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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEALS BOARD
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`NFL ENTERPRISES LLC,
`Petitioner
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`v.
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`OPENTV, INC.
`Patent Owner
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`
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`Case No.: IPR2018-00463
`Patent No. 7,055,169
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`PATENT OWNER’S PRELIMINARY
`RESPONSE
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`Case No.: IPR2018-00463
`Patent Owner’s Preliminary Response
`TABLE OF CONTENTS
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`Introduction ...................................................................................................... 1
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`I.
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`The Board Should Deny the Proposed Grounds for Claim 22 Because the
`II.
`Petition Never Addresses How a POSITA Could or Would Have Combined the
`Grounds’ Incompatible Systems. ............................................................................... 1
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`The NFL’s petition and copy/paste expert declaration recognize that
`A.
`Beri and Armstrong are tied to Microsoft, while Harrington is tied to
`Netscape. .......................................................................................................... 2
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`Given the incompatibility and competition between Microsoft Internet
`B.
`Explorer and Netscape Navigator, it is unclear how any combination of Beri,
`Armstrong, and/or Harrington could have worked. ........................................ 4
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`The NFL’s petition and copy/paste expert declaration fail to
`C.
`appreciate the incompatibility and competition, much less explain how any
`combination of Beri, Armstrong, and/or Harrington could have worked
`despite such incompatibility. ........................................................................... 5
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`III. Conclusion ....................................................................................................... 6
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`
`
`i
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`Case No.: IPR2018-00463
`Patent Owner’s Preliminary Response
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`I.
`
`Introduction
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`The petition fails to establish a reasonable likelihood that the NFL will
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`prevail on its challenges to claim 22, whether based on Beri in combination with
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`Harrington under 35 U.S.C. § 103, or based on Armstrong in combination with
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`Harrington under 35 U.S.C. § 103. For both of these challenges, the petition
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`disregards the technical incompatibility of the proprietary software disclosed in
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`Beri, Armstrong, and Harrington. The petition never addresses how a POSITA
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`could or would have combined Beri and Armstrong’s Internet Explorer features
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`with Harrington’s Netscape Navigator features, despite the fact that Netscape
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`Navigator and Internet Explorer were fierce competitors with notoriously
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`proprietary technologies at the time of the invention. Indeed, the petition does not
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`even assert that a POSITA would have been capable of overcoming the technical
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`incompatibility of the proprietary technologies to somehow combine them. Given
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`these failures, the Board should deny institution of both challenges to claim 22
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`because there is not a reasonable likelihood that the NFL will prevail on either of
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`them. See 35 U.S.C. § 314(a).
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`II. The Board Should Deny the Proposed Grounds for Claim 22 Because
`the Petition Never Addresses How a POSITA Could or Would Have
`Combined the Grounds’ Incompatible Systems.
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`Without a clear explanation or evidence showing how a combination of two
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`references would have worked, the Board cannot find a claim obvious based on the
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` 1
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`Case No.: IPR2018-00463
`Patent Owner’s Preliminary Response
`combination. Pers. Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993-94 (Fed.
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`Cir. 2017) (reversing obviousness determination because the Board “nowhere
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`clearly explained, or cited evidence showing, how the combination of the two
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`references was supposed to work” (emphasis in original)). Here, the petition’s
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`superficial discussions of its proposed grounds for claim 22 do not show how the
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`grounds’ combinations would have worked because they completely disregard the
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`technical incompatibility of the competing systems in the combinations. The
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`NFL’s copy/paste expert declaration does not even assert, much less articulate,
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`how its POSITA, without any graduate level training, Pet. 11, would have been
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`able to overcome the technical incompatibility. The Board should therefore deny
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`institution of both of the grounds. See 35 U.S.C. § 314(a).
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`A. The NFL’s petition and copy/paste expert declaration recognize
`that Beri and Armstrong are tied to Microsoft, while Harrington is
`tied to Netscape.
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`The NFL’s sole explanation for how the combination of Beri and Harrington
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`would have worked is that “[a] POSITA would have found it straightforward to
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`effectuate the combination because Harrington and Beri both render web pages on
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`a personal computer, and the software environments are the same. . . . The result
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`would have been software with the same overall purpose (rendering web pages)
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`that would have the combined ability to render animations and to do so while the
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`user was watching television.” Pet. 35. As support for this explanation, the NFL
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` 2
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`Case No.: IPR2018-00463
`Patent Owner’s Preliminary Response
`asserts that Beri “discuss[es] Microsoft environment and Microsoft ActiveX tools
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`for use in web browsers,” and that Harrington “us[es] Netscape Navigator web
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`browser in Windows environment.” Id. (citing the two references and its
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`copy/paste expert declaration that includes no additional explanation); compare
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`Pet. 35 with NFLE 1004 ¶ 76.
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`Similarly, the NFL’s sole explanation for how the combination of Armstrong
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`and Harrington would have worked is that “[a] POSITA would have found it
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`simple to effectuate the combination because Harrington and Armstrong both
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`render web pages on a personal computer, and thus the software environments are
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`the same. . . . The result would have been software with the same overall purpose
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`(rendering web pages) that would have the combined ability to render web page
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`resources asynchronously and to do so while the user was watching television.”
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`Pet. 47. As support for this explanation, the NFL asserts that Armstrong
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`“discuss[es] Microsoft ActiveX tools for use in Microsoft web browsers such as
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`Internet Explorer,” and that Harrington “(disclos[es] use of Netscape Navigator
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`web browser in Windows operating system.” Id. (citing the two references and its
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`copy/paste expert declaration that includes no additional explanation); compare
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`Pet. 47 with NFLE 1004 ¶ 98.
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`Case No.: IPR2018-00463
`Patent Owner’s Preliminary Response
`B. Given the incompatibility and competition between Microsoft
`Internet Explorer and Netscape Navigator, it is unclear how any
`combination of Beri, Armstrong, and/or Harrington could have
`worked.
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`The incompatibility and competition between Microsoft Internet Explorer
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`and Netscape Navigator was well known. For example, PC Magazine discussed it
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`extensively. OpenTV 2001 at 7. According to the magazine, “[P]roprietary
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`technologies [gave] Netscape enormous leverage, letting it steer the direction of
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`Web development and lock out potential competitors.” Id. at 8. But “Internet
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`Explorer also offer[ed] more than its share of original new technology,” most of
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`which was also proprietary. Id. at 9. “The most significant new technology [was]
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`ActiveX, a direct descendant of Microsoft’s OCX control standard that is
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`ultimately based on Microsoft’s Component Object Model (COM).” Id.
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`The stakes of the battle between Netscape and Microsoft could not have
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`been greater. “The winner [would] dictate the future of the Web.” Id. at 7. Yet
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`Netscape did not combine Microsoft’s proprietary ActiveX technology with the
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`technologies in Netscape Navigator, as the NFL proposes. Instead, Netscape
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`sought to counter ActiveX technology with “additional Java classes and JavaScript
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`enhancements.” See id. at 12. It is thus unclear, and unproven on this record, how
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`any combination of Beri or Armstrong (which both teach ActiveX) with
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`Harrington (which teaches Netscape Navigator) could have worked.
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`Case No.: IPR2018-00463
`Patent Owner’s Preliminary Response
`C. The NFL’s petition and copy/paste expert declaration fail to
`appreciate the incompatibility and competition, much less explain
`how any combination of Beri, Armstrong, and/or Harrington could
`have worked despite such incompatibility.
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`Rather than recognize the incompatibility and adversity between Microsoft
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`Internet Explorer and Netscape Navigator, the NFL’s petition and copy/paste
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`expert declaration merely assert that a POSITA would have found it
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`straightforward or simple to effectuate the combinations of Beri, Armstrong, and/or
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`Harrington because the references all render web pages on a personal computer,
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`and the software environments, presumably Windows, are the same. Pet. 35, 47;
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`NFLE 1004 ¶¶ 76, 98. Such combination would have been anything but
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`straightforward or simple, given the proprietary nature of Internet Explorer and
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`Netscape Navigator, OpenTV 2001 at 8-9, particularly given the NFL’s significant
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`reliance on Microsoft’s ActiveX technology that not even Netscape combined with
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`technologies in Netscape Navigator. See, e.g., Pet. 3, 22, 23, 28, 29, 32, 33, 35, 38,
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`39, 41, 43, 44, 45, 47, 50. Without a clear explanation or evidence showing how a
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`combination of any of the references would have worked despite the known
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`incompatibility between Internet Explorer and Netscape Navigator, the Board
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`cannot find claim 22 obvious based on the NFL’s proposed combinations of the
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`two competing technologies. See Pers. Web Techs., 848 F.3d at 993-94. The Board
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`should therefore deny institution of both of the NFL’s grounds for claim 22. See 35
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`U.S.C. § 314(a).
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` 5
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`III. Conclusion
`For the foregoing reasons, the Board should deny both grounds for claim 22
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`Case No.: IPR2018-00463
`Patent Owner’s Preliminary Response
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`in the NFL’s petition.
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`Dated: April 18, 2018
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`Respectfully submitted,
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`By: /Joshua L. Goldberg/
`Joshua L. Goldberg,
`Lead Counsel
`Registration No. 59,369
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`Counsel for OpenTV
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`Case No.: IPR2018-00463
`Patent Owner’s Preliminary Response
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`CERTIFICATE OF COMPLIANCE WITH WORD COUNT
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`Pursuant to 37 C.F.R. § 42.24(d), I, Joshua L. Goldberg, certify that
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`PATENT OWNER’S PRELIMINARY RESPONSE contains 1,198 words,
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`excluding those portions identified in 37 C.F.R. § 42.24(a), as measured by the
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`word-processing system used to prepare this paper.
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`Dated: April 18, 2018
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`Respectfully submitted,
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`By: /Joshua L. Goldberg/
`Joshua L. Goldberg,
`Lead Counsel
`Registration No. 59,369
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`Counsel for OpenTV
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`Case No.: IPR2018-00463
`Patent Owner’s Preliminary Response
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing PATENT
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`OWNER’S PRELIMINARY RESPONSE was served on April 18, 2018 via
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`email directed to counsel of record for the Petitioner at the following:
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`Dated: April 18, 2018
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`Stephen C. Stout, Lead Counsel
`Jeffrey T. Han, Back-up Counsel
`Hilary L. Preston, Back-up Counsel
`Rachel P. McClure, Back-up Counsel
`sstout@velaw.com
`jhan@velaw.com
`hpreston@velaw.com
`rmcclure@velaw.com
`NFLE-IPR@velaw.com
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`By: /Lauren K. Young/
`Lauren K. Young
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
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