Trials@uspto.gov
`571-272-7822
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`Paper No. 28
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`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. and VUDU, INC.,
`Petitioner,
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`v.
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`UNILOC 2017 LLC,
`Patent Owner.
`________________
`
`IPR2019-013671
`Patent 8,407,609 B2
`________________
`
`Record of Oral Hearing
`Held Virtually: Thursday, December 3, 2020
`________________
`
`
`
`Before CHARLES J. BOUDREAU, DANIEL J. GALLIGAN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
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`1 Vudu, Inc., which filed a Petition in IPR2020-00677, has been joined as a
`Petitioner in this proceeding.
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`571-272-7822
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`Paper No. 28
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`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
`________________
`
`Record of Oral Hearing
`Held Virtually: Thursday, December 3, 2020
`________________
`
`
`
`Before CHARLES J. BOUDREAU, DANIEL J. GALLIGAN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
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`1 Vudu, Inc., which filed a Petition in IPR2020-00677, has been joined as a
`Petitioner in this proceeding.
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`
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`IPR2019-01367
`Patent 8,407,609 B2
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`
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`APPEARANCES:
`
`ON BEHALF OF PETITIONER:
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`ELIOT D. WILLIAMS, ESQUIRE
`BAKER BOTTS
`1001 Page Mill Road Building One
`Suite 200
`Palo Alto, California 94304-1007
`(650) 739-7511
`
`
`ON BEHALF OF PATENT OWNER:
`
`BRIAN KOIDE, ESQUIRE
`ETHERIDGE LAW GROUP
`2600 East Southlake Boulevard
`Suite 120-324
`Southlake, Texas 76092-6634
`(817) 470-7249
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`The above-entitled matter came on for hearing on Tuesday, December 3,
`2020, commencing at 1:30 p.m. EST, by video/by telephone.
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`P R O C E E D I N G S
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` JUDGE DIRBA: Good afternoon and good morning. This
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`is the oral hearing for IPR2019-01367 relating to U.S. Patent
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`No. 8,407,609.
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` I'm Judge Dirba and I'm joined today by my colleagues,
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`Judges Boudreau and Galligan. We'll begin with parties'
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`appearances. Who will be appearing for Petitioner?
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` MR. WILLIAMS: Good afternoon or good morning, Your
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`Honor. This is Eliot Williams. I'll be appearing on behalf of
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`Petitioner.
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` JUDGE DIRBA: And will you be doing the entire
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`presentation for Petitioner, Mr. Williams?
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` MR. WILLIAMS: Yeah, in the 1367 matter, that's
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`correct.
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` JUDGE DIRBA: Okay. Who is appearing for patent
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`owner?
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` MR. KOIDE: Good morning, Your Honor. This is Brian
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`Koide of the Etheridge Law Group for Patent Owner.
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` JUDGE DIRBA: Good afternoon, Mr. Koide. Is there
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`anyone else who will be presenting for Patent Owner today?
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` MR. KOIDE: No. I'm also arguing the next hearing as
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`well. But for this I'm the only one arguing.
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` JUDGE DIRBA: Excellent. I anticipate we'll have
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`separate transcripts for the two proceedings, and so we'll go
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`through this process again.
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`Patent 8,407,609 B2
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` MR. KOIDE: I understand, Your Honor.
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` JUDGE DIRBA: Is there anyone else on the line who
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`would like to enter an appearance?
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` MR. KOIDE: I think on the telephonic line I'd like to
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`announce -- he's not going to participate, but I think my
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`in-house counsel, Steve Peterson, Uniloc's in-house counsel may
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`be on. He was planning to. I don't have an indication of who
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`all is on right now, but he's Uniloc's general counsel.
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` JUDGE DIRBA: Okay.
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` MR. McKEEVER: Patrick McKeever, counsel for Netflix
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`in the 2020-00041 proceeding. I'm on the line as well, but just
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`listening in for the first hearing.
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` JUDGE DIRBA: Thank you, Mr. McKeever.
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` And as you all mentioned, or as a couple of folks have
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`mentioned, we do have an audio line today. We also received a
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`request from the public to attend this hearing. So members of
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`the public may be listening to this hearing. Neither party
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`objected to making the hearing publicly available, and the
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`record of this proceeding doesn't include any confidential
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`information.
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` Before we get started today, there are a few things
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`we'd like to address. First, thank you all for your flexibility
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`in participating in this hearing by video conference. Our first
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`priority is your right to be heard, so if at any time you have a
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`technical problem that you feel is undermining your ability to
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`adequately represent your client, please let us know right away
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`Patent 8,407,609 B2
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`so that we can promptly address the problem. If you are unable
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`to speak with the judges, you can contact the team who provided
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`you with the connection information today. If that happens to
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`you, if you do have a technical difficulty, please make a note
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`of what was being discussed at the time so we can know where to
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`pick up the discussion. We will pause the argument if at any
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`time a video participant or the court reporter loses their audio
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`or video connection.
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` Also, to improve the audio quality today and to ensure
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`everyone can hear what is being said, please make sure you mute
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`your mike and only unmute when speaking. Also, to assist with
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`the transcript, please identify yourself when speaking so that
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`we can make sure that the speaker is adequately identified – or,
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`accurately identified.
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` Per the hearing order, each side will have 30 minutes
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`of total argument time for this proceeding. Petitioner has the
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`ultimate burden of establishing unpatentability. Therefore,
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`Petitioner will open by presenting its case, as presented in the
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`Petition regarding the alleged unpatentability of the challenged
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`claims. Petitioner may reserve rebuttal time, but no more than
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`half of its total argument time. Thereafter, Patent Owner will
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`respond to Petitioner's arguments. Patent Owner may also
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`reserve surrebuttal time no more than half of its total argument
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`time to respond to Petitioner's rebuttal.
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` All arguments presented today must have previously
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`been presented in your briefs. No new arguments are allowed.
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`Otherwise, the parties may use their allotted time to discuss
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`the case as they choose. We ask, however, that you make it
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`clear which challenges and which claims you're addressing at any
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`point in time. We will not take objections during a party's
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`argument, so please hold your objection and present them at your
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`next turn to speak. I will maintain a clock and inform the
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`parties when they have five minutes left.
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` Are there any questions or issues either party would
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`like to raise before we begin? Petitioner?
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` MR. WILLIAMS: No, Your Honor.
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` JUDGE DIRBA: Patent Owner?
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` MR. KOIDE: No. Your Honor.
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` JUDGE DIRBA: Mr. Williams, how long would like to
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`reserve for your rebuttal?
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` MR. WILLIAMS: I'll reserve seven minutes, Your Honor.
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` JUDGE DIRBA: Okay. And I don't currently have -- it
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`doesn't -- oh, I was going to say I didn't have your video at
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`that point in time, but I do now.
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` And you said you wanted to reserve seven minutes; is
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`that correct, Mr. Williams?
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` MR. WILLIAMS: Yes, that's correct.
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` JUDGE DIRBA: Okay. All right. Hold on one second
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`while I get my clock started.
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` All right. You may begin when you're ready.
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` MR. WILLIAMS: All right. Thank you, Your Honor. I'd
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`like to address the two grounds in the order that they're
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`IPR2019-01367
`Patent 8,407,609 B2
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`addressed in the institution decision, so I'll begin with ground
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`two, that's the McTernan and Robinson combination. As to that
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`ground, Patent Owner has made two arguments, essentially
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`directed to the ground. First is whether the two systems being
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`pointed to from the McTernan reference are distinct, as required
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`by the claims. And then secondly, they've challenged the
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`motivation to combine those two references. So I'll address
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`those two issues in turn. I'm happy to address any other
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`questions the Board has, of course, as we go through those
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`arguments. And I should ask, Your Honor, I assume you have
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`access to the demonstratives we filed?
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` JUDGE DIRBA: We do. We have access to your
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`demonstratives as well as the documents in the record.
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` MR. WILLIAMS: Okay. Great. So I'll start with slide
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`seven from Petitioner's demonstratives, which is the claim
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`language relevant to this particular element relating to the
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`distinctness of the two computers. Something to note about the
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`text of that element, of course, is that all it requires is that
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`there be two systems and that they be distinct. There's no
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`requirement in the text there that would require any particular
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`ownership or control of those two distinct systems, whether
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`commonly owned or not commonly owned. Patent Owner's argument
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`appears to be that the claims do require a negative limitation
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`that the two systems are not commonly owned. That has never
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`been Petitioner's argument. So to the extent that they're
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`characterizing that as Petitioner's argument, they're simply
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`Patent 8,407,609 B2
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`incorrect. That's certainly not our argument, and it's nowhere
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`in the claims. It's also contradicted by Patent Owner's own
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`admissions in this proceeding as well as its litigation
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`arguments and other proceedings involving this patent and is
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`inconsistent with the specification.
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` I'll begin with Patent Owner's arguments in this
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`proceeding, which are shown on slide 12. As you'll see from
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`that slide, that's an excerpt from Patent Owner's Response. The
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`Patent Owner has argued that mere control over two computers
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`does not necessarily make them part of the same computer system;
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`therefore, essentially, Patent Owner's admitted that having
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`common ownership doesn't defeat the fact that two systems can be
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`distinct. The question for the Board then is whether the
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`systems are actually distinct.
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` Additionally, I'll point to slide 13. This is an
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`excerpt from a claim construction order out of the Central
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`District of California, the judge there adopting Patent Owner's
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`argument as presented by its expert in that proceeding, Michael
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`Shamos, who argued -- who gave example of IBM as owning
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`computers all over the world. No one would say that those
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`systems -- those computers owned in different parts of the world
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`are all part of the same computer system; therefore, conceding
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`that distinctness can still be established even if systems are
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`commonly owned.
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` Finally, that reading is also consistent with the
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`specification. Slide 14 -- well, I should point out that the
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`Patent 8,407,609 B2
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`word distinct only appears I think three times in the entirety
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`of the patent, once in the abstract, once in the claim, and then
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`once in the specification proper. But nowhere is any particular
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`meaning given to it or special definition provided. There is,
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`however, on slide 14 some discussion of what the invention was
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`apparently directed to. And there you'll see that the
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`specification wasn't limited to the situation where these
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`distinct systems were controlled by different parties. In fact,
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`it seemed to be the intent of the inventor to cover both
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`situations, one where the systems were controlled or owned by a
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`common party or whether the systems were owned and controlled by
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`different parties.
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` I'll move now to McTernan. So, in other words, it's
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`our view that the claim simply requires distinctness. There's
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`nothing special about distinctness that needs to be construed
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`here. And contrary to Patent Owner's position, it does not
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`entitle negative limitation that the systems not be commonly
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`owned.
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` I'll turn to McTernan. Slide 17 shows an annotated
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`figure for McTernan that's in the papers. This is the mapping
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`that Petitioner has been applying throughout the proceeding.
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`And as you'll see, there are two distinct computer systems, one
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`represented by the box in red, which captures the central
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`server, security server, and web server components of what's
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`shown in Figure 1. That is the first computer system that's
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`responsible essentially for managing the distribution and the
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`IPR2019-01367
`Patent 8,407,609 B2
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`operation of the system and billing and whatnot.
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` Then there's the second computer system, which is
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`shown in the blue box. That's the system that actually is --
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`controls the media itself, it hosts the media that's being
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`served to the clients. And those two systems are clearly
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`distinct. As we point out in the Petition, these systems have
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`different functionality, they're shown separately, and the
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`connection paths between them and the client, which is shown in
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`the lime green box here on slide 17, are different.
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` Additionally, you'll note that the show server -- the
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`data from the show server comes from this entity called the
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`producer in the bottom left part of the screen, Figure 1. The
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`producer therefore is described in McTernan as being responsible
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`for creating the show content and putting it on the show
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`servers. There's a separate entity that's responsible for the
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`red box. We'll get to that. If you turn to slide 18.
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` Slide 18, you'll see that here we have the testimony
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`from Dr. Storer, this is the Exhibit 1002 in the record.
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`Dr. Storer's testimony, by the way, is unrebutted. There's no
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`contrary evidence in the record. Patent Owner did not submit
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`any expert testimony in this proceeding nor did it cross-examine
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`Dr. Storer about any of his testimony, so there's no deposition
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`record that would in any way call into question the testimony
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`he's provided in his written testimony.
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` As he notes here from paragraph 183, a person of
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`ordinary skill in the art would understand that those show
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`servers shown above are distinct from the first computer system
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`and are not under common control. So even under what appears to
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`be Patent Owner's arguments in this proceeding, McTernan would
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`still practice this claim element.
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` Dr. Storer goes on to point out that the show servers
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`are separate, they have separate functionality, they're not
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`described as being under common control, the central server,
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`rather they're showed as being controlled by the producers, as I
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`just indicated.
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` So that testimony, again, is unrebutted, it's
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`corroborated by the disclosures of McTernan, which I've just
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`shown you, and it establishes that there are clearly two
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`distinct computer systems in McTernan.
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` Slide 19, again, are excerpts here from McTernan that
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`explain how there are two different entities involved here.
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`There's the entity that's implementing the distribution network.
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`That again would be the system one. And there's the entity
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`that's providing the content, and those are the producers. And
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`the system is designed to further the interests of those two
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`entities in different ways, again confirming that the systems
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`are distinct.
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` Unless there's any further questions about that
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`argument, I'll move on to Patent Owner's second argument having
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`to do with the motivation to combine.
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` Okay. So Patent Owner's argument here is essentially
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`that McTernan and Robinson would not have been combined. They
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`argue, the best I can tell, that we're relying on pure hindsight
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`to reach the combination of McTernan and Robinson. That is not
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`the case. Petitioner has repeatedly set forth various
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`rationales that would motivate the combination we're proposing
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`in the Petition, none of which are based on a hindsight, none of
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`which are based on the teaching the Patent Owner's challenge
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`here.
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` In particular there are two that I'll -- two
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`rationales that I'll focus on in my comments today. The first
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`has to do with effective tracking. So you can turn now to slide
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`25. I should back up quickly and mention what this combination
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`is. So McTernan is described as providing a way to monitor
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`streaming of video. So it lets the stream server know when the
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`user is actually watching the video as it's being streamed. If
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`the user were to, for instance, pause the video, then there would
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`be no heartbeats received, and that would appear at the server
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`side as showing that the customer is no longer viewing the
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`video. If they would then unpause the video, they would then
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`start receiving heartbeats. And so you can have effective
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`measurement of whether a user is streaming a particular video or
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`not.
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` It doesn't, however, tell you -- McTernan system, that
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`is, tell you if the user is just visiting the website. So
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`there's no tracking of how long a user is actually on the
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`webpage itself. It's only tracking the amount of streaming
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`time. Now, those two things could obviously be the same, but
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`IPR2019-01367
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`it's not necessarily the case that they would be the same. So
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`Robinson steps in and teaches the ability to monitor the time
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`during which the user is actually on the website even if, for
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`instance, a video on that webpage is paused.
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` And so the combination is adding that piece of
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`Robinson, the tracking of time the user's on the webpage, to
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`what's already taught in McTernan. And the rationale for that
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`is provided both by McTernan and Robinson. If not, it's just
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`self-evident, frankly. So Robinson teaches that there's an
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`advantage to having the ability the watch while someone's on a
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`website or not, at least because it gives you more accurate
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`monitoring of your webpage and how successful it is and how long
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`users are on the webpage, which is information that Robinson
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`teaches is valuable.
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` Therefore, a person of ordinary skill in the art would
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`have recognized that that would be a valuable addition to a
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`system like McTernan as it would give you additional information
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`about how successful your site is and what the users' activities
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`on that site are.
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` McTernan -- by the way, that advantage taught in
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`Robinson is completely consistent with McTernan's system which
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`is designed to effectively track the use of content by consumers
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`and to provide precise measurements and show viewership. So it
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`can certainly be improved and it would be entirely consistent
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`with what McTernan was trying to accomplish. So there's no
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`change in McTernan's principals of operations, there's nothing
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`IPR2019-01367
`Patent 8,407,609 B2
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`that would defeat how McTernan works by simply adding this
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`feature from Robinson.
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` Additionally, again, Dr. Storer has testified that
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`this combination would improve the system taught by McTernan,
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`and that testimony again, is unrebutted. And that's at
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`paragraph 239 of this declaration. I don't have that on a slide
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`for you, but certainly in the record it's cited in our Petition.
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`I'll just quote some of that paragraph. He says the
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`combination, again, here talking about McTernan and Robinson.
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`The combination improves the system taught by McTernan by
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`furthering McTernan's stated goal and more effectively tracking
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`the use of content by consumers and providing a secure
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`mechanism. And I'll get to the secure mechanism bit in just a
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`second.
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` So again, that testimony of a person of ordinary skill
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`in the art remains unrebutted. All we have on the other side
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`from Patent Owner is attorney argument that a person of ordinary
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`skill in the art would not have read these references together
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`and been motivated to combine them. But again, there's no
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`evidence that supports that notion, it's pure attorney argument.
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` JUDGE DIRBA: Counsel, what about Patent Owner's
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`argument that, if I understood it correctly, that a person of
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`skill in the art wouldn't have been motivated to improve
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`McTernan with Robinson because of the way that McTernan bills
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`its customers for viewing video?
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` MR. WILLIAMS: Well, so the fact that it bills the
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`IPR2019-01367
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`customers one way certainly doesn't teach away from the
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`combination. So I took that to be a teaching away argument, but
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`it was a very weak one. There's no reason to suggest that you
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`couldn't further -- even if you were going to only bill the
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`customers for their streaming time, you might still want to know
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`how long they're on your page for other reasons, including
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`marketing reasons, such as taught by Robinson. So that's always
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`been our position, that there's nothing that teaches away that
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`combination. And, again, the evidence is unrebutted that adding
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`Robinson's feature would improve McTernan in that sense.
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` Then there's the second reason, which is worth talking
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`about briefly, which is the improvement to security. McTernan
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`-- this is -- some of this is now in slide 26, so if we go to
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`that slide. McTernan provides -- McTernan explains it's an
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`object to provide a secure mechanism for delivery of media
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`content. And that, as we point out in the papers, that security
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`could be improved by adding Robinson's detection of whether the
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`user is on the website or not. So, for instance, once you add
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`Robinson's technique to McTernan, you would now be able to tell
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`if the user had navigated away from the webpage, and as soon as
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`that happened you could then discontinue streaming. That was a
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`feature that would not be available in McTernan alone because
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`McTernan doesn't track whether the user is on the website or
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`not, only whether the user is continuing to stream the video
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`object.
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` JUDGE DIRBA: Why does the user's moving away from the
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`website relate to security? Can you explain that a little bit
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`better -- or, a little bit more?
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` MR. WILLIAMS: Yeah. So as I understand the
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`combination and what Dr. Storer has said about it as well as
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`what Robinson says about it is you would not want to continue to
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`stream video down once the user has navigated away because that
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`could indicate that something nefarious is going on at the end
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`user, that they're attempting to defeat tracking so as to watch
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`the video essentially for free. That, as I gather, is the
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`argument.
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` So Robinson's teaching of this is simply that once the
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`user navigates away you're going to refuse all connection
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`attempts to that client because something is going on and so you
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`should shut down communications with the client. That reasoning
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`could be applied to McTernan in the way I just articulated, to
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`stop streaming, because at that point obviously if the user is
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`not on the website anymore, they're not streaming the video
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`anymore and so we're going to stop sending the video to them so
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`that they're not somehow getting it for free. Those, as I take
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`it, are the only really two arguments presented against ground
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`two, so to the extent any others are raised by Patent Owner,
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`I'll, of course, address them in rebuttal. But unless the Board
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`has further questions about ground two, I can move to ground
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`one.
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` JUDGE DIRBA: I have a general question, I suppose,
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`that applies to both grounds. Do we need to construe the term
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`IPR2019-01367
`Patent 8,407,609 B2
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`computer system in this proceeding?
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` MR. WILLIAMS: I don't think so. Neither party seems
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`to think it's necessary, and I don't disagree with that. We
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`provided, of course, a definition in the Petition of that term
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`in the event it became disputed. Really the purpose of our
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`construction there was to just avoid the scenario where you're
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`picking apart multiple pieces of different systems and trying to
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`aggregate them together because we think the specification was
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`inconsistent with that approach to a computer system. So in
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`other words, if you have a Verizon computer in New York that's
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`connecting cell phone users in Manhattan to the telephone system
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`and an AT&T computer in San Francisco connecting AT&T customers
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`to the phone network, couldn't collectively lump those two
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`things together and call them a single system since they're
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`under different control. That was the point of our
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`construction. That issue did not become relevant in the
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`proceedings, so I don't think a construction is necessary to
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`resolve the case.
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` JUDGE DIRBA: Can we use the plain and
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`ordinary meaning of the term computer system?
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` MR. WILLIAMS: Yes, for sure. I don't see any
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`arguments that would require you to go further than plain and
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`ordinary meaning, that's right.
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` JUDGE DIRBA: Okay. Are there any of the other terms
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`and phrases -- so if I recall correctly, the district court's --
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`or there are two district courts, I suppose, that construed
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`IPR2019-01367
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`various terms and phrases from this patent, I think that's
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`Exhibits 2001 and 2002 in this proceeding. Do any of those
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`other constructions affect this proceeding?
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` MR. WILLIAMS: We don't think so, Your Honor. We did
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`attempt to show how those constructions -- under those
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`constructions, the grounds we present still involve the claims
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`in our Reply brief, but I don't think -- as far as I can tell,
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`no arguments have been made that would require the Board to go
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`into those terms. And, in fact, the only argument, which I
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`alluded to earlier, that's been made about the claim
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`construction issue is this notion of distinctness which came up
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`in the Patent Owner Response. And, again, I think there's no
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`definition of distinct that's been provided by either side other
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`than plain and ordinary meaning, and I think the Board can just
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`apply that to resolve the case.
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` JUDGE DIRBA: Okay. Thank you.
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` MR. WILLIAMS: Although, as we point with
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`distinctness, even if the Patent Owner's sort of argument about
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`distinctness in its negative connotation were adopted by the
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`Board, McTernan still teaches it, and it's confirmed by the
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`evidence of record.
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` Could I ask how much time I have left?
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` JUDGE DIRBA: You have five and a half minutes.
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` MR. WILLIAMS: Okay. So let me just briefly -- I'll
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`touch on a couple of issues with respect to ground one in that
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`time remaining. So here the combination involves Jacoby and
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`Bland. And I'll try to address a couple of the points. First,
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`Patent Owner attacks element 1(a), which is that the webpage needs
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`to be provided for each presentation. Slide 35 shows how Jacoby
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`teaches that where it publishes a page that includes a link to a
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`streaming media file. So for every -- every media file is going
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`to have a webpage that's generated. That's the mapping in the
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`Petition.
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` Let's move on to element 1(c) where I think more of the
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`action is. And that has to do with the applet. Return to slide
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`40. This gives a pretty good explanation of what Jacoby is
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`actually doing. So as you recall, in the Petition, we argue that
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`this is met two ways, by Jacoby itself, the first way, and the
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`second with the combination of Jacoby and Bland.
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` I took some comments in the institution decision to
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`sort of be not entirely persuaded by the notion that Jacoby
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`teaches the applet by itself, so let me take a run at that, if I
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`can, to explain the argument, at least so you understand our
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`position. As you see here on slide 40, what happens when Jacoby
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`is streaming is a couple things. At the beginning of the
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`process it's going to get a metering URL and that is essentially
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`an address where the client is going to be sending data that's
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`the metering URL. It's also going -- it's going to get other
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`things, but then at some point it's going to start getting the
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`stream itself from the content server.
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` As it gets to that stream, there will be events
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`embedded in that stream. And what the client then needs to do
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`IPR2019-01367
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`is have the intelligence to extract those events from the
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`stream, append them to the URL that it previously got, and then
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`send requests to that URL. And that's the way that the server
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`upstream is kept informed about whether the server -- whether
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`the client is actually streaming. So those essentially are kind
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`of the heartbeat packets that are coming back up. They're
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`coming back up because there's logic and the client that has to
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`append those metering events to the URL and then send it up.
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` So you'll see that shown on slide 40 on the right
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`side. In blue is the metering URL, and green is an example of a
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`metering event, and purple is the combination of those things
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`that the client prepares and sends upstream.
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` So our view is that because Jacoby has some logic
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`that's necessary when executing the stream in order to perform
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`this task of at least extracting and appending these metering
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`events, it therefore teaches an applet, and that was especially
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`true given the disclosure on slide 35, which I'll refer you to
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`-- on the right-hand column of slide 35 is Jacoby's disclosure
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`of how in the delivery of the media player -- this is kind of
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`the bottom half of that section on the right -- in the delivery
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`of the media player, the media server has published a page on
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`the user's browser with a frame set that includes a display
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`screen for the media player, and if necessary sets the
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`appropriate ActiveX controls on the page.
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` So those two disclosures I just pointed to, the
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`setting of the ActiveX controls as well as the disclosure that
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`IPR2019-01367
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`there must be some logic happening at the media player side to
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`perform this task of generating the media URLs that go
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`upstream, our expert, Dr. Storer, took the position that in view
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`of those teachings, a person of ordinary skill in the art would
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`have understood that Jacoby is using an applet to perform that
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`task. And that's at paragraph 148 of his declaration.
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` Again, there's no -- there's been no expert testimony
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`presented on the other side of that question. His testimony
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`again remains unrebutted. So that was the basis for saying
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`Jacoby has an applet, because there's clearly some software
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`that's being used n
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