtained in accordance with the user information.” Id. Tomioka
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`discloses accessing the user profile to deliver content to the user on multiple devices.
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`For example, “the user information should be portable between and usable by
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`different devices so that other devices may likewise be configured automatically to the
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`particular user’s preferences upon receiving the viewing information.” See, e.g., id.
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`¶¶ 0040, 0046, 0062, 0095. The “user descriptor scheme enables modeling of the user
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`by providing a central storage for the user’s listening, viewing, browsing preferences,
`
`and user’s behavior” and this “enables devices to be quickly personalized, and enables
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`other components, such as intelligent agents, to communicate on the basis of a
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`standardized description format, and to make smart inferences regarding the user’s
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`preferences.” Id. ¶ 0058. Th