`Tel: 571-272-7822
`
`
`Paper 7
`Entered: February 4, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SLING TV L.L.C.,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2019-01367
`Patent 8,407,609 B2
`____________
`
`
`Before CHARLES J. BOUDREAU, DANIEL J. GALLIGAN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`DIRBA, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
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`Patent 8,407,609 B2
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`I. INTRODUCTION
`On July 22, 2019, Sling TV L.L.C. (“Petitioner”) 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 Patent Owner Preliminary Response on
`November 6, 2019. Paper 6 (“Prelim. Resp.”).
`To institute an inter partes review, we must determine that the
`information presented in the Petition, viewed in light of the Preliminary
`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).
`Having considered the parties’ submissions, we determine that
`Petitioner has demonstrated a reasonable likelihood that it would prevail in
`establishing the unpatentability of claims 1–3 on one of the grounds asserted
`in the Petition. Accordingly, we institute an inter partes review of the
`challenged claims.
`
`Related Matters
`A.
`The parties identify the following related proceedings currently or
`previously pending in district courts: Uniloc 2017, LLC v. Sling TV, LLC,
`1:19-cv-00278 (D. Colo.); Uniloc 2017 LLC v. Netflix, Inc., 8:18-cv-01899
`(C.D. Cal.); Uniloc 2017 LLC v. American Broadcasting Companies, Inc.,
`8:18-cv-01930 (C.D. Cal.); Uniloc 2017 LLC v. Google LLC, 2:18-cv-00456
`(E.D. Tex.); Uniloc 2017 LLC v. Google LLC, 2:18-cv-00502 (E.D. Tex.);
`Uniloc 2017 LLC v. Netflix, Inc., 8:18-cv-02055 (C.D. Cal.); Uniloc 2017
`LLC v. American Broadcasting Companies, Inc., 8:18-cv-02056 (C.D. Cal.);
`Uniloc 2017 LLC v. Roku, Inc., 1:18-cv-01126 (W.D. Tex.); Uniloc 2017
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`LLC v. Vudu, Inc., 1:19-cv-00183 (D. Del.); Uniloc 2017 LLC v. Roku, Inc.,
`8:19-cv-00295 (C.D. Cal.). Pet. v–vi; Prelim. Resp. 2–3.
`The ’609 patent is also the subject of two other petitions for inter
`partes review: IPR2020-00041 (filed by Netflix, Inc. and Roku, Inc. on
`October 18, 2019) and IPR2020-00115 (filed by Google LLC on October 31,
`2019). Prelim. Resp. 3. A decision whether to institute has not been entered
`in either proceeding.
`
`Real Parties in Interest
`B.
`Petitioner 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. Patent Owner identifies no other real
`parties in interest. Paper 3, 1 (Mandatory Notice).
`
`The Petition’s Asserted Grounds
`C.
`Petitioner asserts the following grounds of unpatentability:
`
`Claims Challenged 35 U.S.C. §
`1–3
`103(a)1
`
`References
`Jacoby,2 Bland3
`
`1–3
`
`103(a)
`
`McTernan,4 Robinson5
`
`
`1 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.
`2 Jacoby, US 2004/0254887 A1, published Dec. 16, 2004 (Ex. 1006).
`3 Bland et al., US 5,732,218, issued Mar. 24, 1998 (Ex. 1009).
`4 McTernan et al., WO 01/89195 A2, published Nov. 22, 2001 (Ex. 1007).
`5 Robinson et al., EP 0 939 516 A2, published Sept. 1, 1999. (Ex. 1008).
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`3
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`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, Abstract. An exemplary web
`page provided to a user’s computer is shown in Figure 9, which is
`reproduced below:
`
`
`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
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`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
`(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,”6 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 10, 15, or 30 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 the
`client’s cookie data (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
`
`
`6 “‘Applet,’ as used herein, generally refers to a software component that
`runs in the context of another program . . . .” Ex. 1001, 12:67–13:3.
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`5
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`when a user began viewing a different page, or show, thereby providing
`knowledge of how long a particular viewer spent on a particular page.” Id.
`at 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.
`
`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:
`1.
`A method for tracking digital media presentations
`delivered from a first computer system to a user’s computer via
`a network comprising:
`providing a corresponding web page to the user’s
`computer for each digital media presentation to be delivered
`using the first computer system;
`providing identifier data to the user’s computer using the
`first computer system;
`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;
`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
`storing data indicative of the received at least portion of
`the identifier data using the first computer system;
`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;
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`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
`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.
`
`II. ANALYSIS
`
`The Level of Ordinary Skill in the Art
`A.
`Petitioner asserts that the level of ordinary skill in the art corresponds
`to “a bachelor’s degree in electrical engineering, computer science, or a
`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 for POSITA at this preliminary stage.” Prelim.
`Resp. 4.
`For purposes of this Decision, we adopt the level of ordinary skill as
`articulated by Petitioner, except that we remove the qualifier “at least” to
`clarify the articulated level of experience and education. The qualifier is
`vague because it expands the range indefinitely without an upper bound,
`precluding a meaningful indication of the level of ordinary skill in the art.
`We adopt Petitioner’s proposal because, based on the current record, this
`proposal is both reasonable and supported by the testimony of Dr. Storer.
`To the extent the level of ordinary skill in the art is in dispute or makes a
`material difference in the obviousness analysis, the parties will have the
`opportunity during trial to brief their respective positions in this regard.
`
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`Claim Construction
`B.
`Because the Petition was filed after November 13, 2018, 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).7
`Petitioner proposes constructions for the terms “applet” and
`“computer system” and the phrases “an amount of time the digital media
`presentation data is streamed” and “a cumulative time the corresponding
`web page was displayed by the user’s computer.” Pet. 7–11 (emphasis
`omitted). Patent Owner contends that no claim terms or phrases require
`express construction at this stage. Prelim. Resp. 5. Patent Owner also
`argues that Petitioner’s proposed construction of “computer system” is in
`error. Id. at 6–7.
`We agree with Patent Owner that no express construction is required
`at this time. Our determination whether to institute does not depend on a
`construction of any claim terms or phrases (including those identified by
`Petitioner), and thus we do not construe expressly any terms at this
`preliminary stage. See, 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
`
`
`7 On October 11, 2018, the USPTO revised its rules to harmonize the
`Board’s claim construction standard with that used in federal district court.
`Changes to the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340
`(Oct. 11, 2018). This rule change applies to petitions filed on or after
`November 13, 2018. Id.
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`controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999))).
`
`Law on Obviousness
`C.
`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 nonobviousness.8 Graham v. John Deere Co. of Kan.
`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 Int’l Co. v. Teleflex
`Inc., 550 U.S. 398, 418 (2007).
`
`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 the references would have been
`combined as proposed (see infra § II.D.3.i). Having considered the
`arguments and evidence presented in the Petition in light of Patent Owner’s
`Preliminary Response, we are persuaded at this stage of the proceeding, for
`the reasons that follow, that Petitioner has demonstrated a reasonable
`
`
`8 The current record does not include allegations or evidence of objective
`indicia of nonobviousness.
`
`9
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`likelihood of prevailing in showing that claims 1–3 would have been
`obvious over the combined teachings of McTernan and Robinson.
`
`1. McTernan (Ex. 1007)
`McTernan is titled “System and Method for Secure Delivery of Rich
`Media.” Ex. 1007, code (54). McTernan’s client generates heartbeat
`packets when rich media resources (or “show[s]”) are being played by the
`client so that the server can measure show viewership. Id. at Abstract.
`McTernan’s system is depicted in Figure 1, reproduced below.
`
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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,
`along with various other components. Ex. 1007, 12:12–16. Producers 102
`create rich media presentations and send the associated files “to a Show
`Server 106 for distribution to requesting clients 108.” Id. at 12:22–23, 14:2–
`3. The show server 106 uploads the files to a security server 110, which
`encrypts the files, returns the result to the show server 106, and stores the
`encryption key. Id. at 14:6–15:3.
`“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, 15:13–15. “If the Client 108 does not possess the required
`rich media plug-in and stand-alone player 103b, the client retrieves it from
`the Web Server 104.” Id. at 15:17–19. “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.” Id. at 15:21–22. “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
`all show servers 106 that are capable of transmitting the requested content.
`Id. at 16:22–17:2. Client 108 connects with a show server 106 listed in the
`show server guide 103. Id. at 17:2–4, 17:17–18. The client’s media player
`(player 103b) receives the encrypted rich media resources from show server
`106 and requests an encryption key for each resource from security server
`110. Id. at 18:3–5, 18:10–11. Security server 110 provides the appropriate
`keys and a session identifier, which “is a reference to the unique id of the
`Player 103b and the unique id of the show being viewed.” Id. at 18:13–17.
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`During the show, media player 103b 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,” such as every 30
`seconds or every minute. Id. at 19:1–3. “The 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. 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
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`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
`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 [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.”);
`cf. 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 1.9
`Pet. 41–45. According to Petitioner, McTernan’s web servers 104, security
`
`
`9 Petitioner treats the preamble of claim 1 as a limitation. Pet. 41–45; see
`also id. at 12–16. For purposes of this Decision, we assume, without
`deciding, that the preamble is limiting.
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`servers 110, and central servers 112 teach the claimed “first computer
`system,” and McTernan’s client device 108 teaches the claimed “user’s
`computer.” Id. at 41–44 (citing Ex. 1007, 9:12–20, 11:10–18; 12:15–18,
`Fig. 1). Petitioner contends that McTernan delivers rich media resources
`(which Petitioner maps to the claimed “digital media presentations”) to
`client device 108 via data network 100. Id. at 44 (citing Ex. 1007, 5:1–17,
`9:12–20, 12:12–23, 26:1–2, 29:1–3, Fig. 1). Petitioner submits that
`McTernan tracks delivery of these rich media resources using heartbeat
`packets, which are generated by the client during playback of the media. Id.
`at 44–45 (citing Ex. 1007, Abstract, 9:10–11).
`Patent Owner does not respond to Petitioner’s arguments, analysis, or
`evidence for the preamble. See generally Prelim. Resp.
`Petitioner’s assertions and explanations are consistent with and
`supported by the evidence cited by Petitioner. Accordingly, we are
`persuaded that Petitioner sufficiently has shown 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.
`Petitioner contends that McTernan’s web server 104 serves HTML pages to
`browser software on client device 108. Id. at 45 (citing Ex. 1007, 15:13–16,
`22:6–10). According to Petitioner, McTernan discloses providing a
`“corresponding” web page for each show because the HTML page provided
`to the client may contain a link to a single show. Id. at 46 (citing Ex. 1007,
`15:14–16; Ex. 1002 ¶ 190). In addition, Petitioner submits that a person of
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`ordinary skill would have understood McTernan’s “show server guide,”
`which is also provided to the client, to be a corresponding web page for a
`particular show. Id. at 46–47 (citing Ex. 1007, 16:22–17:2, 22:5–10, 23:15–
`17, 23:20–21; Ex. 1002 ¶ 191).
`Patent Owner does not respond to Petitioner’s arguments, analysis, or
`evidence for this limitation. See generally Prelim. Resp.
`Petitioner’s assertions and explanations are consistent with and
`supported by the evidence cited by Petitioner. Accordingly, we are
`persuaded that Petitioner sufficiently has shown that McTernan discloses
`this limitation.
`
`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.
`Petitioner submits that McTernan’s security server 110 sends a session
`identifier (which maps to the claimed “identifier data”) to client device 108.
`Id. (citing Ex. 1007, 18:15–17, 24:18–25:4, Fig. 4 (step 402)). According to
`Petitioner, the session identifier includes the “unique id of the Player 103b,”
`which associates a client and its media player, and “the unique id of the
`show being viewed.” Id. at 47 (quoting Ex. 1007, 18:16–17; citing
`Ex. 1007, Abstract, 15:16–22, 22:14–23:5).
`Patent Owner does not respond to Petitioner’s arguments, analysis, or
`evidence for this limitation. See generally Prelim. Resp.
`Petitioner’s assertions and explanations are consistent with and
`supported by the evidence cited by Petitioner. Accordingly, we are
`persuaded that Petitioner sufficiently has shown that McTernan discloses
`this limitation.
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`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.
`First, according to Petitioner, a person of ordinary skill in the art
`would have understood McTernan’s media player 103b to be an applet based
`on McTernan’s description of media player 103b. Pet. 49 (citing Ex. 1007,
`15:13–22, 22:15–16; Ex. 1002 ¶¶ 196–197). Petitioner also submits that,
`because McTernan does not require client 108 to have media player 103 in
`advance, a person of ordinary skill would have understood that web server
`104 can provide a media player to the client “for each digital media
`presentation to be delivered.” Id. (citing Ex. 1007, 15:16–19; Ex. 1002
`¶¶ 196–197). Petitioner contends that McTernan discloses that the media
`player is operative by the client as a timer because the media player
`periodically generates heartbeat data packets that include a time stamp. Id.
`at 50 (citing Ex. 1007, 9:21–10:1, 11:14–18, 18:22–19:8).
`Second, Petitioner contends that Robinson discloses the claimed
`applet that is operative by the user’s computer as a timer. Pet. 50. Petitioner
`submits that Robinson’s “applet program,” which is downloaded by a client,
`periodically sends heartbeats to a host computer. Id. (quoting Ex. 1008,
`Abstract; citing Ex. 1008 ¶¶ 20, 23, 28). Petitioner contends that Robinson
`measures the duration of a client’s visit to a page by updating a log-file with
`timing information and an “identifier and page-indicator” when the host fails
`to receive a heartbeat. Id. at 51 (citing Ex. 1008 ¶¶ 5, 8, 20–22).
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`According to Petitioner, using an applet in McTernan would have
`been obvious in view of Robinson. Pet. 52 (citing Ex. 1008, Abstract, ¶ 20;
`Ex. 1002 ¶¶ 203, 233–236); see id. at 69–70 (alleging motivation to combine
`references). Petitioner argues that it would have been obvious to combine
`McTernan and Robinson because both references “disclose a server
`providing a client with software that instructs the client to periodically
`provide heartbeats for tracking purposes.” Id. at 69 (citing Ex. 1007,
`Abstract; Ex. 1008, Abstract). In addition, Petitioner contends that a person
`of ordinary skill would have been motivated to substitute McTernan’s
`software for Robinson’s applet, as this would be a simple substitution of one
`known element for another to obtain predictable results (i.e., “the client
`would generate heartbeats according to the software in the applet”). Id.
`Petitioner also asserts that a person of ordinary skill “would have been
`motivated to incorporate Robinson’s applet into the system of Mc[T]ernan to
`simplify the method of providing a client with software for generating
`heartbeat packets” because “Robinson’s applet ‘does not require installation
`on the client machine (e.g. plug-ins).’” Id. at 69–70 (quoting Ex. 1008 ¶ 19;
`citing Ex. 1008 ¶¶ 22, 31, 41; Ex. 1002 ¶¶ 233–236).
`Patent Owner does not respond to Petitioner’s arguments, analysis, or
`evidence for this limitation. See generally Prelim. Resp.
`Petitioner’s assertions and explanations are consistent with and
`supported by the evidence cited by Petitioner. Accordingly, we are
`persuaded that Petitioner sufficiently has shown that McTernan discloses
`this limitation. Moreover, we are persuaded that Petitioner sufficiently has
`shown that the McTernan-Robinson combination discloses this limitation.
`
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`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.
`First, according to Petitioner, McTernan discloses this limitation
`because McTernan’s security server 110 receives heartbeats tagged with the
`session identifier from media player 103b at regular intervals. Pet. 53–54
`(citing Ex. 1007, 9:21–10:8, 18:22–19:12, Fig. 4 (steps 402, 410)).
`Second, Petitioner contends that Robinson discloses this limitation.
`According to Petitioner, Robinson’s server receives regular heartbeats from
`the client’s applet, and a person of ordinary skill “would understand that the
`client provides the page-indicator with the heartbeats to allow the UCMS
`server to save the timing information with the page-indicator.” Id. at 54
`(citing Ex. 1008 ¶¶ 5, 8, 20–23, 28; Ex. 1002 ¶ 207). Petitioner argues that a
`person of ordinary skill in the art would have been motivated to combine
`these teachings with McTernan.10 Id. (citing Ex. 1002 ¶ 208).
`Patent Owner does not respond to Petitioner’s arguments, analysis, or
`evidence for this limitation. See generally Prelim. Resp.
`Petitioner’s assertions and explanations regarding McTernan’s
`disclosure are consistent with and supported by the evidence cited by
`Petitioner. Accordingly, we are persuaded that Petitioner sufficiently has
`
`
`10 In particular, Petitioner contends that it would have been obvious to add
`Robinson’s heartbeats (which track time on a page) to McTernan’s system
`(which tracks time a show is viewed). See Pet. 52, 54, 56, 61. We address
`this contention with Patent Owner’s challenge to it. See infra § II.D.3.i.
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`shown that McTernan discloses this limitation. Moreover, we are persuaded
`that Petitioner sufficiently has shown that the McTernan-Robinson
`combination discloses this limitation.
`
`f. 1[e]: “storing data indicative of the received at least
`portion of the identifier data using the first computer
`system”
`Petitioner asserts that McTernan discloses element 1[e]. Pet. 55–56.
`Petitioner contends that McTernan’s security server 110 “store[s] heartbeat
`packets indexed according to/indicative of the received session ID.” Id. at
`55 (citing Ex. 1007, 25:16–20, Fig. 4 (step 410)).
`Patent Owner does not respond to Petitioner’s arguments, analysis, or
`evidence for this limitation. See generally Prelim. Resp.
`Petitioner’s assertions and explanations are consistent with and
`supported by the evidence cited by Petitioner. Accordingly, we are
`persuaded that Petitioner sufficiently has shown that McTernan discloses
`this limitation.
`
`g. 1[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”
`Petitioner asserts that McTernan discloses element 1[f]. Pet. 56–59;
`see also id. at 42–43 (arguing first and second computer systems are
`“distinct” from each other). Petitioner contends that McTernan’s show
`servers 106 (which map to the claimed “second computer system”) are
`distinct from the “first computer system” (which includes web server 104,
`security servers 110, and central server 112) because they are “separate
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`servers with separate functionality.” Id. at 43 (citing Ex. 1007, 2:13–17,
`12:11–19:21)). Petitioner also alleges that show servers 106 provide a show
`to client device 108 independent of the first computer system. Id. at 56–58
`(citing Ex. 1007, 16:9–21, 17:7–16, Fig. 1). In particular, Petitioner submits
`that McTernan’s client 108 “negotiate[s] and maintain[s] a connection with
`Show Servers 106, which provide content used in delivering a presentation
`or show.” Id. at 57–58 (quoting Ex. 1007, 16:9–21) (alterations in original;
`emphasis omitted).
`In addition, Petitioner submits that the web page provided by web
`server 104 causes the corresponding digital media presentation to be
`streamed. Pet. 56–57, 59 (citing Ex. 1007, 15:14–15; Pet. 45–47 (element
`1[b])). According to Petitioner, a person of ordinary skill in the art “would
`have understood the ‘digital media presentation data to be streamed’ by
`Mc[T]ernan’s show servers 106 based on Mc[T]ernan’s disclosure of a [sic]
`providing content from show server 106 to client 108 via a UDP
`connection.” Id. at 58 (citing Ex. 1007, 5:1–10; Ex. 1002 ¶¶ 215–216).
`Patent Owner argues that show servers 106 (the identified second
`computer system) “have a common operator or are under common control of
`the servers identified as the ‘first computer system,’” which includes web
`server 104 and security server 110. Prelim. Resp. 16–17. From this, Patent
`Owner contends that the first and second computer systems identified by
`Petitioner “are not distinct computer systems.” Id. at 17.
`On this record, we are persuaded that McTernan discloses this claim
`limitation. Petitioner’s assertions and explanations are consistent with and
`supported by the evidence cited by Petitioner. McTernan’s show servers
`106 are distinct from and operate independently of McTernan’s web server
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`104, security servers 110, and central server 112. E.g., Ex. 1007, 14:6–15,
`17:7–18:9 (describing function and operation of show servers 106); see id. at
`Fig. 1 (il