U.S. Patent No. 6,233,736
`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. 6,233,736 CHALLENGING CLAIMS 1-3 and 8-12
`UNDER 35 U.S.C. §311 and §312, 37 C.F.R. §42.104
`
`
`
`

`
`B.
`
`Page
`INTRODUCTION .......................................................................................... 1
`I.
`II. GROUNDS FOR STANDING AND FEE AUTHORIZATION ................... 1
`III. MANDATORY NOTICES (37 C.F.R. §42.8) ............................................... 2
`IV. SUMMARY OF CHALLENGES .................................................................. 3
`V.
`THE CHALLENGED PATENT .................................................................... 3
`A. Overview of the ’736 Patent ................................................................. 3
`B.
`Summary of the ’736 Patent Prosecution History ................................ 6
`C.
`Level of Ordinary Skill in the Art ...................................................... 10
`VI. CLAIM CONSTRUCTION ......................................................................... 10
`A.
`“automatically establishing, in response to a user initiated
`command, a direct communication link with the online
`information source” (Claim 1) ........................................................... 10
`“so that the user has direct access to the online information”
`(Claims 1, 8-9) .................................................................................... 11
`“indicating” (Claims 1, 8, 9) .............................................................. 12
`C.
`D. Means-plus-function terms (Claims 9 and 10) ................................... 13
`1.
`“means for indicating to the user that an address is
`available for extraction from said electronic signal”
`(Claim 9) .................................................................................. 13
`“means for extracting an address associated with an
`online information source from an information signal
`embedded in said electronic signal, and for automatically
`establishing, in response to a user initiated command, a
`direct link with the online information source” (Claim 9) ...... 14
`“means for receiving an information signal from said
`online information source” (Claim 10) .................................... 15
`“means for displaying an image signal detected from said
`received information signal (Claim 10) ................................... 16
`VII. CLAIMS 1-3 AND 8-12 ARE INVALID .................................................... 17
`
`TABLE OF CONTENTS
`
`
`i
`
`2.
`
`3.
`
`4.
`
`

`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`4.
`
`A. Ground 1: Claims 1-3 and 8-12 of the ’736 Patent Are Obvious
`Under 35 U.S.C. § 103 Over Throckmorton (Apple 1003)
`Alone or In View of Rhoads (Apple 1004) ........................................ 17
`1.
`Overview of Throckmorton (Apple 1003) ............................... 17
`2.
`Overview of Rhoads (Apple 1004) .......................................... 21
`3.
`Reasons to Combine Throckmorton’s Embodiments and
`to Combine Throckmorton with Rhoads ................................. 22
`Claims 1-3 and 8-12 are Obvious Over Throckmorton
`(Apple 1003) Alone or in View of Rhoads (Apple 1004) ....... 25
`B. Ground 2: Claims 1-3 and 8-12 Are Obvious Under 35 U.S.C.
`§103(a) Over Eisen (Apple 1005) in View of Rhoads (Apple
`1004) ................................................................................................... 47
`1.
`Overview of Eisen (Apple 1005) ............................................. 47
`2.
`Overview of Rhoads (Apple 1004) .......................................... 48
`3.
`Reasons to Combine Eisen with Rhoads ................................. 48
`4.
`Claims 1-3 and 8-12 are Obvious Over Eisen (Apple
`1005) Alone or in View of Rhoads (Apple 1004) ................... 49
`VIII. CONCLUSION ............................................................................................. 60
`
`ii
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`

`
`U.S. Patent No. 6,233,736
`Petition for Inter Partes Review
`
`
`TABLE OF AUTHORITIES
`
`
`Page
`
`CASES
`Circuit Check Inc. v. QXQ Inc.,
`795 F.3d 1331 (Fed. Cir. 2015) .......................................................................... 23
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 49
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 10
`Plantronics, Inc. v. Aliph, Inc.,
`724 F.3d 1343 (Fed. Cir. 2013) .......................................................................... 49
`STATUTES
`35 U.S.C. § 102(a) ................................................................................................... 47
`35 U.S.C. § 102(e) ............................................................................................ 17, 21
`35 U.S.C. § 103(a) ..................................................................................................... 3
`OTHER AUTHORITIES
`IPR2014-00259 ........................................................................................................ 16
`IPR2014-00269 ................................................................................................ passim
`IPR2014-00386 ........................................................................................................ 10
`RULES
`37 C.F.R. §42.100 ...................................................................................................... 1
`37 C.F.R. §42.102(a)(2) ............................................................................................. 1
`37 C.F.R. §42.103(a) .................................................................................................. 1
`37 C.F.R. §42.104(a) .................................................................................................. 1
`37 C.F.R. §42.15(a) .................................................................................................... 1
`
`
`
`iii
`
`

`
`U.S. Patent No. 6,233,736
`Petition for Inter Partes Review
`LIST OF EXHIBITS
`
`
`
`Apple 1001 ………………... U.S. Patent No. 6,233,736 (“the ’736 Patent”)
`
`Apple 1002 ………………... File History for U.S. Patent Application No.
`09/054740, which ultimately issued as U.S. Patent
`No. 6,233,736
`
`Apple 1003 ………………... U.S. Patent No. 5,818,441 (“Throckmorton”)
`
`Apple 1004 ………………... U.S. Patent No. 5,841,978 (“Rhoads”)
`
`Apple 1005 ………………... U.S. Patent No. 5,440,678 (“Eisen”)
`
`Apple 1006 ………………... Declaration of Scott Bradner in Support of
`Apple Inc.’s Petition for Inter Partes Review of
`U.S. Patent No. 6,233,736
`
`Apple 1007 ………………... Curriculum Vitae of Scott Bradner
`
`Apple 1008 ………………... Joint Claim Construction and Prehearing
`Statement filed in OpenTV Inc. v. Apple Inc.,
`Case No. 5:15-cv-2008-EJD, ECF Nos. 74, 74-1
`(N.D. Cal. Feb. 12, 2016)
`
`Apple 1009 ………………... Excerpts from File History for U.S. Patent
`Application 10/377,482, which was abandoned
`
`Apple 1010 ………………... J. Postel, Internet Protocol, IETF RFC 791
`(September 1981)
`
`Apple 1011 ………………... T. Berners-Lee, Universal Resource Identifiers in
`WWW: A Unifying Syntax for the Expression of
`Names and Addresses of Objects on the Network
`as used in the World-Wide Web, IETF RFC 1630,
`(June 1994)
`
`Apple 1012 ………………... Excerpts from Lincoln D. Stein, How to Set Up
`and Maintain a World Wide Web Site: The Guide
`for Information Providers (1995)
`
`iv
`
`

`
`U.S. Patent No. 6,233,736
`Petition for Inter Partes Review
`Apple 1013 ………………... Excerpts from Peter Kent, The Complete Idiot’s
`Guide to the World Wide Web (1995)
`
`Apple 1014 ………………... Peter Lewis, “Prime Internet Address Will Now
`Cost $50 a Year,” New York Times (Sep. 17,
`1995)
`
`Apple 1015 ………………... Excerpts from Andrew S. Tanenbaum, Computer
`Networks, Third Edition (1996)
`
`Apple 1016 ………………... “How we got from 1 to 162 million websites on
`the internet,” Pingdom Royal (April 4, 2008)
`
`
`
`
`
`
`
`v
`
`

`
`U.S. Patent No. 6,233,736
`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. 6,233,736 (“the ’736 Patent”),
`
`Claims 1-3 and 8-12 (the “Challenged Claims”), pursuant to 37 C.F.R. §42.100, et
`
`seq. The ’736 Patent is assigned to OpenTV, Inc. (“Patent Owner”) and the claims
`
`recite a system and method for providing a user with automatic and direct access to
`
`online information services through an address provided with a video or audio
`
`program. Apple 1001 Abstract. The Challenged Claims are rendered obvious by
`
`the prior art, and the Board previously instituted an IPR (IPR2014-00269) based on
`
`a reference presented in this Petition, Throckmorton. That IPR was terminated due
`
`to a settlement. The other references presented by this Petition, Rhoads and Eisen,
`
`were not considered during prosecution or the previous IPR. Each 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 ’736 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 $23,000 to Deposit Account No. 50-0639 for fees under 37 C.F.R.
`
`§42.15(a) and any other fees.
`
`1
`
`

`
`U.S. Patent No. 6,233,736
`Petition for Inter Partes Review
`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 ’736 Patent against
`
`Apple in Northern District of California Case No. 3:15-cv-02008-EJD, filed on
`
`May 5, 2015. Apple was served on May 6, 2015.
`
`Petitioner’s Lead and Backup Counsel:
`
`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) and Jay Choi (Reg.
`
`No. 72,379), O’Melveny & Myers, San Francisco (address, telephone, and fax
`
`above; Email: ahuffsmith@omm.com and jchoi@omm.com) and Ryan Yagura
`
`(Reg. No. 47,191) 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; Email: ryagura@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, jchoi@omm.com,
`
`ryagura@omm.com, and vzhou@omm.com. Counsel may be called at 415-984-
`
`8700 or faxed at 415-984-8701.
`
`2
`
`

`
`IV. SUMMARY OF CHALLENGES
`Apple challenges the patentability of ’736 Patent Claims 1-3 and 8-12 on the
`
`U.S. Patent No. 6,233,736
`Petition for Inter Partes Review
`
`following grounds, described in detail in Section VII, below:
`
`Ground 1: Claims 1-3 and 8-12 Are Obvious Under 35 U.S.C. §103(a)
`
`Over Throckmorton (Apple 1003) Alone or In View of Rhoads (Apple 1004)
`
`Ground 2: Claims 1-3 and 8-12 Are Obvious Under 35 U.S.C. §103(a)
`
`Over Eisen (Apple 1005) in View of Rhoads (Apple 1004)
`
`V. THE CHALLENGED PATENT
`A. Overview of the ’736 Patent
`The ’736 Patent, entitled “Media Online Service Access System and
`
`Method,” relates to “providing direct automated access to an online information
`
`services provider through an address embedded in a video or audio program,
`
`commercial message, or news story.” See, e.g., Apple 1001 Abstract.
`
`As of the filing of the ’736 Patent, there was an “explosion in the usage of
`
`online information services” through digital networks such as “the Internet,
`
`Prodigy (R), America Online (R), and Compuserve (R),” and an increasing
`
`demand by users to discover “more information which relates to a topic presented
`
`in the video program.” Id. 1:34-43. Examples include viewers of programs seeking
`
`additional text, pictures, or up-to-date information from online bulletin boards
`
`(id.1:52-56; 2:18-22) or more information about a story (id.1:60-63), or a
`
`consumer seeking information or to order products online (id.1:56-60, 1:65-2:12).
`
`3
`
`

`
`U.S. Patent No. 6,233,736
`Petition for Inter Partes Review
`Prior art media systems were “linked to interactive information providers”
`
`and were “capable of providing interactive user access through a broadcast or cable
`
`television signal.” Id.1:1-23, 2:59-61. Prior art existed where “digitally encoded
`
`information is transmitted and received through a modified video signal,” such as
`
`in the Vertical Blanking Interval (“VBI”) of a television signal “or other non-
`
`displayed portion” of a signal, and then extracted and displayed in addition to the
`
`video. Id. 2:23-30, 7:22-32. The specification alleges that existing systems were
`
`limited, “provid[ing] access to a single information source available from … the
`
`broadcast or cable television operator,” and asserts, “No system yet exists which
`
`provides automated and direct user access to online information providers through
`
`an address embedded in a video or audio program signal.” Id.1:16-23, 1:29-33.
`
`Independent Claim 1 is representative and reads:
`
`1. A method of providing to a user of online information
`services automatic and direct access to online information through an
`address associated with an online information source provided with a
`video program comprising:
`indicating to the user that an address has been provided with
`said video program; and
`electronically extracting said address and automatically
`establishing, in response to a user initiated command, a
`direct communication link with the online information
`source associated with said address so that the user has
`direct access to the online information.
`
`4
`
`

`
`U.S. Patent No. 6,233,736
`Petition for Inter Partes Review
`The claimed video or audio program may be broadcast over the air,
`
`transmitted by cable, or distributed on a “pre-recorded medium,” and may include
`
`a “television program, commercial, or news story,” “video,” a “presentation,” or a
`
`“song,” among others. Id. 1:39-31, 1:49-53, 2:1-22. An “online information
`
`provider can be any one of millions of interactive information providers which can
`
`be accessed through exchange of digital information signals.” Id. 3:41-45; 2:5-22.
`
`The network connecting online information providers “may be any private or
`
`public local area network or wide area network such as an office network,
`
`company network, public Internet or circuit-switched network.” Id. 5:29-41.
`
`Methods of extracting addresses and indicating their presence were well-
`
`known. See id. 6:5-7, 6:25-26; Apple 1002 at 88 (“Prior art reads address from
`
`television or related signal...”) The presence of an address could be “indicated”
`
`through a message, light, sound, or other means, or through a “logo or message to
`
`be displayed at points in the program which coincide with the presence of an
`
`online information provider address.” Apple 1001 3:60-4:4, 6:13-25. A user could
`
`request access to online information through a command using, e.g., a “pushbutton,
`
`user control keypad, voice command, mouse, touchpad, touchscreen” or other
`
`input, and the claimed system automatically establishes a digital communication
`
`link with the online provider using existing art. Id. 4:5-16; Apple 1002 at 85, 88.
`
`5
`
`

`
`U.S. Patent No. 6,233,736
`Petition for Inter Partes Review
`Claim 8 recites a method similar to Claim 1, though it requires that access to
`
`online information is provided through a “link” provided in a video program, and it
`
`does not recite an “extracting” step. Claim 9 claims a system in a means-plus-
`
`function format, with functions similar to the method steps in Claims 1 and 8,
`
`providing a user online access while viewing or listening to a video or audio
`
`program through a “link” provided in a video or audio program signal.
`
`The dependent Challenged Claims recite a visual “indication” or “indicator”
`
`displayed on the system on which the program is displayed (Claims 3 and 11), a
`
`means for receiving an “information signal” and displaying an “image signal”
`
`(Claim 10), and “interactive” communications between the user and the online
`
`information source (Claims 2 and 12). The specification describes information
`
`displayed on a “conventional” system, such as on a television, “in place of the
`
`television broadcast signal, on a separate computer monitor or other display device,
`
`or together with the television broadcast signal in a picture-in-picture format.” Id.
`
`4:29-37, 6:65-7:12, 7:57-8:5. Interactivity is achieved through “many conventional
`
`input interfaces” such as a remote control or mouse. Apple 1001 6:33-58.
`
`Summary of the ’736 Patent Prosecution History
`
`B.
`The ’736 Patent issued from Application Serial No. 09/054,740 filed on
`
`April 3, 1998, as a continuation of Application Serial No. 09/597,432, filed on
`
`February 8, 1996. Apple 1001 cover.
`
`6
`
`

`
`U.S. Patent No. 6,233,736
`Petition for Inter Partes Review
`The examiner first rejected most pending claims based on U.S. Patent No.
`
`5,912,700 (“Honey”). Apple 1002 at 57-64. In response, the patent applicant swore
`
`behind Honey, filing a September 15, 1995 “Disclosure Document” that referred to
`
`an “[a]ddress of an on line information or entertainment provider” being “linked”
`
`to a video to permit a viewer to “call up additional information or conduct
`
`commerce … through the use of existing technologies.” See id. at 78-89, 85.1
`
`The examiner again rejected the pending claims, this time as obvious over
`
`Throckmorton, which “discloses a system which inserts data associated with a
`
`broadcast television program into the vertical blanking interval,” and “when the
`
`associated data contains pointers (i.e., URLs) to locations across the two-way
`
`channel, the user can access information” relevant to the television program. Id. at
`
`108-109. The examiner found it was “notoriously well-known in the art” to
`
`“provide indications, either audibly or visually, of the occurrence, or forthcoming
`
`occurrence, of additional data transmitted along with television programming.” Id.
`
`The applicant amended the claims, adding limitations requiring that access
`
`to online information is “automatic” and “direct,” and argued that Throckmorton
`
`does not allow a “‘direct communication link’ that is ‘automatically’ established by
`
`a user command so that the user has direct access to online information from an
`
`1 Should Patent Owner argue September 15, 1995 is the conception date and
`
`establish diligence, the presented grounds still invalidate the Challenged Claims.
`
`7
`
`

`
`U.S. Patent No. 6,233,736
`Petition for Inter Partes Review
`online provider” because users may select URLs from a menu. Id. at 117-122. The
`
`applicant argued that in the claimed invention, the user never has to “leave the
`
`screen” to access additional content. Id. at 121. The examiner agreed that the added
`
`limitations “would likely render [the claims] allowable,” stating that “the prior art
`
`discloses the selection of a source of information from a menu of sources, each
`
`associated with pointers to the sources, rather than a user-initiated automatic and
`
`direct link to the sources.” Id. at 115. The claims were then allowed. Id. at 125.
`
`The ’736 Patent examiner misunderstood Throckmorton. Indeed, in a
`
`continuation application, another examiner rejected such applicant arguments. The
`
`applicant added similar “automatic” and “direct” limitations to similar pending
`
`continuation claims (Apple 1009 at 29), and the examiner found the claims
`
`anticipated by Throckmorton, which teaches an “associated data stream may
`
`include URLs for webpages, a user may then click on a link, the system
`
`automatically connects to an online source providing the information directly to the
`
`user, the URL may be extracted from the VBI.” Id. at 22. The applicant again
`
`argued that Throckmorton does not teach the “automatic” and “direct” limitations.
`
`Id. at 15-16. The continuation examiner rejected those arguments, stating:
`
`Throckmorton teaches that [] in response to a user input via interface
`88, a connection is automatically established with an online provider
`via a two way communications system 74, in order to access a website
`referenced from a received URL (column 8, line 25-column 9, line
`
`8
`
`

`
`U.S. Patent No. 6,233,736
`Petition for Inter Partes Review
`15). As the user merely determines what content they wish to view,
`and the connections are p[er]formed by the user’s terminal without
`any additional input by the user, the user is provided with direct
`access to the content by [] a communications link which is
`established automatically by a user[’]s command…
`Id. at 5-6 (emphasis added). The continuation examiner found that the pending
`
`claims (like the Challenged Claims) were silent regarding use of “menus” or
`
`leaving the screen. Id. at 6. The applicant abandoned the continuation. Id. at 2.
`
`The Board properly read Throckmorton when in June 2014, it instituted an
`
`IPR of Claims 1-3 and 6-12 of the ’736 Patent, finding that Throckmorton teaches
`
`both one-way communication and two-way communication embodiments that
`
`“provide a consumer with access to online information during the process of
`
`program reception,” and “combining the embodiments, for establishing a
`
`connection in response to a user initiated command, is ‘simply combining elements
`
`contained in the same reference in precisely the manner described in the
`
`reference.’” See Netflix Inc. v. OpenTV, Inc., IPR2014-00269 Paper 13 at 20
`
`(PTAB June 24, 2014). The Board also found that nothing in the ’736 Patent
`
`“requires the system to display the online information to the user without the user
`
`leaving the screen.” Id. at 9. Instead, direct access means that the user does not
`
`need to go through the provider to access online information. Id.2
`
`
`2 The IPR was dismissed after the IPR parties settled. IPR2014-00269 Paper 34.
`
`9
`
`

`
`U.S. Patent No. 6,233,736
`Petition for Inter Partes Review
`Rhoads (Apple 1004) and Eisen (Apple 1005) also disclose the limitation
`
`allegedly missing from Throckmorton—automatic and direct links to online
`
`resources—and neither was considered during prosecution or the previous IPR.
`
`C. Level of Ordinary Skill in the Art
`One of ordinary skill in the art related to the ’736 Patent at the time of the
`
`claimed invention had a bachelor’s degree in Electrical Engineering, Computer
`
`Engineering, Computer Science or a related field and 2 years of work experience in
`
`digital networking, or equivalent experience, such as 6 years of work or research
`
`experience in the field of digital networking. See Apple 1006 ¶ 24.
`
`VI. CLAIM CONSTRUCTION
`In an IPR, the claims of an expired patent are construed under the Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) standard, where claim terms
`
`are given their ordinary and customary meaning as understood by a person of
`
`ordinary skill in the art at the time of the invention, considering the language of the
`
`claims and specification, and the prosecution history. See Panel Claw, Inc. v.
`
`Sunpower Corp., IPR2014-00386), Paper 7 at 7 (P.T.A.B. June 30, 2014).
`
`A.
`
`“automatically establishing, in response to a user initiated
`command, a direct communication link with the online
`information source” (Claim 1)
`
`The Board previously construed this term to mean “in response to a
`
`command from a user, establishing, without further input from the user, a
`
`communication link directly between the user and the online information source.”
`
`10
`
`

`
`U.S. Patent No. 6,233,736
`Petition for Inter Partes Review
`IPR2014-00269 Paper 13 at 8. In the district court, Patent Owner proposes that the
`
`word “automatic” in “automatically and directly accessing” means “without the
`
`user performing additional steps.” See Apple 1008 at 9. For this Petition, Apple
`
`proposes the Board’s construction, which more clearly recognizes that in the
`
`claims, the user already provided “input” in the form of a user-initiated command.
`
`Apple 1001 Claims 1, 8, 9.3 See also Apple 1006 ¶ 93-97.
`
`B.
`
`“so that the user has direct access to the online information”
`(Claims 1, 8-9)
`
`Apple proposes the Board’s previous construction: “the system establishes a
`
`communication link directly between the user and the online information source,
`
`without any intervening intermediary that is not inherent to Internet traffic
`
`routing.” IPR2014-00269 Paper 13 at 9-10 (original emphasis). This construction
`
`is consistent with the specification’s statements that prior art systems were “limited
`
`in the access they provide to information sources directly available through the
`
`unitary cable or broadcast provider,” while the claimed invention “facilitates direct
`
`
`3 In district court, Apple proposes that certain “automatic and direct access” terms
`
`are indefinite. Apple 1008 at 9. For at least Claim 8, the amendments did not add
`
`meaningful limitations, and the patent applicant’s explanations to avoid
`
`Throckmorton are inconsistent with the claims. Because indefiniteness is not a
`
`ground for rejection in an IPR, Apple proposes using the Board’s constructions.
`
`11
`
`

`
`U.S. Patent No. 6,233,736
`Petition for Inter Partes Review
`automated user access to an unlimited number of online information providers.”
`
`Apple 1001 2:59-67; see also IPR2014-00269 Paper 13 at 9; Apple 1006 ¶ 98-101.
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`Patent Owner has proposed that the term means that access to online
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`information is “direct from the user’s perspective,” arguing that a user should not
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`have to “leave the screen” or access a menu. IPR2014-00269 Paper 27 at 13, 16;
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`see also Apple 1008 at 9-10. Patent Owner’s interpretation—calculated to avoid
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`Throckmorton—is vague and inconsistent with the specification. As the Board
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`properly recognized, nothing in the specification “requires the system to display
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`the online information to the user without the user leaving the screen to access the
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`information.” See IPR2014-00269 Paper 13 at 9; see also Apple 1006 ¶ 101.
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`“indicating” (Claims 1, 8, 9)
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`C.
`The Board did not previously construe this term, and it requires no
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`construction. See Apple 1006 ¶ 102. Patent Owner, however, has proposed limiting
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`“indicating” to “providing an automatic visual, auditory, or tactile indication.”
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`IPR2014-00269 Paper 27 at 8; Apple 1008 at 10. This improperly adds the
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`limitation “automatic” to “indicating.” While the patent applicant added
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`“automatic” to the claims to refer to “automatic and direct access,” “automatically
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`establishing” a direct communication link, and “automatically and directly
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`electronically accessing” online information, the applicant did not add “automatic”
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`to indicating. Apple 1002 at 117-119. Limiting the claims to “automatic”
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`indicating also is inconsistent with the specification, which used the word
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`“automatic” to refer to indicating in a single embodiment. In that embodiment,
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`indicating is “automatic” because no “indicator signal generator” is required;
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`instead, the indicator is “automatically displayed” during “portions of a program
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`when an online information provider address is present.” Apple 1001 9:16-27.
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`Other embodiments refer broadly to any form of indication, including indicating
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`using an “indicator signal generator.” See id. 3:60-63; 6:9-26. Should the Board
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`construe “indicating,” Apple proposes “providing a visual, auditory, or tactile
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`indication,” consistent with the specification. See also Apple 1006 ¶ 103-105.
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`D. Means-plus-function terms (Claims 9 and 10)
`1.
`“means for indicating to the user that an address is
`available for extraction from said electronic signal”
`(Claim 9)
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`The function is “indicating to the user that an address is available for
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`extraction.” Apple proposes as corresponding structure: “a message, picture within
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`picture, logo, icon, light, sound, or wireless tactile indicator, and equivalents.”
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`consistent with the Board’s previously adopted structure of “‘a message displayed
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`on a video screen, … a light, a sound or a wireless tactile indicator, e.g., vibrating
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`wristband or clip-on unit … [or] a logo or message to be displayed for the user at
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`points in the program which coincide with the presence of an embedded online
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`information provider address’ and equivalents thereof.” IPR2014-00269 Paper 13
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`at 10. Apple’s proposed structure also is supported by the specification. Apple
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`1001 3:60-67; 6:9-26; 7:35-41, 9:19-28; see also Apple 1006 at 107-109.
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`Patent Owner proposed in district court that the structure is “an automatic
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`message, picture within picture, logo, or icon displayed on a video screen, a light, a
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`sound or wireless tactile indicator, and equivalents thereof.” Apple 1008 at 11-12.
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`(emphasis added). This structure improperly adds the limitation “automatic,”
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`which is not required by the claims and would limit the term to a single
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`embodiment in the specification. (See Section VI.C above.)
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`2.
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`“means for extracting an address associated with an online
`information source from an information signal embedded in
`said electronic signal, and for automatically establishing, in
`response to a user initiated command, a direct link with the
`online information source” (Claim 9)
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`The functions of this limitation are “extracting an address associated with an
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`online information source from an information signal embedded in said electronic
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`signal” and “automatically establishing, in response to a user initiated command, a
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`direct link with the online information source.” Apple proposes the structure the
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`Board previously adopted: “hardware, software, or some combination of hardware
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`and software that is programmed or configured to detect, decode and store an
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`address transmitted as part of a program and use the address to establish a digital
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`communications link directly between the user and the online information source,
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`and equivalents thereof.” IPR2014-00269 Paper 13 at 12-13. The specification
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`mentions “hardware and/or software to detect, decode and store an address which
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`has been embedded in a video or audio program signal,” and a modem with
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`“hardware and/or software to automatically establish … a direct digital
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`communication link with the online information provider.” Apple 1001 5:45-47,
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`8:60-65. The specification also states, “[t]he details of the construction of address
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`extractor 42 are well known in the art.” Id. 6:5-7.4 See also Apple 1006 ¶ 110-113.
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`In district court, Patent Owner proposed the following structure: “access
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`controller, provided with an address extractor including hardware and/or software,
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`that detects, decodes, and/or stores an address signal sent with a video signal and
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`provided with a modem with hardware and/or software to automatically establish a
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`direct digital communication link, and equivalents thereof.” Apple 1008 at 12-13.
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`Neither an “access controller” nor an “address extractor,” however, are particular
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`known structures, and the specification relies on the knowledge of one of ordinary
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`skill for hardware and software for address extraction. See Apple 1006 ¶ 113.
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`3.
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`“means for receiving an information signal from said online
`information source” (Claim 10)
`
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`4 In district court, Apple proposes this term is indefinite, because the specification
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`fails to identify sufficient structure and improperly relies on the knowledge of one
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`of ordinary skill. Because Apple recognizes that indefiniteness is not a proper
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`ground for rejection in this IPR, Apple therefore adopts the Board’s construction.
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`The function of this limitation is “