UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SLING TV L.L.C.
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2019-01367
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`PATENT 8,407,609
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SLING TV L.L.C.
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2019-01367
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`PATENT 8,407,609
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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`IPR2019-01367
`U.S. Patent 8,407,609
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`Table of Contents
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`I.
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`II.
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`INTRODUCTION .................................................................................... 1
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`THE ’609 PATENT .................................................................................. 1
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`III.
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`RELATED PROCEEDINGS .................................................................... 2
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`IV.
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`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF PREVAILING AS TO ANY
`CHALLENGED CLAIM .......................................................................... 3
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`A.
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`The Level of Ordinary Skill in the Art ........................................... 4
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`B.
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`Claim Construction ......................................................................... 4
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`1.
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`“computer system” ............................................................... 6
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`C.
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`The Petition does not show a reasonable likelihood of
`prevailing as to any challenged claim based on Jacoby
`and Bland (Ground 1) ..................................................................... 7
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`1.
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`2.
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`The Petition does not show that Jacoby teaches
`“providing a corresponding web page to the
`user’s computer for each digital media
`presentation to be delivered” ................................................ 7
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`The Petition does not show that Jacoby and/or
`Bland teach “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” ............................................................ 9
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`a)
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`b)
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`c)
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`Jacoby ......................................................................... 9
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`Bland .......................................................................... 9
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`Petitioner’s arguments as to combined
`teachings of Jacoby and Bland do not
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`ii
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`overcome the deficiencies of Jacoby or
`Bland as to the “providing an applet”
`limitations ................................................................. 10
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`3.
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`4.
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`The Petition does not show that Jacoby teaches
`“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” under Petitioner’s
`interpretation of claim 1 ..................................................... 12
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`The Petition does not show that Jacoby teaches
`“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” ........................................................... 13
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`5.
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`The Petition fails to show a reasonable likelihood
`of prevailing as to any dependent claim ............................. 15
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`D.
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`The Petition does not show a reasonable likelihood of
`prevailing as to any challenged claim based on
`McTernan and Robinson (Ground 2) ........................................... 15
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`1.
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`2.
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`The Petition does not show that McTernan
`teaches “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” under Petitioner’s
`interpretation of claim 1 ..................................................... 16
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`The Petition does not provide sufficient reason to
`combine teachings from McTernan and Robinson
`to result in a system “wherein each stored data is
`together indicative of a cumulative time the
`corresponding web page was displayed by the
`user’s computer,” under Petitioner’s interpretation ........... 17
`
`iii
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`3.
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`The Petition fails to show a reasonable likelihood
`of prevailing as to any dependent claim ............................. 20
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`V.
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`CONCLUSION ....................................................................................... 21
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`IPR2019-01367
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`I.
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`INTRODUCTION
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`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Preliminary
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`Response to Petition IPR2019-01367 for Inter Partes Review (“Pet.” or “Petition”)
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`of United States Patent No. 8,407,609 (“the ’609 patent” or “EX1001”) filed by
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`Sling TV L.L.C. (“Petitioner”). The instant Petition is defective for at least the
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`reasons set forth herein.
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`II. THE ’609 PATENT
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`The ’609 patent is titled “System and method for providing and tracking the
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`provision of audio and visual presentations via a computer network.” The ʼ609
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`patent issued March 26, 2013, from U.S. Patent Application No. 12/545,131 filed
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`August 21, 2009, claiming priority to provisional application No. 61/090,672, filed
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`on August 21, 2008.
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`Claim 1 recites:
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`1.
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`A method for tracking digital media presentations delivered from a first
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`computer system to a user’s computer via a network comprising:
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`providing a corresponding web page to the user’s computer for each
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`digital media presentation to be delivered using the first computer system;
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`providing identifier data to the user’s computer using the first computer
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`system;
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`providing an applet to the user’s computer for each digital media
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`1
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`presentation to be delivered using the first computer system, wherein the
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`applet is operative by the user’s computer as a timer;
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`receiving at least a portion of the identifier data from the user’s
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`computer responsively to the timer applet each time a predetermined temporal
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`period elapses using the first computer system; and
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`storing data indicative of the received at least portion of the identifier
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`data using the first computer system;
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`wherein each provided webpage causes corresponding digital media
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`presentation data to be streamed from a second computer system distinct from
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`the first computer system directly to the user’s computer independent of the
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`first computer system;
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`wherein the stored data is indicative of an amount of time the digital
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`media presentation data is streamed from the second computer system to the
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`user’s computer; and
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`wherein each stored data is together indicative of a cumulative time the
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`corresponding web page was displayed by the user’s computer.
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`III. RELATED PROCEEDINGS
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`The following proceedings are currently pending (including stayed) cases
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`concerning the ’609 patent (EX1001).
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`2
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`Case Name
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`Case Number Court Filing Date
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`Uniloc 2017 LLC et al v. Google LLC
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`2-18-cv-00502 TXED 11/17/2018
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`Uniloc 2017 LLC v. Netflix, Inc.
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`8-18-cv-02055 CACD 11/17/2018
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`Uniloc 2017 LLC v. American
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`8-18-cv-02056 CACD 11/17/2018
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`Broadcasting Companies, Inc.
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`Uniloc 2017 LLC v. Vudu, Inc.
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`1-19-cv-00183 DED
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`1/30/2019
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`Uniloc 2017, LLC v. Sling TV, LLC
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`1-19-cv-00278 COD
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`1/31/2019
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`Uniloc 2017 LLC v. Roku, Inc.
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`8-19-cv-00295 CACD 2/14/2019
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`Netflix, Inc. et al v. Uniloc 2017 LLC
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`IPR2020-00041 PTAB 10/18/2019
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`Google, LLC v. Uniloc 2017 LLC
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`IPR2020-00115 PTAB 10/31/2019
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`IV. PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF PREVAILING AS TO ANY CHALLENGED CLAIM
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`Petitioner has the burden of proof to establish entitlement to relief. 35 U.S.C.
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`§ 314(a); 37 C.F.R. §42.108(c) (“review shall not be instituted for a ground of
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`unpatentability unless . . . the petition supporting the ground would demonstrate that
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`there is a reasonable likelihood that at least one of the claims challenged . . . is
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`unpatentable”). The Petition should be denied as failing to meet this burden.
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`The Petition raises the following obviousness challenges:
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`Ground
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`Claims
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`Reference(s)
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`1
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`2
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`1–3
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`1–3
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`Jacoby1 and Bland2
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`McTernan3 and Robinson4
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`A. The Level of Ordinary Skill in the Art
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`Given that Petitioner fails to meet its burden of proof in establishing
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`obviousness when applying its own definition of a person of ordinary skill in the art
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`(“POSITA” or “POSA”), Patent Owner does not offer a competing definition for
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`POSITA at this preliminary stage, though it reserves the right to do so in the event
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`that trial is instituted.
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`B. Claim Construction
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`“In an inter partes review proceeding, a claim of a patent . . . shall be
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`construed using the same claim construction standard that would be used to construe
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`the claim in a civil action,” which includes “construing the claim in accordance with
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`1 EX1006, U.S. Pat. Pub. No. 2004/0254887.
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`2 EX1009, U.S. Pat. No. 5,732,218.
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`3 EX1007, WO 01/89195.
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`4 EX1008, EP 0,939,516.
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`4
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`the ordinary and customary meaning of such claim as understood by one of ordinary
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`skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R.
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`§ 42.100(b).
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`At this preliminary stage, Patent Owner submits that the Board need not
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`expressly construe any claim term in a particular manner in order to arrive at the
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`conclusion that the Petition is substantively deficient. Patent Owner reserves the
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`right to challenge any construction offered by Petitioner. Although Patent Owner
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`provides arguments below on the scope of certain claim terms, Patent Owner does
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`not propose a comprehensive construction, as it would not be necessary to resolve
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`the controversy and deny the Petition. See Nidec Motor Corp. v. Zhongshan Broad
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`Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need
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`only construe terms ‘that are in controversy, and only to the extent necessary to
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`resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200
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`F.3d 795, 803 (Fed. Cir. 1999)); see also Changes to the Claim Construction
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`Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and
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`Appeal Board, 83 Fed. Reg. 51,340, 51,353 (Oct. 11, 2018) (Final Rule) (“Moreover,
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`it also may not be necessary to determine the exact outer boundary of claim scope
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`because only those terms that are in controversy need be construed, and only to the
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`extent necessary to resolve the controversy (e.g., whether the claim reads on a prior
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`art reference).” (citing Nidec)).
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`1.
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`“computer system”
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`Petitioner argues a POSITA would have understood “computer system” to
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`mean “one or more computing devices having a common operator or under common
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`control.” Pet. 8. Petitioner bases its definition on this description in the ’609 patent:
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`“The terms ‘computer,’ ‘computer device[’] and/or ‘computer system’ as used
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`herein may generally take the form of single computing devices or collections of
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`computing devices having a common operator or under common control.” EX1001,
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`3:52–55 (emphasis added). The ’609 patent’s use of the permissive “may generally”
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`(as emphasized) indicates a “computer system” is not limited to one or more
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`computing devices “having a common operator or under common control.” At the
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`same time, the passage also does not suggest that mere control over two computers
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`would always make them part of the same “computer system.” Rather, one or more
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`computers under common control “may” be a “system,” but such determination
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`depends on the plain and ordinary meaning of a “computer system” and use of the
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`term in the context of the claims. Petitioner’s interpretation attempts to read the term
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`“system” out of the claim.
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`Petitioner’s erroneous construction for the “computer system” term should be
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`rejected, and Petitioner’s obviousness theory should likewise be rejected as tainted
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`by reliance on an incorrect claim construction. “The Board is under no
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`obligation to subject a patent owner to the burden and expense of
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`discovery and trial where a petition asserts patentability challenges that
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`are keyed to an incorrect claim construction.” United Microelectronics
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`Corp. v. Lone Star Silicon Innovations LLC, IPR2017-01513, slip op. at 4–
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`5 (Paper 10) (PTAB May 22, 2018); see also id. at 6 (“[T]he Board may,
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`and routinely does, decline to institute trial where the patentability
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`challenge asserted in a petition is keyed to an incorrect claim
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`construction.” (collecting cases)).
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`C. The Petition does not show a reasonable likelihood of prevailing
`as to any challenged claim based on Jacoby and Bland (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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`The Petition does not show that Jacoby teaches “providing a
`corresponding web page to the user’s computer for each
`digital media presentation to be delivered”
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`The Petition argues Jacoby teaches the “providing a corresponding web page”
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`limitations recited in claim 1:
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`7
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`Jacoby discloses that a user clicks a link to request a particular
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`media file, such as a movie selected from “Yahoo! Movies.” Ex[1006]
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`¶36. The request causes a URL for the requested media file to be passed
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`to mediaframe servers 140. Id. If the user has paid for the media file
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`and has sufficient bandwidth, mediaframe servers 140 provide the
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`user’s computer with a web page (browser page) corresponding to the
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`selected media presentation:
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`[M]ediaframe servers 140 prepare a presentation for the
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`user. The presentation includes the delivery of a media
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`player to the user and the delivery of a URL that points the
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`media player to the location of the streaming media file in
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`streaming servers 115. In the delivery of the media player,
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`the mediaframe servers publish a page on the user’s
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`browser with a frame set that includes a display screen
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`for the media player and, if necessary, sets appropriate
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`ActiveX controls on the web page.
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`Id. ¶44 (emphasis added). A page published on a browser is a web page.
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`Ex[1002] ¶142; see also Ex[1006] ¶36 (“a web page published on the
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`browser”) and ¶45 (“publish a web page on the client browser”).
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`Pet. 16–17.
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`Noticeably absent from Petitioner’s argument is any explanation as to how
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`Jacoby’s page is “a corresponding web page . . . for each digital media presentation.”
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`See id. Absent such an explanation, Petitioner has not met its burden to show a
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`reasonable likelihood of prevailing as to claim 1.
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`2.
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`The Petition does not show that Jacoby and/or Bland teach
`“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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`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.” Even if
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`Bland’s extensions are capable of tracking multiple objects, they are always present
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`and an applet is not provided “for each digital media presentation” as recited in the
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`claim. Thus, Bland does not teach the “providing an applet” limitations of claim 1.
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`c)
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`Petitioner’s arguments as to combined teachings of
`Jacoby and Bland do not overcome the 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. It
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`is thus unclear what “metering software” Petitioner proposes to be delivered using
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`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
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`combining teachings of Jacoby and Bland does not explain how or why the alleged
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`combination would result in providing an applet “for each digital media
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`presentation,” as opposed to a global extension that may track data for multiple
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`objects. See Pet. 66–68.
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`3.
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`The Petition does not show that Jacoby teaches “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”
`under Petitioner’s interpretation of claim 1
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`Petitioner contends that “computer system,” as used in the claims, means
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`“one or more computing devices having a common operator or under common
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`control.” Pet. 8. Under Petitioner’s interpretation, the alleged “first computer
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`system” and “second computer system” are not distinct computer systems.
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`Petitioner identifies a “first computer system” in Jacoby as “including at
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`least mediaframe servers 140” and a “second computer system” as “including
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`at least streaming servers 115.” Pet. 12–13, 33. Petitioner contends these are
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`distinct computer systems because “[a] POSA would . . . understand Jacoby’s
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`first computer system to have a common operator or be under common control
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`of a service provider, and Jacoby’s second computer system to have a common
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`operator or be under common control of a content provider,” and “there is no
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`indication of a common operator or common control.” Pet. 14–15.
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`The evidence contradicts Petitioner’s argument. Jacoby teaches that a
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`content provider delivers a streaming media file “to a system administrator of
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`the streaming media system 100 for entry onto a content management server
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`105.” EX1006 ¶ 26. Content management server 105 “transfers the streaming
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`12
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`media file and associated stream identifier to a set of streaming servers 115,”
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`which Petitioner interprets as the second computer system. Id. ¶ 33. Thus,
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`contrary to Petitioner’s argument, Jacoby indicates that streaming servers 115
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`are operated by or under control of the system administrator of the streaming
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`media system 100, which also includes mediaframe servers 140. See, e.g., id.
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`Fig. 1. Accordingly, under Petitioner’s interpretation of “computer system,”
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`the servers that Petitioner identifies as the “first computer system” and the
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`“second computer system” are not distinct computer systems.
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`4.
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`The Petition does not show that Jacoby teaches “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”
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`In this section of the Petition, Petitioner contends that Jacoby teaches
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`two types of stored data, “a decrement to a user meter and a decrement to a
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`user account.” Pet. 35. Petitioner refers to arguments for “elements 1[c] and
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`1[e],” id., but the only discussion of Jacoby storing data in those sections of
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`the Petition refers to storing a user meter and user account, see Pet. 28–31.
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`Thus, it appears Petitioner is attempting to point to the decrements as stored
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`data for some limitations, and the actual user meter and user account as stored
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`data for other limitations. The Petition should thus be denied based on this
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`inconsistent mapping, or, at the very least, is unclear and should be denied for
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`that reason. Even if Jacoby’s user meter and user account are considered the
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`stored data, the user meter and user account are not “indicative of an amount
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`of time the digital media presentation is streamed from the second computer
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`system to the user’s computer,” as recited in claim 1. The Petition is thus
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`defective on this basis as well.
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`Petitioner refers to Jacoby’s teaching of “the amount of streaming time
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`remaining in a product” and alleges that “[a] POSA would have understood
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`that the amount of streaming time remaining is indicative of time the digital
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`media presentation is presented to the user’s computer because the time
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`remaining would decrement correspondingly with time presented.” Pet. 36
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`(citing EX1006 ¶ 42; EX1002 ¶ 71). The argument, however, is based on an
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`improper understanding of what Jacoby calls a “product.”
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`In Jacoby, a product defines a set of streaming media files that belong
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`to it, and may include one or more streaming media files. EX1006 ¶ 37.
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`“Products are typically sold in time blocks but may be sold based on volume
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`of media consumed or other useful criteria.” Id. ¶ 38. “For example, a
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`premium movie product may include 10 hours of streaming time for one fee
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`while an ultra-premium movie product may include 20 hours of streaming time
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`for a higher fee.” Id. A product is thus an amount of time or data that a user
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`may use to stream the media file or files belonging to it. This explains Jacoby’s
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`reference to decrementing the user meter and determining “that a user has
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`insufficient time remaining in a purchased product to consume the requested
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`streaming media file or that the user has not purchased a product that includes
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`the requested streaming media file.” Id. ¶ 42. With this understanding, it is
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`evident that neither Jacoby’s user meter nor user account is “indicative of an
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`amount of time the digital media presentation data is streamed from the second
`
`computer system to the user’s computer,” as recited in claim 1. Combining
`
`Jacoby with Bland does not cure the deficiency at least because of the failure
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`to meet other limitations of the claims as noted previously.
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`5.
`
`The Petition fails to show a reasonable likelihood of prevailing
`as to any dependent claim
`
`The deficiencies of the Petition articulated above concerning the challenged
`
`independent claims apply also to the analysis of the challenged dependent claims.
`
`D. The Petition does not show a reasonable likelihood of prevailing
`as to any challenged claim based on McTernan and Robinson
`(Ground 2)
`
`The Petition fails to show the combination of McTernan and Robinson teaches
`
`at least the limitations discussed herein and fails to show the references would have
`
`been combined in the specific manner proposed.
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`15
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`1.
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`The Petition does not show that McTernan teaches “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”
`under Petitioner’s interpretation of claim 1
`
`Petitioner contends that “computer system,” as used in the claims, means
`
`“one or more computing devices having a common operator or under common
`
`control.” Pet. 8. Under Petitioner’s interpretation, the alleged “first computer
`
`system” and “second computer system” in McTernan are not distinct computer
`
`systems.
`
`Petitioner identifies a “first computer system” in McTernan as
`
`“including web servers 104, security servers 110, and central servers 112” and
`
`a “second computer system” as “including show servers 106.” Pet. 41, 56.
`
`Petitioner states that these are distinct computer systems. Pet. 56. Elsewhere
`
`Petitioner contends the “second computer system” is distinct from the first
`
`because they are not under common control. Pet. 43. The Petition contends
`
`this is so because “Figure 1 illustrates show servers 106 as separate servers
`
`with separate functionality,” and because “McTernan does not describe show
`
`servers 106 as being under control of central server 112.” Id.
`
`Under Petitioner’s interpretation, however, show servers 106 have a
`
`common operator or are under common control of the servers identified as the
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`16
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`“first computer system.” As an initial matter, McTernan at least implies a
`
`single operator or common control of the entire system that is disclosed, and
`
`Petitioner has not met its burden to show that there is separate control of two
`
`different systems, which would be required under its interpretation of
`
`“computer system.” McTernan discloses “[a] system and method for the
`
`secure delivery of rich media resources across a computer network having a
`
`plurality of servers connectable to one or more clients.” EX1007, Abstract.
`
`There is no indication of a separate operator or control entity of different
`
`servers within the system. In addition, McTernan teaches that “[a] Show
`
`Server is provided to supply rich media resources to the Security Server for
`
`encryption, to manage the encrypted rich media resources, and to respond to
`
`client requests for rich media resources.” Id. at 11:4–6. Such interaction with
`
`the security server indicates a common operator or common control.
`
`Accordingly, under Petitioner’s interpretation of “computer system,” the
`
`servers that Petitioner identifies as the “first computer system” and the “second
`
`computer system” are not distinct computer systems.
`
`2.
`
`The Petition does not provide sufficient reason to combine
`teachings from McTernan and Robinson to result in a system
`“wherein each stored data is together indicative of a
`cumulative time the corresponding web page was displayed
`by the user’s computer,” under Petitioner’s interpretation
`
`Petitioner contends that “[a] POSA would have understood the term
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`17
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`‘cumulative time the corresponding web page was displayed by the user’s
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`computer,’ as used in element 1[h], to refer to ‘the total amount of time the user’s
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`computer spent on the web page.’” Pet. 10. Petitioner clarifies that “the time spent
`
`on a web page could differ from the time spent presenting the presentation,” and that
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`“[a] POSA would understand element 1[h] to track the total amount of time the
`
`user’s computer spent on the web page, regardless of whether the web page
`
`presented the presentation during that time.” Pet. 10–11. The Petition lacks
`
`explanation of sufficient reasons why one of ordinary skill in the art would have
`
`combined McTernan and Robinson in such a manner as to result in a system that
`
`meets these limitations as interpreted by Petitioner.
`
`Petitioner argues “it was obvious to combine the teachings of Mcternan and
`
`Robinson such that the system disclosed by Mcternan would receive and store data
`
`based on the heartbeats disclosed by Robinson.” Pet. 61. In other words, Petitioner
`
`contends “Mcternan’s system could use both Mcternan’s heartbeat packets
`
`indicating the amount of time the digital media presentation is presented to the user’s
`
`computer (element 1[g]) and Robinson’s heartbeat packets indicating the total
`
`amount of time the user’s computer spent on the web page (element 1[h]).” Pet. 62.
`
`As to reasons to combine, Petitioner argues:
`
`The combination requires nothing more than an application of a known
`
`technique (Robinson teaches using heartbeats to track the amount of
`
`18
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`IPR2019-01367
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`time a user spends on a web page) to a known system (Mcternan
`
`discloses a system that tracks heartbeats from a user’s computer) ready
`
`for improvement to yield predictable results.
`
`Pet. 70–71. The alleged “improvement,” however, is absent. Petitioner argues
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`“[t]he combination improves the system taught by Mcternan by furthering
`
`Mcternan’s stated goals of ‘more effectively track[ing] the use of content by
`
`consumers’ and ‘provid[ing] a secure mechanism for the delivery of rich media
`
`resources that ensures content availability.’” Pet. 71 (quoting EX1007 at 9:8-11,
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`emphasis added in Petition). But there is no explanation as to why, if McTernan
`
`already teaches statistics indicative of how long each show is viewed by each client,
`
`tracking time spent on the web page would be an improvement. And Petitioner’s
`
`vague reference to “security reasons” (Pet. 72) also fails to show sufficient reason
`
`one of skill in the art would have had at the time to track time spent on the web page
`
`instead of or in addition to tracking how long each show is viewed.
`
`
`
`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) is similarly premised on there being a reason, not explained by
`
`Petitioner, for using web page tracking in addition to show tracking. And in even
`
`more conclusory fashion, Petitioner states:
`
`For analogous reasons, a POSA would alternatively be motivated
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`19
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`to implement the proposed combination as a simple substitution of one
`
`known element (Mcternan’s use of heartbeats that track the amount of
`
`time a user watches a show) for another (Robinson’s use of heartbeats
`
`that track the amount time that a user spends on a web page) to obtain
`
`predictable results (as stated above).
`
` Pet. 73. Both statements are insufficient on their face to provide an explanation as
`
`to why one of ordinary skill in the art would have made the combination or
`
`substitutions. Petitioner at most suggests the predictable result is to provide the data,
`
`but there is no explanation as to why one of ordinary skill in the art would have
`
`wanted such data in light of the functionality alleged to be present in McTernan, or
`
`why one of ordinary sk
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