`Tel: 571-272-7822
`
`
`Paper 29
`Date: January 19, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SLING TV L.L.C. and
`VUDU, INC.,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2019-013671
`Patent 8,407,609 B2
`____________
`
`
`Before CHARLES J. BOUDREAU, DANIEL J. GALLIGAN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`DIRBA, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`1 Vudu, Inc., which filed a petition in IPR2020-00677, has been joined as a
`petitioner in this proceeding.
`
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`Patent 8,407,609 B2
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`I. INTRODUCTION
`Sling TV L.L.C. (“Sling”) filed a Petition seeking institution of inter
`partes review of claims 1–3 of U.S. Patent No. 8,407,609 B2 (Ex. 1001, “the
`’609 patent”). Paper 2 (“Pet.”). Uniloc 2017 LLC (“Patent Owner”) filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”). After reviewing those
`papers, we determined that Petitioner had demonstrated a reasonable
`likelihood that it would prevail in proving that claims 1–3 of the ’609 patent
`are unpatentable, and we instituted an inter partes review of all challenged
`claims on all grounds set forth in the Petition. Paper 7 (“Institution
`Decision” or “Inst. Dec.”).
`After institution, Patent Owner filed a Response (Paper 13, “PO
`Resp.”), and Sling filed a Reply (Paper 15, “Pet. Reply”). Vudu, Inc.
`(“Vudu”) was then joined as a petitioner (Paper 16), and Sling and Vudu are
`now collectively referred to as “Petitioner.” Patent Owner filed a Sur-Reply
`(Paper 18, “PO Sur-Reply”). An oral hearing in this proceeding was held on
`December 3, 2020, and a transcript of the hearing is included in the record.
`Paper 28 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons discussed
`below, Petitioner has shown by a preponderance of the evidence that claims
`1–3 of the ’609 patent are unpatentable under 35 U.S.C. § 103(a).
`
`Related Matters
`A.
`The parties identify various civil actions involving the ’609 patent that
`are or were pending in district court, including Uniloc 2017 LLC v. Sling TV,
`LLC, 1:19-cv-00278 (D. Colo.); Uniloc 2017 LLC v. Vudu, Inc., 1:19-cv-
`00183 (D. Del.); Uniloc 2017 LLC v. Netflix, Inc., 8:18-cv-02055 (C.D.
`
`2
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`Cal.); Uniloc 2017 LLC v. Google LLC, 2:18-cv-00502 (E.D. Tex.). Pet. v–
`vi; PO Resp. 9–10; see Paper 19 (Petitioner’s Updated Mandatory Notices).
`The ’609 patent is or was the subject of three other petitions for inter
`partes review. In IPR2020-00677, Vudu filed a petition that is substantively
`identical to the Petition, and the Board instituted that review and joined
`Vudu to this proceeding as Petitioner. Paper 16 (Joinder Order). Also, a
`petition filed by Netflix, Inc. and Roku, Inc. was instituted by the Board.
`Netflix, Inc. v. Uniloc 2017 LLC, IPR2020-00041 (“the 041 IPR”), Paper 10
`(PTAB Mar. 25, 2020) (Institution Decision in the 041 IPR). A final written
`decision in the 041 IPR is being issued concurrently with this Decision.
`Finally, the ’609 patent was previously the subject of another petition for
`inter partes review that was discretionarily denied under 35 U.S.C. § 314(a).
`Google LLC v. Uniloc 2017 LLC, IPR2020-00115, Paper 8 (PTAB Mar. 27,
`2020).
`
`Real Parties in Interest
`B.
`Sling states that it is owned (directly or indirectly) by Sling TV
`Holding L.L.C., DISH Network L.L.C., DISH Technologies L.L.C., and
`DISH Network Corporation. Pet. v. Vudu identifies each of the following
`companies as a direct or indirect owner (at some point in time): Walmart
`Inc., Fandango Media, LLC, NBCUniversal Media, LLC, Warner Bros.
`Entertainment Inc., Comcast Corporation, Warner Media, LLC, and AT&T
`Inc. Paper 16, 2 n.1 (citing IPR2020-00677, Papers 1, 8).
`Patent Owner identifies no other real parties in interest. Paper 3, 1
`(Mandatory Notice).
`
`3
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`IPR2019-01367
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`
`The Petition’s Asserted Grounds
`C.
`Petitioner asserts the following grounds of unpatentability (Pet. 2):
`
`Claims Challenged 35 U.S.C. §
`
`References/Basis
`
`1–3
`
`1–3
`
`103(a)2
`
`103(a)
`
`Jacoby,3 Bland4
`
`McTernan,5 Robinson6
`
`Petitioner also relies on the testimony of Dr. James A. Storer to support its
`contentions. Ex. 1002.
`
`Summary of the ’609 Patent
`D.
`The ’609 patent is titled “System and Method for Providing and
`Tracking the Provision of Audio and Visual Presentations via a Computer
`Network.” Ex. 1001, code (54). The application that led to the ’609 patent
`was filed on August 21, 2009, and claimed the benefit of a U.S. provisional
`application filed August 21, 2008. Id. at codes (22), (60).
`The ’609 patent discloses tracking a user computer’s receipt of digital
`media presentations via a web page. Ex. 1001, code (57). An exemplary
`web page provided to a user’s computer is shown in Figure 9, which is
`reproduced below:
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`Because the challenged patent was filed before March 16, 2013, we refer to
`the pre-AIA version of § 103.
`3 Jacoby, US 2004/0254887 A1, published Dec. 16, 2004 (Ex. 1006).
`4 Bland et al., US 5,732,218, issued Mar. 24, 1998 (Ex. 1009).
`5 McTernan et al., WO 01/89195 A2, published Nov. 22, 2001 (Ex. 1007).
`6 Robinson et al., EP 0 939 516 A2, published Sept. 1, 1999 (Ex. 1008).
`
`4
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`
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`Ex. 1001, Fig. 9. As shown above, Figure 9 depicts a web page (900) with
`portion 930 (including portion 920, where a presentation selected by the user
`may be displayed) and portions 910 and 940, which “may be used to display
`related information, such as advertisements.” Id. at 11:59–12:6, 12:12–14.
`In order to appropriately value the advertising space, the ’609 patent seeks to
`“identify how long the media was actually, or may typically be played.” Id.
`at 12:6–15.
`The presentation, which is displayed in portion 920, may be supplied
`by the system or may be linked by the system (with the content stored on a
`third party’s computer system). Ex. 1001, 12:64–66; see id. at 7:25–38
`
`5
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`(identifying challenge of tracking presentation “[w]here content is housed
`elsewhere and linked to by computers 30”). “Regardless, page 900 may
`include a timer applet,”7 which is “used to indicate when a pre-determined
`temporal period has elapsed.” Id. at 12:66–67, 13:5–6. For example, the
`temporal period may be ten, fifteen, or thirty seconds. Id. at 13:6–8.
`“[W]hen the applet determines the predetermined temporal period has
`elapsed, it signals its continued execution to system 20.” Id. at 13:10–12. In
`addition, “the applet may cause [a] cookie [received with web page 900], or
`associated data, to be transmitted from the user’s computer 20 to system 30.”
`Id. at 13:14–21; see id. at Fig. 1 (illustrating user computers 20 and server
`computers 30). The system logs receipt of the applet’s signal and logs the
`client’s cookie (or data associated with it). Id. at 13:12–13, 13:21–23. For
`example, “a table entry” may be made identifying the user, the page, and
`total time on that page. Id. at 13:24–30.
`According to the ’609 patent, this “provide[s] the capability to know
`that a viewer began viewing a particular show at a certain time, and to know
`when a user began viewing a different page, or show, thereby providing
`knowledge of how long a particular viewer spent on a particular page.”
`Ex. 1001, 13:43–48. The ’609 patent states that this knowledge allows the
`cost of “advertising displayed on a given page” to correspond to the length
`of time that page is viewed. Id. at 13:49–14:2; see also id. 7:42–52, 11:53–
`58.
`
`
`7 “‘Applet,’ as used [in the Specification], generally refers to a software
`component that runs in the context of another program . . . .” Ex. 1001,
`12:67–13:3.
`
`6
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`
`Challenged Claims
`E.
`The Petition challenges claims 1–3 of the ’609 patent. Claim 1 is
`independent, and claims 2 and 3 depend from claim 1. Independent claim 1
`is reproduced below with bracketed element letters added for reference:
`1.
`[pre] A method for tracking digital media
`presentations delivered from a first computer system to a user’s
`computer via a network comprising:
`[a] providing a corresponding web page to the user’s
`computer for each digital media presentation to be delivered
`using the first computer system;
`[b] providing identifier data to the user’s computer using
`the first computer system;
`[c] providing an applet to the user’s computer for each
`digital media presentation to be delivered using the first
`computer system, wherein the applet is operative by the user’s
`computer as a timer;
`[d] receiving at least a portion of the identifier data from
`the user’s computer responsively to the timer applet each time a
`predetermined temporal period elapses using the first computer
`system; and
`[e] storing data indicative of the received at least portion
`of the identifier data using the first computer system;
`[f] wherein each provided webpage causes corresponding
`digital media presentation data to be streamed from a second
`computer system distinct from the first computer system
`directly to the user’s computer independent of the first
`computer system;
`[g] wherein the stored data is indicative of an amount of
`time the digital media presentation data is streamed from the
`second computer system to the user’s computer; and
`[h] wherein each stored data is together indicative of a
`cumulative time the corresponding web page was displayed by
`the user’s computer.
`Ex. 1001, 14:17–45.
`
`7
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`II. ANALYSIS
`
`Principles of Law
`A.
`In an inter partes review, the petitioner has the burden of proving
`unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e).
`That burden never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The legal question of obviousness is resolved on the basis of
`underlying factual determinations including (1) the scope and content of the
`prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) when in evidence,
`objective evidence of obviousness or nonobviousness.8 Graham v. John
`Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966). One seeking to
`establish obviousness based on more than one reference also must articulate
`sufficient reasoning with rational underpinnings to combine teachings. See
`KSR, 550 U.S. at 418.
`
`The Level of Ordinary Skill in the Art
`B.
`Petitioner asserts that the level of ordinary skill in the art corresponds
`to “a bachelor’s degree in electrical engineering, computer science, or a
`
`
`8 The record does not include allegations or evidence of objective indicia of
`obviousness or nonobviousness.
`
`8
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`Patent 8,407,609 B2
`similar field with at least two years of experience in web page and Internet
`technology or a person with a master’s degree in electrical engineering,
`computer science, or a similar field with a specialization in web page and
`Internet technology.” Pet. 7 (citing Ex. 1002 ¶ 49). Patent Owner “does not
`offer a competing definition” of a person of ordinary skill in the art. PO
`Resp. 12.
`Petitioner’s proposal (unopposed by Patent Owner) is supported by
`the testimony of Dr. Storer and is consistent with the ’609 patent
`specification and the asserted prior art. See Ruiz v. A.B. Chance Co., 234
`F.3d 654, 666–67 (Fed. Cir. 2000) (identifying factors); see also Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (The “level of skill in the
`art is a prism or lens through which a judge, jury, or the Board views the
`prior art and the claimed invention.”). Accordingly, we adopt the level of
`ordinary skill as articulated by Petitioner, except that we remove the
`qualifier “at least” because it expands the range indefinitely without an
`upper bound. Accord Inst. Dec. 7 (adopting same position).9
`
`Claim Construction
`C.
`We interpret claim terms using “the same claim construction standard
`that would be used to construe the claim in a civil action under 35 U.S.C.
`282(b).” 37 C.F.R. § 42.100(b) (2019).
`The Petition proposes constructions for four claim terms and phrases:
`“applet,” “computer system,” “amount of time the digital media presentation
`
`
`9 In the 041 IPR, we adopt a slightly different definition of a person of
`ordinary skill in the art. Both definitions are substantially the same for
`purposes of these proceedings. In particular, our analysis and conclusions in
`this Decision would be the same regardless of which definition is adopted.
`
`9
`
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`data is streamed,” and “cumulative time the corresponding web page was
`displayed by the user’s computer.” Pet. 7–11 (emphasis omitted). Before
`institution, Patent Owner submitted that none of these claim terms or phrases
`required express construction. Prelim. Resp. 5; but see id. at 6–7 (disputing
`Petitioner’s proposed construction of “computer system”). In the Institution
`Decision, we agreed with Patent Owner that no claim terms or phrases
`required construction. Inst. Dec. 8.
`The parties’ post-institution briefs dispute whether Petitioner properly
`construed the term “computer system” (PO Resp. 14; Pet. Reply 3–5; PO
`Sur-Reply 1–3), but the parties agree that the Board need not construe this
`term in this proceeding (PO Resp. 13, 15; Pet. Reply 5; Tr. 16:25–17:18,
`31:16–26). We agree that it is not necessary for us to construe this term:
`although the parties do not agree on the term’s meaning, resolution of their
`dispute would not affect this Decision.10 Accordingly, we do not expressly
`construe the term “computer system,” and we apply the plain and ordinary
`meaning of that term. See Tr. 17:19–23, 32:1–6 (no objection to using the
`term’s plain and ordinary meaning).
`In addition, Patent Owner submits two district court orders analyzing
`the construction of claim terms and phrases in the ’609 patent. PO Resp. 10
`(citing Ex. 2001 (Order in Uniloc 2017 LLC v. Netflix, Inc., 8:18-cv-02055
`(C.D. Cal.)); Ex. 2002 (Order in Uniloc 2017 LLC v. Google LLC, 2:18-cv-
`
`
`10 For example, Patent Owner does not contend that the cited references fail
`to disclose a “computer system.” See generally PO Resp. Although Patent
`Owner argues that the Petition fails to show a second computer system
`distinct from the first computer system (id. at 31–33), resolution of that
`dispute is not affected by the meaning of the term “computer system,” as we
`explain in more detail in Section II.D.3.g, infra.
`
`10
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`00502 (E.D. Tex.))); see Consolidated Trial Practice Guide 47 (Nov. 2019)
`(“Consolidated TPG”)11 (“Parties should submit a prior claim construction
`determination by a federal court or the ITC in an AIA proceeding as soon as
`that determination becomes available.”). We have reviewed and considered
`the district courts’ orders. See Ex. 2001, 6, 14–18, 26–27; Ex. 2002, 57–78;
`37 C.F.R. § 42.100(b) (“Any prior claim construction determination
`concerning a term of the claim in a civil action . . . that is timely made of
`record in the inter partes review proceeding will be considered.”).
`However, given the issues presented in this proceeding, this Decision
`need not—and does not—expressly construe any claim terms or phrases.
`See PO Resp. 13 (stating that “the Board need not expressly construe any
`claim term”); Pet. Reply 23 (observing that Patent Owner “neither relies on
`nor asks the Board to adopt any of the constructions from the district court
`orders”); Tr. 17:24–18:15, 37:9–22; see also, e.g., Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(“[W]e need only construe terms ‘that are in controversy, and only to the
`extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`D. Obviousness in view of McTernan and Robinson
`Petitioner contends that claims 1–3 are rendered obvious by the
`combination of McTernan and Robinson. Pet. 40–63, 69–73. Patent Owner
`argues the Petition fails to show that the combination teaches element 1[f]
`(see infra § II.D.3.g) and fails to show a sufficient motivation to combine the
`references in the manner proposed (see infra § II.D.3.i). PO Resp. 31–43.
`
`
`11 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`11
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`For the reasons explained below, we are persuaded by a
`preponderance of the evidence that Petitioner has shown that the subject
`matter of claims 1–3 would have been obvious over McTernan and
`Robinson.
`
`1. McTernan (Ex. 1007)
`McTernan is titled “System and Method for Secure Delivery of Rich
`Media.” Ex. 1007, code (54). McTernan delivers “rich media resources” to
`client devices and tracks “show viewership” using “heartbeat packets” sent
`by client devices during playback of the media resources. Id. at code (57).
`McTernan’s system is depicted in Figure 1, reproduced below.
`
`
`
`12
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`As shown above, Figure 1 includes producers 102, web servers 104, show
`servers 106, client device 108, security servers 110, and central server 112.
`Ex. 1007, 12:12–15.
`Producers 102 create rich media presentations and send the associated
`files to show servers 106. Id. at 12:22–23, 14:2–3. Show servers 106
`upload the files to security servers 110 for encryption and then store the
`encrypted files for future transmission to requesting clients 108. Id. at 11:4–
`6, 14:6–10, 15:2–3. Security servers 110 store the encryption keys. Id. at
`14:7–15:2.
`“Web server 104 serves HTML pages to Client devices 108
`containing links to one or more available shows hosted by Show
`Server 106.” Ex. 1007, 15:14–15. “When a client 108 requests the
`transmission of content by selecting a link presented on a Web page, an
`appropriate Show Server Guide 103c is transmitted” that lists show
`servers 106 capable of transmitting the requested content. Id. at 16:22–17:2.
`Client 108 connects with a listed show server 106 (id. at 17:2–4, 17:17–18),
`and the client’s media player (player 103b) receives the encrypted rich
`media resources from that show server 106 (id. at 18:3–9). Client 108
`requests the resources’ encryption keys from security server 110 (id. at
`18:10–11), and security server 110 provides the appropriate encryption keys
`and a unique session identifier (“session id”) to client 108 (id. at 18:13–17).
`During the show, media player 103b (running on client 108) sends
`“heartbeat packets” to security server 110 at regular intervals. Ex. 1007,
`18:22–19:1. The heartbeats “consist of the unique session id and a time
`stamp” and “are generated and transmitted a [sic—at] regular
`intervals . . . e.g., every 30 seconds, every minute, etc.” Id. at 19:1–4. “The
`
`13
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`time stamp is used to measure the elapsed time from the beginning of the
`viewing of a show to the generation of the heartbeat packet. In this manner,
`the system is capable of generating statistics regarding how long each show
`is viewed for by each client.” Id. at 19:4–6. According to McTernan, “[b]y
`having each Player 103b update the Security Server 110 with viewing
`statistics, a mechanism is provided whereby precise measurements of show
`viewership can be made.” Id. at 19:10–12; see also id. at 9:22–23 (“These
`heartbeat data packets are used to calculate the total time that a user is
`watching a show . . . .”). Security server 110 retains this data and provides it
`to central server 112, and the data can be used for billing purposes. Id.
`at 19:13–20.
`
`2. Robinson (Ex. 1008)
`Robinson is titled “User communication and monitoring system for
`computer networks.” Ex. 1008, code (54). Robinson describes a user
`communication and monitoring system (UCMS) that measures the duration
`of a visitor’s presence on a web page. Id. ¶¶ 4–7. “UCMS generates
`information and enables knowledge on arrival and departure time of visitors,
`and thus of duration of visit,” and Robinson states that “visit duration
`information is potentially more valuable and accurate in monitoring the
`‘success’ of WWW sites, and in redesigning layout and marketing strategy.”
`Id. ¶ 18.
`Robinson measures the visit duration using “heartbeats” sent by an
`applet on the client’s machine. Ex. 1008 ¶¶ 8–9. “When a user arrives on a
`web page,” the user’s computer receives the web page and “a small Java
`applet which is able to communicate with the server side UCMS program.”
`Id. ¶ 20. The client sends a message to indicate the starting time of the
`
`14
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`applet, and the server updates a log-file with the LOGIN-time and an
`“identifier and page-indicator.” Id. ¶¶ 20, 22. After the page is downloaded,
`“the applet regularly sends pulse message[s] [i.e., heartbeats] to the server,”
`which indicate that the user is online. Id. ¶ 23. “[T]he applet in the client
`updates its existence at intervals e.g. of 1 second (generally in the range
`0,001 – 5 min).” Id. ¶ 28. If the server fails to receive a heartbeat pulse, it
`assumes “the client is not on-line anymore,” and “updates the log-file.” Id.
`¶ 23. “The log-file consists minimally of information about the login and
`logout times of any web page (with identifier and page-indicator) to which
`the applet has been added,” and the log-file can be used for “real time
`monitoring of users or collecting long-term statistics or for security reasons.”
`Id. ¶ 21 (emphasis omitted); see id. ¶ 31 (“[T]he same Java applet can be
`used with all pages each page containing unique identification variables.”);
`see also id. ¶ 24 (deleting applet before new web page is downloaded).
`
`3. Independent Claim 1
`
`a. 1[pre]: “A method for tracking digital media
`presentations delivered from a first computer system
`to a user’s computer via a network comprising”
`Petitioner asserts that McTernan discloses the preamble of claim 1
`(Pet. 41–45),12 and Patent Owner has not argued otherwise (see generally
`PO Resp.).
`Petitioner’s assertions are supported by the cited evidence and are
`persuasive. McTernan’s web server 104, security servers 110, and central
`
`
`12 Because Petitioner has shown sufficiently that the recitations in the
`preamble are satisfied by McTernan, we need not determine whether the
`preamble is limiting. See Vivid Techs., 200 F.3d at 803.
`
`15
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`server 112 collectively teach a first computer system. E.g., Ex. 1007, 10:22–
`11:18, 12:12–15, Fig. 1; see Pet. 41–42 (mapping these servers to the
`claimed “first computer system”). These servers facilitate the delivery of
`rich media resources (the claimed “digital media presentations”) to client
`device 108 (the claimed “user’s computer”) via data network 100. E.g.,
`Ex. 1007, code (57), 9:12–20, 12:12–21, Fig. 1. McTernan’s security
`servers 110 and central server 112 track delivery of the media resources
`using heartbeat packets generated by the client during playback. E.g., id. at
`code (57), 18:22–19:6. Accordingly, we are persuaded that McTernan
`discloses the preamble.
`
`b. 1[a]: “providing a corresponding web page to the
`user’s computer for each digital media presentation
`to be delivered using the first computer system”
`Petitioner asserts that McTernan discloses element 1[a] (Pet. 45–47),
`and Patent Owner has not argued otherwise (see generally PO Resp.).
`Petitioner’s assertions are supported by the cited evidence and are
`persuasive. McTernan states that “Web Server 104 serves HTML pages to
`Client devices 108 containing links to one or more available shows.”
`Ex. 1007, 15:14–15; see id. at 22:6–12 (web pages may be encoded in
`Hypertext Markup Language (HTML)). McTernan discloses “providing a
`corresponding web page for each digital media presentation,” as claimed, for
`two reasons that are each independently sufficient. First, McTernan
`discloses that the HTML pages may contain a link to “one . . . available
`show[].” Id. at 15:14–15; see Ex. 1002 ¶ 190. Second, after client 108
`selects one of these links, McTernan’s web server 104 provides “Show
`Server Guide 103c . . . listing all Show Servers 106 connected to the
`
`16
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`network 100 that are capable of transmitting the content requested by the
`client 108.” Ex. 1007, 16:22–17:2; see id. at 23:15–17; Ex. 1002 ¶ 191
`(testifying that an ordinary artisan would have understood the show server
`guide to be provided on a web page). Accordingly, we are persuaded that
`McTernan discloses element 1[a].
`
`c. 1[b]: “providing identifier data to the user’s
`computer using the first computer system”
`Petitioner asserts that McTernan discloses element 1[b] (Pet. 47–48),
`and Patent Owner has not argued otherwise (see generally PO Resp.).
`Petitioner’s assertions are supported by the cited evidence and are
`persuasive. McTernan’s security server 110 sends a session identifier (the
`claimed “identifier data”) to client device 108. Ex. 1007, 18:15–16, Fig. 4
`(step 402). “The session id is a reference to the unique id of the Player 103b
`and the unique id of the show being viewed.” Id. at 18:16–17; see id.
`at 15:21–22 (“The player and plug-in 103b are encoded with an identifier to
`uniquely identify the player and plug-in and thereby associate it with the
`Client 108.”). Accordingly, we are persuaded that McTernan discloses
`element 1[b].
`
`d. 1[c]: “providing an applet to the user’s computer for
`each digital media presentation to be delivered using
`the first computer system, wherein the applet is
`operative by the user’s computer as a timer”
`Petitioner asserts that McTernan and the McTernan-Robinson
`combination each disclose element 1[c] (Pet. 48–53), and Patent Owner has
`not argued otherwise (see generally PO Resp.). Petitioner’s assertions are
`supported by the cited evidence and are persuasive.
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`We are persuaded that a person of ordinary skill in the art would have
`understood McTernan’s media player 103b to disclose the claimed applet.
`See Pet. 49–50. McTernan describes media player 103b as a “plug-in or
`other software add-on” that can be “loaded into the client’s content viewer.”
`Ex. 1007, 22:14–18; see also id. at 15:13–19, 22:18–23:5; Ex. 1002 ¶ 196
`(testifying that an ordinary artisan “would have understood that a ‘plug-in’
`or ‘add-on’ runs in the context of another program, such as a browser”).
`Also, Dr. Storer testifies that an ordinary artisan would have understood
`McTernan to disclose providing a media player “for each presentation to be
`delivered,” as claimed, because “Mc[T]ernan does not require the client 108
`to possess a media player in advance.” Ex. 1002 ¶ 197 (citing Ex. 1007,
`15:16–19). We credit Dr. Storer’s testimony because it is logical and
`consistent with McTernan’s disclosure. Finally, media player 103b is
`“operative . . . as a timer,” as claimed, because it generates periodic
`heartbeat data packets that each include a time stamp “used to measure the
`elapsed time from the beginning of the viewing of a show to the generation
`of the heartbeat packet.” Ex. 1007, 18:22–19:5; see also id. at 9:21–10:2.
`Accordingly, we are persuaded that McTernan discloses element 1[c].
`Moreover, we are persuaded that Robinson discloses an applet, as
`claimed. See Pet. 50–51. After arriving on a web page, Robinson’s client
`downloads “a small Java applet” that periodically sends heartbeats to a
`server. Ex. 1008, code (57), ¶¶ 20, 22, 28. Robinson’s server uses these
`heartbeats “to make an accurate calculation of the client leaving time and of
`visit duration.” Id. ¶ 9; see id. ¶¶ 20–23 (server maintains a log-file with
`“identifier and page-indicator” and timing information). Robinson’s applet
`“can be used with all pages[,] each page containing unique identification
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`variables.” Id. ¶ 31; see also id. ¶ 24 (stating that applet is deleted from the
`client before a new web page is downloaded).
`We are also persuaded that it would have been obvious to combine
`Robinson’s applet with McTernan’s system. See Pet. 69–70. McTernan and
`Robinson both disclose software that instructs a client to periodically
`provide heartbeats to a server for tracking purposes. Ex. 1007, code (57);
`Ex. 1008, code (57). McTernan’s client retrieves “rich media plug-in and
`stand-alone player 103b” from web server 104 (Ex. 1007, 15:17–19), and
`similarly, Robinson’s client receives an applet when downloading a web
`page’s HTML code (Ex. 1008 ¶ 22). Dr. Storer testifies that a person of
`ordinary skill would have been motivated to use an applet, as disclosed in
`Robinson, in place of McTernan’s software, because it would have been “a
`simple substitution of one known element . . . for another” and would
`“obtain predictable results.” Ex. 1002 ¶ 234. Dr. Storer also testifies that
`use of an applet would “simplify the method of providing a client with
`software for generating heartbeat packets” and a person of ordinary skill in
`the art would have known how to provide an applet using McTernan’s web
`server. Id. ¶¶ 235–236 (citing Ex. 1008 ¶¶ 19, 22, 31, 41). We credit this
`testimony because it is logical and consistent with and supported by the
`disclosure in Robinson. Accordingly, we are also persuaded that the
`McTernan-Robinson combination discloses element 1[c].
`
`e. 1[d]: “receiving at least a portion of the identifier
`data from the user’s computer responsively to the
`timer applet each time a predetermined temporal
`period elapses using the first computer system”
`Petitioner asserts that McTernan and the McTernan-Robinson
`combination each disclose element 1[d] (Pet. 53–54), and Patent Owner has
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`not argued otherwise (see generally PO Resp.). Petitioner’s assertions are
`supported by the cited evidence and are persuasive.
`McTernan’s security server 110 receives heartbeat packets, which
`contain the unique session identifier, from media player 103b at regular
`intervals (“e.g., every 30 seconds, every minute, etc.”). Ex. 1007, 18:22–
`19:12, Fig. 4 (steps 408, 410); see also id. at 9:21–10:3. Accordingly, we
`are persuaded that McTernan discloses element 1[d].
`In addition, Robinson’s server receives heartbeats from the client’s
`applet at regular intervals. Ex. 1008 ¶¶ 20, 23; see id. ¶ 28 (noting that “the
`applet in the client updates its existence at intervals e.g. of 1 second”).
`Robinson’s server maintains a log-file to determine whether a client has
`stopped sending heartbeat pulses, which indicates that Robinson’s heartbeats
`include information that uniquely identifies the client and the web page. See
`id. ¶¶ 21 (“The log-file consists minimally of information about the login
`and logout times of any web page (with identifier and page-indicator) to
`which the applet has been added.”), 22 (“Minimally, with the time
`information, the server saves some kind of identifier and page-indicator.”),
`23 (“The server reacts to cessation of heartbeat pulses by . . . updat[ing] the
`log-file and refus[ing] all connection attempts to that client.”), 31 (noting
`pages can each contain “unique identification variables”). Dr. Storer
`testifies that, based