Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`Paper 16
`Entered: August 3, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VUDU, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2020-00677
`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
`Granting Petitioner’s Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`Paper 16
`Entered: August 3, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VUDU, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2020-00677
`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
`Granting Petitioner’s Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`IPR2020-00677
`Patent 8,407,609 B2
`
`
`
`I. INTRODUCTION
`
`
`
`On March 3, 2020, Vudu, Inc. (“Vudu” or “Petitioner”)1 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 1 (“Pet.”).
`
`Concurrently with the filing of the Petition, Petitioner filed a Motion for
`
`Joinder, seeking to join itself as a petitioner in Sling TV L.L.C. v. Uniloc
`
`2017 LLC, IPR2019-01367 (“the 1367 IPR”). Paper 3 (“Joinder Motion” or
`
`“Mot.”). Uniloc 2017 LLC (“Patent Owner”) filed a Preliminary Response
`
`in this proceeding (Paper 7 (“Prelim. Resp.”)), but did not oppose the
`
`Joinder Motion.
`
`Upon considering the information presented in each of these papers,
`
`for reasons discussed below, we institute trial in this inter partes review, and
`
`we join Petitioner as a party to the 1367 IPR.
`
`II. DISCUSSION
`
`A.
`
`Institution of Trial
`
`1.
`
`Summary of 1367 IPR
`
`In the 1367 IPR, Sling TV L.L.C. (“Sling”) challenges the
`
`patentability of claims 1–3 of the ’609 patent on the following grounds:
`
`
`1 Pursuant to 37 C.F.R. § 42.8(b)(1), which requires identification of real
`parties in interest, Petitioner identifies each of the following companies as a
`direct or indirect owner of Petitioner (at some point in time): Walmart Inc.,
`Fandango Media, LLC, NBCUniversal Media, LLC, Warner Bros.
`Entertainment Inc., Comcast Corporation, Warner Media, LLC, and AT&T
`Inc. Pet. vi; Paper 8 (Petitioner’s Updated Mandatory Notice).
`
`2
`
`
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`IPR2020-00677
`Patent 8,407,609 B2
`
`
`
`
`
`
`Claims Challenged 35 U.S.C. §
`
`References
`
`1–3
`
`1–3
`
`103(a)2
`
`Jacoby,3 Bland4
`
`103(a)
`
`McTernan,5 Robinson6
`
`IPR2019-01367, Paper 2 at 2. After considering the petition and Patent
`
`Owner’s preliminary response in the 1367 IPR, we determined that Sling
`
`had demonstrated a reasonable likelihood of showing that the challenged
`
`claims would have been obvious over the combined teachings of McTernan
`
`and Robinson, and we instituted trial. See IPR2019-01367, Paper 7 (PTAB
`
`Feb. 4, 2020) (“1367 Institution Decision”).
`
`2.
`
`Analysis of this Proceeding
`
`To determine whether Petitioner has met the threshold for institution
`
`in this proceeding, we consider Petitioner’s obviousness challenge to claim 1
`
`based on the combination of McTernan and Robinson. Claim 1 is
`
`reproduced below, with bracketed lettering:
`
`A method for tracking digital media presentations
`1.
`delivered from a first computer system to a user’s computer via
`a network comprising:
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`Because the challenged patent was filed before March 16, 2013, we refer to
`the pre-AIA version of § 103.
`
`3 Jacoby, US 2004/0254887 A1, published Dec. 16, 2004 (Ex. 1006).
`
`4 Bland et al., US 5,732,218, issued Mar. 24, 1998 (Ex. 1009).
`
`5 McTernan et al., WO 01/89195 A2, published Nov. 22, 2001 (Ex. 1007).
`
`6 Robinson et al., EP 0 939 516 A2, published Sept. 1, 1999 (Ex. 1008).
`
`3
`
`
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`IPR2020-00677
`Patent 8,407,609 B2
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`
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`[a] providing a corresponding web page to the user’s
`computer for each digital media presentation to be delivered
`using the first computer system;
`
`
`
`[b] providing identifier data to the user’s computer using
`the first computer system;
`
`[c] providing an applet to the user’s computer for each
`digital media presentation to be delivered using the first
`computer system, wherein the applet is operative by the user’s
`computer as a timer;
`
`[d] receiving at least a portion of the identifier data from
`the user’s computer responsively to the timer applet each time a
`predetermined temporal period elapses using the first computer
`system; and
`
`[e] storing data indicative of the received at least portion
`of the identifier data using the first computer system;
`
`[f] wherein each provided webpage causes corresponding
`digital media presentation data to be streamed from a second
`computer system distinct from the first computer system
`directly to the user’s computer independent of the first
`computer system;
`
`[g] wherein the stored data is indicative of an amount of
`time the digital media presentation data is streamed from the
`second computer system to the user’s computer; and
`
`[h] wherein each stored data is together indicative of a
`cumulative time the corresponding web page was displayed by
`the user’s computer.
`
`Ex. 1001, 14:17–45.
`
`Petitioner here (Vudu) represents that the present Petition is
`
`substantively identical to the petition in the 1367 IPR, challenges the same
`
`claims based on the same grounds, and relies on the same expert declaration.
`
`Pet. 1 (citing Ex. 1013); Mot. 1, 6. We have considered the relevant
`
`petitions and we agree with Petitioner’s representation that this Petition is
`
`substantially identical to the petition in the 1367 IPR. Compare Pet., with
`
`4
`
`
`
`IPR2020-00677
`Patent 8,407,609 B2
`
`
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`IPR2019-01367, Paper 2; see Ex. 1013 (redline showing differences between
`
`petitions).
`
`Patent Owner does not respond to Petitioner’s contentions for the
`
`preamble of claim 1 and for limitations [a], [b], [c], [d], [e], and [g]. See
`
`generally Prelim. Resp. 31–43. We are persuaded that Petitioner has shown
`
`sufficiently that the combination of McTernan and Robinson teaches the
`
`subject matter recited in the preamble and in these limitations for the reasons
`
`set forth in the 1367 Institution Decision, which we incorporate herein. See
`
`IPR2019-01367, Paper 7 at 13–19, 23.
`
`For limitations [f] and [h], Patent Owner’s instant Preliminary
`
`Response contains the same arguments as its preliminary response filed in
`
`the 1367 IPR, but it also further elaborates on those previously presented
`
`arguments. In particular, the Preliminary Response further seeks to explain
`
`Patent Owner’s contentions that the Petition fails to show, for limitation [f],
`
`“a second computer system distinct from the first computer system”
`
`(compare Prelim. Resp. 31–34, with IPR2019-01367, Paper 6 at 16–17) and,
`
`for limitation [h], a motivation to combine the heartbeats of Robinson with
`
`the system of McTernan (compare Prelim. Resp. 34–43, with IPR2019-
`
`01367, Paper 6 at 17–20).
`
`For limitation [f], expanding on the arguments it made in its
`
`preliminary response in IPR2019-01367, Patent Owner argues that the 1367
`
`“Institution Decision does not refute Patent Owner’s argument that the
`
`Petition does not show the alleged ‘first computer system’ and ‘second
`
`computer system’ are not under common operation or control,” and,
`
`according to Patent Owner, the Petition is premised on Petitioner’s argument
`
`that the computer systems “are distinct because they are not under common
`
`5
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`
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`IPR2020-00677
`Patent 8,407,609 B2
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`
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`control.” Prelim. Resp. 33. We are not persuaded. As we stated in the 1367
`
`Institution Decision, the Petition contends that the servers are distinct
`
`“because they are ‘separate servers with separate functionality.’” IPR2019-
`
`01367, Paper 7 at 19–20. Moreover, in the 1367 Institution Decision, we
`
`explained that “we do not understand [Petitioner’s] proposed construction to
`
`prevent two distinct computer systems from having a common operator or
`
`being under common control.” Id. at 21. And, for the reasons stated in the
`
`1367 Institution Decision, we do not agree that claim 1 includes such a
`
`requirement. Id. at 21–23. On this record we are persuaded that Petitioner
`
`sufficiently has shown that McTernan discloses limitation [f] for the reasons
`
`given at pages 19–23 of the 1367 Institution Decision, which we incorporate
`
`herein.
`
`For limitation [h], Patent Owner further elaborates on its argument in
`
`the preliminary response in IPR2019-01367 that Petitioner has not provided
`
`a sufficient reason to combine the heartbeats of Robinson with the system of
`
`McTernan. Prelim. Resp. 34–43; see IPR2019-01367, Paper 6 at 17–20.
`
`Patent Owner argues that Petitioner’s proposed combination is based on
`
`impermissible hindsight and that Petitioner does not provide an adequate
`
`“motivation to combine” the teachings of McTernan and Robinson. Prelim.
`
`Resp. 35–38. In particular, Patent Owner argues that “Petitioner’s statement
`
`that one of ordinary skill in the art would be motivated to combine prior art
`
`elements according to known methods to yield predictable results (Pet. 72)
`
`does not provide a motivation to combine the prior art teachings in the
`
`particular manner claimed.” Prelim. Resp. 37–38.
`
`However, as we noted in the 1367 Institution Decision (IPR2019-
`
`01367, Paper 7 at 26), the Supreme Court has stated that “when a patent
`
`6
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`IPR2020-00677
`Patent 8,407,609 B2
`
`
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`‘simply arranges old elements with each performing the same function it had
`
`been known to perform’ and yields no more than one would expect from
`
`such an arrangement, the combination is obvious.” KSR Int’l Co. v. Teleflex
`
`Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S.
`
`273, 282 (1976)). “If a person of ordinary skill can implement a predictable
`
`variation, § 103 likely bars its patentability.” Id. Thus, we disagree with
`
`Patent Owner’s assertion that obviousness cannot be shown by combining
`
`prior art elements according to known methods to yield predictable results.
`
`Here, Petitioner presents declarant testimony from Dr. Storer to support its
`
`obviousness contentions, including that its proposed combination merely
`
`combines known methods to yield predictable results. See Ex. 1002 ¶¶ 237–
`
`242. On this record and in view of the unrebutted testimony from Dr. Storer,
`
`we are persuaded Petitioner has set forth sufficient articulated reasoning to
`
`combine the heartbeats of Robinson with the system of McTernan. This,
`
`however, is not a final finding on the reasoning to combine, which will be
`
`made in IPR2019-01367 after consideration of the entire trial record in that
`
`proceeding.
`
`For these reasons and those stated at pages 23–27 of the 1367
`
`Institution Decision, which we incorporate herein, on this record we are
`
`persuaded that Petitioner sufficiently has shown that the combination of
`
`McTernan and Robinson teaches limitation [h] and that Petitioner has
`
`sufficiently articulated a rationale to combine the teachings of these
`
`references.
`
`Based on the foregoing, and having considered the arguments in
`
`Patent Owner’s Preliminary Response, we determine that Petitioner has
`
`7
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`IPR2020-00677
`Patent 8,407,609 B2
`
`
`
`demonstrated a reasonable likelihood of prevailing in its challenge to claim 1
`
`as unpatentable over the combination of McTernan and Robinson.
`
`Finally, in the Preliminary Response, Patent Owner also contends that
`
`the case must be dismissed because administrative patent judges are
`
`unconstitutionally appointed principal officers. Prelim. Resp. 44–47.
`
`However, the Federal Circuit held that there is “no constitutional infirmity in
`
`[an] institution decision as the statute clearly bestows such authority on the
`
`Director pursuant to 35 U.S.C. § 314,” Arthrex, Inc. v. Smith & Nephew,
`
`Inc., 941 F.3d 1320, 1340 (Fed. Cir. 2019); accordingly, we proceed with the
`
`IPR.
`
`B. Motion for Joinder
`
`Based on 35 U.S.C. § 315(c) and authority delegated to us by the
`
`Director, we have discretion to join a petitioner as a party to a previously
`
`instituted inter partes review. Section 315(c) provides, in relevant part, that
`
`“[i]f the Director institutes an inter partes review, the Director, in his or her
`
`discretion, may join as a party to that inter partes review any person who
`
`properly files a petition under section 311.”
`
`As the moving party, Petitioner bears the burden of proving that it is
`
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`
`should (1) set forth the reasons joinder is appropriate; (2) identify any new
`
`grounds of unpatentability asserted in the petition; and (3) explain what
`
`impact (if any) joinder would have on the trial schedule for the existing
`
`review. Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4
`
`(PTAB Apr. 24, 2013).
`
`8
`
`
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`IPR2020-00677
`Patent 8,407,609 B2
`
`
`
`We find that Petitioner timely filed its motion for joinder, in
`
`
`
`accordance with 37 C.F.R. § 42.122(b). We further determine that Petitioner
`
`has met its burden of showing that joinder is appropriate, at least because, as
`
`set forth above, the Petition here: (1) is substantively identical to the petition
`
`in the 1367 IPR; (2) contains the same grounds based on the same evidence;
`
`and (3) relies on the same declaration of Dr. James A. Storer. Mot. 6, 8;
`
`Ex. 1013; Ex. 1002. Moreover, Petitioner will “act as the ‘understudy’ in
`
`the IPR and will not assume an active role unless Sling withdraws or
`
`otherwise terminates its participation in the IPR” (Mot. 2); Petitioner
`
`consents to the existing schedule in the 1367 IPR (id. at 7); and Petitioner
`
`agrees that all filings and depositions will be controlled and conducted by
`
`Sling (id. at 8). Finally, Petitioner represents that Sling does not oppose
`
`joinder (id. at 2), and Patent Owner did not file an opposition to Petitioner’s
`
`Joinder Motion.
`
`Consistent with Petitioner’s representations, we limit Petitioner’s
`
`participation in the 1367 IPR, such that: (1) Sling alone is responsible for all
`
`petitioner filings in the 1367 IPR unless and until Sling is terminated from
`
`the 1367 IPR; (2) Petitioner must obtain Board authorization prior to filing
`
`any paper or taking any action on its own until Sling is terminated from the
`
`1367 IPR; and (3) Petitioner is bound by all filings by Sling and all
`
`discovery agreements between Patent Owner and Sling in the 1367 IPR,
`
`except for (a) filings regarding termination or settlement and (b) filings
`
`where Petitioner receives permission from the Board to file an independent
`
`paper. This arrangement promotes the just and efficient administration of
`
`the ongoing trial in the 1367 IPR, and protects the interests of Sling, as the
`
`original petitioner in IPR2019-01367, and of Patent Owner.
`
`9
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`
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`IPR2020-00677
`Patent 8,407,609 B2
`
`
`Accordingly, it is:
`
`
`III. ORDER
`
`
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`
`hereby instituted as to claims 1–3 of the ’609 patent on all grounds set forth
`
`in the Petition:
`
`(1) Obviousness of claims 1–3 over Jacoby and Bland; and
`
`(2) Obviousness of claims 1–3 over McTernan and Robinson.
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`
`IPR2019-01367 is granted, and Vudu is joined as a petitioner in IPR2019-
`
`01367 pursuant to 35 U.S.C. § 315(c);
`
`FURTHER ORDERED that all future filings are to be made only in
`
`IPR2019-01367;
`
`FURTHER ORDERED that the grounds on which an inter partes
`
`review was instituted in IPR2019-01367 remain unchanged;
`
`FURTHER ORDERED that the Scheduling Order currently in place
`
`for IPR2019-01367 (Paper 8), as amended by the Board (Paper 12), shall
`
`continue to govern the 1367 IPR;
`
`FURTHER ORDERED that, unless and until Sling is terminated from
`
`IPR2019-01367, Vudu is bound by all filings by Sling (except for filings
`
`regarding termination or settlement and filings where Petitioner receives
`
`permission from the Board to file an independent paper);
`
`FURTHER ORDERED that Vudu must obtain prior Board
`
`authorization to file any paper or take any action on its own in IPR2019-
`
`01367;
`
`FURTHER ORDERED that the case caption in IPR2019-01367 for all
`
`further submissions shall be changed to add Vudu as a named petitioner, and
`
`10
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`
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`IPR2020-00677
`Patent 8,407,609 B2
`
`
`to indicate by footnote the joinder of Petitioner Vudu to that proceeding, as
`
`
`
`indicated in the attached sample case caption; and
`
`FURTHER ORDERED that a copy of this Decision shall be entered
`
`into the record of IPR2019-01367.
`
`
`
`
`
`11
`
`
`
`IPR2020-00677
`Patent 8,407,609 B2
`
`FOR PETITIONER:
`
`
`
`
`
`Alyssa Caridis
`Donald Daybell
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`a8cptabdocket@orrick.com
`d2dptabdocket@orrick.com
`
`G. Hopkins Guy
`Ali Dhanani
`Kurt Pankratz
`BAKER BOTTS L.L.P.
`hop.guy@bakerbotts.com
`ali.dhanani@bakerbotts.com
`kurt.pankratz@bakerbotts.com
`
`
`
`
`FOR PATENT OWNER:
`
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Brian Koide
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`brian@etheridgelaw.com
`jeff@etheridgelaw.com
`
`
`
`12
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SLING TV L.L.C. and
`VUDU, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2019-013671
`Patent 8,407,609 B2
`
`
`
`1 Vudu, Inc., which filed a petition in IPR2020-00677, has been joined as a
`petitioner in this proceeding.
`
`
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