UNITED STATES PATENT AND TRADEMARK OFFICE
`CERTIFICATE OF CORRECTION
`
`: 6,233,730,81
`PATENT NO.
`: May 15,401
`DATED ,
`INVENTOR(S) : Thomas R. Wolzien
`
`Page1 of 1
`
`It is certified that error appears In the above-Identified patent and that said Letters Patent-is
`•
`hereby corrected as shown below:
`•
`
`' Column 10;
`Line 22; delete the word-"as" and insert' has, therefore.
`
`Second Day of Dpcpmber, 2003
`
`JANTS E. Roo1N
`Directite of die Unitid States Patent and Iledemaht Office
`•
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`NFLE Ex. 10021- Page L44
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`NFLE 1002 - Page 145
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`Trials@uspto.gov
`Trials@uspto.gov
`571-272-7822
`571-272-7822
`
`
`
` Paper No. 3
`Paper No. 3
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
` NETFLIX, INC.
`NETFLIX, INC.
`Petitioner
`Petitioner
`v.
`v.
`OPENTV, INC.
`OPENTV, INC.
`Patent Owner
`Patent Owner
`_______________
`
`Case IPR2014-00269
`Case IPR2014-00269
`U.S. Patent 6,233,736
`U.S. Patent 6,233,736
`_______________
`
`Mailed: December 27, 2013
`Mailed: December 27, 2013
`
`Before Lawrence J. Banks, Trial Paralegal.
`Before Lawrence J. Banks, Trial Paralegal.
`
`NOTICE OF FILING DATE ACCORDED TO PETITION
`NOTICE OF FILING DATE ACCORDED TO PETITION
`AND
`AND
`TIME FOR FILING PATENT OWNER PRELIMINARY RESPONSE
`TIME FOR FILING PATENT OWNER PRELIMINARY RESPONSE
`
`The petition for inter parties review in the above proceeding has been
`The petition for inter parties review in the above proceeding has been
`accorded the filing date of December 18, 2013.
`accorded the filing date of December 18, 2013.
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`Case IPR2014-00269
`Case IPR2014-00269
`Patent 6,233,736
`Patent 6,233,736
`
`Administrative Patent Judge Sally C. Medley has been designated to
`Administrative Patent Judge Sally C. Medley has been designated to
`manage the proceeding. 37 C.F.R. § 42.5.
`manage the proceeding. 37 C.F.R. § 42.5.
`Patent Owner may file a preliminary response to the petition no later
`Patent Owner may file a preliminary response to the petition no later
`than three months from the date of this notice. The preliminary response is
`than three months from the date of this notice. The preliminary response is
`limited to setting forth the reasons why the requested review should not be
`limited to setting forth the reasons why the requested review should not be
`instituted. Patent Owner may also file an election to waive the preliminary
`instituted. Patent Owner may also file an election to waive the preliminary
`response to expedite the proceeding. For more information, please consult
`response to expedite the proceeding. For more information, please consult
`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012),
`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012),
`which is available on the Board Web site at http://www.uspto.gov/PTAB.
`which is available on the Board Web site at http://www.uspto.gov/PTAB.
`Patent Owner is advised of the requirement to submit mandatory
`Patent Owner is advised of the requirement to submit mandatory
`notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of
`notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of
`the petition.
`the petition.
`The parties are encouraged to use the heading on the first page of this
`The parties are encouraged to use the heading on the first page of this
`Notice for all future filings in the proceeding.
`Notice for all future filings in the proceeding.
`The parties are advised that under 37 C.F.R. § 42.10(c), recognition of
`The parties are advised that under 37 C.F.R. § 42.10(c), recognition of
`counsel pro hac vice requires a showing of good cause. The parties are
`counsel pro hac vice requires a showing of good cause. The parties are
`authorized to file motions for pro hac vice admission under 37 C.F.R.
`authorized to file motions for pro hac vice admission under 37 C.F.R.
`§ 42.10(c). Such motions shall be filed in accordance with the “Order --
`§ 42.10(c). Such motions shall be filed in accordance with the "Order --
`Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639,
`Authorizing Motion for Pro Hac Vice Admission" in Case IPR2013-00639,
`Paper 7, a copy of which is available on the Board Web site under
`Paper 7, a copy of which is available on the Board Web site under
`“Representative Orders, Decisions, and Notices.”
`"Representative Orders, Decisions, and Notices."
`The parties are reminded that unless otherwise permitted by 37 C.F.R.
`The parties are reminded that unless otherwise permitted by 37 C.F.R.
`§ 42.6(b)(2), all filings in this proceeding must be made electronically in the
`§ 42.6(b)(2), all filings in this proceeding must be made electronically in the
`Patent Review Processing System (PRPS), accessible from the Board Web
`Patent Review Processing System (PRPS), accessible from the Board Web
`site at http://www.uspto.gov/PTAB. To file documents, users must first
`site at http://www.uspto.gov/PTAB. To file documents, users must first
`obtain a user ID and password by registering with PRPS. Information
`obtain a user ID and password by registering with PRPS. Information
`
`2
`2
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`Case IPR2014-00269
`Case IPR2014-00269
`Patent 6,233,736
`Patent 6,233,736
`
`regarding how to register with and use PRPS is available at the Board Web
`regarding how to register with and use PRPS is available at the Board Web
`site.
`site.
`
`If there are any questions pertaining to this notice, please contact
`If there are any questions pertaining to this notice, please contact
`Lawrence J. Banks at 571-272-3450 or the Patent Trial and Appeal Board at
`Lawrence J. Banks at 571-272-3450 or the Patent Trial and Appeal Board at
`571-272-7822.
`571-272-7822.
`
`PETITIONER:
`PETITIONER:
`
`Andrew S. Ehmke
`Andrew S. Ehmke
`Dustin Johnson
`Dustin Johnson
`HAYNES AND BOONE, LLP
`HAYNES AND BOONE, LLP
`andy.ehmke.ipr@haynesboone.com
`andy.ehmke.ipr@haynesboone.com
`dustin.justin.ipr@haynesboone.com
`dustin.justin.ipr@haynesboone.com
`
`PATENT OWNER:
`PATENT OWNER:
`SCHWEGMAN, LUNDBERG & WOESSNER/OPEN TV
`SCHWEGMAN, LUNDBERG & WOESSNER/OPEN TV
`P.O. Box 2938
`P.O. Box 2938
`Minneapolis, MN 55402-0938
`Minneapolis, MN 55402-0938
`
`3
`3
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`Trials(eLluspto.gov
`Tel: 571-272-7822
`
`Paper 13
`Entered: June 24, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETFLLX, INC.,
`Petitioner,
`
`v.
`
`OPENTV, INC.,
`Patent Owner.
`
`IPR2014-00269
`Patent 6,233,736
`
`Before SALLY C. MEDLEY, JAMES T. MOORE, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`BUSCH, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Panes Review
`37 C.F.R. 42.108
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`IPR2014-00269
`Patent 6,233,736
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`I.
`
`INTRODUCTION
`
`Background
`A.
`Netflix, Inc. ("Petitioner") filed a Petition requesting an inter partes
`
`review of claims 1-12 of U.S. Patent No. 6,233,736 (Ex. 1001, "the '736
`
`patent") on December 18, 2013. Paper 1 ("Pet."). OpenTV, Inc. ("Patent
`
`Owner") filed a Patent Owner Preliminary Response on March 27, 2014.
`
`Paper 11 ("Prelim. Resp."). We have jurisdiction under 35 U.S.C. §§ 6(b)
`
`and 314.
`
`The standard for instituting an inter partes review is set forth in
`
`35 U.S.C. § 314(a), which states:
`
`THRESHOLD -- The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and
`any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Inter partes review is instituted only if the petition supporting the
`
`ground demonstrates "that there is a reasonable likelihood that at least one of
`
`the claims challenged in the petition is unpatentable."
`
`37 C.F.R. § 42.108(c).
`
`Upon consideration of the Petition and the Patent Owner Preliminary
`
`Response, we conclude Petitioner has established a reasonable likelihood
`
`that it would prevail with respect to claims 1-12 of the '736 patent and,
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`accordingly, we institute an inter partes review of claims 1-12.
`
`2
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`Related Proceedings
`B.
`Petitioner indicates that the '736 patent was asserted against
`
`Petitioner in OpenTV, Inc. v. Netflix, Inc., No. 1:12-cv-01733 (D. Del.).
`
`Pet. 1. Petitioner also indicates that "a proceeding relating to European
`
`Patent EP 0 879 534, which claims priority to the parent of the '736 patent,
`
`arising out of request number KG RK 13-1834 is pending in The Hague
`
`District Court, The Netherlands." Id. The same parties and related patents
`
`are involved in the following petitions for inter partes review before this
`
`Board: Netflix, Inc. v. OpenTV, Inc., Case IPR2014-00252 (Dec. 16, 2013);
`
`Netflix, Inc. v. OpenTV, Inc., Case IPR2014-00267 (PTAB Dec. 17, 2013);
`
`and Netflix, Inc. v. OpenTV, Inc., Case IPR2014-00274 (PTAB Dec. 19,
`
`2013).
`
`The '736 Patent (Ex. 1001)
`C.
`The specification of the '736 patent describes a method and system
`
`"for providing direct automated access to an online information services
`
`provider" by extracting an address that is embedded in a signal containing an
`
`audio or video program. Ex. 1001, Abstract. The '736 patent explains that
`
`the address used to access online information is encoded either in the
`
`vertical blanking interval (VBI) of a video signal or some other portion of a
`
`signal that is not displayed so that the encoded address does not interfere
`
`with the program. Id. The system and method disclosed by the '736 patent
`
`can detect and decode an encoded address and alert the user that additional
`
`information is available. Id. In response to the indication that additional
`
`3
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`information is available, the user may opt to access the online information
`
`provider "by giving a simple command, e.g., pushing a special button on a
`
`remote control." Id. "The system then automatically establishes a direct
`
`digital communication link to the online information provider through the
`
`address." Id. One described embodiment provides a system that generates a
`
`secondary advertisement that is not derived from the primary advertisement
`
`when a user elects to skip or fast forward through the primary advertisement.
`
`Ex. 1001, 2:53-61.
`
`Of the challenged claims, claims 1 and 6-9 are independent claims.
`
`Claims 1 and 6-8 are directed to methods, and claim 9 is directed to a system
`
`with means-plus-function limitations that provide similar function as the
`
`method steps of claim 1. Illustrative claim 1 is reproduced as follows:
`
`A method of providing to a user of online information
`1.
`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
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`IPR2014-00269
`Patent 6,233,736
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`Asserted Grounds of Unpatentability
`D.
`Petitioner asserts the. following grounds of unpatentability under 35
`
`U.S.C. § 103:
`
`Reference[s]
`Throckmorton I
`Throckmorton and Williams'
`Throckmorton and Kerman3
`
`11.
`
`ANALYSIS
`
`Basis
`§ 103
`§ 103
`§ 103
`
`Challenged Claims
`1-3 and 6-12
`4
`5
`
`Claim Construction
`A.
`In an inter panes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest
`
`reasonable construction standard, claim terms are given their ordinary and
`
`customary meaning, as would be understood by one of ordinary skill in the
`
`art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`
`F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term
`
`must be set forth with reasonable clarity, deliberateness, and precision. In re
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`Throckmorton et al. ("Throckmorton"), U.S. Patent No. 5,818,441, Oct. 6,
`1998 (Ex. 1004).
`2 Williams et al. ("Williams"), U.S. Patent No. 5,701,161, Dec. 23, 1997
`(Ex. 1005).
`3 Kerman, U.S. Patent No. 5,659,366, Aug. 19, 1997 (Ex. 1006).
`5
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`Independent claim 1 recites "automatically establishing, in response to
`
`a user initiated command, a direct communication link with the online
`
`information source." Independent claims 1 and 6-9 each recite "so that the
`
`user has direct access to the online information." Claim 9 recites "means for
`
`indicating to the user that an address is available for extraction from said
`
`electronic signal," and "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."
`
`Dependent claim 10 recites "means for receiving an information signal from
`
`said online information source," and "means for displaying an image signal
`
`detected from said received information signal."
`
`Petitioner argues that the inventor of the '736 patent did not provide
`
`any special meaning for the claim terms and, thus, the terms should be given
`
`their ordinary and customary meanings, as understood by an ordinarily
`
`skilled artisan. Pet. 6-7. Petitioner proposes a construction for each of those
`
`terms based on the customary and ordinary meaning. Id. at 7-8. Patent
`
`Owner does not propose a construction for any term but argues that
`
`Petitioner's proposed constructions lack material facts necessary to construe
`
`the claims. Prelim. Resp. 4-9. In particular, Patent Owner argues the
`
`Petition does not point to anything in the specification of the '736 patent
`
`supporting the proposed constructions. Id. Patent Owner further asserts that
`
`any argument in Mr. Kramer's declaration should not be considered because
`
`6
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