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`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
`
`PATENT OWNER RESPONSE TO PETITION
`
`PURSUANT TO 37 C.F.R. § 42.120
`
`

`

`
`
`
`I.
`
`II.
`
`III.
`
`IV.
`
`IPR2019-01367
`U.S. Patent 8,407,609
`
`TABLE OF CONTENTS
`
`INTRODUCTION ....................................................................................... 1
`
`THE ’609 PATENT ..................................................................................... 1
`
`A.
`
`Effective Filing Date of the ‘609 Patent ........................................... 1
`
`B.
`
`Overview of the ‘609 Patent ............................................................. 2
`
`RELATED PROCEEDINGS ...................................................................... 9
`
`PETITIONER DOES NOT PROVE UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM BY A PREPONDERANCE OF THE
`EVIDENCE ............................................................................................... 11
`
`A.
`
`The Level of Ordinary Skill in the Art ............................................ 12
`
`B.
`
`Claim Construction ......................................................................... 12
`
`1.
`
`“computer system” ................................................................ 14
`
`C.
`
`Jacoby and Bland do not disclose each element of each of the
`claims of the ‘609 patent. (Ground 1) ............................................. 15
`
`1.
`
`2.
`
`3.
`
`Neither Jacoby nor Bland discloses “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.” .................... 15
`
`Jacoby does not teach “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.” ............................................... 21
`
`Jacoby does not teach “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.” ............................................................................. 25
`
`
`
`ii
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`IPR2019-01367
`U.S. Patent 8,407,609
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`
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`4.
`
`5.
`
`Jacoby does not teach “providing a corresponding web page
`to the user’s computer for each digital media presentation to
`be delivered.” ........................................................................ 28
`
`The Petition fails to prove obviousness of any dependent
`claim. ..................................................................................... 31
`
`D.
`
`The combination of McTernan and Robinson does not teach all of
`the elements of the claims of the ‘609 patent. (Ground 2) .............. 31
`
`1. McTernan does not teach “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.” .......................... 31
`
`2.
`
`The combination of McTernan and Robinson does not teach
`“wherein each stored data is together indicative of a
`cumulative time the corresponding web page was displayed
`by the user’s computer” because the combination is based
`upon impermissible hindsight. .............................................. 34
`
`3.
`
`The Petition fails to prove obviousness of any dependent
`claim. ..................................................................................... 43
`
`V.
`
`APJS ARE UNCONSTITUTIONALLY APPOINTED PRINCIPAL
`OFFICERS ................................................................................................. 44
`
`VI.
`
`CONCLUSION ......................................................................................... 47
`
`CERTIFICATE OF COMPLIANCE ..................................................................... 49
`
`CERTIFICATE OF SERVICE ............................................................................... 50
`
`
`
`
`
`
`iii
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`

`

`IPR2019-01367
`U.S. Patent 8,407,609
`
`
`
`Exhibits
`
`2001 Claim Construction Ruling, Uniloc 2017 LLC v. Netflix, Inc., SACV 18-
`2055-GW-DFMx, Dkt. 138 (C.D. Cal. Mar. 9, 2020)
`
`2002 Claim Construction Memorandum and Order, Uniloc 2017 LLC v. Google
`LLC, Case No. 2:18-CV-00502-JRG-RSP, Dkt. 149 (E.D. Tex. Jan. 20,
`2020) (adopted Dkt. 198, Mar. 24, 2020)
`
`iv
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`IPR2019-01367
`U.S. Patent 8,407,609
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`I.
`
`
`INTRODUCTION
`
`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Response to
`
`Petition IPR2019-01367 for Inter Partes Review (“Pet.” or “Petition”) of United
`
`States Patent No. 8,407,609 (“the ’609 patent” or “EX1001”) filed by Sling TV
`
`L.L.C. (“Petitioner”).
`
`In view of the reasons presented herein, the Petition should be denied in its
`
`entirety, as Petitioner has failed to meet its burden of showing that any challenged
`
`claim is unpatentable. 35 U.S.C. § 316(e).
`
`Uniloc addresses each ground and provides specific examples of how
`
`Petitioner failed to establish that any of the challenged ‘609 Patent claims is
`
`unpatentable. As a non-limiting example described in more detail below, the Petition
`
`fails to show that the cited art teaches every feature of any of the challenged claims.
`
`Accordingly, Uniloc respectfully requests that the Board find that Petitioner
`
`has failed to carry its burden of proof that any of Claims 1-3 of the ‘609 Patent are
`
`unpatentable.
`
`II. THE ’609 PATENT
`
`A. Effective Filing Date of the ‘609 Patent
`
`The ’609 patent is titled “System and method for providing and tracking the
`
`provision of audio and visual presentations via a computer network.” The ʼ609
`
`patent issued March 26, 2013, from U.S. Patent Application No. 12/545,131 filed
`
`
`
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`1
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`IPR2019-01367
`U.S. Patent 8,407,609
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`August 21, 2009, claiming priority to provisional application No. 61/090,672, filed
`
`on August 21, 2008. The Petition does not dispute that the effective filing date of
`
`the ‘609 Patent is August 21, 2008.
`
`B. Overview of the ‘609 Patent
`
`The ’609 patent discloses systems and methods for providing digital
`
`media presentations to user computers, and for tracking the viewing of the
`
`presentations on user computers. Ex. 1001, Abstract.
`
`Fig. 1 of the ‘609 patent depicts a server system 30 that might be used to
`
`delivery content to user computers 20:
`
`
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`2
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`The server system 30 includes database server 32, content server 34, and file
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`IPR2019-01367
`U.S. Patent 8,407,609
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`server 36.
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`As explained in the ‘609 patent, a user of device 20 may request a page of
`
`from the content server 34, and the content server 34 may provide a web page to the
`
`device 20. Id. 4:57-62. Figures 2 and 3 of the ‘609 patent depict web pages that
`
`include a number of different presentations from which a user may select a particular
`
`presentation to play. Id. 4:36-38; Id. 5:34-39. After the user selects a particular
`
`presentation, a page as in Figure 9 is provided to the user:
`
`Ex. 1001, Fig. 9. As shown, Figure 9 depicts a web page (900) with portion 930
`
`(including portion 920, where a presentation selected by the user may be displayed)
`
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`3
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`IPR2019-01367
`U.S. Patent 8,407,609
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`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.
`
`The ‘609 patent discloses several different methods by which content (e.g. a
`
`presentation) shown on web page 900 and played in presentation area 920 may be
`
`made available to a content server, so that the content server may then make that
`
`data available to user computers. Figure 4 depicts an embodiment method in which
`
`a user uploads content, such as a podcast, to a system 30 that includes a content
`
`server 34, a database server 32, and a file server 36. Figure 5 depicts an embodiment
`
`in which the user uploads a link to content, such as a link to a podcast, housed
`
`elsewhere, rather than uploading the content itself, to system 30. Figure 6 depicts
`
`an embodiment method in which the content is also saved on system 30, however
`
`rather than upload existing content to the system 30, the user creates the content via
`
`telephone and the content is saved onto the system 30. Figure 8 depicts an
`
`embodiment in which a content feed, such as an RSS feed, uploads content to system
`
`30.
`
`The ‘609 patent notes that in order to value the advertising space 910 and 940
`
`on the web page 900, the ’609 patent seeks to “identify how long the media was
`
`actually, or may typically be played.” Id. at 12:6–15. In the embodiments in which
`
`the content is loaded to one of the servers 32 (database server), 34 (content server),
`
`and 36 (file server) of system 30, determining how long content is played can be
`
`
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`4
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`

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`determined simply because system 30 can monitor the playing of content hosted on
`
`its system 30:
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`IPR2019-01367
`U.S. Patent 8,407,609
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`For example, it may be determined when a user begins and ends
`
`listening to and/or watching a presentation, e.g., a podcast, for example.
`
`Where a selected presentation is streamed from computers 30, such an
`
`inquiry may be relatively simple, by confirming the content streaming
`
`is progressing as expected, for example.
`
`Id. at 7:23-28 (emphasis added). However, in embodiments in which the content is
`
`not hosted on the system 30, such as in the embodiment of Figure 5 in which the
`
`content is hosted elsewhere, system 30 does not have the control necessary to track
`
`how long the content is streamed:
`
`As an operator of system 30 does not necessarily exercise control over
`
`the content data storage resource, the operator may not be able to
`
`directly operate the storage resource in a manner to directly track how
`
`long content is streamed therefrom to a particular user.
`
`Id. at 12:40-45 (emphasis added). The ‘609 patent further states that when content
`
`is hosted elsewhere, the system 30 may use a timer to monitor playing time:
`
`Where content is housed elsewhere and linked to by computers 30, such
`
`a direct inquiry may not be readily available though. Tracking may be
`
`performed, for example, via entry into one or more tables of database
`
`server 32 of timed data. At each expiration of a timer, such as every 15
`
`seconds, a table entry may be made corresponding to the user, the page
`5
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`IPR2019-01367
`U.S. Patent 8,407,609
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`the user is on, and, to the extent the user is on the same page as was the
`
`user upon the last expiration of the timer, the user's total time, to the
`
`current time, spent on that same page. The user may be identified by,
`
`for example, any of a number of known methodologies, such as the
`
`information the user used to login, the user's IP address, the user's
`
`response to an identifying query, or the like.
`
`Id. at 7:28-41 (emphasis added). The ‘609 patent notes that determining a viewing
`
`time for presentations hosted elsewhere is “unconventional”:
`
`Thus, certain embodiments of the present invention provide a capability
`
`to know that a viewer began viewing a particular show at a certain time,
`
`and when a user began viewing a different page, or show, thereby
`
`providing knowledge of how long a particular viewer spent on a
`
`particular page. Such knowledge is not conventionally available, and
`
`the provision of such knowledge by certain embodiments of the present
`
`invention allows for an increasing scale of payments for advertising
`
`displayed on a given page correspondent to how long a viewer or
`
`viewers remain, or typically remain, on that particular page or like
`
`pages. Thus, a tabular tracking of the present invention allows for the
`
`knowledge of how long a viewer spends on a page, what the viewer was
`
`viewing or listening to on the given page, the ads shown while the
`
`viewer was viewing or listening, how long the ads were shown, and
`
`what ads were shown to the view correspondent to that viewer's
`
`identification and/or login.
`
`Id. at 7:42-58 (emphasis added); see also Id. at 13:43-14:8.
`
`
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`6
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`IPR2019-01367
`U.S. Patent 8,407,609
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`In an embodiment, the ‘609 patent explains that the “timer” that may be used
`
`to monitor the playing of content housed elsewhere may be a “timer applet,” which
`
`is included in the web page 900. Id. at 12:66-67. The ‘609 patent states:
`
`Regardless, page 900 may include a timer applet. "Applet," as used
`
`herein, generally refers to a software component that runs in the context
`
`of another program, in the case of page 900 of FIG. 9, a web browser.
`
`Such an applet may typically used to perform a specific function or task,
`
`usually narrow in scope. In the case of FIGS. 9 and 10, such a timer
`
`applet may be used to indicate when a pre-determined temporal period
`
`has elapsed. For example, such an applet may be used to indicate each
`
`time some temporal period, such as 10, 15 or 30 seconds, elapses. Such
`
`a timer applet may be started at block 1020.
`
`Id. at 12:67-13:9 (emphasis added). “[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.
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`7
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`IPR2019-01367
`U.S. Patent 8,407,609
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`As noted in the ’609 patent, the use of the applet “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.” 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.
`
`The ‘609 patent issued with one independent claim, claim 1. The text of
`
`independent claim 1 is copied herein for the convenience of the Board:
`
`
`
`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;
`
`
`
`
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`8
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`IPR2019-01367
`U.S. Patent 8,407,609
`
`
`
`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;
`
`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.
`
`
`III. RELATED PROCEEDINGS
`
`The following proceedings concern the ’609 patent.
`
`Case Name
`
`Case Filing
`Date
`10/23/2018 Uniloc 2017 LLC, et al v. Netflix,
`Inc.
`10/29/2018 Uniloc 2017 LLC et al v. American
`Broadcasting Companies, Inc.
`11/1/2018 Uniloc 2017 LLC et al v. Google
`LLC
`11/17/2018 Uniloc 2017 LLC et al v. Google
`LLC
`11/17/2018 Uniloc 2017 LLC v. Netflix, Inc.
`
`Case Number
`
`Court
`
`8-18-cv-01899
`
`CDCA
`
`8-18-cv-01930
`
`CDCA
`
`2-18-cv-00456
`
`EDTX
`
`2-18-cv-00502
`
`EDTX
`
`8-18-cv-02055
`
`CDCA
`
`
`
`
`
`9
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`

`

`IPR2019-01367
`U.S. Patent 8,407,609
`
`
`11/17/2018 Uniloc 2017 LLC v. American
`Broadcasting Companies, Inc.
`12/27/2018 Uniloc 2017 LLC v. Roku, Inc.
`
`8-18-cv-02056
`
`CDCA
`
`1-18-cv-01126 WDTX
`
`1/30/2019 Uniloc 2017 LLC v. Vudu, Inc.
`
`1-19-cv-00183
`
`DDE
`
`1/31/2019 Uniloc 2017, LLC v. Sling TV, LLC 1-19-cv-00278
`
`DCO
`
`2/14/2019 Uniloc 2017 LLC v. Roku, Inc.
`
`8-19-cv-00295
`
`CDCA
`
`7/22/2019
`
`Sling TV LLC et al v. Uniloc 2017
`LLC
`10/18/2019 Netflix, Inc. et al v. Uniloc 2017
`LLC
`10/31/2019 Google, LLC v. Uniloc 2017 LLC
`
`IPR2019-01367
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`PTAB
`
`IPR2020-00041
`
`PTAB
`
`IPR2020-00115
`
`PTAB
`
`3/3/2020
`
`Vudu, Inc. v. Uniloc 2017 LLC
`
`IPR2020-00677
`
`PTAB
`
`
`
`Two district courts have construed claim terms of the ’609 patent. See Ex.
`
`2001, Claim Construction Ruling, Uniloc 2017 LLC v. Netflix, Inc., SACV 18-2055-
`
`GW-DFMx, Dkt. 138 (C.D. Cal. Mar. 9, 2020); Ex. 2002, Claim Construction
`
`Memorandum and Order, Uniloc 2017 LLC v. Google LLC, Case No. 2:18-CV-
`
`00502-JRG-RSP, Dkt. 149 (E.D. Tex. Jan. 20, 2020) (adopted Dkt. 198, Mar. 24,
`
`2020).
`
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`10
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`IPR2019-01367
`U.S. Patent 8,407,609
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`IV. PETITIONER DOES NOT PROVE UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM BY A PREPONDERANCE OF THE
`EVIDENCE
`
`“In an [inter partes review], the petitioner has the burden from the onset to
`
`show with particularity why the patent it challenges is unpatentable.” Harmonic Inc.
`
`v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016).
`
`While the Board has instituted Inter Partes Review here, as the Court of
`
`Appeals has stated:
`
`[T]here is a significant difference between a petitioner's burden to
`
`establish a “reasonable likelihood of success” at institution, and
`
`actually proving invalidity by a preponderance of the evidence at trial.
`
`Compare 35 U.S.C. § 314(a) (standard for institution of inter partes
`
`review), with 35U.S.C. § 316(e) (burden of proving invalidity during
`
`inter partes review).
`
`Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016).
`
`As demonstrated herein, Petitioner has failed to meet its burden of proving
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`any proposition of invalidity, as to any claim, by a preponderance of the evidence.
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`35 U.S.C. §316(e).
`
`The Petition raises the following obviousness challenges:
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`
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`11
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`IPR2019-01367
`U.S. Patent 8,407,609
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`
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`Ground
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`1
`
`2
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`
`
`1–3
`
`1–3
`
`Claims
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`Reference(s)
`
`Jacoby1 and Bland2
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`McTernan3 and Robinson4
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`A. The Level of Ordinary Skill in the Art
`
`Given that Petitioner fails to meet its burden of proof in establishing
`
`obviousness when applying its own definitions of a person of ordinary skill in the art
`
`(“POSITA” or “POSA”), Patent Owner does not offer a competing definition for
`
`POSITA.
`
`B. Claim Construction
`
`“In an inter partes review proceeding, a claim of a patent . . . shall be
`
`construed using the same claim construction standard that would be used to construe
`
`the claim in a civil action,” which includes “construing the claim in accordance with
`
`the ordinary and customary meaning of such claim as understood by one of ordinary
`
`
`1 EX1006, U.S. Pat. Pub. No. 2004/0254887.
`
`2 EX1009, U.S. Pat. No. 5,732,218.
`
`3 EX1007, WO 01/89195.
`
`4 EX1008, EP 0,939,516.
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`12
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`IPR2019-01367
`U.S. Patent 8,407,609
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`skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R.
`
`§ 42.100(b).
`
`Patent Owner submits that the Board need not expressly construe any claim
`
`term in a particular manner in order to arrive at the conclusion that the Petition is
`
`substantively deficient. Patent Owner reserves the right to challenge any
`
`construction offered by Petitioner. Although Patent Owner provides arguments
`
`below on the scope of certain claim terms, Patent Owner does not propose a
`
`comprehensive construction, as it would not be necessary to resolve the controversy
`
`and deny the Petition. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.
`
`Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms
`
`‘that are in controversy, and only to the extent necessary to resolve the
`
`controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803
`
`(Fed. Cir. 1999)); see also Changes to the Claim Construction Standard for
`
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board,
`
`83 Fed. Reg. 51,340, 51,353 (Oct. 11, 2018) (Final Rule) (“Moreover, it also may not
`
`be necessary to determine the exact outer boundary of claim scope because only
`
`those terms that are in controversy need be construed, and only to the extent
`
`necessary to resolve the controversy (e.g., whether the claim reads on a prior art
`
`reference).” (citing Nidec)).
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`IPR2019-01367
`U.S. Patent 8,407,609
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`
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`1.
`
`“computer system”
`
`Petitioner argues a POSITA would have understood “computer system” to
`
`mean “one or more computing devices having a common operator or under common
`
`control.” Pet. 8. Petitioner bases its definition on this description in the ’609 patent:
`
`“The terms ‘computer,’ ‘computer device[’] and/or ‘computer system’ as used
`
`herein may generally take the form of single computing devices or collections of
`
`computing devices having a common operator or under common control.” EX1001,
`
`3:52–55 (emphasis added). The ’609 patent’s use of the permissive “may generally”
`
`(as emphasized) indicates a “computer system” is not limited to one or more
`
`computing devices “having a common operator or under common control.” At the
`
`same time, the passage also does not suggest that mere control over two computers
`
`would always make them part of the same “computer system.” Rather, one or more
`
`computers under common control “may” be a “system,” but such determination
`
`depends on the plain and ordinary meaning of a “computer system” and use of the
`
`term in the context of the claims. Petitioner’s interpretation attempts to read the term
`
`“system” out of the claim.
`
`Petitioner’s erroneous construction for the “computer system” term should be
`
`rejected, and Petitioner’s obviousness theory should likewise be rejected as tainted
`
`by reliance on an incorrect claim construction.
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`14
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`IPR2019-01367
`U.S. Patent 8,407,609
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`The Institution Decision properly agrees that “no express construction is
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`required at this time.” Inst. Dec. 8.
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`C.
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`Jacoby and Bland do not disclose each element of each of the
`claims of the ‘609 patent. (Ground 1)
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`The Petition fails to show the combination of Jacoby and Bland teaches at
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`least the limitations discussed herein and fails to show the references would have
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`been combined in a manner that would meet the limitations of claim 1.
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`1.
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`Neither Jacoby nor Bland discloses “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.”
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`a)
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`Jacoby
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`The Petition contends Jacoby teaches the “providing an applet” limitations of
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`claim 1. The Petition argues “[a] POSA would understand that Jacoby uses applets
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`with the media player based on Jacoby’s disclosure of delivering the media player
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`using ActiveX controls on the web page.” Pet. 19. The Petition does not, however,
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`connect any alleged applet to the metering function or show that Jacoby teaches an
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`applet that “is operative by the user’s computer as a timer” as recited in the claim.
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`Indeed, Jacoby meters use of its “products” by embedding metering events in the
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`streaming media file. See Pet. 20 (citing EX1006 ¶ 53). Rather than use an “applet
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`operative by the user’s computer as a timer,” as recited in claim 1, Jacoby’s media
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`player merely appends the embedded metering events to metering URL 127 and
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`returns the appended metering URLs to the mediaframe servers. See id. Thus,
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`Jacoby does not teach the “providing an applet” limitations of claim 1 recited above.
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`In view of the reasons presented herein, Petitioner has failed to meet its burden of
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`showing that any challenged claim is unpatentable in view of Jacoby and Bland.
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`The Institution Decision correctly determines that the metering function of
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`Jacoby does not teach a timer applet. Inst. Dec. 33. In reaching this determination,
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`the Institution Decision correctly discounts the relevance of the purported expert
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`declaration (Ex. 1002) because it merely repeats language in the Petition, id., and
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`because “An expert’s conclusory testimony, unsupported by the documentary
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`evidence, cannot supplant the requirement of anticipatory disclosure in the prior art
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`reference itself.” Id. at. 32.
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`b)
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`Bland
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`The Petition next contends that Bland teaches the “providing an applet”
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`limitations of claim 1. Pet. 21–23. As quoted by the Petition, Bland teaches:
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`Data collected by browser extension 131 on each client 101-102
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`preferably include the following: … Amount of time that a particular
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`object (e.g., a page, a graphical image, an audio clip, an animation,
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`etc.) is active (i.e., is visible, is audible, etc.) at the client. This data
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`indicates how long a user of the client is exposed to the information
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`being provided by that object. Ex[1009] 4:9-32
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`Pet. 22. The Petition does not explain, however, how Bland teaches at least the
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`limitations of “providing an applet . . . for each digital media presentation.” The
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`language cited by the Petition indicates that each client has a browser extension 131.
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`Even if the Bland extensions on a client are capable of tracking multiple objects,
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`there is no disclosure in Bland that a separate extension is provided for “for each
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`digital media presentation” as recited in the claim. The Institution Decision contends
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`that the Patent Owner does not show where Bland teaches that there is not a separate
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`extension for each media presentation. Decision, p. 36. However, it is the
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`Petitioner’s burden to show that Bland affirmatively teaches a separate extension
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`for each media presentation, not the Patent Owner’s burden to provide that it does
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`not. The Petitioner has not met this burden. The mere existence of one or more
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`extensions is not a disclosure of a separate extension for each media presentation.
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`Nowhere in the Decision is there a citation to evidence placed in the record by
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`Petitioner to show that Bland teaches a separate extension for each media
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`presentation. The Decision’s statement that “Bland states that its extensions may be
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`sent to the client with a data collection request or may be permanently included in a
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`client” is not a disclosure of a separate extension for each media presentation.
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`Decision, p. 36. Thus, Bland does not teach the “providing an applet” limitations of
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`claim 1.
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`In view of the reasons presented herein, Petitioner has failed to meet its burden
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`of showing that any challenged claim is unpatentable in view of Jacoby and Bland.
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`c)
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`The combination of Jacoby and Bland does not
`overcome the individual deficiencies of Jacoby or
`Bland as to the “providing an applet” limitations.
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`Petitioner contends that “using an applet to deliver Jacoby’s metering
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`software was obvious in view of Bland.” Pet. 23. Petitioner contends “Jacoby and
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`Bland both disclose a server providing a client with software that runs in a browser
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`and instructs the client to periodically report tracking information via a specified
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`URL” and that “[a] POSA would have been motivated to combine these teachings
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`as a simple substitution of one known element (Jacoby discloses providing a client
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`with metering software that runs in a browser) for another.” Pet. 64. The premise
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`of Petitioner’s contentions is false, however, at least because, as discussed above,
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`Jacoby’s client does not run metering software. At most, Jacoby’s client passes
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`along metering events embedded in the streaming media file. See EX1006 ¶ 53.
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`Petitioner fails to provide an explanation as what “metering software” Petitioner
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`proposes to be delivered using an applet.
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`Petitioner next contends that “[a] POSA would have been motivated to
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`combine Bland’s object-tracking and timing mechanism with the system taught by
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`Jacoby.” Pet. 23. Using Bland’s object-tracking mechanism, however, even in
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`Jacoby’s system, suffers from the same deficiencies identified above. Specifically,
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`even if Bland’s extensions are capable of tracking multiple objects, they are always
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`present and an applet is not provided “for each digital media presentation” as recited
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`in the claim. See EX1009, 4:9–23. The Petition’s purported reasoning for combining
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`teachings of Jacoby and Bland does not explain how or why the alleged combination
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`would result in providing an applet “for each digital media presentation,” as opposed
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`to a global extension that may track data for multiple objects. See Pet. 66–68.
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`Patent Owner respectfully submits that although the Institution Decision
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`properly recognized that Jacoby does not teach a timer applet, it improperly
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`determined that the combination of Jacoby and Bland teaches the recited applet for
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`each digital media presentation. The Decision’s determination that Jacoby teaches
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`metering “software” is contrary to the disclosure of Jacoby. Inst. Dec. 35 (stating
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`“Jacoby’s metering function is performed by software”). In fact, Jacoby teaches that
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`the metering function is implemented by embedding metering events as metadata.
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`Ex. 1006, ¶56. Jacoby then states: “The client media player concatenates the
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`metering URL and the embedded metering event, step 710, and pushes them up to
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`the mediaframe servers, which causes a user meter to be ticked/decremented, step
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`715.” Id. at ¶ 58. Thus, it is the media player that is implementing the metering
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`functionality in Jacoby, not separate metering software.
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`Because Jacoby does not teach separate metering software, the Institution
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`Decision’s contention that one of ordinary skill could simply swap the “metering
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`software” of Jacoby with the applet of Bland is without basis. Inst. Dec. 35. Further,
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`as noted above, the Petitioner has not shown that Bland teaches “providing an applet
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`. . . for each digital media presentation.” Therefore, even if the timer applet of Bland
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`is combined with the system of Jacoby, there is no suggestion in either Jacoby or
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`Bland of an applet for each digital media presentation.
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`Still further, replacing the metering performed in Jacoby with an applet timer,
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`as suggested by Petitioner, would change the principle of operation of Jacoby, and
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`render Jacoby unable to perform the functions it performs with its embedded
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`metering events based metering. Jacoby teaches that the embedded metering events
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`may be strategically placed at different points of a streaming media file, to provide
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`indications of different events:
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`The intervals at which embedded metering events are placed in a
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`streaming media file need not be uniform. For example, a long movie
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`may have embedded metering events embedded in a streaming media
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`file with an increasing time interval between the metering events, such
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`as at 5 seconds, 2 minutes, 10 minutes, and 30 minutes interval
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`thereafter. Preferably, the position of metering events in a streaming
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`media file provides indicators desired by content providers. For
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`example, a movie provider might want to position an embedded
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`metering event 5 seconds after video frame 1 has played so that the
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`movie provider knows that the user has started a movie and, therefore,
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`may log the event. Another embedded metering event may be
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`positioned