UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`NFL ENTERPRISES LLC,
`
`Petitioner
`
`v.
`
`OPENTV, INC.,
`Patent Owner.
`____________________
`
`Case No. ________
`
`U.S. Patent No. 7,055,169
`____________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,055,169
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,055,169
`
`IV.
`V.
`VI.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`I.
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(b) .............................. 1
`A.
`Real Party-In-Interest ............................................................................ 1
`B.
`Related Matters ...................................................................................... 1
`C.
`Lead and Back-up Counsel ................................................................... 2
`D.
`Service Information ............................................................................... 2
`III. REQUIREMENTS FOR INTER PARTES REVIEW .................................... 3
`A.
`Fees ........................................................................................................ 3
`B.
`Standing ................................................................................................. 3
`SUMMARY OF CHALLENGES ................................................................... 3
`CONVENTIONS ............................................................................................. 4
`THE CHALLENGED PATENT ..................................................................... 4
`A.
`The State of the Art at the Time of the Filing of the ’169 Patent ......... 4
`B.
`Overview of the ’169 Patent .................................................................. 6
`C.
`Level of Ordinary Skill in the Art .......................................................11
`D.
`Summary of the Prosecution History of the ’169 Patent ....................11
`VII. CLAIM CONSTRUCTION ..........................................................................12
`A.
`“Directive” (Claims 1-2 and 22-23) ....................................................13
`B.
`“Prerequisite directive . . . ” (Claims 1-2 and 22-23) ..........................14
`C.
`“Subset of Said Set of Resources” (Claims 1 and 22-23) ...................15
`D.
`The Preamble of Claim 22 is Limiting (Claim 22) .............................18
`E.
`“interactive television system” (Claim 22) .........................................18
`VIII. THE CHALLENGED CLAIMS OF THE ’169 PATENT ARE
`UNPATENTABLE ........................................................................................20
`A.
`Obviousness Grounds Based on Beri Alone or in Combination
`with Harrington ...................................................................................20
`1.
`Summary of the Prior Art: Beri ................................................20
`2.
`Summary of the Prior Art: Harrington ......................................23
`
`i
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`

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`Petition for Inter Partes Review of U.S. Patent No. 7,055,169
`
`3.
`4.
`
`Beri renders obvious Claim 1 ...................................................26
`Beri renders obvious Claim 2: The method of claim 1,
`wherein said prerequisite directive comprises one or
`more directives selected from the group consisting of: a
`markup language, a scripting language, and a style sheet. .......34
`Beri and Harrington together render obvious Claim 22 ...........34
`5.
`Beri renders obvious Claim 23 .................................................37
`6.
`Obviousness Grounds Based on Armstrong Alone or in
`Combination with Harrington. ............................................................38
`1.
`Summary of the Prior Art: Armstrong ......................................38
`2.
`Armstrong renders obvious Claim 1 .........................................41
`3.
`Armstrong renders obvious Claim 2: The method of
`claim 1, wherein said prerequisite directive comprises
`one or more directives selected from the group consisting
`of: a markup language, a scripting language, and a style
`sheet...........................................................................................46
`Armstrong and Harrington together render obvious
`Claim 22 ....................................................................................46
`Armstrong renders obvious Claim 23 .......................................49
`5.
`THE TWO GROUNDS PER CHALLENGED CLAIM ARE NOT
`REDUNDANT ..............................................................................................50
`CONCLUSION ..............................................................................................50
`
`B.
`
`4.
`
`IX.
`
`X.
`
`ii
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`Petition for Inter Partes Review of U.S. Patent No. 7,055,169
`
`LIST OF EXHIBITS
`
`Exhibit No. Description
`1001
`U.S. Patent No. 7,055,169
`1002
`Prosecution File History of U.S. Patent No. 7,055,169
`1003
`U.S. Provisional Application No. 60/373,883
`1004
`Declaration of Dr. Stephen Melvin
`1005
`Curriculum Vitae of Dr. Stephen Melvin
`1006
`U.S. Patent No. 6,141,018 (“Beri”)
`1007
`U.S. Patent No. 7,120,871 (“Harrington”)
`1008
`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]
`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
`Random House Webster’s College Dictionary 1305 (2000)
`Library of Congress catalog entry for Armstrong
`
`1009
`
`1010
`1011
`1012
`
`1013
`1014
`
`iii
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,055,169
`
`I.
`
`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.100, et seq., NFL Enterprises LLC (“Petitioner”)
`
`hereby petitions the United States Patent and Trademark Office (the “Office”) to
`
`institute an inter partes review of Claims 1-2 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 is directed to methods and systems
`
`for administrating interactive television services, but the Challenged Claims are not
`
`so limited, and rendered obvious by the prior art. See NFLE1001 at Claims 1, 2, 22,
`
`and 23. 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 at least reasonably likely to prevail,
`
`and that this Petition should be granted on all grounds.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(b)
`A.
`Real Party-In-Interest
`The real parties in interest under 35 U.S.C. § 312(a)(3) and 37 C.F.R.
`
`§ 42.8(b)(1) are Petitioner NFL Enterprises LLC and its parent company, NFL
`
`Ventures, L.P.
`
`Related Matters
`B.
`The Patent Owner is asserting the ’169 Patent against Petitioner in
`
`Nagravision SA and OpenTV, Inc. v. NFL Enterprises LLC, No. 2:17-cv-3919-AB-
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,055,169
`
`SK (C.D. Cal.), filed on May 24, 2017. The Patent Owner previously asserted the
`
`’169 Patent in OpenTV, Inc. v. NFL Enterprises LLC, No. 2:17-cv-00031-JRG-RSP
`
`(E.D. Tex.). The Patent Owner voluntarily dismissed that action without prejudice
`
`on May 24, 2017.
`
`Lead and Back-up Counsel
`C.
`Pursuant to 37 C.F.R. § 42.8(b)(3) and 37 C.F.R. § 42.10(a), Petitioner
`
`appoints Stephen C. Stout as lead counsel and Hilary L. Preston, Rachel P.
`
`McClure, and Jeffrey T. Han as back-up counsel:
`
`Stephen C. Stout
`Lead Counsel
`(Reg. No. 61,326)
`Jeffrey T. Han, Back-up Counsel
`(Reg. No. 57,604)
`
`Hilary L. Preston, Back-up Counsel
`(Pro hac vice motion to be filed)
`Rachael P. McClure, Back-up
`Counsel (Pro hac vice motion to be
`filed)
`
`VINSON & ELKINS L.L.P.
`2801 Via Fortuna, Suite 100
`Austin, TX 78746-7568
`Telephone: (512) 542-8400
`Facsimile: (512) 542-8612
`sstout@velaw.com
`jhan@velaw.com
`
`VINSON & ELKINS L.L.P.
`666 Fifth Avenue, 26th Floor
`New York, NY 10103-0040
`Telephone: (212) 237-0129
`Facsimile: (917) 849-5342
`hpreston@velaw.com
`rmcclure@velaw.com
`
`Service Information
`D.
`The following email should be used for service and all communications:
`
`NFLE-IPR@velaw.com
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,055,169
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW
`This Petition complies with all statutory requirements under the AIA and
`
`37 C.F.R. §§ 42.104, 42.105, and 42.15, and should be accorded a filing date as the
`
`date of filing of this Petition pursuant to 37 C.F.R. § 42.106.
`
`Fees
`A.
`The required filing fees are to be withdrawn from Deposit Account No. 22-
`
`0365. The Office is authorized to charge fee deficiencies or credit overpayments to
`
`deposit Account No. 22-0365.
`
`Standing
`B.
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that (i) the ’169 Patent
`
`is available for IPR and (ii) Petitioner is not barred or estopped from requesting IPR
`
`of any claim of the ’169 Patent. Specifically, Petitioner has the standing, or meets
`
`all requirements, to file this Petition under 35 U.S.C. §§ 315(a)(1), 315(b), 315(e)(1)
`
`and 325(e)(1); and under 37 C.F.R. §§42.101 and 42.102.
`
`IV.
`
`SUMMARY OF CHALLENGES
`Petitioner respectfully requests that Claims 1-2 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.
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`Petition for Inter Partes Review of U.S. Patent No. 7,055,169
`
`Statutory Basis
`35 U.S.C. § 103
`35 U.S.C. § 103
`35 U.S.C. § 103
`35 U.S.C. § 103
`
`Reference(s)
`Beri
`Beri + Harrington
`Armstrong
`Armstrong + Harrington
`
`Claims
`1-2, 23
`22
`1-2, 23
`22
`
`V.
`
`CONVENTIONS
`This Petition uses bold text for emphasis and italics to identify claim language.
`
`VI. 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,
`
`2002, and Patent Owner has alleged a conception date of June 30, 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 NFLE 1001 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. NFLE 1004 ¶ 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.
`
`NFLE 1004 ¶ 28.
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`Petition for Inter Partes Review of U.S. Patent No. 7,055,169
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`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. NFLE 1004 ¶ 29; NFLE 1006 at 1:11-
`
`48. The content received is generally comprised 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. NFLE 1004 ¶ 29;
`
`NFLE 1006 at 1:11-48.
`
`Rendering a web page refers to the process of utilizing resources downloaded
`
`from the Internet, such as text and images; processing HTML code to place and
`
`format the resources; and display the resulting web page to the user. NFLE 1004
`
`¶ 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.
`
`NFLE 1004 ¶ 30. The rendering software in the web browser would place the picture
`
`at the correct location and show it to the user. NFLE 1004 ¶ 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
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`Petition for Inter Partes Review of U.S. Patent No. 7,055,169
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`web page after all resources necessary to display the web page are downloaded.
`
`NFLE 1004 ¶ 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. NFLE 1004 ¶ 31.
`
`Overview of the ’169 Patent
`B.
`The ’169 Patent is entitled “Supporting Common Interactive Television
`
`Functionality Through Presentation Engine Syntax.” NFLE 1001 at Cover. It was
`
`filed on April 21, 2003, claims priority to a provisional application filed on April 19,
`
`2002, and issued on May 30, 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, 2, 22, and 23. While the title and portions
`
`of the specification suggest that the Patent is directed to “Interactive Television
`
`Functionality,” the lack of any limitation relating to interactive television in certain
`
`claims, such as claims 1 and 23, show that the ’169 Patent’s scope is not so limited.
`
`See id. at Claims 1 and 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., NFLE 1001 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
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`Petition for Inter Partes Review of U.S. Patent No. 7,055,169
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`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., NFLE 1001 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 of directives in
`
`an HTML Document:
`
`NFLE 1001 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.; NFLE 1004 ¶ 36.
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`Petition for Inter Partes Review of U.S. Patent No. 7,055,169
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`Claim 1 specifies that if a particular resource is designated as a prerequisite
`
`by one of the received directives, then presentation of the audio, video, or graphics
`
`will be prohibited until the prerequisite resource is acquired. NFLE 1001 at Claim 1.
`
`And if there are no resources designated as prerequisite, then the presentation 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”>
`
`NFLE 1001 at 21:18-20. 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.” NFLE 1004 ¶ 36. The prerequisite resource
`
`is
`
`the
`
`background.mpg file available for download at the location pointed to by the URL.
`
`Id. “META” is an 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 prohibit the presentation until the background.mpg file is acquired.
`
`NFLE 1001 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
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,055,169
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`discloses three different options for rendering web pages. NFLE 1001 at 21:8-52;
`
`NFLE 1004 ¶ 36. The first option is the “progressive rendering policy,” wherein the
`
`web page is rendered as soon as possible. NFLE 1001 at 21:32-36; NFLE 1004 ¶ 36.
`
`Only those resources labeled as prerequisites, if any, cause the display of the web
`
`page to be prohibited until the prerequisites are acquired. NFLE 1001 at 21:32-36;
`
`NFLE 1004 ¶ 36. The second option is the “layoutComplete rendering policy,”
`
`wherein display of the web page is prohibited until information that determines the
`
`complete on-screen layout is acquired, in addition to other resources that are labeled
`
`as prerequisites, if any. NFLE 1001 at 21:37-44; NFLE 1004 ¶ 36. The third option
`
`is the “loadComplete rendering policy,” wherein the display of the web page is
`
`prohibited until all resources are acquired, which means that all resources are
`
`prerequisites. NFLE 1001 at 21:45-52; NFLE 1004 ¶ 36.
`
`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
`
`give a presentation to class. The
`
`of an audio, video and/or graphic
`
`assignment includes instructions
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`Petition for Inter Partes Review of U.S. Patent No. 7,055,169
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`presentation which requires a set of
`
`indicating whether a 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 a toy as a visual aid (a
`
`acquisition of a subset of said set of
`
`“resource”) before initiating the
`
`resources is a prerequisite for initiating
`
`presentation.
`
`the presentation;
`
`[C] initiating said presentation, in
`
`If the student determines that the
`
`response to determining the one or
`
`assignment contains no instruction
`
`more directives do not include said
`
`requiring a visual aid, the student gives
`
`prerequisite directive; and
`
`an oral presentation to the class.
`
`[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 is
`
`include said prerequisite directive.
`
`prohibited from beginning the
`
`presentation until the parent brings the
`
`toy to class.
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,055,169
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`Level of Ordinary Skill in the Art
`C.
`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. NFLE 1004 ¶ 21.
`
`Dr. Melvin qualified as a person of ordinary skill in the art by at least June
`
`2001. NFLE 1004 ¶¶ 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. NFLE
`
`1004 ¶ 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
`
`Application”). The ’621 Application was filed on April 21, 2003, claiming priority
`
`to Provisional Application No. 60/373,883. NFLE 1002 at 2. On October 15, 2004,
`
`the Examiner issued a non-final office action rejecting all pending claims. NFLE
`
`1002 at 278-294. 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.
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,055,169
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`Patent Pub. Nos. 2002/0194219 A1 (“Bradley”) and 2002/0088011 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 303-
`
`306.
`
`On June 29, 2005, the Examiner withdrew the rejections based on Ben and
`
`issued a Notice of Allowability for all of the pending claims, reasoning that Ben
`
`failed to teach certain steps of the claims. Id. at 317-318. On July 14, 2005, a
`
`Supplemental Notice of Allowability along with an Examiner’s Amendment issued,
`
`amending Claim 23 to be in compliance with 35 U.S.C. §101. Id. at 324. On
`
`November 28, 2005, another Supplemental Notice of Allowability issued,
`
`mimicking the Reasons for Allowance from June 29, 2005 (Id. at 332), and the ’169
`
`Patent issued on May 30, 2006.
`
`VII. 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
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`Petition for Inter Partes Review of U.S. Patent No. 7,055,169
`
`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
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142-46 (2016), Petitioner
`
`reserves the right to argue different constructions before the district court. Petitioner
`
`also 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 have not yet begun the claim construction
`
`process.
`
`For terms not specifically construed below, Petitioner interprets them in
`
`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 NFLE 1004 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.” NFLE 1010 at 3. The
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,055,169
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`New Shorter Oxford English Dictionary defines “directive” as: “Something which
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`directs; spec. a general instruction for procedure or action given to a subordinate.”
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`NFLE 1011 at 3.
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`Petitioner’s proposed construction is also supported by the specification. The
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`’169 Patent explains: “[T]he declarations or other statements used in the creation
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`and/or manipulation of resources and content in this document may be generally
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`referred to as ‘directives.’” NFLE 1001 at 47:7-10. The specification further
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`explains: “In one embodiment, a device in an interactive television system is
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`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 NFLE 1004 at ¶¶ 37-41.
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`“Prerequisite directive . . . ” (Claims 1-2 and 22-23)
`B.
`For the purposes of this inter partes review, Petitioner proposes that the
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`broadest reasonable construction of the term “prerequisite directive which indicates
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`that acciuisition [sic] of a subset of said set of resources is a prerequisite for initiating
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`the presentation” is “declaration or instruction that indicates a subset of the resources
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`required for initiating the presentation.”
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`Petition for Inter Partes Review of U.S. Patent No. 7,055,169
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`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 creator,
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`have been downloaded. In one embodiment, a content creator may label
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`the essential subset of resources by identifying them using a directive
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`such as a "prerequisite" meta-data header.
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`NFLE 1001 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. Id. at
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`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 before
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`initiating a presentation. For example, a teacher may instruct her students that their
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`presentation may not begin unless they include pictures; a candidate for office may
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`declare that he cannot begin his speech until he receives a script; and a judge may
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`issue an order requiring demonstratives before a hearing may begin.
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`“Subset of Said Set of Resources” (Claims 1 and 22-23)
`C.
`The broadest reasonable construction of “subset of said set of resources” is “a
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`set that is some or all of said set of resources.” See NFLE 1004 ¶¶ 42-45. The word
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`“Subset” is defined as: “2. Math. a set consisting of elements of a given set that can
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`Petition for Inter Partes Review of U.S. Patent No. 7,055,169
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`be same as the given set or smaller.” NFLE 1013 at 3-4. Indeed, the specification
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`suggests that any number of resources may be labeled as prerequisites, and also
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`contemplates an embodiment in which all of the resources are labeled “prerequisite
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`resources,” in which case the subset of prerequisite resources would be the same as
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`the set of all resources:
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`The loadComplete rendering policy indicates that the graphics may not
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`be displayed until all resources that will be used for rendering the
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`display have been downloaded. The only difference between the
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`loadComplete rendering policy and labeling all resources as
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`prerequisites, is that in the first case the OnLoad event will have been
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`delivered to the appropriate handler, if any, prior to rendering, and
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`hence may affect the rendered view.
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`NFLE 1001 at 21:45-52 (emphasis added); NFLE 1004 ¶ 43. The discussion above
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`contemplates “labeling all resources as prerequisites,” and indicates that doing so
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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 rendering
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`policy, with a difference in when events are triggered. Id. A POSITA would
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`Petition for Inter Partes Review of U.S. Patent No. 7,055,169
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`understand that both alternatives are viable options for a content author who wants
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`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 a preferred 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., NFLE 1001 at Abstract, 2:33-47, 21:9-20, 21:21-52, 21:53-
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`22:11, 47:23-37, 47:45-48:3, 48:54-56, 48:58-67; NFLE 1004 ¶ 44. In fact, where
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`the Patent contemplates a subset that does not include all members of the parent set,
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`that situation is referred to as a “strict subset” of the “maximum set,” which a
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`POSITA would have understood to be the proper way in the art to refer to a system
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`wherein the subset cannot constitute the full set. Id. at 45:29-55; NFLE 1004 ¶ 44.
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`Finally, nothing in the specification teaches away from a scenario wherein all
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`resources are designated as prerequisite. See generally NFLE 1001; NFLE 1004
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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 have
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`seen any logic behind limiting a subset to not being able to include all resources
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`Petition for Inter Partes Review of U.S. Patent No. 7,055,169
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`because code is intended to be flexible and adaptable to a variety of situations. NFLE
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`1004 ¶ 45. Thus, this arbitrary interpretation was not contemplated by the drafters of
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`the ’169 Patent and a POSITA would not adopt that interpretation.
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`The Preamble of Claim 22 is Limiting (Claim 22)
`D.
`Petitioner contends that the preamble of Claim 22 is limiting. If the preamble
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`of Claim 22 is limiting, then Petitioner must demonstrate that the prior art discloses
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`the limitations in the preamble. Petitioner will treat the preamble of Claim 22 as
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`limiting for purposes of this Petition.
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`“interactive television system” (Claim 22)
`E.
`The specification of the ’169 Patent supports the following broadest
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`reasonable construction of “interactive television system”: “system for providing
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`interactive content as well as audio, video, and/or graphic presentations.” See NFLE
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`1004 at ¶¶ 46-48. Patent Owner, in prior district court litigation, has agreed to that
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`construction under the ordinary and customary meaning standard. NFLE 1012 at 2.
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`The ’169 Patent describes an “interactive television system” as “a means to
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`deliver interactive content as well as ordinary television audio and video to a large
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`number of subscribers.” NFLE 1001 at 1:15-17. The Patent describes the operation
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`of “interactive television systems”:
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`Programs broadcast by these systems may incorporate television audio
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`and video, still images, text, interactive graphics and applications, and
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`Petition for Inter Partes Review of U.S. Patent No. 7,055,169
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`many other components. They may also provide a number of services,
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`such as commerce via the television, electronic program guides (EPGs),
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`video-on-demand, and other interactive applications to viewers. The
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`interactive content of the interactive television signal may therefore