IPR2014-00269
`Patent 6,233,736
`
`"automatic" or "automatically," in regards to establishing a connection, is
`
`found in Throckmorton. Prelim. Resp. 12-15. However, each of Petitioner's
`
`mappings identified by Patent Owner states that the connection is
`
`established automatically because the system performs the connection and
`
`retrieving. Id. at 13-14. As discussed above, in each of the automatically
`
`establishing limitations, the connection is established in response to some
`
`user initiated command. Thus, in this case, as discussed in our construction
`
`of the automatically establishing limitations, the "automatic" or
`
`"automatically" means that the connection is established without further
`
`input from the user after receipt of the user initiated command. Therefore,
`
`we are persuaded Petitioner has shown sufficiently that Throckmorton
`
`teaches the automatically establishing limitations.
`
`Patent Owner also argues that the Petition does not provide a complete
`
`obviousness analysis. Id. at 15-17. In particular, Patent Owner argues that
`
`the Petition cites to disparate sections of Throckmorton (i.e., both of
`
`Throckmorton's preferred embodiments) without explaining which of the
`
`embodiments is being relied on for the proposed ground or how the two
`
`embodiments would be combined to render the claims obvious. Id. at 16-17.
`
`Patent Owner also asserts the obviousness analysis is incomplete because
`
`the proposed motivation is conclusory and insufficient. Id. at 17-19.
`
`We agree with the parties that Throckmorton teaches both a one-way
`
`communications embodiment and a two-way communications embodiment.
`
`Throckmorton's disclosure indicates that both embodiments provide a
`
`19
`
`NFLE 1002 - Page 167
`NFLE 1002 - Page 167
`
`

`

`IPR2014-00269
`Patent 6,233,736
`
`consumer with access to online information during the process of program
`
`reception. As discussed above, Throckmorton's description of the two-way
`
`communications embodiment explains that the two-way communications
`
`embodiment adds a two-way communication channel to the system
`
`described by the one-communications way embodiment. Ex. 1004, Abstract,
`
`8:16-9:25; See Pet. 9. Therefore, for purposes of this decision, we are
`
`persuaded by Petitioner's argument that combining the two 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." Pet. 13.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that Petitioner has shown a
`
`reasonable likelihood that it would prevail in demonstrating that: (1) claims
`
`1-3 and 6-12 of the '736 patent are unpatentable as obvious in view of
`
`Throckmorton; (2) claim 4 is unpatentable as obvious in view of the
`
`combination of Throckmorton and Williams; and (3) claim 5 is unpatentable
`
`as obvious in view of the combination of Throckmorton and Kerman. The
`
`Board has not made a final determination on the patentability of any
`
`challenged claim.
`
`20
`
`NFLE 1002 - Page 168
`NFLE 1002 - Page 168
`
`

`

`IPR2014-00269
`Patent 6,233,736
`
`IV. ORDER
`For the reasons given, it is:
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter panes review
`
`is hereby instituted as to claims 1-12 of the '736 patent;
`
`FURTHER ORDERED that the trial is limited to the stated grounds
`
`and no other grounds are authorized; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37
`
`C.F.R. § 42.4, the trial commences on the entry date of this decision, and
`
`notice is hereby given of the institution of a trial.
`
`21
`
`NFLE 1002 - Page 169
`NFLE 1002 - Page 169
`
`

`

`IPR2014-00269
`Patent 6,233,736
`
`PETITIONER:
`
`Andrew S. Ehmke
`andy.ehmke.ipr@haynesboone.com
`
`Scott Jarratt
`scott.jarratt.ipr@haynesboone.com
`
`PATENT OWNER:
`
`Erika H. Amer
`erika.arner@finnegan.com
`
`Joshua L. Goldberg
`joshua.goldberg@finnegan.com
`
`Russell Levine
`russellevine@kirkland.corn
`
`Eugene Goryunov
`eugene.goryunov@kirkland.coni
`
`22
`
`NFLE 1002 - Page 170
`NFLE 1002 - Page 170
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`

`

`TrialsOusnto.gov
`Tel: 571-272-7822
`
`Paper 34
`Entered: January 26, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`N EFFL I X, INC.,
`Petitioner,
`
`V .
`
`OPENTV, INC.,
`Patent Owner.
`
`Cases IPR2014-00252 (Patent 8,107,786 B2)
`IPR2014-00267 (Patent 7,409,437 B2)
`IPR2014-00269 (Patent 6,233,736 B I)
`
`Before SALLY C. MEDLEY, JAMES T. MOORE, and JUSTIN BUSCH,
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge,
`
`JUDGMENT
`Termination of the Proceeding
`37 C.F.R. § 42.73
`
`On January 20, 2015, the parties filed, in each proceeding, a joint motion to
`
`terminate, along with a true copy of their written agreement, made in connection
`
`NFLE 1002 - Page 171
`NFLE 1002 - Page 171
`
`

`

`IPR2014-00252 (Patent 8,107,786 B2)
`IPR2014-00267 (Patent 7,409,437 B2)
`IPR2014-00269 (Patent 6,233,736 B1)
`
`with the termination of the respective proceeding, in accordance with 35 U.S.C.
`
`§ 317(b) and 37 C.F.R. § 42.74(b). The parties also filed a joint request to have
`
`their agreement treated as confidential business information under 35 U.S.C.
`
`§ 317(b) and 37 C.F.R. § 42.74(c). See, e.g., IPR2014-00252 (Papers 38, 39;
`
`Ex. 1008). The joint motions request termination of the proceedings and further
`
`explain that the parties have stipulated to dismiss, without prejudice, the related
`
`district court litigations. See, e.g., IPR2014-00252, Paper 38 at 1.
`
`On June 24, 2014, we instituted trial for each proceeding. The Board does
`
`not have before it full briefing on the trial issues and the Board has not entered a
`
`final decision.
`
`Based on the facts of these proceedings, it is appropriate to enter judgment'
`
`without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R.
`
`§ 42.72.
`
`It is
`
`ORDERED that the parties' joint request that the agreement be treated as
`
`business confidential information, to be kept separate from the patent file, is
`
`granted;
`
`FURTHER ORDERED that the joint motions to terminate the proceedings
`
`are granted; and
`
`FURTHER ORDERED that the proceedings are terminated.
`
`A judgment means a final written decision by the Board, or a termination of a
`proceeding. 37 C.F.R. § 42.2.
`
`NFLE 1002 - Page 172
`NFLE 1002 - Page 172
`
`

`

`IPR2014-00252 (Patent 8,107,786 B2)
`IPR2014-00267 (Patent 7,409,437 B2)
`IPR2014-00269 (Patent 6,233,736 B1)
`
`PETITIONER:
`
`Andrew Ehmke
`Dustin Johnson
`Scott Jarratt
`HAYNES AND BOONE, LLP
`andy.ehmIce.ipr@haynesboone.com
`dustin.johnson.ipr@haynesboone.com
`scottjarratt.iprahaynesboone.com
`
`PATENT OWNER:
`
`Erika Amer
`Joshua Goldberg
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
`erika.amer@finnegan.com
`ioshua.goldberga.finncgan.com
`
`Russell Levine
`Eugene Goryunov
`KIRKLAND & ELLIS, LLP
`russell.levine(&Airkland.com
`eugene.gorvunovalcirkland.com
`
`NFLE 1002 - Page 173
`NFLE 1002 - Page 173
`
`

`

`rcle one)
`)
`*TOday's Date: (0/010, Patent No. (Pi 9.) 3
`b
`STATUS/TELEPHONE INQUIRY & EXPEDITE REQUEST
`(11/19f2002)
`
`"P " "R"
`
`Caller's Nanie:
`Comments (note What is being requested or problem):
`
`Tel; #:
`
`PALM LoCati6: -
`
`Date:
`
`Charged to (name):
`.
`
`Record In COW Database (carteone) -. . Y / N
`
`(If more that one record; use reverse side)
`
`
`
`Loc.:
`
`/
`
`/
`
`AsSigned to (LIE's initials (initials):
`
`MRD (for record in CofC Database):
`Sent to Loc.:
`CofC issued: - / _
`
`/
`
`/
`
`/
`
`Rec'il:
`
`/
`
`/ Turned-in: . /
`
`/
`
`/
`
`CofC Denied: /
`
`- 7
`
`Date Assigned:
`'Date PALM updated: - /
`'
`I
`.
`Patent number ILfted on C of C listing in OG (drelc one) .‘:•Y / N
`\
`CofC Issued for this record is ftached to patent on Internet (cIrcla one) Y / N
`.requested., Check Intranet or with RTIS. (drcle one) Y / N
`New/different cox'Tection(s)
`orr etions request Imre, are exactly the same as in CofC on Intranet. (circle on9 V / N
`1-. Outstanding pending request, order file, dispatch to JCWS, to match paper and assign to an LIE, ASAP.
`than 2 weeks ago, inform applicant/attorney
`2. COIC,Was recently issued or denied. If CofC was issued
`to alloW approximate 2 weeks and if CofC is not received, to submit status inquiry. Inquiries regaarding
`CofCs that were recently issued/denied, after receipt of the inquiry, should be placed in the file.
`3. If CoCivitas issued_more than three two weeks ago; and the attorney has not been received, inform'
`attorney to file a written request. Status letters for CofOrissued more that than 3 weeks ago, or any
`----milli-est for duplicate certified CofC (a "Request for Duplicate Certified Copy of Published Certificate of
`Correction)), should be forwarded to JCWS with the file. JCWS, duplicate Certified copies should be
`direct to address in PALM, only. If request was denied forward file to LIE, to send applicant copy of
`'denial letter.
`— -
`4, The request is assigned to an LIE or LIE has sent-file to TC, give customer the. LIE's name and telephone
`number, and tranfer call to the LIE that the file is assigned: If the LIE does not answer phone and caller.
`
`insists that the call is urgent, direct call to the LIE's Team Leaders
`If erros were made in the keying of corrections for published/issued-CofC, inform attorney/applicant to
`rioted corrections to quoted text or corrections on a copy of incorrect Co(Cand send it to this Branch. Key
`new record. If request was processed without file locate CofC in "PUBLISB"\CofCs and forwdard
`fax/request to Team Leaderocreening requests for the Week. Team Leader change IVIRD if current date
`Was keyed in order to completiresord in Cole Database. -If re-quest was processed- within; give request
`to JCWS to order file and assign to Tony. Tony,place request/file On Expedite list and rack.
`6. Error ill in LIE's decision (correction(s) denied), inform applicant to submit Request for Reconsideration
`with statements and copies supp'orting requested corrections., Le. 1449 or 892, PTOL85B, ect. DO NOT
`REQUEST COPY OF ORIGINAL REQUEST. Keynew record. Forward to Team Leader whose Team
`is processing request for the week, to determine whether error was made by Examiner 'or LIE, in making
`-
`....
`deciAons. (Sec li d. fur errors in keying (supersedes).
`7. No record in CofC Database (Elision. or Current). Ask attorney 1446 send a copy of the request, PTOL-
`1050 fornis and-post card, to-yonr)ittention. When- request is received, key.,a record, imcdiately forward
`any outstanding request to Team Leader tp -.screening for type of disUibution. If "P", place on Expedite
`rack and list. If "R", Team LeadOhetild- order file and givefile/request to'./CW5)to assign to an LIE to
`Expedite (place in red mail tub for next issue being proceseesed for publishing approved corrections), ASAP.
`
`S.
`
`I
`
`TO: JCWS AJ
`
`
`
`T :-TEAM LEADER :.•;.i.i.: TO:. LIE 1)
`
`To OAC: •
`
`(Rerlsed 5/09/2003 clin) #3
`
`I •
`
`I '
`
`NFLE 1002 - Page 174
`NFLE 1002 - Page 1+4
`
`

`

`.
`
`,
`
`Pat No.
`I
`ream Leader:
`Date Rec'd:
`Miele
`SECOND REQUEST (DIFFERENT CORItECTEONS), SUPERSEDE OR RECONSIDERATION
`(UpE A RED PEN FOR COMPLETING INFO, ON THIS COVER SHEET)
`Team Leader, an Office Automation Clerk may assist you by supplying data from CofC Database
`(Current & History), PALM, and copies from. Intranet, to determine type of reque# (second request,
`supersede, and/or reconsideration) and to determine if there were any errors made hi decisions and/or
`publishing are attributnble. Team Leader, check appropriate boxes below. key record (if necessary) and
`forward to JCWS, to order file and assign file to an LIE, to EXPEDITE.
`Team Leader, DO NOT ORDER FILE.
`'
`
`•\
`
`•
`
`(Team Leader have LDRC, stamp same MRD on I050s.)
`
`MRD (for request attached to Ws cover sheet):
`/
`/
`Date Charged to Loc.:
`File Charged to (in PALM):
`Information re Most recent record in CofC database(theek Current & History)
`
`Examiner (IJE's initialS):
`/
`MRD:
`Turned In:
`Date Assigned:
`Updated: Y / N Date:
`/
`/
`CofC Denied:
`I /
`/
`CofC bsuedi
`•
`I
`Patent number listed on C of C listing in OG ((drele one) \Y / N
`CofC Issued for this record is attached to patent on Internet tel;cle ono) Y / N
`.1
`New/different correction(s) requested. Check Intranet or with RTIS. (circle one) Y / N
`0
`,
`Corrections request here, are exae4 the same as in CofC on Intranet (drib ono) Y / N
`i
`I
`El Second Request• requesting•new/different corrections or additional corrections. TEAM LEADER,
`DO NOT ORDERFELE. If necessary, call attorney/applicant for assistance in determining if
`. Place reqUest with
`/
`/
`new/different corerctions. Team Leader, key new a record no:
`CofCs keyed same week, to be screened to determine if -I)", "R", or "RTC" (add to total keyed).
`Mark through an corrections on 1050, that were appropriately published,
`1
`
`
`
`/
`
`/
`
`Reconsideration
`El Special Cole I] Erratum DExpedite CofC
`\ lil Supersede
`
`Tearn-Liailii, d et
`ermine if a Request for a Corrected Colt (Supersede) or Reconsideration, due
`to error in decisions or keying, attributable to (check the appropriate box, below):
`i
`
`o
`
`
`
`0 RTIS
`
`Keying Error
`
`AM!.
`..
`0 OFFICE
`LIE:
`1.323 Consideration
`Error in Entry of-Document
`LEE Processing or
`or Petition Required
`or Ex. Decision
`.
`. Decision Error— ..
`,
`I
`If errors are attributable to LIE, use guidelines for appropriately-nqifyinethe LIE and recording
`errors`(make copies•supporting that the LIE made error, attach copies4o this cover sheet, keeping
`' ; copies for your! records, and forward copies to CBN, at the end of each month).
`0 JW or IOU locate request'for CofC published on:
`/ ' and return to:
`/ \
`(Circle OAC IniEgb)
`El
` Team' Leader keyed record on on: i'
`Team Leader 's Note Your Initials (For MRD, use date faxed or issue date on CofC from RTIS:
`
`El JCWS, order file and assign or reassign, to an LIE/to,
`,
`•
`Comments/ Instructions:
`
`0 SEE REVERSE SIDE; FOR AODITIONALCOMMENTSENStRUCTIONS)
`
`(Revised 05/09/2003 6)1)44
`
`/1.
`
`
`I
`
`I.
`
`NFLE 1002 - Page 175
`NFLE 1002 - Page 175
`
`q
`

`

`TODAY'S PATE: S
`
`10 -2(1—
`
`PATENT NO.: 02 73 c
`
`"A RECORD ALREADY EXITS" IN DATABASE - From: Tasneem Siddiqui
`
`IF REOUEST SHOULD BE RETURNED TO JCWS
`q NOT' A REQUEST FOR CofC OR PETITION, THIS DOCUMENT:
`
`
`
`CJ
`C.)
`
`cY.
`
`• DISCRENCY IN PATENT NUMBERS ORDER CORRECT FILE1 RETURN TO SENDER.
`O PLACE WITH REVIEW OR TC REQUESTS RECEIVED SAME DATE, SINCE
`REQUEST HAS ALREADY KEYED
`
`IF PENDING RECORD (NO ISSUE OR DENIAL DATE) COMPLETE THIS SECTION
`SUBSTITIkTE OR SUPPLEMENTAL' REQUEST,' PENDING REQUEST NOT
`ASSIGNED; JCWS, LOCATE ORIGINAL REQUEST AND
`THIS REQUEST TO
`THE PENDING REQUEST, ASAP.
`
`/...5 0 / 2too
`CofC Ree'd date 4.
`2.2 /
`MRD
`q PALM REFLECTS THAT THE FILE IS IN OUR LOCATION. (CHECK COFC DATABASE AND
`PALM AND FORWARD THIS'REQUEST TO THE PERSON FILE IS ASSIGNED OR
`CHARGED TO :
`
`o CofC UPDATED IN PALM UPDATED, FORWARD TO A TEAM LEADER, TO
`RETREIVE FILE/REQUEST FROM RTIS
`
`O KEYED ON:
`
`PLACE WITH PAPER TO BE SCREENED
`
`IF NO PENDING RECORD (CofC ISSUED OR DENIED) COMPLETE THIS SECTION
`/
`• /
`[]PAT. NO. KEYED BY TEAM LEADER ON:
`0 KEY RECORD
`UPDATE/EDIT RECORD (KEY MRD, COFC REC'D & ISSUE DATE. INVENTOR, AND ADDRESS)
`O JCWS, ORDER FILE (IF FILE IS NOT ALREADY CHARGED TO OUR LOCATION).
`D ATTACH TO REQUESTS FOR CofC ISSUED/PUBLISHED:
`I
`•
`/
`SUPERSEDE OR ERRATTUM
`ASSIGN TO:
`ORIGINALLY ASSIGNED TO:
`q RETURN FILE TO LIE, REQUEST ISFOR GRANT OR PALM CORRECTIONS AND SHOULD
`BE FORWARDED TO: 0 KEVIN POOLE (GRANT CORRECITON )
`q LAMONTPLECTHER (PALM CO
`ONES).
`
`O COMMENTS (and note Issue or Denial date(s) here):
`,
`
`•:•
`
`.,
`.
`THER THIS IS A SUBSTITUE-REQUEST,REQUEST FOR CORRECTION
`DETERMINE
`OF ISSUED/PUB ISHED CofC (APPLICANTS' OR OFFICE ERRORS), A REQUEST FOR
`RECONSIDERA ON, REQUEST FOR GRANT OR PALM CORRECTIONS, SECOND
`:
`•
`.
`REQUEST, OR DUPLICATE REQUEST:
`14
`-
`CHECK CofC(s) ATTACHED TO PATENT ON INTRANET TO VIEW 'CORRECTIONS THAT
`HAVE BEEN PUBLISHED, BEFORE MAKING YOUR DECISION. NOTE "NO" IN LEFT
`HAND MARGIN b 1050, BESIDE ANY CORRECTION THAT SHOULD NOT BE
`PUBLISHEDOR THAT ARE DUPLICATED ON 1050 FORMS.
`DO NOT REMOVE THIS NOTICE
`
`'
`
`NFLE 1002 - Page 176
`NFLE 1002 - Page 1'76
`
`