Petition for Inter Partes Review of U.S. Patent No. 8,407,609
`
`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.
`
`IPR No.: IPR2019-01367
`Attorney Docket No.: 081841.0123
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,407,609
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`
`Submitted Electronically via the Patent Trial and Appeal Board End to End
`System
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
`
`TABLE OF CONTENTS
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R. 42.8(a)(1) ........................ v
`A.
`Real Party-in-Interest under 37 C.F.R. 42.8(b)(1) ............................... v
`B.
`Related Matters under 37 C.F.R. 42.8(b)(2) ........................................ v
`C.
`Lead and Back-Up Counsel under 37 C.F.R. 42.8(b)(3) .................... vi
`D.
`Service Information under 37 C.F.R. 42.8(b)(4) ................................. vi
`INTRODUCTION ........................................................................................ 1
`II.
`III. PAYMENT OF FEES .................................................................................. 1
`IV. REQUIREMENTS UNDER 37 C.F.R. 42.104 ........................................... 1
`A.
`Grounds for Standing ........................................................................... 1
`B.
`Identification of Challenge and Statement of Precise Relief
`Requested ............................................................................................. 2
`BACKGROUND OF THE TECHNOLOGY ............................................. 2
`A. Web Page and Internet Technology ..................................................... 2
`B.
`Applets .................................................................................................. 3
`SUMMARY OF THE ’609 PATENT ......................................................... 3
`A.
`The Alleged Invention .......................................................................... 3
`B.
`Relevant Prosecution History ............................................................... 4
`VII. SUMMARY OF THE PRIOR ART ........................................................... 6
`A.
`The Knowledge of a POSA .................................................................. 6
`B.
`Prior Art in this Petition ....................................................................... 6
`VIII. LEVEL OF ORDINARY SKILL IN THE ART ....................................... 7
`IX. CLAIM CONSTRUCTION UNDER 37 C.F.R. 42.104(B)(3) .................. 7
`A.
`“applet” (Claim 1) ................................................................................ 7
`B.
`“computer system” (Claim 1) ............................................................... 8
`C.
`Timing-related limitations (Claim 1) ................................................... 9
`THE ASSERTED GROUNDS OF INVALIDITY .................................. 11
`A.
`Ground 1: U.S. 2004/0254887 (“Jacoby”) in view of U.S.
`5,732,218 (“Bland”) renders claims 1-3 obvious under 35
`U.S.C. §103 ........................................................................................ 11
`
`V.
`
`VI.
`
`X.
`
`ii
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
`
`B.
`
`Ground 2: PCT WO01/89195 (“Mcternan”) in view of EP
`939,516 (“Robinson”) renders claims 1-3 obvious under 35
`U.S.C. §103 ........................................................................................ 40
`C. Motivation to Combine ...................................................................... 64
`
`iii
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
`
`PETITIONER’S EXHIBIT LIST
`
`Ex. No.1
`
`Description of Documents
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`U.S. Patent No. 8,407,609 (“the ’609 Patent”)
`
`Declaration of Dr. James A. Storer
`
`Curriculum Vitae of Dr. James A. Storer (“Storer CV”)
`
`File History for U.S. Patent No. 8,407,609 (“the ’609 File History”)
`
`First Amended Complaint, Uniloc 2017 LLC v. Sling TV L.L.C., Case
`No. 1:19-cv-00278-RBJ-MEH, Dkt. No. 37 (Apr. 10, 2019) (“FAC”)
`
`U.S. Patent Application Pub. No. 2004/0254887 to Jacoby (“Jacoby”)
`
`PCT Pub. No. WO01/89195 to Mcternan et al. (“Mcternan”)
`
`EP Patent Application Pub. No. 939,516 to Robinson et al.
`(“Robinson”)
`
`U.S. Patent No. 5,732,218 to Bland et al. (“Bland”)
`
`Gralla, How the Internet Works, Millennium Edition, Que 1999
`(“Gralla”)
`
`Bruce R. Maxim et al., The Internet Encyclopedia (Hossein Bidgoli ed.,
`John Wiley & Sons Inc. 2004) (“Bidgoli”)
`
`1012
`
`U.S. Patent Application Pub. No. 2002/0198781 to Cobley (“Cobley”)
`
`1 Citations to exhibits 1001, 1007, 1009, and 1012 are made by column and line
`
`number; citations to exhibits 1002, 1005, 1006, and 1008 are made by paragraph
`
`number; citations to the other exhibits are made with reference to the Bates-
`
`stamped pagination.
`
`iv
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R. 42.8(a)(1)
`
`A.
`
`Real Party-in-Interest under 37 C.F.R. 42.8(b)(1)
`
`Sling TV L.L.C. (“Sling”) is the petitioner. Sling is directly or indirectly
`
`owned by the following direct or indirect owners: Sling TV Holding L.L.C., DISH
`
`Network L.L.C., DISH Technologies L.L.C., and DISH Network Corporation.
`
`B.
`
`Related Matters under 37 C.F.R. 42.8(b)(2)
`
`The ’609 Patent is the subject of five pending district court cases. The ’609
`
`Patent was also involved in an additional five district court cases that have been
`
`terminated. These ten cases are listed below:
`
` Uniloc 2017, LLC v. Sling TV, LLC,
`Case No. 1:19-cv-00278, District of Colorado (Pending)
`
` Uniloc 2017 LLC v. Netflix, Inc.,
`Case No. 8-18-cv-01899, Central District of California (Terminated)
`
` Uniloc 2017 LLC et al v. American Broadcasting Companies, Inc.
`Case No. 8-18-cv-01930, Central District of California (Terminated)
`
` Uniloc 2017 LLC et al v. Google LLC
`Case No. 2-18-cv-00456, Eastern District of Texas (Terminated)
`
` Uniloc 2017 LLC et al v. Google LLC
`Case No. 2-18-cv-00502, Eastern District of Texas (Pending)
`
` Uniloc 2017 LLC v. Netflix, Inc.
`Case No. 8-18-cv-02055, Central District of California (Terminated)
`
` Uniloc 2017 LLC v. American Broadcasting Companies, Inc.
`Case No. 8-18-cv-02056, Central District of California (Pending)
`
` Uniloc 2017 LLC v. Roku, Inc.
`Case No. 1-18-cv-01126, Western District of Texas (Terminated)
`
`v
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
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` Uniloc 2017 LLC v. Vudu, Inc.
`Case No. 1-19-cv-00183, District of Delaware (Pending)
`
` Uniloc 2017 LLC v. Roku, Inc.
`Case No. 8-19-cv-00295, Central District of California (Pending)
`
`C.
`
`Lead and Back-Up Counsel under 37 C.F.R. 42.8(b)(3)
`
`Petitioner designates the following: Lead Counsel is Eliot D. Williams
`
`(Reg. No. 50,822) of Baker Botts L.L.P.; Back-up Counsel are G. Hopkins Guy
`
`(Reg. No. 35,886) and Ali Dhanani (Reg. No. 66,233) of Baker Botts L.L.P.
`
`D.
`
`Service Information under 37 C.F.R. 42.8(b)(4)
`
`A copy of this entire Petition, including all Exhibits and a power of attorney,
`
`is being served by FEDERAL EXPRESS, costs prepaid, to the address of the
`
`attorney or agent of record for Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) in
`
`the district court proceedings regarding the ’609 Patent: Feinberg Day Kramer
`
`Alberti Lim Tonkovich & Belloli LLP, 1600 El Camino Real, Suite 280, Menlo
`
`Park, CA 94025; and to the address of the attorney or agent of record at the
`
`USPTO: Uniloc USA Inc., 102 N. College Avenue, Suite 303, Tyler TX 75702.
`
`Petitioner consents to service to eliot.williams@bakerbotts.com, hop.guy@bakerbo
`
`tts.com, and ali.dhanani@bakerbotts.com by electronic mail. A Power of Attorney
`
`is filed concurrently herewith under 37 C.F.R. §42.10(b).
`
`vi
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
`
`II.
`
`INTRODUCTION
`
`Petitioner Sling requests review of claims 1-3 of U.S. Patent No. 8,407,609
`
`(“the ’609 Patent”). The ’609 Patent is directed to “tracking the provision of audio
`
`and visual presentations via a computer network.” Ex[1001] Title. The patent uses
`
`a “timer applet” running on a user’s computer to periodically send tracking
`
`information via the computer network. Id. Abstract. The alleged “inventive
`
`concept” according to Uniloc relates to providing “a web page, identifier data and
`
`a timer applet originating at a first computer system” to track a digital media
`
`presentation streamed from a second computer system to a user’s computer.”
`
`Ex[1005] ¶108. This concept was known before the earliest claimed priority date
`
`of the ’609 Patent.
`
`III. PAYMENT OF FEES
`
`The Office is authorized to charge the fee set forth in 37 C.F.R. §42.15(b) to
`
`Deposit Account No. 02-0384 as well as any additional fees that might be due in
`
`connection with this Petition.
`
`IV. REQUIREMENTS UNDER 37 C.F.R. 42.104
`
`A.
`
`Grounds for Standing
`
`Petitioner certifies the ’609 Patent is eligible for inter partes review and
`
`certifies that Petitioner meets the eligibility requirements set forth in 37 C.F.R.
`
`§42.104. Uniloc has sued Petitioner for infringement of the ’609 Patent. 37 C.F.R.
`
`1
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
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`§42.104(a). Petitioner is not barred or estopped from challenging the claims on the
`
`grounds identified within this petition.
`
`B.
`
`Identification of Challenge and Statement of Precise Relief
`Requested
`
`Petitioner requests review as follows.
`
`Ground
`
`1
`
`2
`
`’609 Patent
`Claims
`1-3
`
`1-3
`
`Basis for Challenge
`35 U.S.C. §103: Jacoby (Ex[1006]) in view of Bland
`(Ex[1009])
`35 U.S.C. §103: Mcternan (Ex[1007]) in view of
`Robinson (Ex[1008])
`
`V.
`
`BACKGROUND OF THE TECHNOLOGY
`
`A. Web Page and Internet Technology
`
`The Internet has been widely used since the mid-1990s, well before the 2008
`
`priority date claimed by the ’609 Patent. The Internet works on a “client/server
`
`model” in which a client (user’s computer) depends on a server (a more powerful
`
`computer) to deliver information over a network. Ex[1010] 7. Web servers deliver
`
`web pages to client web browsers using a markup language indicating how to
`
`display content and link to other web pages. Id. 11, 43. Links point to addresses
`
`called “uniform resource locators” (URLs) that allow the client to locate
`
`information. Id. 39. The client/server model enables the client to access content
`
`distributed among thousands of host computers across the Internet. Id. 7; Ex[1002]
`
`¶¶50-63.
`
`2
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
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`B.
`
`Applets
`
`A Java applet is a small application written in Java programming language.
`
`Ex[1011] 240, 435-436. The Java applet runs within a web browser to provide
`
`more functionality. Id. The term “applet” has been used in a generalized sense to
`
`include other small applications that run within the context a larger program to
`
`perform specific tasks. For example, ActiveX technology provides a user’s
`
`computer with small applications that run within a browser program. See Ex[1010]
`
`199; Ex[1002] ¶¶64-67.
`
`VI.
`
`SUMMARY OF THE ’609 PATENT
`
`The ’609 Patent alleges an earliest priority date of August 21, 2008, the
`
`filing date of U.S. Provisional No. 61/090,672 to which the patent claims priority.
`
`A.
`
`The Alleged Invention
`
`The ’609 Patent tracks presentations streamed via a network. Ex[1002]
`
`¶¶68-71. The ’609 Patent concedes that “commercially available” presentation-
`
`tracking applications were known, but alleges they could not track content
`
`provided by remote hosts distinct from the operator’s own system. Ex[1001]
`
`11:37-46; 12:36-45. The ’609 Patent purports to solve this problem by providing
`
`the user’s computer with a “timer applet” that sends “identifying data” to the
`
`system at predetermined intervals. Id. 12:61-13:9. Figure 10 illustrates that a
`
`user’s computer receives a web page with a media player and a timer applet that
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`3
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
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`runs in a web browser (step 1010), starts the timer applet (step 1020), and transmits
`
`data when the applet determines a predetermined time period has elapsed (step
`
`1030).
`
`Ex[1001] Fig. 10; see also id. 12:56-13:23. Thus, the system knows that “a viewer
`
`began viewing a particular show at a certain time,” “when a user began viewing a
`
`different page, or show,” and “how long a particular viewer spent on a particular
`
`page.” Ex[1001] 13:10-23, 13:44-14:2. However, using a timer applet to track
`
`presentations streamed from a remote host was known in the prior art. See supra,
`
`§X.
`
`B.
`
`Relevant Prosecution History
`
` During prosecution, the Examiner rejected the claims under §103 over U.S.
`
`Pat. Pub. 2002/0198781 (“Cobley”), which disclosed a “timing applet [] arranged
`
`to send a message back to the server” if a web page “remains loaded for the timing
`
`period of the applet.” Ex[1004] 63-69; Ex[1012] ¶26.
`
`4
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
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`In response, Applicant added limitation 1[h] by amendment. Ex[1004] 32-
`
`38. As a result, claim 1 includes two different timing-related limitations: 1[g]
`
`(related to tracking an “amount of time the digital media presentation data is
`
`streamed”) and 1[h] (related to tracking “cumulative time the corresponding web
`
`page was displayed”). Applicant’s remarks during prosecution provide no
`
`guidance as to whether these limitations are related. Applicant argued that Cobley
`
`did not disclose tracking the “cumulative time the corresponding web page was
`
`displayed by the user’s computer” because Cobley’s timing applet sends only a
`
`“single message” back to the web server and does not send any additional message
`
`for any additional period thereafter. Ex[1004] 36. According to Applicant:
`
`[T]he timing applet of Cobley is concerned with only the
`minimum loaded period of the advertiser’s page that is
`required before the customer is allocated a reward and,
`therefore, need only send the message once after the minimum
`timing period has passed. Cobley’s message sent from the
`timing application is therefore not indicative of a cumulative
`time the corresponding web page was displayed by the user’s
`computer.
`
`Id.; Ex[1002] ¶¶72-80.
`
`5
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
`
`VII. SUMMARY OF THE PRIOR ART
`
`A.
`
`The Knowledge of a POSA
`
`At the time of the ’609 Patent, a POSA would have been familiar with the
`
`web page, Internet, applet, and tracking technology discussed above. See e.g.,
`
`supra, §§V and VI.B.
`
`B.
`
`Prior Art in this Petition
`
`Each reference relied on in this Petition is prior art under at least 102(b), and
`
`none was cited to or considered during prosecution of the ’609 Patent:
`
`
`
`
`
`
`
`
`
`U.S. Patent Application Pub. No. 2004/0254887 (“Jacoby”), titled
`
`“Access control and metering system for streaming media,” was filed
`
`on October 6, 2003 and published on December 16, 2004.
`
`PCT Pub. No. WO01/89195 (“Mcternan”), titled “System and method
`
`for secure delivery of rich media,” was filed on May 15, 2001 and
`
`published on November 22, 2001.
`
`EP Patent Application Pub. No. 939,516 (“Robinson”), titled “User
`
`communication and monitoring system for computer networks,” was
`
`filed on January 19, 1999 and published on September 1, 1999.
`
`U.S. Patent No. 5,732,218 (“Bland”), titled “Management-data-
`
`gathering system for gathering on clients and servers data regarding
`
`interactions between the servers, the clients, and users of the clients
`
`6
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
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`during real use of a network of clients and servers,” was filed on
`
`January 2, 1997 and published on March 24, 1998.
`
`VIII. LEVEL OF ORDINARY SKILL IN THE ART
`
`A POSA as of the August 21, 2008 priority date would have had 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. A person
`
`with less education but more relevant practical experience may also meet this
`
`standard. Ex[1002] ¶49.
`
`IX. CLAIM CONSTRUCTION UNDER 37 C.F.R. 42.104(B)(3)
`
`The claim terms below are construed in accordance with 37 C.F.R.
`
`§42.100(b).
`
`A.
`
`“applet” (Claim 1)
`
`A POSA would have understood “applet,” as used in the claims, to refer to
`
`“a software component that runs in the context of another program.” Ex[1002]
`
`¶¶85-88.
`
`The meaning of “applet” at the time of the ’609 Patent depended on the
`
`context. Id. In certain contexts, “applet” referred only to a Java applet, meaning a
`
`small application running in a browser and written in the Java programming
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
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`language. Id. In other contexts, “applet” referred more generally to a small
`
`application running in another program. Id. The ’609 Patent uses the general
`
`meaning because it provides a general definition without referring to Java:
`
`“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 [be] used to
`perform a specific function or task, usually narrow in scope.
`
`Ex[1001] 12:67-13:3. Examples of such applets include add-ons and plug-ins
`
`delivered via webpage to run in a browser on the user’s computer. Ex[1002] ¶67,
`
`88. Microsoft’s ActiveX product provided such applets at the time of the ’609
`
`Patent. Id.; see also Ex[1010] 199 and Ex[1011] 240, 435-436, 692.
`
`B.
`
`“computer system” (Claim 1)
`
`A POSA would have understood “computer system,” as used in the claims,
`
`to refer to “one or more computing devices having a common operator or under
`
`common control.” Ex[1002] ¶¶89-91. The ’609 Patent states:
`
`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.
`
`Ex[1001] 3:52-55. This is consistent with the meaning of the term “computer
`
`system” to a POSA. Ex[1002] 91. Thus, “computer system” should be interpreted
`
`8
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
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`to mean “one or more computing devices having a common operator or under
`
`common control.” Id.
`
`C.
`
`Timing-related limitations (Claim 1)
`
`Claim 1 includes two timing-related limitations:
`
`1[g]: 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
`
`1[h]: each stored data is together indicative of a cumulative time the
`corresponding web page was displayed by the user’s computer.
`
`Ex[1001] claim 1. The two timing-related limitations refer to two different
`
`timings. Ex[1002] ¶92.
`
`1.
`
`“amount of time the digital media presentation is streamed”
`(element 1[g])
`
`A POSA would have understood “amount of time the digital media
`
`presentation is streamed,” as used in element 1[g], to refer to the “amount of time
`
`the digital media presentation is presented to the user’s computer.” Ex[1002]
`
`¶¶93-97. The ’609 Patent describes “streaming” in the context of presenting a
`
`presentation to a user. Id. The specification explains that “streaming” refers to
`
`“transferring data such that it can be processed as a substantially steady or
`
`continuous stream and a user’s browser or plug-in can start presenting the data
`
`before the entire file has been transmitted.” Ex[1001] 4:43-47 (emphasis added).
`
`9
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
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`Additionally, the ’609 Patent describes a timer applet that tracks a “temporal cycle
`
`having passed while the web page presents the presentation” to determine “how
`
`long a user actually watched, and/or listened, to a presented program.” Id.
`
`11:47-58 and 13:34-42 (emphasis added).
`
`2.
`
`“cumulative time the corresponding web page was
`displayed by the user’s computer” (element 1[h])
`
` A POSA would have understood
`
`the
`
`term “cumulative
`
`time
`
`the
`
`corresponding web page was displayed by the user’s computer,” as used in element
`
`1[h], to refer to “the total amount of time the user’s computer spent on the web
`
`page.” Ex[1002] ¶¶98-102.
`
`Certain embodiments of the ’609 Patent track “how long [the] viewer spends
`
`on a page.” Ex[1001] 13:43-14:8. For example:
`
`[A] table entry may be made of the user, the page 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 using database server 32.
`
`Ex[1001] 13:24-33. A POSA would understand that the time spent on a web page
`
`could differ from the time spent presenting the presentation, for example, if the
`
`web page itself was displayed while the presentation on the web page was paused.
`
`Ex[1002] ¶99. A POSA would understand element 1[h] to track the total amount
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
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`of time the user’s computer spent on the web page, regardless of whether the web
`
`page presented the presentation during that time. Id. ¶101.
`
`X.
`
`THE ASSERTED GROUNDS OF INVALIDITY
`
`Petitioner proposes two grounds of invalidity, (1) obvious by Jacoby in view
`
`of Bland, (2) obvious by Mcternan in view of Robinson. Petitioner believes that
`
`each ground teaches each limitation of the challenged claims using two different
`
`mechanisms known in the art, as explained herein.
`
`A.
`
`Ground 1: U.S. 2004/0254887 (“Jacoby”) in view of U.S. 5,732,218
`(“Bland”) renders claims 1-3 obvious under 35 U.S.C. §103
`
`Jacoby describes a computer system that streams movies and other media
`
`files to clients over a network. Ex[1006] Abstract. A user’s selection of a media
`
`file causes a mediaframe server to send a web page for presenting the selected
`
`media file to the user’s computer. Id. ¶¶36, 44. The web page provides the user’s
`
`computer with a media player, a URL that points to the location of the media file in
`
`a streaming server, a metering URL 127 that points to a user meter located in the
`
`mediaframe server, and ActiveX controls. Id. ¶¶44, 49. The web page allows for
`
`streaming the media file from the streaming servers to the media player. Id. ¶48.
`
`The ActiveX controls allow Jacoby’s mediaframe server to attach a metering
`
`applet to a browser running on the user’s computer. At regular intervals (e.g.,
`
`every 35 seconds), Jacoby’s mediaframe server receives the metering URL 127
`
`appended with metering events from the user’s browser. Ex[1006] ¶¶51, 53, 34.
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`11
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
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`The metering events include the amount of time to decrement a meter to “evidence
`
`the passage of time as the streaming media file is received by client media player
`
`110.” Id. ¶¶51-52. The mediaframe server ticks the meter identified by metering
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`URL 127 to track “the amount of streaming time remaining in a product” and other
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`information. Id. ¶¶50, 42; Ex[1002] ¶¶104-110.
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`Bland describes a system that provides a client with a URL and extensions
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`131 that cause the client to periodically return data via the URL to track timing
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`information, such as the “[a]mount of time that a particular object (e.g., a page, a
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`graphical image, an audio clip, an animation, etc.) is active (i.e., is visible, is
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`audible, etc.) at the client.” See e.g., Ex[1009] 4:9-32 and 4:60-5:23. The
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`extensions 131 can be attached to the client’s browser as “add-ons” (which are
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`“applets”) by using “Microsoft ActiveX.” Id. 5:24-38; Ex[1002] ¶¶126-131.
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`The following sections provide a limitation-by-limitation analysis of how
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`Jacoby in view of Bland renders the claims obvious.
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`1.
`
`a.
`
`Claim 1
`Element 1[pre]: “A method for tracking digital media
`presentations delivered from a first computer system to a
`user’s computer via a network”
`
`Jacoby discloses this limitation. Ex[1002] ¶¶133-139. Jacoby discloses a
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`system that includes “a first computer system” (including at least mediaframe
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`servers 140), “a second computer system” (including at least streaming servers
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`115),2 and “a user’s computer” (including client browser 125 and client media
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`player 110), as shown in annotated Figure 1:
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`The ’609 Patent uses “computer system” to refer to “one or more computing
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`devices having a common operator or under common control.” See supra, §IX.B.
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`Jacoby’s first and second computer systems each satisfy this meaning. A POSA
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`would understand that the servers in each of Jacoby’s first and second computer
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`systems are computing devices. Ex[1002] ¶134; Ex[1010] 7. As an example,
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`Jacoby describes using a “computer program product” stored on a “computer-
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`readable storage medium” for performing functionality of the first computer
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`2 See element 1[f] for “second computer system.”
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`system, such as providing a metering URL from a mediaframe server to a client.
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`See e.g., Ex[1006] ¶49 and claim 14. As another example, Jacoby describes
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`streaming servers in the second computer system as “computer servers.” Id. ¶47.
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`A POSA would further understand Jacoby’s first computer system to have a
`
`common operator or be under common control of a service provider, and Jacoby’s
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`second computer system to have a common operator or be under common control
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`of a content provider. Ex[1002] ¶135. Jacoby’s first computer system interacts
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`with the client’s browser to facilitate administrative functionality (e.g., metering,
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`billing, authenticating access to content) typically provided by one operator (a
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`service provider), while Jacoby’s second computer system interacts with the
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`client’s media player to facilitate content delivery functionality typically provided
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`by another operator (a content provider). Id.; see e.g., Ex[1006] ¶¶9, 11, 26, 29, 30
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`(referring to service providers and content providers) and ¶36 (referring to Yahoo!
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`as an operator for web server 130). Additionally, Jacoby teaches that the “set” of
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`streaming servers 115 in the second system are under common control of content
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`management server 105 (¶33), whereas the first computer system is distinct system
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`that Jacoby does not describe as being under the control of the content manager
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`server 105.
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`Jacoby discloses that the first and second computer systems are “distinct”
`
`from each other. For example, Figure 1 illustrates separate servers with separate
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`functionalities, and there is no indication of a common operator or common
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`control. See also Ex[1006] Abstract (describing distinct servers, a first server for
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`metering and a second server for streaming).
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`As to the user’s computer, Jacoby explains that a media player (e.g., client
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`media player 110) runs on a “user device,” such as a “personal computer.”
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`Ex[1006] ¶5; Ex[1002] ¶137; Ex[1010] 7.
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`Jacoby discloses “digital media presentations delivered from a first computer
`
`system to a user’s computer via a network.” “[M]edia files over the Internet or
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`other network” are “typically sent from prerecorded digitized media files.”
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`Ex[1006] ¶6; see also Abstract, claim 28 and ¶26 (the system streams “media
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`presentations,” such as “digitized movies”). Jacoby discloses that the mediaframe
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`servers 140 of the first computer system deliver the media presentations to the
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`user’s computer (e.g., the client) by serving web pages (HTML pages) that link to
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`the media presentations. See e.g., id. ¶¶6, 44 (explaining that mediaframe servers
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`140 send the user a web page with a URL that points the media player to the
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`location of the streaming media file).
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`Jacoby discloses a “method for tracking” delivery of the digital media
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`presentations that uses a meter to track the “amount of streaming time remaining in
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`a product.” Ex[1006] ¶42. According to Jacoby:
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`invention provides systems and
`The present
`techniques for
`transmitting a streaming media file. One of the techniques includes
`sending a metering uniform resource locator (URL) from a first server
`to a client player over a network, and sending a streaming media file
`from a second server to the client player over the network. The
`streaming media file includes at least one embedded metering event.
`In response to receiving the metering URL and the embedded
`metering event at the client player, a user meter is ticked.
`
`Ex[1006] Abstract (emphasis added). See claim elements 1[a]-1[h] for further
`
`explanation of Jacoby’s tracking method.
`
`b.
`
`Element 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”
`
`Jacoby discloses providing a corresponding web page to the user’s computer
`
`(web page published on the user’s browser) for each digital media presentation to
`
`be delivered (the web page is published in response to the user selecting a
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`particular media presentation) using the first computer system (mediaframe servers
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`140 of the first computer system publish the web page). Ex[1002] ¶¶140-142.
`
`Jacoby discloses that a user clicks a link to request a particular media file,
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`such as a movie selected from “Yahoo! Movies.” Ex[1006] ¶36. The request
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`causes a URL for the requested media file to be passed to mediaframe servers 140.
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`Id. If the user has paid for the media file and has sufficient bandwidth, mediaframe
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`servers 140 provide the user’s computer with a web page (browser page)
`
`corresponding to the selected media presentation:
`
`[M]ediaframe servers 140 prepare a presentation for the user. The
`presentation includes the delivery of a media player to the user and the
`delivery of a URL that points the media player to the location of the
`streaming media file in streaming servers 115. In the delivery of the
`media player, the mediaframe servers publish a page on the user’s
`browser with a frame set that includes a display screen for the media
`player and, if necessary, sets appropriate ActiveX controls on the web
`page.
`
`Id. ¶44 (emphasis added). A page published on a browser is a web page. Ex[1002]
`
`¶142; see also Ex[1006] ¶36 (“a web page published on the browser”) and ¶45
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`(“publish a web page on the client browser”).
`
`c.
`
`Element 1[b]: “providing identifier data to the user’s
`computer using the first computer system”
`
`Jacoby describes providing identifier data (a metering URL 127 that
`
`includes various identifiers) to the user’s computer (client comprising client
`
`browser 125) using the first computing system (computing system comprising
`
`mediaframe servers 140). Ex[1002] ¶¶143-144.
`
`Jacoby discloses that “[i]ncluded in the presentation sent from mediaframe
`
`servers 140 to client browser 125 is a metering URL 127[.]” Ex[1006] ¶49
`
`(emphasis added). The metering URL 127 “points to a user meter located in the
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`mediaframe server” and includes identifiers, such as a “meter name” and “meter
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`description.” Ex[1006] ¶¶49-50. The metering URL 127 includes other
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`identifiers, such as “key” and “MAC” for authentication purposes. Id. ¶50; see
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`also id. ¶¶52-54. Paragraph 49 includes an example metering URL 127:
`
`As explained below for element 1[d], the metering URL allows for tracking the
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`media presentation.
`
`d.
`
`Element 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”
`
`Jacoby and the Jacoby-Bland combination each disclose this limitation.
`
`Ex[1002] ¶¶145-157.
`
`i.
`
`Jacoby discloses limitati