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. 7,055,169 CHALLENGING CLAIMS 1–2, 12, AND
`22–23 UNDER 35 U.S.C. § 312, 37 C.F.R. § 42.104
`
`
`
`
`
`

`
`U.S. Patent No. 7,055,169 (Claims 1–2, 12, 22–23)
`Petition for Inter Partes Review
`TABLE OF CONTENTS
`
`
`INTRODUCTION ....................................................................................................... 1
`I.
`II. GROUNDS FOR STANDING, MANDATORY NOTICES, AND
`FEE AUTHORIZATION .......................................................................................... 1
`III. SUMMARY OF CHALLENGES ........................................................................... 3
`IV. CONVENTIONS ......................................................................................................... 3
`THE CHALLENGED PATENT .............................................................................. 3
`V.
`The State of the Art at the Time of the Filing of the ’169 Patent .......... 3
`A.
`B. Overview of the ’169 Patent .......................................................................... 5
`Level of Ordinary Skill In The Art ............................................................10
`C.
`Summary of the Prosecution History of the ’169 Patent .......................10
`D.
`VI. CLAIM CONSTRUCTION ....................................................................................12
`“Directive” (Claims 1–2 and 22–23) .........................................................13
`A.
`“Prerequisite directive . . . ” (Claims 1–2 and 22–23) ...........................14
`B.
`“Subset of Said Set of Resources” (Claims 1 and 22–23) ....................15
`C.
`“wherein said prohibiting . . . ” (Claim 12) ..............................................17
`D.
`“a processing unit configured to . . . ” (Claim 22) ..................................18
`E.
`The Preamble of Claim 22 is Limiting (Claim 22) ................................18
`F.
`VII. THE CHALLENGED CLAIMS OF THE ’169 PATENT ARE
`UNPATENTABLE ...................................................................................................20
`A. Obviousness Grounds Based on Beri Alone or in Combination
`with Harrington ..............................................................................................20
`Summary of the Prior Art: Beri ......................................................20
`1.
`Summary of the Prior Art: Harrington ..........................................24
`2.
`Beri renders obvious Claim 1 ..........................................................27
`3.
`Beri renders obvious Claim 2 ..........................................................34
`4.
`Beri and Harrington together render obvious Claim 12 ............34
`5.
`Beri and Harrington together render obvious Claim 22 ............39
`6.
`
`
`
`

`
`U.S. Patent No. 7,055,169 (Claims 1–2, 12, 22–23)
`Petition for Inter Partes Review
`
`Beri renders obvious Claim 23 ........................................................42
`7.
`B. Obviousness Grounds Based on Armstrong Alone or in
`Combination with Harrington. ....................................................................43
`Summary of the Prior Art: Armstrong ..........................................43
`1.
`Armstrong renders obvious Claim 1 ..............................................46
`2.
`Armstrong renders obvious Claim 2. .............................................51
`3.
`4.
`Armstrong and Harrington together render obvious Claim
`12 ...........................................................................................................52
`Armstrong and Harrington together render obvious Claim
`22 ...........................................................................................................53
`Armstrong renders obvious Claim 23 ............................................56
`6.
`VIII. THE TWO GROUNDS PER CHALLENGED CLAIM ARE NOT
`REDUNDANT ...........................................................................................................56
`IX. CONCLUSION ..........................................................................................................57
`
`5.
`
`
`
`
`
`ii
`
`

`
`U.S. Patent No. 7,055,169 (Claims 1–2, 12, 22–23)
`Petition for Inter Partes Review
`
`LIST OF EXHIBITS
`
`1109
`
`1110
`
`
`Exhibit No. Description
`1101
`U.S. Patent No. 7,055,169
`1102
`Prosecution File History of U.S. Patent No. 7,055,169
`1103
`U.S. Provisional Application No. 60/373,883
`1104
`Declaration of Dr. Stephen Melvin
`1105
`Curriculum Vitae of Dr. Stephen Melvin
`1106
`U.S. Patent No. 6,141,018 (“Beri”)
`1107
`U.S. Patent No. 7,120,871 (“Harrington”)
`1108
`Tom Armstrong, Designing and Using ActiveX Controls (1st ed.
`1997) (“Armstrong”) [Part 1]
`Tom Armstrong, Designing and Using ActiveX Controls (1st ed.
`1997) (“Armstrong”) [Part 2]
`Table of disputed claim constructions from OpenTV, Inc. v. Apple,
`Inc., No. 15-2008 (C.D. Cal. Feb. 12, 2016), Dkt. 74-1.
`American Heritage College Dictionary (3d ed. 1993)
`New Shorter Oxford English Dictionary (1993)
`Joint Claim Construction and Prehearing Statement from OpenTV,
`Inc. v. Apple, Inc., No. 15-2008 (C.D. Cal. Feb. 12, 2016), Dkt. 74
`Plaintiffs’ Opening Claim Construction Brief from OpenTV, Inc. v.
`Apple, Inc., No. 15-2008 (C.D. Cal. Mar. 29, 2016), Dkt. 81
`Random House Webster’s College Dictionary 1305 (2000)
`Library of Congress catalog entry for Armstrong
`
`1111
`1112
`1113
`
`1114
`
`1115
`1116
`
`iii
`
`
`
`

`
`U.S. Patent No. 7,055,169 (Claims 1–2, 12, 22–23)
`Petition for Inter Partes Review
`
`
`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.100, et seq., Apple Inc. (“Petitioner”) hereby
`
`I.
`
`petitions the United States Patent and Trademark Office (the “Office”) to institute
`
`an inter partes review of Claims 1–2, 12, and 22–23 (the “Challenged Claims”) of
`
`U.S. Patent No. 7,055,169 (“the ’169 Patent”). The ’169 Patent is assigned to
`
`OpenTV, Inc. (“Patent Owner”). The ’169 Patent claims methods and systems for
`
`administrating interactive television services. See Ex. 1101 at Claims 1, 22, & 23.
`
`The Challenged Claims of the ’169 Patent are rendered obvious by the prior art.
`
`For each Challenged Claim, this Petition presents two non-cumulative grounds of
`
`invalidity based on references that were not considered by the Office during
`
`prosecution of the application that issued as the ‘169 Patent. Petitioner asserts that
`
`both grounds of invalidity for each claim are each reasonably likely to prevail, and
`
`this Petition should be granted on all grounds.
`
`II. GROUNDS FOR STANDING, MANDATORY NOTICES, AND FEE
`AUTHORIZATION
`
`Grounds for Standing: Petitioner certifies that the ’169 Patent is available for
`
`inter partes review and that Petitioner is not barred or estopped from requesting an
`
`inter partes review challenging the Claims on the grounds identified in this
`
`Petition.
`
`Real Party-In-Interest: Apple, Inc.
`
`Notice of Related Matters: Patent Owner has asserted the ’169 Patent against
`
`1
`
`

`
`U.S. Patent No. 7,055,169 (Claims 1–2, 12, 22–23)
`Petition for Inter Partes Review
`
`Petitioner in OpenTV, Inc., et al. v. Apple Inc., 3:15-cv-02008-EJD (N.D. Cal.,
`
`filed May 5, 2015). Petitioner has concurrently filed a Covered Business Method
`
`Petition addressing the Challenged Claims of the ’169 Patent. See CBM2016-
`
`00066.
`
`Lead and Back-Up 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: Xin-Yi Zhou (Reg. No. 63,366), Brian M. Cook (Reg. No.
`
`59,356), John Kevin Murray (Reg. No. 69,529), Anne E. Huffsmith (Reg. No.
`
`57,041), Ryan K. Yagura (Reg. No. 47,191), and Clarence A. Rowland (Reg.
`
`No. 73,775) O’Melveny & Myers LLP, 400 S. Hope Street, Los Angeles, CA
`
`90071. (Telephone: 213-430-6000; Fax: 213-430-6407; Emails:
`
`vzhou@omm.com, bcook@omm.com, kmurray2@omm.com,
`
`ahuffsmith@omm.com, ryagura@omm.com, and crowland@omm.com).
`
`Service Information: Service of all documents may be made to the lead and
`
`backup counsel at O’Melveny & Myers LLP, Two Embarcadero Center, 28th Floor,
`
`San Francisco, CA 94111, with courtesy copies to the email addresses identified
`
`above.
`
`Fee Authorization: The Office is authorized to charge an amount in the sum of
`
`2
`
`

`
`U.S. Patent No. 7,055,169 (Claims 1–2, 12, 22–23)
`Petition for Inter Partes Review
`
`$23,000 to Deposit Account No. 50-0639 for the fee set forth in 37 CFR
`
`§ 42.15(a), and any additional fees that might be due in connection with this
`
`Petition.
`
`III. SUMMARY OF CHALLENGES
`Petitioner respectfully requests that Claims 1–2, 12, and 22–23 be cancelled
`
`based on three prior art references: U.S. Patent No. 6,141,018 (“Beri”), U.S. Patent
`
`No. 7,120,871 (“Harrington”), and Tom Armstrong, Designing and Using ActiveX
`
`Controls (1st ed. 1997) (“Armstrong”). The chart below identifies two grounds per
`
`challenged Claim, and neither ground is redundant for each Claim, as explained
`
`below. See infra, Part VIII.
`
`Statutory Basis
`
`35 U.S.C. § 103
`
`Reference(s)
`
`Beri
`
`Claims
`
`1–2, 23
`
`35 U.S.C. § 103
`
`Beri + Harrington
`
`12 and 22
`
`35 U.S.C. § 103
`
`Armstrong
`
`1–2, 23
`
`35 U.S.C. § 103
`
`Armstrong + Harrington
`
`12 and 22
`
`IV. CONVENTIONS
`This Petition uses bold text for emphasis and italics to identify claim
`
`language.
`
`V. THE CHALLENGED PATENT
`A. The State of the Art at the Time of the Filing of the ’169 Patent
`The ’169 Patent claims priority to a provisional application filed on April 19,
`
`3
`
`

`
`U.S. Patent No. 7,055,169 (Claims 1–2, 12, 22–23)
`Petition for Inter Partes Review
`
`2002, and Patent Owner has alleged (but offered no evidence to support) a
`
`conception date of June 2001 in district court litigation. All prior art addressed in
`
`this Petition predate June 2001.
`
`The Challenged Claims of the ’169 Patent purportedly cover rendering web
`
`pages using “prerequisite directives.” See Ex. 1101 at 21:8–:37 & Claim 1. As
`
`explained in this Petition, rendering using “prerequisite directives” was known by
`
`a person of ordinary skill in the art (“POSITA”) before June 2001.
`
`During and before June 2001, the operation of web pages and the Internet
`
`was well understood by a POSITA. Ex. 1104 ¶ 27. In particular, at that time a
`
`POSITA understood that web pages were, at a high level, (1) downloaded from a
`
`server over the Internet, (2) rendered by a user’s computer, and (3) displayed to a
`
`user. Ex. 1104 ¶ 28.
`
`Downloading a web page refers to the process of the web browser retrieving
`
`content from the Internet. Such content can be pointed to using a Uniform
`
`Resource Locator (“URL”), which identifies a server where the content is located
`
`such that the user’s computer can download the content. Ex. 1104 ¶ 29; Ex. 1106
`
`at 1:11–:48; Ex. 1104 ¶ 29. The content received is generally composed of
`
`directions that instruct the computer in how to render the web page as well as
`
`multiple “resources,” which can include, for example, text, images, video, and
`
`graphics. Ex. 1104 ¶ 29; Ex. 1106 at 1:11–:48.
`
`4
`
`

`
`U.S. Patent No. 7,055,169 (Claims 1–2, 12, 22–23)
`Petition for Inter Partes Review
`
`Rendering a web page refers to the process of utilizing resources
`
`downloaded from the Internet, such as text and images, and processing HTML
`
`code to place and format the resources and display the resulting web page to the
`
`user. Ex. 1104 ¶ 30. For example, the HTML code for a web page that refers to an
`
`image might direct that the image be aligned in a certain way or have a certain size
`
`border. Ex. 1104 ¶ 30. The rendering software in the web browser would place
`
`the picture at the correct location and show it to the user. Ex. 1104 ¶ 30. A feature
`
`known as “progressive rendering” was, at the time of the ’169 Patent and to this
`
`day, the default operation for most web browsers in handling images. Progressive
`
`rendering refers to the process of rendering and displaying to the user a partially
`
`constructed web page as soon as possible, before all of the resources for the full
`
`web page have been downloaded, as opposed to rendering and displaying the web
`
`page after all resources necessary to display the web page are downloaded. Ex.
`
`1104 ¶ 30.
`
`Displaying the rendered web page refers to the process of making the
`
`rendered web page available to a display that the user can view. Ex. 1104 ¶ 31.
`
`B. Overview of the ’169 Patent
`The ’169 Patent is entitled “Supporting Common Interactive Television
`
`Functionality Through Presentation Engine Syntax.” Ex. 1101 at Cover. It was
`
`filed on April 21, 2003, claims priority to a provisional application filed on April
`
`5
`
`

`
`U.S. Patent No. 7,055,169 (Claims 1–2, 12, 22–23)
`Petition for Inter Partes Review
`
`19, 2002, and issued on May 20, 2006. Id. The claims of the ’169 Patent recite
`
`methods, devices, and computer readable mediums for handling the presentation of
`
`audio, video, and/or graphics. See id. at Claims 1, 22, & 23.
`
`The limitations in Claim 1 define a method for handling a set of resources.
`
`Id. An example of a resource is a media file that contains audio, video, and/or
`
`graphics. See, e.g., Ex. 1101 at 21:8–:20 (identifying a file called
`
`“background.mpg,” i.e. a “background” file, as a resource). The ’169 Patent
`
`explains that resources utilize Internet protocols: “HTML pages [(i.e., web pages)]
`
`may use ‘http:’ URLs to load resources from the carousel.” Id. at 24:63–:64
`
`(emphasis added). A “carousel” is a term the ’169 Patent uses to refer to a
`
`collection of data objects being transmitted to the computer over a network from a
`
`broadcaster in a cyclical or repeating format. Id. at 1:43–2:15.
`
`The resources are organized into a presentation. For example, a presentation
`
`could be a web page, which is represented by HTML code in an “HTML
`
`document.” See, e.g., Ex. 1101 at 11:49–:61 (describing a presentation consisting
`
`of content from cnn.com).
`
`Claim 1 requires use of directives that are indicative of the presentation.
`
`The ’169 Patent explains that “declarations or other statements used in the creation
`
`and/or manipulation of resources and content in this document may be generally
`
`referred to as ‘directives.’” Id. at 47:7–:10. The specification provides examples
`
`6
`
`

`
`U.S. Patent No. 7,055,169 (Claims 1–2, 12, 22–23)
`Petition for Inter Partes Review
`
`
`of directives in an HTML Document:
`
`
`
`Ex. 1101 at 22:30–:49. In the example above, the code consists of directives that
`
`are indicative of where an image is located (“Broadcast://current”) and how it
`
`should be positioned and sized on the user’s display. Id.; Ex. 1104 ¶ 36.
`
`Claim 1 specifies that if a particular resource is designated prerequisite by
`
`one of the received directives, then presentation of the audio, video, or graphics
`
`will not begin (or, in the language of the claims, will be prohibited) until the
`
`prerequisite resource is acquired. Ex. 1101 at Claim 1. And if there are no
`
`resources designated as prerequisite, then the presentation will begin immediately
`
`(or, in the language of the claims, will be initiated). Id. One example identified by
`
`the ’169 Patent of a prerequisite directive is:
`
`<META name=“prerequisite”
`
`content=“http://www.cnn.com/background.mpg”>
`
`Ex. 1101 at 21:8–:20. This example directive is written in HTML (see id. at
`
`20:66–21:3) and the directive is identified by the name/value pair:
`
`name=”prerequisite.” Ex. 1104 ¶ 36. The resource is the background.mpg file
`
`available for download at the location pointed to by the URL. Id. META is an
`
`7
`
`

`
`U.S. Patent No. 7,055,169 (Claims 1–2, 12, 22–23)
`Petition for Inter Partes Review
`
`HTML tag that is generally used to provide metadata to the web browser. Id. In
`
`this example, the META HTML tag provides the web browser with an instruction
`
`regarding the rendering of the web page. Id. The specification indicates that by
`
`including the “prerequisite” parameter in the HTML code, the web browser would
`
`not initiate the presentation until the background.mpg file is acquired. Ex. 1101 at
`
`21:8–:20.
`
`
`
`In addition to the mechanism described above, in which resources are
`
`labeled as “prerequisites” using the META tag in the HTML code, the ’169 Patent
`
`also discloses three different options for rendering web pages. Ex. 1101 at 21:8–
`
`:52; Ex. 1104 ¶ 36. The first option is the “progressive rendering policy,” wherein
`
`the web page is rendered as soon as possible. Ex. 1101 at 21:9–:20; Ex. 1104 ¶ 36.
`
`Only those resources labeled as prerequisites, if any, cause the display of the web
`
`page to be delayed. Ex. 1101 at 21:9–:20; Ex. 1104 ¶ 36. The second option is the
`
`“layoutComplete rendering policy,” wherein display of the web page is delayed
`
`until information that determines the complete on-screen layout are acquired, in
`
`addition to other resources that are labeled as prerequisites, if any. Ex. 1101 at
`
`21:37–:44; Ex. 1104 ¶ 36. The third option is the “loadComplete rendering
`
`policy,” wherein the web page is not displayed until all resources are acquired,
`
`which that means all resources are prerequisites. Ex. 1101 at 21:45–:52; Ex. 1104
`
`¶ 36.
`
`8
`
`

`
`U.S. Patent No. 7,055,169 (Claims 1–2, 12, 22–23)
`Petition for Inter Partes Review
`
`The chart below explains the limitations of Claim 1 in terms that will be
`
`familiar to most readers:
`
`’169 Patent, Claim 1
`
`Performance By Student
`
`1. A method comprising:
`
`A student receives an assignment (one
`
`[a] receiving one or more directives,
`
`or more directives) from a teacher to
`
`wherein said directives are indicative of
`
`give a presentation to class. The
`
`an audio, video and/or graphic
`
`assignment includes instructions
`
`presentation which requires a set of
`
`indicating whether certain visual aid is
`
`resources;
`
`required.
`
`[b] determining whether said one or
`
`The student determines whether the
`
`more directives includes a prerequisite
`
`assignment includes an instruction
`
`directive which indicates that
`
`requiring the presentation of a toy (a
`
`acquisition of a subset of said set of
`
`“resource”) to the class before initiating
`
`resources is a prerequisite for initiating
`
`the presentation.
`
`the presentation;
`
`[c] initiating said presentation, in
`
`If the student determines that the
`
`response to determining the one or more
`
`assignment contains no instruction
`
`directives do not include said
`
`requiring visual aid, the student gives an
`
`prerequisite directive; and
`
`oral presentation to the class.
`
`9
`
`

`
`U.S. Patent No. 7,055,169 (Claims 1–2, 12, 22–23)
`Petition for Inter Partes Review
`
`
`[d] prohibiting initiation of said
`
`If the student determines that the
`
`presentation until said subset of
`
`assignment requires showing a toy and
`
`resources are acquired, in response to
`
`that the student did not bring the toy to
`
`determining the one or more directives
`
`class, the student calls a parent and does
`
`include said prerequisite directive.
`
`not begin the presentation until the
`
`parent brings the toy to class.
`
`C. Level of Ordinary Skill In The Art
`The level of ordinary skill in the art is found in a person with a bachelor’s
`
`degree in computer science, computer engineering, or the equivalent, plus
`
`approximately two years of experience in the field of computer engineering or
`
`software development, or an equivalent amount of relevant work and/or research
`
`experience. Ex. 1104 ¶ 21.
`
`Dr. Melvin qualified as a person of ordinary skill in the art by at least June
`
`2001. Ex. 1104 ¶¶ 5–11. Dr. Melvin received a Ph.D. in Computer Science from
`
`the University of California at Berkeley in 1991 and a B.S. in Electrical
`
`Engineering and Computer Science from the University of California at Berkeley
`
`in 1982. Ex. 1104 ¶ 5. He has more than 30 years of experience in computer
`
`science and computer engineering and is a named inventor on over 45 patents. Id.
`
`Summary of the Prosecution History of the ’169 Patent
`
`D.
`The ’169 Patent issued from U.S. Patent App. No. 10/419,621 (the “’621
`
`10
`
`

`
`U.S. Patent No. 7,055,169 (Claims 1–2, 12, 22–23)
`Petition for Inter Partes Review
`
`Application”). The ’621 Application was filed on April 21, 2003, claiming priority
`
`to Provisional application No. 60/373,883. Ex. 1102 at 56–57. On October 15,
`
`2004, the Examiner issued a non-final office action rejecting all pending claims.
`
`Ex. 1102 at 67–76. On October 15, 2004, the Examiner found claims 1–7, 11–16,
`
`and 20–23 to be anticipated by U.S. Patent Pub. No. 2002/0010798 A1 (“Ben”)
`
`and claims 8–10 and 17–19 to be obvious over Ben. Id. The Examiner also noted
`
`U.S. Patent Pub. Nos. 2002/0194219 A1 (“Bradley”) and 2002/0099011 A1
`
`(“Lamkin”) were prior art made of record and not relied upon, but were considered
`
`pertinent to applicant’s disclosure because Bradley and Lamkin disclosed systems
`
`related to content deliveries and content attributes. Id.
`
`On January 21, 2005, Applicant responded to the Office Action by amending
`
`Claims 1–4, 13–14, and 21–22, and by arguing against the rejection. Applicant
`
`distinguished Ben by alleging Ben did not disclose various limitations. Id. at 79–
`
`80.
`
`On June 29, 2005, the Examiner withdrew the rejections based on Ben and
`
`issued a Notice of Allowance for all of the pending claims, reasoning Ben failed to
`
`teach certain steps of the claims. Id. at 93–94. On July 14, 2005, a Supplemental
`
`Notice of Allowance along with an Examiner’s Amendment issued, amending
`
`Claim 23 to be in compliance with 35 U.S.C. §101. Id. at 100. On November 28,
`
`2005, another Supplemental Notice of Allowance issued, mimicking the Reasons
`
`11
`
`

`
`U.S. Patent No. 7,055,169 (Claims 1–2, 12, 22–23)
`Petition for Inter Partes Review
`
`for Allowance from June 29, 2005 (id. at 101), and the Patent issued on May 30,
`
`2006.
`
`VI. CLAIM CONSTRUCTION
`In the context of an inter partes review, “[a] claim in an unexpired patent
`
`shall be given its broadest reasonable construction in light of the specification of
`
`the patent in which it appear[s].” 37 C.F.R. § 42.100(b). Because the ’169 Patent
`
`has not expired, Petitioner proposes constructions for certain claim terms according
`
`to the broadest reasonable interpretation. Because the claim construction standard
`
`in this proceeding differs from the standard applicable in a district court litigation,
`
`see In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004),
`
`Petitioner reserves the right to argue different constructions before the district
`
`court. Petitioner specifically reserves the right to argue in the district court
`
`litigation that one or more terms of the ’169 Patent are indefinite under 35 U.S.C. §
`
`112, ¶ 2 for failing to “inform those skilled in the art about the scope of the
`
`invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc.,
`
`134 S. Ct. 2120, 2129–30 (2014).
`
`In district court, the parties are in the midst of claim construction and have
`
`briefed their respective positions (see Ex. 1110). A claim construction hearing is
`
`set for May 12, 2016.
`
`For terms not specifically construed below, Petitioner interprets them in
`
`12
`
`

`
`U.S. Patent No. 7,055,169 (Claims 1–2, 12, 22–23)
`Petition for Inter Partes Review
`
`accordance with their plain and ordinary meaning consistent with the broadest
`
`reasonable interpretation standard.
`
`“Directive” (Claims 1–2 and 22–23)
`
`A.
`In light of the ’169 Patent specification, the broadest reasonable construction
`
`of “directive” is “declaration or instruction.” See Ex. 1104 at ¶¶ 37–41.
`
`Petitioner’s proposed construction is consistent with the plain and ordinary
`
`meaning of the term. The American Heritage College Dictionary defines
`
`“directive” as: “An order or instruction, esp. one from a central authority.” Ex.
`
`1111 at 3. The New Shorter Oxford English Dictionary defines “directive” as:
`
`“Something that directs; spec. a general instruction for procedure or action given to
`
`a subordinate.” Ex. 1112 at 3.
`
`Petitioner’s proposed construction is also supported by the specification.
`
`The ’169 Patent explains: “[T]he declarations or other statements used in the
`
`creation and/or manipulation of resources and content in this document may be
`
`generally referred to as ‘directives.’” Ex. 1101 at 47:7–:10. The specification
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`further explains: “In one embodiment, a device in an interactive television system
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`is configured to receive one or more directives provided by a content author which
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`describe or otherwise indicate an audio and/or video presentation.” Id. at 2:39–:42.
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`Thus, in the context of the patent specification, a POSITA would understand
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`“directive” to mean “declaration or instruction.” See Ex. 1104 at ¶¶ 37–41.
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`13
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`U.S. Patent No. 7,055,169 (Claims 1–2, 12, 22–23)
`Petition for Inter Partes Review
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`“Prerequisite directive . . . ” (Claims 1–2 and 22–23)
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`B.
`Petitioner is contending in the district court litigation that the term
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`“prerequisite directive which indicates that acciuisition [sic] of a subset of said set
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`of resources is a prerequisite for initiating the presentation” is indefinite.
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`Challenges under 35 U.S.C. § 112 are, however, not permitted in an inter partes
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`review. Thus, for the purposes of this inter partes review only, Petitioner
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`construes that term as a “declaration or instruction that indicates a subset of the
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`resources required for initiating the presentation.”
`
`The ’169 Patent explains that:
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`When rendering graphics as they are downloaded, it sometimes makes
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`sense to delay displaying to the viewer until at least a subset of the
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`resources, which have been deemed as essential by the content
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`creator, have been downloaded. In one embodiment, a content creator
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`may label the essential subset of resources by identifying them using a
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`directive such as a "prerequisite" meta-data header.
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`Ex. 1101 at 21:9–:15. Thus, the patent explains that prerequisite directives indicate
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`“that certain resources may be required prior to rendering” a presentation. Ex.
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`1101 at 21:21–:24.
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`Prerequisite directives are conceptually simple. People have long used
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`declarations and instructions to indicate that certain resources are required for
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`14
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`U.S. Patent No. 7,055,169 (Claims 1–2, 12, 22–23)
`Petition for Inter Partes Review
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`creating a presentation. For example, teacher may instruct her students that their
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`presentation must include pictures, a candidate for office may declare that he
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`cannot begin his speech until he receives a script, and a judge may issue an order
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`requiring demonstratives for a hearing.
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`“Subset of Said Set of Resources” (Claims 1 and 22–23)
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`C.
`The broadest reasonable construction of “subset of said set of resources” is
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`“a set that is some or all of said set of resources.” See Ex. 1104 ¶¶ 42–45. The
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`word “Subset” is defined as: “2. Math. a set consisting of elements of a given set
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`that can be same as the given set or smaller.” Ex. 1115 at 3–4. Indeed, the
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`specification suggests that any number of resources may be labeled as
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`prerequisites, and also contemplates an embodiment in which all of the resources
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`are labeled “prerequisite resources,” in which case the subset of prerequisite
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`resources would be the same as the set of all resources:
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`The loadComplete rendering policy indicates that the graphics may
`not be displayed until all resources that will be used for rendering the
`display have been downloaded. The only difference between the
`loadComplete rendering policy and labeling all resources as
`prerequisites, is that in the first case the OnLoad event will have been
`delivered to the appropriate handler, if any, prior to rendering, and
`hence may affect the rendered view.
`Id. at 21:45–:52 (emphasis added); Ex. 1104 ¶ 43. The discussion above
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`contemplates “labeling all resources as prerequisites,” and indicates that doing so
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`15
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`U.S. Patent No. 7,055,169 (Claims 1–2, 12, 22–23)
`Petition for Inter Partes Review
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`would be equivalent to the loadComplete rendering policy (except for the timing of
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`when the OnLoad event is triggered). Id. Thus, the specification teaches to a
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`POSITA that the META tag mechanism could be used to label all resources as
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`prerequisites, and in so doing would be an alternative to the loadComplete
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`rendering policy, with a difference in when events are triggered. Id. A POSITA
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`would understand that both alternatives are viable options for a content author who
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`wants all resources to be prerequisites.
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`
`
`Thus, construing the term “subset” to exclude the set of all members would
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`exclude an embodiment, and a construction that excludes an embodiment is
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`“rarely, if ever, correct.” Accent Packaging, Inc. v. Leggett & Platt, Inc., 707 F.3d
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`1318, 1326 (Fed. Cir. 2013). Indeed, the specification never states that all of the
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`resources “required for a presentation” cannot also all be prerequisite resources and
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`never restricts a content provider to only designating some of the resources as
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`prerequisite. See, e.g., Ex. 1101 at Abstract, 2:33–:47, 21:9–:20, 21:21–:52,
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`21:53–22:11, 47:23–:37, 47:45–48:3, 48:54–:56, 48:58–:67; Ex. 1104 ¶ 44. In
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`fact, where the Patent contemplates a subset that does not include all members of
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`the parent set, that situation is referred to as a “strict subset” of the “maximum set,”
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`which a POSITA would have understood to be the proper way in the art to refer to
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`a system wherein the subset cannot constitute the full set. Id. at 45:29–:55; Ex.
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`1104 ¶ 44.
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`16
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`U.S. Patent No. 7,055,169 (Claims 1–2, 12, 22–23)
`Petition for Inter Partes Review
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`Finally, nothing in the specification teaches away from a scenario wherein
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`all resources are designated as prerequisite. See generally, Ex. 1101; Ex. 1104 ¶
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`45. Indeed it would not make sense to restrict a content author such that they
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`would have to reserve at least one resource that is not labeled as a prerequisite, and
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`no such restriction is discussed in the specification. Id. A POSITA would not
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`have seen any logic behind limiting a subset to not being able to include all
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`resources such code is intended to be flexible and adaptable to a variety of
`
`situations. Ex. 1104 ¶ 45. Thus, this arbitrary interpretation was not contemplated
`
`by the drafters of the ’169 Patent and a POSITA would not adopt that
`
`interpretation.
`
`D.
`
`“wherein said prohibiting is in further response to detecting [that]
`a corresponding time for expiration has not yet expired, and
`wherein said method further comprises allowing the presenting of
`said presentation in response to detecting said time for expiration
`has expired” (Claim 12)
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`Petitioner contends in the district court litigation that this term is indefinite.
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`Ex. 1110 at 13–14. In inter partes review, challenges under 35 U.S.C. § 112 are
`
`not permitted. Thus, for the purposes of this Petition only, Petitioner relies on
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`Patent Owner’s explanation in the district court litigation, which is that “if a timer
`
`has expired, the system is no longer prohibited from beginning the presentation,
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`but if it has not expired, the system waits to acquire the required resources.” Ex.
`
`1114 at 21. The specification of the ’169 Patent also discloses an example wherein
`
`17
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`U.S. Patent No. 7,055,169 (Claims 1–2, 12, 22–23)
`Petition for Inter Partes Review
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`if a prerequisite resource cannot be acquired, then a 15 second timer is used to
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`delay presentation of the resources until the timer expires. Ex. 1101 at 21:53–:67.
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`“a processing unit configured to . . . ” (Claim 22)
`
`E.
`Petitioner contends in the district court litigation that the term “a processing
`
`unit configured to,” and the subsequent terms in Claim 22, are indefinite because
`
`“a processing unit configured to” signals a means plus function format and the
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`specification does not recite sufficient structure for the functions required in the
`
`Claim. Ex. 1110 at 14–15. In inter partes review, challenges under 35 U.S.C.
`
`§ 112 are not permitted. Thus, for the purposes of this inter partes review only,
`
`Petitioner relies on Patent Owner’s explanation from district court, which is that a
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`“processing unit” is a “central processing unit” that “interprets and ex