Trials@uspto.gov
`571-272-7822
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`Paper: 8
`Entered: June 13, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`——————
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`——————
`NFL ENTERPRISES LLC,
`Petitioner,
`
`v.
`
`OPENTV, INC.,
`Patent Owner.
`
`——————
`Case IPR2018-00463
`Patent 7,055,169 B2
`——————
`
`Before JAMESON LEE, SALLY C. MEDLEY, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`DECISION
`Instituting Inter Partes Review
`35 C.F.R. § 314(a)
`
`
`571-272-7822
`
`
`
`
`
`
`Paper: 8
`Entered: June 13, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`——————
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`——————
`NFL ENTERPRISES LLC,
`Petitioner,
`
`v.
`
`OPENTV, INC.,
`Patent Owner.
`
`——————
`Case IPR2018-00463
`Patent 7,055,169 B2
`——————
`
`Before JAMESON LEE, SALLY C. MEDLEY, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`DECISION
`Instituting Inter Partes Review
`35 C.F.R. § 314(a)
`
`
`
`IPR2018-00463
`Patent 7,055,169 B2
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`I.
`
`INTRODUCTION
`
`NFL Enterprises LLC (“NFL”)1 filed a Petition for inter partes review
`(Paper 1, “Pet.”) of claims 1, 2, 22, and 23 of U.S. Patent No. 7,055,169 B2
`(Ex. 1001, “the ’169 patent”). OpenTV, Inc. (“OpenTV”), the Patent
`Owner2, filed a Preliminary Response (“Prelim. Resp.”) to the Petition.
`Paper 6.
`We have discretion to institute an inter partes review when “the
`information presented in the petition . . . and any response . . . 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.” 35 U.S.C. § 314(a).
`Applying that standard, we institute inter partes review of claims 1, 2, 22,
`and 23 of the ’169 patent, for the reasons explained below.
`The following findings of fact and conclusions of law are not final,
`and we make them solely to determine that NFL meets the threshold for
`initiating review. We will base our final decision on the full trial record,
`including any timely-filed response by OpenTV.
`
`II.
`
`BACKGROUND
`
`A. RELATED PROCEEDINGS
`
`The parties identify the following as actions that may affect or be
`affected by this proceeding (Pet. 1–2; Paper 4 at 2–3):
`
`
`1 Petitioner, NFL Enterprises LLC, identifies NFL Ventures, L.P. as a real
`party-in-interest. Pet. 1.
`2 Patent Owner, OpenTV, Inc., identifies Nagra USA, Inc. and Kudelski S.A.
`as real parties-in-interest. Paper 4, 2.
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`Nagravision SA and OpenTV, Inc. v. NFL Enterprises LLC,
`No. 2:17-cv-3919-AB-SK (C.D. Cal., filed May 24, 2017).
`
`OpenTV, Inc. v. NFL Enterprises LLC, No. 2:17-cv-00031-JRG-
`RSP (E.D. Tex., filed Jan. 12, 2017).
`
`Apple Inc. v. OpenTV, Inc., IPR2016-01004 (PTAB, filed May
`4, 2016).
`
`Time Warner Cable Inc. v. OpenTV, Inc. et al., No. 3:16-cv-
`02433 (N.D. Cal., filed May 4, 2016).
`
`Apple Inc. v. OpenTV, Inc., CBM2016-00066 (PTAB, filed May
`2, 2016).
`
`Yahoo! Inc. v. Kudelski SA et al., 5:16-cv-00349 (N.D. Cal.,
`filed Jan. 21, 2016).
`
`OpenTV, Inc. et al v. Verizon Communications, Inc. et al., No.
`6:15-cv-00951 (E.D. Tex., filed Oct. 30, 2015).
`
`OpenTV, Inc. et al v. Apple Inc., No. 5:15-cv-02008 (N.D. Cal.,
`filed May 5, 2015).
`
`OpenTV, Inc. et al v. Netflix, Inc., No. 3:14-cv-01723 (N.D.
`Cal., filed Apr. 14, 2014).
`
`OpenTV Inc. v. Netflix Inc., No. 3:14-cv-01525 (N.D. Cal., filed
`Apr. 2, 2014).
`
`OpenTV Inc. v. Netflix, Inc., No. 1:12-cv-01733 (D. Del., filed
`Dec. 19, 2012).
`
`U.S. Provisional Application No. 60/373,883 (filed Apr. 19,
`2002) (submitted as Ex. 1003).
`
`B.
`
`THE ’169 PATENT (EX. 1001)
`
`The ’169 patent relates to “a system and method for creating and
`controlling interactive television content.” Ex. 1001 at 1:12–13. Such
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`interactive content “may incorporate television audio and video, still images,
`text, interactive graphics and applications, and many other components.” Id.
`at 1:17–20.
`To coordinate the presentation of interactive content from various
`resources, the ’169 patent describes “[a] method and mechanism . . . which
`enable content authors to use directives, such as HTML, scripting languages,
`or other languages, with television extensions to create and/or control
`interactive television content.” Id. at 2:33–36. These directives, which may
`be provided by the content author, can “indicate that a particular subset of
`resources required for a presentation are deemed prerequisites,” and if so,
`“the providing of the presentation is withheld until the prerequisite resources
`are obtained.” Id. at 2:39–47.
`According to the Specification, the invention contemplates delivery of
`content resources in a number of ways from the content provider to a
`receiver device, including a direct point-to-point, such as a telephone line, a
`network such as the internet, or broadcasting over satellite, cable or
`terrestrial television. See id. at 4:13–27. Figure 3 of the ’169 patent shows
`an example receiving device:
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`Figure 3 is a block diagram depicting “one embodiment of a receiving/
`initiating device 1012.” Id. at 2:64–65, 5:15–16. An arrow (1070) pointing
`to receiver 1012 represents broadcast signals. See id. at 5:20. At the center
`of receiver 1012, box 1030 represents a control unit that “may comprise a
`microprocessor, memory (e.g., RAM) and other components which are
`necessary to perform ordinary general purpose computing.” Id. at 5:33–35.
`A box representing memory (1090) includes operating system and
`middleware 1044, messaging processing engine 1036, and applications
`1042. Id. at 5:27–29; see also id. at 5:36–55.
`
`C.
`
`CHALLENGED CLAIMS
`
`Independent claim 1 of the ’169 patent is as follows:
`
`1. A method comprising:
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`receiving one or more directives, wherein said directives are
`indicative of an audio, video and/or graphic presentation
`which requires a set of resources;
`determining whether said one or more directives includes a
`prerequisite directive which indicates that ac[q]uisition of
`a subset of said set of resources is a prerequisite for
`initiating the presentation;
`initiating said presentation, in response to determining the
`one or more directives do not include said prerequisite
`directive; and
`prohibiting initiation of said presentation until said subset of
`resources are acquired, in response to determining the
`one or more directives include said prerequisite directive.
`Ex. 1001 at 52:8–22 (emphasis of key phrase added).
`Claim 2, which depends from claim 1, recites “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.” Id. at 52:23–26.
`Independent claim 22 is as follows:
`
`22. A client device in an interactive television system, said
`device comprising:
`a receiver configured to receive signals corresponding to
`directives which are indicative of an audio, video and/or
`graphic presentation requiring a set of resources; and
`a processing unit coupled to said receiver, wherein said
`processing unit is configured to:
`determine whether said one or more directives includes a
`prerequisite directive which indicates that acquisition of a
`subset of said set of resources is a prerequisite for
`initiating the presentation;
`initiate said presentation, in response to determining the
`one or more directives do not include said prerequisite
`directive; and
`prohibit initiation of said presentation until said subset of
`resources are acquired, in response to determining the
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`one or more directives include said prerequisite
`directive.
`Id. at 54:4–22 (emphasis of key phrases added).
`Independent claim 23 recites “[a] computer readable medium
`comprising program instructions executable by a computer” essentially to
`carry out the steps of claim 1. See id. at 54:24–39.
`
`D. ASSERTED GROUNDS OF UNPATENTABILITY
`
`NFL challenges the patentability of claims 1, 2, 22, and 23 of the ’169
`patent on the following grounds:
`References
`Beri3
`Beri and Harrington4
`Armstrong5
`Armstrong and Harrington
`
`Basis
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Challenged Claims
`1, 2, 23
`22
`1, 2, 23
`22
`
`
`
`Pet. 4.
`NFL supports the Petition with a Declaration of Stephen Melvin,
`Ph.D., Ex. 1004; see also Ex. 1005 (Dr. Melvin’s curriculum vitae).
`OpenTV submits a 1996 PC Magazine article as evidence supporting
`the Preliminary Response.6
`
`
`3 Beri et al., US 6,141,018 (issued Oct. 31, 2000) [hereinafter Beri]. Ex.
`1006.
`4 Harrington, US 7,120,871 B1 (issued Oct. 10, 2006) [hereinafter
`Harrington]. Ex. 1007.
`5 TOM ARMSTRONG, DESIGNING AND USING ACTIVEX CONTROLS (1997)
`[hereinafter Armstrong]. Exs. 1008–09.
`6 Michael J. Miller et al., Browsers at the Crossroads, PC MAG., Oct. 22,
`1996, at 100. Ex. 2001.
`
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`III. ANALYSIS
`
`A.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`NFL argues that a person with ordinary skill in the relevant art would
`have “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.” Pet. 11 (citing Ex. 1004 ¶ 21).
`OpenTV agrees that a person with only ordinary skill in the art would not
`have a graduate level of training and does not, in the Preliminary Response,
`otherwise dispute NFL’s characterization of the level of ordinary skill.
`Prelim. Resp. 2. Therefore, for the purpose of this Decision, we adopt
`NFL’s characterization of the level of ordinary skill in the art.
`
`B.
`
`CLAIM CONSTRUCTION
`
`We interpret patent claims using the “broadest reasonable construction
`in light of the specification of the patent in which it appears.” 37 C.F.R.
`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
`(2016). Under that standard, we give claim language “the broadest
`reasonable meaning of the words in their ordinary usage as they would be
`understood by one of ordinary skill in the art, taking into account whatever
`enlightenment by way of definitions or otherwise that may be afforded by
`the written description” of the patent. In re Morris, 127 F.3d 1048, 1054
`(Fed. Cir. 1997).
`We need only construe claim terms “that are in controversy, and only
`to the extent necessary to resolve the controversy.” Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`
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`(quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`Cir. 1999)). NFL proposes constructions of four terms, see Pet. 13–20, and
`OpenTV does not dispute these constructions or propose any alternatives.
`However, based on the information presented in the Petition and the
`Preliminary Response, our analysis and conclusion would not be different,
`whether any of NFL’s proposed constructions are adopted. Therefore, we
`find that none of the terms identified by Petitioner for construction requires
`express construction for the purpose of this Decision.
`
`C. ASSERTED UNPATENTABILITY OF CLAIMS 1, 2, AND 23 AS
`OBVIOUS OVER BERI
`
`In the context of a web browser, Beri describes a “method and system
`for displaying an arbitrary image in an animated marquee.” Ex. 1006 at
`2:40–41. This is similar to a text marquee, which “provides a visual effect
`that is similar to the electronic marquees found on some buildings that
`display the headline news.” Id. at 2:7–8. However, instead of merely using
`it to present scrolling text, one may use Beri’s animated marquee to present
`a scrolling image “of arbitrary complexity. Indeed, the image itself can be a
`hypertext document.” Id. at 3:43–44. This image “is identified by a URL,”
`as well as “[v]arious parameters,” which “can be set to indicate whether the
`URL is to be drawn immediately or progressively.” Id. at 3:27–28, 45, 48–
`50. The animated marquee may also consist of “a sequence of images rather
`than just one image. Each image is identified by a URL.” Id. at 3:52–54.
`In one embodiment, the animated marquee takes the form of an
`ActiveX object. Id. at 5:14–15. ActiveX, a technology that Microsoft
`developed in the 1990s, includes an extension to the HTML web markup
`language, an <object> tag, for embedding computer code in a web page. See
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`id. at 2:10–33. The <object> tag may include named parameters that define
`properties and behavior of the animated marquee, including the parameter
`“DrawImmediately,” a “[f]lag indicating to progressively render the image.”
`Id. at 5:57. Beri states that “[i]f the DrawImmediately parameter is set, the
`image will scroll before the image is fully loaded (i.e., formatted). This
`gives the effect of progressive rendering.” Id. at 6:42–44. In an example of
`a marquee object under the heading “Slide Image From Bottom Only When
`Finished Formatting and Rendering,” the <object> tag has a parameter in
`which DrawImmediately is set to zero. See id. at 8:25–30.
`NFL addresses each of the limitations of claim 1 and reasonably
`argues that Beri discloses all of them. Pet. 26–34. In particular, NFL argues
`that Beri discloses receiving “directives” in the form of <object> tag
`parameters such as DrawImmediately. Id. at 28. According to NFL, these
`directives “are indicative of an audio, video and/or graphic presentation
`which requires a set of resources,” as recited in claim 1, because rendering
`the animated marquee requires loading and rendering a set of resources,
`referenced by URLs, which may include audio, video, or graphic content.
`See id. at 27. NFL argues that the directives are “indicative” of these
`resources because the <object> tag parameters “are declarations or
`instructions that indicate how the computer should handle presentation of the
`[resource] content that is downloaded over the Internet.” Id. at 28. One of
`the parameters is also named “URL,” and indicates the URL where the
`image in the marquee may be found, for downloading. See id. at 28–29.
`NFL reasonably argues that a DrawImmediately parameter is a
`prerequisite directive “when disabled or set to 0,” because “it prohibits the
`web browser from displaying the web page until after all of the resources
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`(the images) in the marquee are downloaded.” Id. at 29 (citing Ex. 1006 at
`3:48–50, 5:57, 6:42–44, 11:24–26). On the other hand, according to NFL,
`“[i]f DrawImmediately is enabled, or set to 1, it does not constitute a
`prerequisite directive, because it causes the web browser to initiate display
`of the marquee progressively, before it finishes downloading the images
`from the Internet.” Id. at 30.
`According to NFL, the resources indicated by a prerequisite directive
`(i.e., a disabled DrawImmediately parameter) are “a subset of said set of
`resources” required for the presentation, because the “audio, video and/or
`graphic presentation” constitutes the web page as a whole, in which the
`<object> tag resides, and Beri discloses that “web pages contain other
`resources as well, such as images or text, outside of the ActiveX object
`marquee.” Id. at 32 (citing Ex. 1006 at 1:60–67); see also Ex. 1004 ¶ 68
`(opining that an ordinarily skilled artisan would have understood Beri to
`disclose the combination of an animated marquee with other images in a
`web page). According to Dr. Melvin, the default behavior for most browsers
`at the time of invention was to display web pages progressively. Ex. 1004
`¶ 68. Thus, according to NFL, the additional resources needed to render the
`full web page would not be prerequisites for initiating the presentation. Pet.
`32. These arguments are reasonable on the present record.7
`
`
`7 NFL also proposes an alternative theory of unpatentability that relies on
`interpreting the term “subset” broadly to include “some or all of the set of
`resources.” Pet. 31–32; see also id. at 15–18. Because NFL is reasonably
`likely to prevail at trial based on the argument that a web page would
`contain other (non-prerequisite) resources than those indicated by a single
`disabled DrawImmediately parameter, we need not address the issue for
`purposes of this Decision.
`
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`NFL’s further arguments regarding claims 2 and 23 are also
`reasonable on this preliminary record. NFL argues that Beri discloses the
`method recited in claim 2, because the <object> tag and its
`DrawImmediately parameter (the prerequisite directive, if disabled) are
`defined within ActiveX as extensions to the HTML markup language. See
`id. at 34. NFL argues that Beri discloses the computer readable medium of
`claim 23, because the medium includes the limitations of claim 1, and is
`stored on a computer memory. See id. at 37 (citing Ex. 1006 at Fig. 4, 4:65–
`5:13).
`In sum, NFL presents reasonable arguments and supporting evidence
`that Beri discloses each of the limitations of claims 1, 2, and 23, and
`OpenTV does not rebut these arguments in the Preliminary Response. The
`information NFL has presented shows that there is a reasonable likelihood
`that NFL would prevail in showing that claims 1, 2, and 23 are unpatentable
`under 35 USC § 103(a) over Beri.8
`
`D. ASSERTED UNPATENTABILITY OF CLAIMS 1, 2, AND 23 AS
`OBVIOUS OVER ARMSTRONG
`
`Armstrong is a textbook for software developers, covering the topic of
`ActiveX controls. Ex. 1008 at xxi. One part of the book describes
`
`
`8 NFL’s arguments and evidence are directed to showing that Beri (and
`Armstrong, see infra) includes a complete disclosure of all the limitations in
`claims 1, 2, and 23. While such a showing, if supported by persuasive
`evidence on the full trial record, may establish anticipation under 35 U.S.C.
`§ 102, “evidence establishing lack of all novelty in the claimed invention
`necessarily evidences obviousness.” In re Fracalossi, 681 F.2d 792, 794
`(CCPA 1982). Moreover, there is no evidence on the present record
`regarding objective indicia of nonobviousness.
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`embedding ActiveX controls in web pages using an OBJECT element in the
`extended HTML markup language. Id. at 552. It describes the use of
`PARAM elements within the OBJECT element “to store property values of
`the embedded object.” Id. at 553.
`Armstrong teaches that in many cases, property data values for an
`embedded object are small (such as “a font, a color, or a small string”) and
`may be embedded directly within the web page. Id. However, if a property
`value is very large, “such as a 2-MB GIF or BMP image,” a problem arises
`that “a control’s properties are loaded synchronously”; thus, “the browser
`would be virtually locked while the 2MB+ HTML page was downloaded.”
`Id. at 553–54. Moreover, if the property data is “streaming video or audio,
`the data is real-time and can be supplied only after instantiation by the
`container,” and “must be processed asynchronously or it will never work.”
`Id. at 554.
`Consequently, Armstrong discloses that the ActiveX architecture
`provides support for such large property values through a “data path
`property.” Id. A data path property “is a simple [string] that contains a link
`(such as a URL) to the property data. Instead of embedding the data for the
`property within the HTML document, you store a link to the data.” Id.
`Armstrong notes that data path properties “enable progressive rendering of
`images. Asynchronous downloading allows the container to load and
`instantiate several controls at the same time.” Id. at 555.
`NFL addresses each of the limitations of claim 1 and reasonably
`argues that Armstrong discloses all of them. Pet. 41–45. In particular, NFL
`argues that the recited “directives” include the ActiveX PARAM elements
`enclosed within OBJECT elements of an ActiveX-compatible web
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`document. See id. at 42. According to NFL, Armstrong discloses that these
`directives are “indicative” of an audio, video, or graphic presentation,
`because the directives indicate “how the computer should handle
`presentation of the audio, video, or graphic content.” Id. The “resources,”
`according to NFL, include “fonts, colors, text strings, images, videos, and
`audio.” Id. at 41. NFL argues that the resources may be either “embedded
`properties (i.e., small strings of text or small images)” or data path properties
`(i.e., large GIF or BMP images or videos).” Id. at 41–42 (citing Ex. 1009 at
`551, 553–54).
`NFL reasonably argues that a PARAM element containing an
`embedded property is a prerequisite directive, because “presentation of the
`web page will be prohibited until the subset of resources are acquired.” Id.
`at 45. For example, “if an OBJECT element has an embedded image, then
`the presentation will be prohibited until the OBJECT element is loaded.” Id.
`(citing Ex. 1009 at 553–55). By contrast, NFL argues that “if the web page
`does not include a prerequisite directive, meaning that none of the OBJECT
`elements have embedded resources, and, therefore, all resources are
`indicated by data path properties, then the web browser will determine no
`prerequisite directive exists and presentation of the web page will be
`initiated.” Id. at 44–45 (citing Ex. 1009 at 553–55, 567–68).
`According to NFL, the resources indicated by a prerequisite directive
`(i.e., the embedded properties) are “a subset of said set of resources”
`required for the presentation, because Armstrong teaches that the full set of
`resources for a given web presentation may include both embedded
`properties and data path properties. Id. at 43–44. This argument is
`reasonable on this record.
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`NFL’s further arguments regarding claims 2 and 23 are likewise
`reasonable on this preliminary record. NFL argues that Armstrong discloses
`the method recited in claim 2, because a prerequisite directive (an embedded
`property in a PARAM element) is written in the HTML markup language.
`See id. at 46. NFL argues that Armstrong discloses the computer readable
`medium of claim 23, because the medium includes the limitations of claim
`1, and is stored on a computer memory. See id. at 49 (citing Ex. 1008 at 22).
`In sum, NFL presents reasonable arguments and supporting evidence
`that Armstrong discloses each of the limitations of claims 1, 2, and 23, and
`OpenTV does not rebut these arguments in the Preliminary Response. The
`information NFL has presented shows that there is a reasonable likelihood
`that NFL would prevail in showing that claims 1, 2, and 23 are unpatentable
`under 35 USC § 103(a) over Armstrong.9
`
`E. ASSERTED UNPATENTABILITY OF CLAIM 22 AS OBVIOUS OVER
`BERI OR ARMSTRONG IN VIEW OF HARRINGTON
`
`Harrington describes a system that “combines broadcast television
`programming . . . with the massive Internet.” Ex. 1007 at 1:65–2:3. The
`system involves constructing a web page in a staging area, and then
`displaying the web page on a screen in synchronization with a video
`program “based upon timer event information or receipt of a particular
`command instructing that it be displayed.” Id. at abstract.
`To retrieve and construct web pages, the system uses “a JAVA enabled
`browser,” which “is platform independent, and thus, enables efficient and
`flexible transfer of programs, images, etc., over the Internet.” Id. at 7:52–56.
`
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`9 See supra note 8.
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`The browser is combined with “specialized interface software” that “acts as
`an interface between the video programming and the Internet functions” of
`the disclosed system. Id. at 7:56–59. Thus, according to the disclosure,
`“video programming and corresponding Internet pages can be viewed on
`personal computers equipped with a television card, but the open software-
`based approach enables anyone with a television set and JAVA enabled PC to
`experience the system of the invention.” Id. at 2:50–54.
`NFL argues that Harrington discloses “a client device in an interactive
`television system” as recited in the preamble of claim 22, which could
`consist of “a personal computer equipped with a television card” that
`receives video from broadcast television programming. Pet. 34 (citing Ex.
`1007 at 1:65–66, 250–54); accord id. at 46. According to NFL, Harrington
`also discloses the recited “receiver,” comprising a television card or internet
`connection, as well as the recited “processing unit,” comprising a
`microprocessor or PC containing a browser. Id. at 36 (citing Ex. 1007 at
`2:50–54, 5:45–64); accord id. at 48–49.
`NFL argues that the combination of Harrington’s “receiver” and
`“processing unit” with Beri’s rendering software “would have been an
`obvious combination of known elements that would have yielded predictable
`results.” Id. at 35 (citing Ex. 1004 ¶ 76). In particular, NFL argues that a
`person of ordinary skill in the art would have been motivated to render
`marquee animations, using Harrington’s hardware, while the user was
`watching television. Id. (citing Ex. 1004 ¶ 76).
`Similarly, NFL argues that the combination of Harrington’s “receiver”
`and “processing unit” with Armstrong’s asynchronous web page rendering
`software “would have been an obvious combination of known limitations
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`that would have yielded predictable results in rendering web pages within
`the context of integrated television.” Id. at 47 (citing Ex. 1004 ¶ 98). In
`particular, NFL argues that a person of ordinary skill in the art would have
`been motivated to render web page resources asynchronously, using
`Harrington’s hardware, while the user was watching television. Id. (citing
`Ex. 1004 ¶ 98).
`OpenTV argues that the Petition fails to disclose how a person of
`ordinary skill in the art would have combined Harrington with either Beri or
`Armstrong, given Harrington’s technical incompatibility with the two
`primary references. See Prelim. Resp. 1. According to OpenTV, Beri and
`Armstrong rely on ActiveX technology, which is tied to Microsoft’s Internet
`Explorer browser, whereas Harrington’s system uses Netscape Navigator.
`Id. at 2–3 (citing Pet. 35, 47). However, OpenTV argues that Microsoft and
`Netscape were fierce competitors at the time of invention, and Microsoft’s
`proprietary ActiveX technology was incompatible with Netscape Navigator.
`See id. at 4 (citing Ex. 2001 at 101–03, 108). Thus, according to OpenTV,
`combining the functionality of Beri or Armstrong with Harrington would not
`have been a straightforward combination. See id. at 5 (citing Ex. 2001 at
`102–03). Moreover, OpenTV argues that NFL fails to clearly articulate or
`provide evidence showing how this combination would have worked, or how
`a skilled artisan (without any graduate level training) would have made the
`combination. See id. at 2, 5.
`On this preliminary record, NFL has articulated a reasonable rationale,
`with credible evidentiary support, that a person of ordinary skill in the art
`would have, based on the combined teachings of Harrington and either Beri
`or Armstrong, arrived at the device recited in claim 22. See KSR Int’l Co. v.
`
`
`
`
`17
`
`
`
`IPR2018-00463
`Patent 7,055,169 B2
`
`Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar
`elements according to known methods is likely to be obvious when it does
`no more than yield predictable results.”). OpenTV’s arguments do not
`successfully discredit NFL’s arguments. “The test for obviousness is not
`whether the features of a secondary reference may be bodily incorporated
`into the structure of the primary reference . . . . Rather, the test is what the
`combined teachings of the references would have suggested to those of
`ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981).
`NFL’s rationale does not rely on bodily integrating ActiveX technology into
`Netscape Navigator, or vice versa. Rather, NFL relies on running Beri’s or
`Armstrong’s web rendering software in a hardware environment containing
`the interactive television features that Harrington teaches. See Pet. 35, 47.
`OpenTV does not, on this record, point to any evidence that a person
`of ordinary skill in the art would be unable to predictably run Internet
`Explorer and the ActiveX-based web rendering systems of either Beri or
`Armstrong in the hardware environment as described by Harrington.
`Harrington teaches the use of a general purpose PC and a “JAVA enabled
`browser” for retrieving and rendering web pages. See Ex. 1007 at 2:50–54,
`7:46–56. Harrington does disclose embodiments in which this browser is
`Netscape Navigator. See id., Figs. 3, 7, 8. However, OpenTV does not point
`to any teaching in Harrington that would teach away from the use of other
`JAVA enabled browsers such as Internet Explorer. See Ex. 2001 at 102
`(“JAVA AND PLUG-INS remain the accepted standards for extending
`browser functionality. Both [Internet Explorer and Netscape Navigator]
`support them . . . .”). We find that one with ordinary skill in the art would
`
`
`
`
`18
`
`
`
`IPR2018-00463
`Patent 7,055,169 B2
`
`have known to use a compatible browser and would not have insisted on
`using components that are incompatible with each other.
`For the above reasons, the information on this record shows that there
`is a reasonable likelihood that NFL would prevail in showing that claim 22
`is unpatentable under 35 USC § 103(a) over either Beri in view of
`Harrington or Armstrong in view of Harrington.
`
`F.
`
`CONCLUSION
`
`On April 24, 2018, the Supreme Court held that a decision to institute
`under 35 U.S.C. § 314 may not institute on less than all the claims
`challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60
`(2018). After considering the evidence and arguments presented in the
`Petition and Preliminary Response, we determine that NFL has demonstrated
`a reasonable likelihood of success in proving that claims 1, 2, 22, and 23 of
`the ’169 patent are unpatentable. Therefore, we institute an inter partes
`review as set forth in the Order below.
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1, 2, 22, and 23 of the ’169 patent is instituted with respect
`to all grounds set forth in the Petition; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, inter partes review of the ’169 patent commences on the
`entry date of this Order, and notice is hereby given of the institution of a
`trial.
`
`
`
`
`19
`
`
`
`IPR2018-00463
`Patent 7,055,169 B2
`
`PETITIONER:
`
`Stephen C. Stout
`Jeffrey T. Han
`VINSON & ELKINS L.L.P.
`sstout@velaw.com
`jhan@velaw.com
`
`
`
`
`PATENT OWNER:
`
`
`Joshua Goldberg
`joshua.goldberg@finnegan.com
`
`Erika Arner
`erika.arner@finnegan.com
`
`
`
`
`
`20
`
`
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