Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`Paper 31
`Entered: September 26, 2016
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`
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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 B2
`_______________
`
`
`
`
`Before JAMES B. ARPIN, DAVID C. MCKONE, and SCOTT C. MOORE,
`Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
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`

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`IPR2015-01031
`Patent 7,900,229 B2
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`
`A. Background
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`I.
`
`INTRODUCTION
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`Apple Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute
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`an inter partes review of claims 14–16, 19, 21, 24, 26, 28, 30, and 31 of U.S.
`
`Patent No. 7,900,229 B2 (Ex. 1001, “the ’229 patent”). OpenTV, Inc.
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`(“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
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`Pursuant to 35 U.S.C. § 314, in our Decision to Institute (Paper 10, “Dec.”),
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`we instituted this proceeding as to each of the challenged claims.
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`Petitioner relies upon the following reference and declaration in
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`support of its grounds for challenging the identified claims of the ’229
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`patent:
`
`Exhibit No. Reference and Declaration
`1003
`Patent Application Publication No. EP 1 100 268 A2 to
`Tomioka et al. (“Tomioka”)
`Declaration of Charles D. Knutson, Ph.D.
`
`1016
`
`Petitioner asserts that all of the challenged claims are unpatentable on
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`the following ground (Pet. 2–3, 11–33):
`
`Claims
`14–16, 19, 21, 24, 26,
`28, 30, and 31
`
`Reference
`Ground
`35 U.S.C. § 102(a) Tomioka
`
`After institution, Patent Owner filed a Patent Owner Response (Paper
`
`14, “PO Resp.”), and Petitioner filed a Reply to the Patent Owner Response
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`(Paper 15, “Reply”). A hearing was held on June 21, 2016, and a transcript
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`of that hearing is part of this record. Paper 21 (“Tr.”).
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`We have jurisdiction under 35 U.S.C. § 6(b). This decision is a Final
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`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
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`challenged claims. Based on the record before us, Petitioner has
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`demonstrated, by a preponderance of the evidence, that challenged claims
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`2
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`IPR2015-01031
`Patent 7,900,229 B2
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`14–16, 19, 21, 26, 28, and 301 of the ’229 patent are unpatentable, but has
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`not demonstrated, by a preponderance of the evidence, that challenged
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`claims 24 and 31 of the ’229 patent are unpatentable.
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`B. Related Matter
`
`The parties indicate that the ’229 patent is the subject of OpenTV, Inc.
`
`v. Apple Inc., Civil Action No. 3:14-cv-01622-HSG (N.D. Cal. 2014).
`
`Pet. 1; Paper 5, 2. The parties identify additional cases involving the ’229
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`patent, as well as other inter partes review proceedings involving the same
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`parties, in their Joint Motion to Terminate. Paper 22, 3–4. Nevertheless, the
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`parties indicate that the disputes in those additional cases have been settled
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`and that the cases have been dismissed with prejudice. Id. at 3.
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`C. The ’229 Patent
`
`The ’229 patent is directed to “[a] system and method for utilizing
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`user profiles in an interactive television system.” Ex. 1001, Abstract. The
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`system can create or update a user profile, or both, based on a user’s activity
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`on a first device, and select data to transmit to a user on a second device
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`based at least in part on the profile. Id.; accord id. at col. 6, l. 54–col. 7, l. 3.
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`The Specification indicates that it was known in the art that interactive
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`television systems could provide content other than television, and could
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`allow for user input and personalization. Id. at col. 1, ll. 15–18, 30–45. It
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`also was known that such systems frequently include “a set-top box
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`connected to a television set and a recording device, but may consist of any
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`number of suitable devices.” Id. For example, an interactive television
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`system may include a broadcast station, a set-top box, and a remote unit,
`
`
`1 See infra note 2.
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`3
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`Patent 7,900,229 B2
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`such as a mobile or fixed unit. See id. at col. 2, ll. 11–58, Abstract.
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`The Specification of the ’229 patent teaches systems and methods in
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`which a “user may access the system through various means,” and the
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`system “creat[es] and maintain[s] a user profile which reflects activity of the
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`user within the system.” Id. at col. 1, l. 63–col. 2, l. 1. A user’s activity
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`“such as television viewing” may create or update “a user profile which
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`reflects the user’s viewing activities,” and the user’s profile may reflect
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`other activities such as “cell phone or other mobile unit activities and
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`communications.” Id. at col. 2, ll. 1–6, col. 7, ll. 18–42; see also id. at col. 2,
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`l. 59–col 3, l. 2 (“The user may also input information into the user
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`profile.”), col. 13, ll. 1–3 (“Web surfing”). Information is delivered to a user
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`on a device based at least in part on a user profile available across devices.
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`See id. at col. 6, l. 64–col. 7, l. 3, col. 10, ll. 47–60. For example, “a user’s
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`cell phone activity may affect the information the user receives at home on
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`their television, and vice versa.” Id. at col. 2, ll. 6–10.
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`D. Illustrative Claim
`
` As noted above, Petitioner challenges claims 14–16, 19, 21, 24, 26,
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`28, 30, and 31 of the ’229 patent. Claims 14 (an interactive television
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`system) and 26 (a computer readable storage medium) are independent.
`
`Claims 15, 16, 19, 21, and 24 depend directly or indirectly from claim 14;
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`and claims 28, 30, and 31 depend directly or indirectly from claim 26.2
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`Claim 14 is illustrative and is reproduced below:
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`14. An interactive television system comprising:
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`a remote unit;
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`a set-top box; and
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`a broadcast station coupled to convey a programming signal to
`the set-top box;
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`wherein the system is configured to:
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`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;
`
`detect a second user activity, the second user activity
`being initiated via a second device corresponding to one of the
`
`
`2 Claim 21 depends from claim 14 via intervening claim 20, and claim 28
`depends from claim 26 via intervening claim 27. Petitioner does not
`challenge claim 20 or 27 expressly. See Pet. 30, 53–54; Ex. 1016 ¶¶ 99.
`Because we did not institute review of claims 20 and 27, we do not now rule
`on the patentability of claims 20 and 27. Nevertheless, because we instituted
`on the asserted ground of anticipation by Tomioka, we necessarily consider
`the limitations of intervening claims 20 and 27 in our evaluation of claims
`21 and 28, respectively. Rules of Practice for Trials Before the Patent Trial
`and Appeal Board and Judicial Review of Patent Trial and Appeal Board
`Decisions, 77 Fed. Reg. 48612, 48619 (Aug. 14, 2012) (“To understand the
`scope of a dependent claim, the claims from which the dependent claim
`depends must be construed along with the dependent claim. Accordingly,
`for fee calculation purposes, each claim challenged will be counted as well
`as any claim from which a claim depends, unless the parent claim is also
`separately challenged.”); see Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct.
`2131, 2154 (2016) (Alito, J., concurring in part and dissenting in part; “The
`problem for Cuozzo is that claim 17—which the petition properly
`challenged—incorporates all of the elements of claims 10 and 14.
`Accordingly, an assertion that claim 17 is unpatentable in light of certain
`prior art is necessarily an assertion that claims 10 and 14 are unpatentable as
`well.” (emphasis added)).
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`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;
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`access the user profile in response to the second user
`activity; and
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`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.
`
`Ex. 1001, col. 14, ll. 33–59.
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`E. Claim Construction
`
`Consistent with the statute and the legislative history of the AIA, we
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`interpret claims of an unexpired patent using the broadest reasonable
`
`interpretation in light of the specification of the patent. See 37 C.F.R.
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`§ 42.100(b); Cuozzo Speed Techs. LLC v. Lee, 136 S.Ct. 2131, 2144–46
`
`(2016). There is a presumption that claim terms are given their ordinary and
`
`customary meaning, as would be understood by a person of ordinary skill in
`
`the art in the context of the specification. See In re Translogic Tech. Inc.,
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`504 F.3d 1249, 1257 (Fed. Cir. 2007). An applicant may rebut that
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`presumption by providing a definition of the term in the specification with
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`reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d
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`1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations
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`are not to be read from the specification into the claims. See In re Van
`
`Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
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`Petitioner proposed constructions for various claim terms. Pet. 8–10.
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`Although Patent Owner did not contest expressly Petitioner’s proposed
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`claim constructions for the identified terms or present its own claim
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`constructions for any terms (see Prelim. Resp. 7 n.1), Patent Owner reserved
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`the right to provide claim constructions later, if review was instituted (id.).
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`Nevertheless, Patent Owner proposed no claim constructions in its Patent
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`Owner Response. Paper 11, 3 (“The patent owner is cautioned that any
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`arguments for patentability not raised in the response are deemed waived.”);
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`see PO Resp. i (“Table of Contents”). Further, during the hearing, Petitioner
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`confirmed that “no claim constructions are necessary” (Tr. 14:14–22), and
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`Patent Owner stated that it “didn’t find any claim constructions were
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`necessary in this case, and we -- and the Patent Owner didn’t take a position
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`on the claim construction there. We didn’t object to anything the Petitioner
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`said about claim construction” (id. at 46:17–21). On this record, we remain
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`persuaded that Petitioner’s proposed constructions of the identified terms are
`
`consistent with the broadest reasonable construction of those terms in light
`
`of the Specification. See Dec. 7. For purposes of this Final Written
`
`Decision, however, no claim terms require express construction.
`
`II. ANALYSIS
`
`A. Overview
`
`Petitioner argues that claims 14–16, 19, 21, 24, 26, 28, 30, and 31 of
`
`the ’229 patent are anticipated by Tomioka. See supra Sec. I.A. “A claim is
`
`anticipated only if each and every element as set forth in the claim is found,
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`either expressly or inherently described, in a single prior art reference.”
`
`Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). The
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`elements must be arranged as required by the claim, but this is not an
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`ipsissimis verbis test. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
`
`“[U]nless a reference discloses within the four corners of the document not
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`only all of the limitations claimed but also all of the limitations arranged or
`
`combined in the same way as recited in the claim, it cannot be said to prove
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`prior invention of the thing claimed, and thus, cannot anticipate under 35
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`U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371
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`(Fed. Cir. 2008); accord Application of Arkley, 455 F.2d 586 (CCPA 1972).
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`Moreover, “it is proper to take into account not only specific teachings of the
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`reference but also the inferences which one skilled in the art would
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`reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826
`
`(CCPA 1968).
`
`For the reasons set forth below and on this record, we are persuaded
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`that Petitioner demonstrates by a preponderance of the evidence that claims
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`14–16, 19, 21, 26, 28, and 30 of the ’229 patent are anticipated by Tomioka;
`
`but that Petitioner fails to demonstrate by a preponderance of the evidence
`
`that claims 24 and 31 of the ’229 patent are anticipated by Tomioka.
`
`B. Asserted Grounds
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`1. Anticipation by Tomioka
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`Petitioner provides a claim chart mapping the elements of challenged
`
`claims 14–16, 19, 21, and 24 of the ’229 patent onto the disclosure of
`
`Tomioka. Pet. 18–31. With respect to independent claim 26, Petitioner
`
`argues that independent claim 26 is “virtually identical” to independent
`
`claim 14, except that claim 26 recites “[a] computer-readable storage
`
`medium comprising program instructions, [or triggers to launch execution of
`
`program instructions,] wherein the program instructions are executable by a
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`computing device.” Id. at 31 (quoting Ex. 1001, col. 15, ll. 39–42). Thus,
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`Petitioner relies largely on its textual explanation and claim chart with
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`respect to claim 14 to demonstrate that Tomioka discloses each and every
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`element of claim 26. Id. at 31–32.
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`Petitioner acknowledges that claim 26 recites program instructions
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`stored on a computer readable medium, rather than system components, as in
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`claim 14. Id. at 32. Petitioner argues, however, that “Tomioka also
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`discloses software ‘schemes,’ ‘modules’ and ‘intelligent agents’ that will
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`perform system steps, along with multiple options for storage.” Id. at 32
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`(citing Ex. 1003 ¶¶ 52–55, 58, 94, 104, and Fig. 2). Thus, Petitioner argues
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`that Tomioka discloses the use of removable storage devices or servers
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`storing software to perform the program instructions to accomplish the
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`recited steps of claim 26. Id.
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`Patent Owner focuses its response to Petitioner’s arguments almost
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`exclusively on recitations of independent claim 14. PO Resp. 2. Patent
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`Owner notes that “[t]he instituted claims include two independent claims —
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`claims 14 and 26. Claims 14 and 26 differ in scope but require similar
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`functionality.” Id. Patent Owner relies on its contentions with respect to
`
`claim 14 to overcome Petitioner’s arguments. Id. at 5–13.
`
`Similarly, Petitioner relies, in part, on its claim chart mapping claims
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`15, 19, and 24, which depend from claim 14, to Tomioka in order to
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`demonstrate that Tomioka discloses the additional elements of claims 28, 30,
`
`and 31, which depend from claim 26. Pet. 32–33 (citing various paragraphs
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`from Tomioka in support of Petitioner’s arguments with respect to each
`
`additional element). With the exception of claims 24 and 31, Patent Owner
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`does not argue the patentability of any of the dependent claims separately.
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`PO Resp. 2, 14.
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`2. Mapping Challenged Claim 14 onto Tomioka
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`
`
`As noted above, the parties focus their arguments on the recitations of
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`independent claims 14 and 26 and, in particular, on independent claim 14.
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`See Pet. 11–31; PO Resp. 2–13; Reply 2–14. Petitioner bears the burden of
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`demonstrating that Tomioka anticipates the challenged claims. Therefore,
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`we begin our analysis with Petitioner’s mapping of the challenged claims
`
`onto Tomioka.
`
`a. Preamble and Specific Equipment Elements
`
`Independent claim 14 recites that “[a]n interactive television system
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`compris[es]: a remote unit; a set-top box; and a broadcast station coupled to
`
`convey a programming signal to the set-top box.” Ex. 1001, col. 14, ll. 33–
`
`37. Petitioner argues that Tomioka discloses an interactive television
`
`system. Pet. 11. In particular, Petitioner notes Tomioka’s disclosures that
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`program 38 may originate from “broadcast television, cable television,
`
`satellite television, digital television, Internet broadcasts, world wide web”;
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`that “video, image, and/or audio information is presented to the user from
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`the system 12 (device), such as a television set or a radio”; and that “the user
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`interacts both with the system (device) 12 to view the information 10 in a
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`desirable manner and has preferences to define which audio, image, and/or
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`video information is obtained in accordance with the user information 14.”
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`Pet. 18–19 (quoting, e.g., Ex. 1003 ¶¶ 52, 41 (emphasis added)).3
`
`Further, Petitioner argues that Tomioka discloses a “remote unit,” a
`
`“set-top box,” and a “broadcast station coupled to convey a programming
`
`signal to the set-top box,” as recited by claim 14. Id. at 12; see id. at 19–22
`
`
`3 Because Tomioka clearly discloses an interactive television system, it is
`not necessary for us to determine here whether the preamble is limiting.
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`10
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`(Petitioner’s claim chart for claim 14). In particular, Petitioner argues that
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`Tomioka discloses that a program displayed by its system “may originate at
`
`any suitable source, such as for example broadcast television, cable
`
`television, satellite television, digital television, Internet broadcasts, world
`
`wide web, digital video discs, still images, video cameras, laser discs,
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`magnetic media, computer hard drive, video tape, audio tape, data services,
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`radio broadcasts, and microwave communications.” Id. (quoting Ex. 1003
`
`¶ 52). Further, Petitioner argues that Tomioka discloses that “[t]he system
`
`16 may include any device(s) suitable to receive any one or more of such
`
`programs.” Id. (quoting Ex. 1003 ¶ 52 (emphasis added)); see Ex. 1003,
`
`Fig. 2 (depicting system 16). In addition, Petitioner argues that Tomioka
`
`states, for example, that “the user information should be portable between
`
`and usable by different devices so that other devices may likewise be
`
`configured automatically to the user’s preferences.” Id. at 12–13 (quoting
`
`Ex. 1003 ¶ 40). Petitioner notes that Tomioka discloses examples of a
`
`“mobile terminal,” including “cellular telephones, devices for receiving
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`internet and web browsing, remote controls, portable radio devices,
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`handheld electronic devices, networked devices, car stereos, and other
`
`appliances.” Id. at 13; cf. Ex. 1001, col. 1, ll. 64–66 (“For example, the user
`
`may communicate within the system via a set-top box, cell phone, PDA, or
`
`other device.”). Petitioner cites various paragraphs from Tomioka
`
`identifying these examples. Pet. 13. Upon consideration of Petitioner’s
`
`evidence, we are persuaded that Tomioka discloses each of a “remote unit,”
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`a “set-top box,” and a “broadcast station coupled to convey a programming
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`signal to the set-top box,” as recited in claim 14. Patent Owner does not
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`dispute that Tomioka discloses these elements. See PO Resp. 5.4
`
`b. “Update” Element
`
`
`
`Independent claim 14 further recites that “the system is configured to:
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`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.” Ex. 1001, col. 14, ll. 38–42 (emphases added). Either the
`
`remote unit or the set-top box may be used to initiate the first user activity.
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`Petitioner argues that Tomioka discloses a “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” (Pet. 13 (quoting
`
`Ex. 1003 ¶¶ 62–63)) and that the user description scheme can be “updated in
`
`a dynamic fashion by the user or automatically,” depending on user
`
`preferences (id. (citing Ex. 1003 ¶¶ 62–63, 90–91, 95, 122)). Thus,
`
`Petitioner argues that Tomioka’s “user description scheme” corresponds to
`
`the “user profile” recited in claim 14. Id. at 17 (citing Ex. 1003 ¶ 76);
`
`see Tr. 9:17–22. In particular, Petitioner argues that Tomioka discloses
`
`“storing the user’s usage history including facts that the user viewed and
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`selected programs and browsing procedures thereof viewed, and utilizing a
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`variety of algorithms, a machine may automatically prepare the user’s
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`preferences.” Id. at 22 (quoting Ex. 1003 ¶ 90). Further, Petitioner argues
`
`that Tomioka discloses that
`
`the system can store the user history and create entries in the
`user description scheme based on the user’s audio and video
`viewing habits. . . . [T]he user would never need to program the
`
`4 Independent claim 26 does not recite these structural elements expressly.
`See Ex. 1001, col. 15, ll. 39–42; cf. id. at col. 16, ll. 17–20 (claim 27).
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`viewing information to obtain desired information. . . . [T]he
`user [description]5 scheme enables modeling of the user by
`providing a central storage for the user’s listening, viewing,
`browsing preferences, and user’s behavior.
`
`Id. at 23 (quoting Ex. 1003 ¶ 58 (emphasis added)); see also Ex. 1003 ¶ 58
`
`(“The average consumer has an ever increasing number of multimedia
`
`devices, such as a home audio system, a car stereo, several home television
`
`sets, web browsers, etc.”). Thus, Petitioner argues that “Tomioka discloses a
`
`‘first user activity’ of browsing audio content on a ‘first device’ which is a
`
`‘remote unit,’ a car audio player.” Reply 3 (citing Pet. 23 (citing Ex. 1003
`
`¶ 97)). Therefore, Petitioner argues that Tomioka discloses the “update”
`
`element, as recited in claim 14. See Reply 3–4; see also Tr. 9:3–4
`
`(“Tomioka discloses the same sort of system with a common user profile
`
`across activities and devices.”).
`
`
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`Patent Owner contends that Petitioner’s citation to numerous
`
`paragraphs of Tomioka in support of Petitioner’s arguments with respect to
`
`this element of claim 14 is improper. PO Resp. 5–6; see Pet. 22. In
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`particular, Patent Owner contends that Petitioner’s use of string citations and
`
`its reliance on the quotation of these paragraphs in its claim chart fails to
`
`identify the disclosures of Tomioka relied upon in the Petition with the
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`necessary specificity. Id. at 6–7; see id. at 7 n.1; Tr. 48:18–25. We
`
`disagree. As noted above, we are persuaded that Petitioner has provided
`
`sufficient explanation (Pet. 13) and identified the portions of Tomioka (id. at
`
`
`5 Tomioka refers to the “user descriptor scheme” once and to the
`“descriptors” of the program description scheme and the “user description
`scheme.” See Ex. 1003 ¶ 58. For the sake of consistency and clarity, we
`refer only to the “user description scheme.”
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`22–24), upon which it relies, with sufficient specificity for us to understand
`
`and evaluate Petitioner’s arguments.6
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`For the reasons explained by Petitioner, we are persuaded that
`
`Tomioka discloses updating a user profile responsive to a first user activity,
`
`as recited in claim 14. Further, we are persuaded that Tomioka discloses
`
`that this first user activity may be initiated via a first device that may
`
`correspond to either a remote unit or to a set-top box, “such as a personal
`
`video recorder, a TiVo player, a RePlay Networks player, a car audio player,
`
`or other audio and/or video appliance.” See id. at 23 (quoting Ex. 1003 ¶ 97
`
`(emphasis added)).
`
`c. “Detect” Element
`
`Independent claim 14 further recites that “the system is configured to:
`
`. . . 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,
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`the second device being different from the first device.” Ex. 1001, col. 14, ll.
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`43–46 (emphases added). Claim 14 also recites that one of the first user
`
`activity, referenced in the preceding element, and the second user activity,
`
`referenced in this element, is “related to television viewing”; and the other is
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`“unrelated to television viewing.” Id. at col. 14, ll. 47–52. Petitioner argues
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`6 Patent Owner contends that Petitioner’s arguments with respect to other
`elements of claim 14 are deficient for substantially the same reasons. PO
`Resp. 8 (“For this requirement, the Petition provides a claim chart block
`quoting and string citing twelve paragraphs and three figures of Tomioka.”),
`9 (“For this requirement, the Petition provides a claim chart block quoting
`and string citing fourteen paragraphs and four figures of Tomioka.”), 10
`(“For this requirement, the Petition provides a claim chart block quoting and
`string citing nine paragraphs and two figures of Tomioka.”). For the reasons
`noted above, we find Patent Owner’s contentions unpersuasive with respect
`to those elements. See Reply 1, 4–5; Tr. 54:16–56:10.
`
`14
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`IPR2015-01031
`Patent 7,900,229 B2
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`that Tomioka discloses that “[v]ideo, image, or audio information may be
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`presented to the user using a device such as a television or radio.” Pet. 14
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`(quoting Ex. 1003 ¶ 42); see id. at 24 (Petitioner’s claim chart for claim 14);
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`see also Ex. 1003 ¶ 41, Figs. 1, 2 (depicting the video, image, and/or audio
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`information (program) provided or otherwise made available to a user and/or
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`a system); cf. Ex. 1001, Figs. 1, 2 (depicting information provided by
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`satellite based system 23, cable based system 24, and terrestrial or multiple
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`multi-point distribution service based system 25 and/or remote source 13).
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`Petitioner argues that Tomioka further discloses that three components of its
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`system: program 10, user 14, and system 12, interact to create information
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`“that can be used in enabling browsing, filtering, searching, archiving, and
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`personalization.” Ex. 1003 ¶ 42 (emphasis added). Specifically,
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`preferences are created “to define which audio, image, and/or video
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`information is obtained in accordance with the user information.” Pet. 14
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`(quoting Ex. 1003 ¶ 41).
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`In addition, Petitioner argues that Tomioka discloses creation of its
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`user description scheme based on a user’s various activities whether “related
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`to television viewing” or “unrelated to television viewing,” as recited by
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`claim 14. Id. at 15; see id. at 24–26 (Petitioner’s claim chart for claim 14).
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`In particular, Petitioner argues that Tomioka discloses receiving
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`programming from various sources, including television, Internet broadcasts,
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`the world-wide-web, tape, data services, and radio broadcasts. Id. at 15
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`(citing Ex. 1003 ¶ 52); see also Ex. 1003, Fig. 2 (referring to audio visual
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`programs and data and services). For example, Petitioner argues that
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`Tomioka discloses that “a user may watch basketball games, review ‘web-
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`based textual information’ regarding particular basketball games, and ‘read
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`the news.’” Pet. 15 (citing Ex. 1003 ¶ 57). Thus, a person of ordinary skill
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`in the art would understand that at least “read[ing] the news” is an activity
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`“unrelated to television viewing.” Ex. 1016 ¶ 73; see Preda, 401 F.2d at
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`826.
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`For the reasons explained by Petitioner, we are persuaded that
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`Tomioka discloses detecting a second user activity, such as on a device
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`different from that used with respect to the first activity, as recited in claim
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`14. Further, either the first or the second user activity is an activity
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`“unrelated to television viewing,” and the other activity is an activity
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`“related to television viewing.”
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`d. “Access” Element
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`Independent claim 14 further recites that “the system is configured to:
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`. . . access the user profile in response to the second user activity.”
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`Ex. 1001, col. 14, ll. 53–54 (emphasis added). Petitioner argues that
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`Tomioka discloses accessing the user description scheme to deliver
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`personalized content to the user on multiple devices. Pet. 14; see id. at 26
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`(Petitioner’s claim chart for claim 14). For example, Petitioner argues that
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`Tomioka discloses that “the user information should be portable between
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`and usable by different devices so that other devices may likewise be
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`configured automatically to the particular user’s preferences upon receiving
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`the viewing information.” See id. (quoting Ex. 1003 ¶ 40 (emphasis added)).
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`In particular, the “user [description] scheme enables modeling of the user by
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`providing a central storage for the user’s listening, viewing, browsing
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`preferences, and user’s behavior” and this “enables devices to be quickly
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`personalized, and enables other components, such as intelligent agents, to
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`communicate on the basis of a standardized description format, and to make
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`smart inferences regarding the user’s preferences.” Id. (quoting Ex. 1003
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`¶ 58). Petitioner argues that “such devices ‘access content from different
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`sources’ including the ‘web, terrestrial or cable broadcast,’ and ‘access
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`multiple or different types of media.’” Id. at 15 (quoting Ex. 1003 ¶ 60).
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`As recited in claim 14, the accessing of the user profile is “in response
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`to the second user activity.” As recited in the “detect” element, the second
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`user activity may be related or unrelated to television viewing and must be
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`from a device different from that used in the first user activity. Petitioner
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`argues that the user description scheme provides “central storage for the
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`user’s listening, viewing, browsing preferences, and user’s behavior” to
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`enable devices to be personalized and share information. Id. (quoting
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`Ex. 1003 ¶ 58 (emphasis added)); see Tr. 15:9–16:24. Thus, a person of
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`ordinary skill in the art would understand that “listening, viewing, [and]
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`browsing preferences” disclose activities on different devices and,
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`consequently, accessing those preferences on different devices. Pet. 15–18,
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`26 (citing Ex. 1003 ¶¶ 60, 63); see Ex. 1016 ¶¶ 70–72.
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`For the reasons explained by Petitioner, we are persuaded that
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`Tomioka discloses accessing the user profile in response to the second user
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`activity, as recited in claim 14. Further, the second user activity is an
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`activity related to or unrelated to television viewing.
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`e. “Transmit” Element
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`Independent claim 14 further recites that “the system is configured to:
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`. . . 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, and wherein the
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`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, col. 14, ll. 55–59
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`(emphases added). Petitioner argues that Tomioka discloses that the system
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`“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, generally referred to as user information.” Pet. 14–15
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`(quoting Ex. 1003 ¶ 40 (emphasis added)); see id. at 26–28 (Petitioner’s
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`claim chart for claim 14). Specifically, Petitioner argues that Tomioka
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`discloses an “‘intelligent software agent’ [that] tracks user preferences
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`(indicated by their activities) and uses those preferences to distribute user-
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`targeted content.” Reply 13 (citing Ex. 1003 ¶ 93). Moreover, Petitioner
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`argues that Tomioka discloses that this agent can “consult with the user
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`description scheme and obtain information that it needs for acting on behalf
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`of the user” and that the system can “discover programs that fit the taste of
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`the user, alert the user about such programs, and/or record them
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`autonomously.” Pet. 15 (quoting Ex. 1003 ¶ 63); see also Reply 13
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`(“Specifically, ‘[t]he data may be used for any purpose, such as for example,
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`providing targeted advertising or programing on the device based on such
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`data.’”; quoting Ex. 1003 ¶ 93 (emphasis added by Petitioner)). Thus,
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`Petitioner argues that Tomioka discloses that information from various
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`devices may be combined in a user description scheme to tailor the
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`programming subsequently provided to users on those devices.
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`Patent Owner contends that “recording, presenting, and discovering
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`differ from a singular claim requirement of ‘transm