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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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`NETFLIX, INC.
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`Petitioners
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2020-00041
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`PATENT 8,407,609
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`PATENT OWNER RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. § 42.120
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`IPR2020-00041
`U.S. Patent No. 8,407,609
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ........................................................................................... 1
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`II.
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`OVERVIEW OF THE ’609 PATENT ............................................................ 1
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`III. OVERVIEW OF PROSECUTION HISTORY OF THE ’609
`PATENT .......................................................................................................... 6
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`IV. RELATED PROCEEDINGS .......................................................................... 9
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`V.
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`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM ................................................................................ 9
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`A.
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`B.
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`C.
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`D.
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`E.
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`LEVEL OF ORDINARY SKILL IN THE ART ................................ 10
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`CLAIM CONSTRUCTION ................................................................ 10
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`1.
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`2.
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`Claim Construction Standard ....................................................10
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`Overview of District Court Claim Constructions .....................11
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`Petitioner fails at least to prove its proposed Davis-Choi
`combination renders obvious limitations directed to the “timer
`applet,” such as those recited in the “receiving” step (Ground
`1) .......................................................................................................... 14
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`Petitioner fails at least to prove its proposed Siler-Davis
`combination renders obvious limitations directed to the “timer
`applet,” such as those recited in the “receiving” step (Ground
`2) .......................................................................................................... 21
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`The Petition fails at least to prove its proposed Siler-Davis
`combination renders obvious “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
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`ii
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`independent of the first computer system” (Ground 2)....................... 23
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`F.
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`No Prima Facie Obviousness for Dependent Claims 2 and 3 ............. 28
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`VI. APJS ARE UNCONSTITUTIONALLY APPOINTED PRINCIPAL
`OFFICERS ..................................................................................................... 28
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`VII. CONCLUSION .............................................................................................. 31
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`CERTIFICATE OF COMPLIANCE .......................................................................... i
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`CERTIFICATE OF SERVICE ................................................................................. ii
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`iii
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`UNILOC’S EXHIBITS
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`File History of ’609 Patent ........................................................... Exhibit 2001
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`Claim Construction Memorandum and Order, Case 2:18-
`CV-00502-JRG-RSP (E.D. Tex.), Dkt. 149 (Jan. 20, 2020) ....... Exhibit 2002
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`Claim Construction Ruling, Uniloc 2017 LLC v. Netflix,
`Inc., SACV 18-2055-GW-DFMx, Dkt. 138 (C.D. Cal. Mar.
`9, 2020) ......................................................................................... Exhibit 2003
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`I.
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`INTRODUCTION
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`Uniloc 2017 LLC (the “Uniloc” or “Patent Owner”) submits this Response to
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`Petition IPR2020-00041 for Inter Partes Review (“Pet.” or “Petition”) of United
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`States Patent No. 8,407,609 (“the ’609 patent” or “EX1001”) filed by Netflix, Inc.
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`and Roku, Inc. (“Petitioners”).1
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`In view of the reasons presented herein, the Petition should be denied in its
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`entirety, as Petitioner has failed to meet its burden of showing that any challenged
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`claim is unpatentable. 35 U.S.C. § 316(e). While the Board instituted trial here, as
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`the Court of Appeals has stated:
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`[T]here is a significant difference between a petitioner’s burden to
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`establish a “reasonable likelihood of success” at institution, and actually
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`proving invalidity by a preponderance of the evidence at trial. Compare 35
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`U.S.C. § 314(a) (standard for institution of inter partes review), with 35
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`U.S.C. § 316(e) (burden of proving invalidity during inter partes review).
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`Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016). Petitioner has
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`failed to meet its burden of proving any proposition of invalidity, as to any claim, by
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`a preponderance of the evidence. 35 U.S.C. § 316(e).
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`II. OVERVIEW OF 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 patent
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`1 Roku, Inc. was also an original Petitioner, but it has since moved to withdraw from
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`the Petition, due to settlement between the parties.
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`1
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`issued March 26, 2013, from U.S. Patent Application No. 12/545,131 filed August
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`21, 2009, claiming priority to provisional application No. 61/090,672, filed on August
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`21, 2008.
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`The ’609 patent observes that, because of the virtually unlimited content
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`available via the Internet, it can prove difficult for a user of an Internet enabled
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`computer to identify and locate content of interest. Ex. 1001, 1:50‒54. The patent
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`further notes that search engines of that time do not always return meaningful results
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`in response to a query, due in part to the complex nature and nuances of human
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`language, and efforts by document authors or providers to fool or trick the indexer
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`into ranking its documents above those of others. Id., 1:55‒2:1. Certain disclosed
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`embodiments of the ’609 patent address this challenge by aggregating content,
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`including audio and video content suitable for streaming. Id., 3:56‒64.
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`2
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`The illustrated portion of the system described with reference to Figure 1
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`includes a system 10 that includes user computers 20, network server computers 30
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`and a network 40 interconnecting computers 20, 30. The system 10 also includes
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`personal computing devices 22 and a personal digital assistant computer/web-enabled
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`cell phone computer 24. Communication links 26 communicatively couple devices
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`20 and server computers 30 with network 40. Id., 3:65‒4:19.
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`Web pages may be provided to user computers 20, personal computing devices
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`22 and cell phone computer 24 by server computers 30. As shown in Figure 2, a web
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`page 200 provided by a server computer 30 aggregates audio and/or video content for
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`presentation to users of computers 20. Id., 4:22‒27. By user selection of a
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`presentation on a web page 200, a suitably populated web page 900, shown in Figure
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`9, may be served to the user’s computer. Portion 930 of the web page 900 may be
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`used to playback a selected presentation such as by streaming the content to a media
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`player application or plugin. It may be desirable to reliably identify how long the
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`media is played, or expected to be played, such as to value portions 910, 920 as
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`advertising space. Id., 11:59‒12:15.
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`3
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`Where content is not uploaded to the computer server or system 30 of the
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`operator serving web page 900, and is instead remotely provided from another
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`computer system, the operator of system 30 does not necessarily exercise control over
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`the content data storage resource and may not be able to directly track how long
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`content is streaming to a particular user. Id., 12:36‒45.
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`The ’609 discloses exemplary solutions to this challenge of tracking, by a
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`server system, of playback of content streamed from another resource to a user device
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`is discussed in process 1000, illustrated in Figure 10 of the ’609 patent. The user’s
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`computer receives a web page, such as from system 30 of Fig. 1, at block 1010. The
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`received web page may take the form of web page 900 of Figure 9, which includes a
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`4
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`portion that may be used to play back user-selected content on the user’s computer,
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`which content may be provided by a third party’s computer system. Id., 12:56‒66.
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`A timer applet on page 900 may be used to indicate when a predetermined
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`temporal period has elapsed. Examples of those temporal periods given in the ’609
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`patent include 10, 15 and 30 seconds. The timer applet may be started at block 1020
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`of Figure 10. Id., 13:4‒9. When the timer applet determines that the predetermined
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`period has elapsed, it signals its continued execution to the user’s computer system
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`20. The server system may log receipt of this indication. The applet may cause
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`identifying data, such as a cookie, or associated data, to be transmitted from the
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`user’s computer to the server, where the cookie, or associated data, may be stored
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`and/or logged, such as by using database server 32. Id., 13:10‒23.
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`5
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`In a preferred embodiment, at each expiration of the predetermined temporal
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`period, as determined by the timer applet, a table entry may be made using database
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`server 32. Id., 13:24‒30. The table entry may contain, for example, information
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`representing the user, the page the user is on, and, to the extent the user is on the
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`same page as was the user upon the last expiration of the timer, the user’s total time
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`on the same page. Id. In certain embodiments, the timer applet may cause data
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`indicative of another temporal cycle having passed while the web page presents the
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`presentation. In that case, a value indicative of the number of cycles that have
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`passed, stored in database server 32, may be incremented each time the data is
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`received. Id., 13:36‒42.
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`Accordingly, in various embodiments, the ’609 patent discloses various
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`techniques to track and record how long a particular viewer spent accessing certain
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`media content from a particular web page. Id., 13:43‒48.
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`III. OVERVIEW OF PROSECUTION HISTORY OF THE ’609 PATENT
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`The prosecution history of the ’609 patent includes substantive examination,
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`including reliance by the Examiner at the USPTO on one reference to reject as-filed
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`claims, and inclusion of detailed comments as to three further references by the
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`Examiner in an Office Action.
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`In a first Non-Final Office Action, the Examiner rejected all pending claims
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`under 35 U.S.C. 103 over Cobley (U.S. Patent Pub 2002/0198781). Ex. 2001, p. 65.
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`The Examiner alleged that Cobley discloses, inter alia, providing identifier data to
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`a user’s computer system for each digital media presentation system, an applet
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`operative by the user’s computer as a timer, receiving at least a portion of the
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`identifier data provided to the user’s computer responsively to the timer applet each
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`time a predetermined temporal period elapses using the first computer system, and
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`storing data indicative of received identifier data. Id. at 66.
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`The Examiner also provided summaries of three references, identified as
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`pertinent to the disclosure, namely Odom (U.S. Patent No. 6,606,102), Shuster (U.S.
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`Patent Pub. 2011/0082754) and Gaidemak (U.S. Patent Pub. 2006/0224693). Id. at
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`67-68. The Examiner summarized Shuster as disclosing a tool where, upon entering
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`a website, the time at which the user enters is determined, and an applet may begin
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`a count down for a predetermined time period. Id. at 68.
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`In a response, the applicant amended claim 1 to recite “wherein each stored
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`data is together indicative of a cumulative time the corresponding web page was
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`displayed by the user’s computer.” Id. at 33. The accompanying arguments noted
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`that Cobley failed to each or suggest this recitation, as well as the recitations
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`“receiving at least a portion of the identifier data from the user’s computer
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`responsively to the timer applet each time a predetermined temporal period elapses
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`using the first computer system;” and “storing data indicative of the received at least
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`portion of the identifier data using the first computer system.” Id. at 37.
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`The Examiner ultimately issued a Notice of Allowance, and the application
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`proceeded to grant. Ex. 2001, pp. 21‒25.
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`For the convenience of the Board, the text of challenged independent claim
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`1, and challenged claims 2 and 3, are reproduced here:
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`1.
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`A method for tracking digital media presentations
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`delivered from a first computer system to a user’s computer via a
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`network comprising:
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`providing a corresponding web page to the user’s computer for
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`each digital media presentation to be delivered using the first
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`computer system;
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`providing identifier data to the user’s computer using the first
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`computer system;
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`providing an applet to the user’s computer for each digital
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`media presentation to be delivered using the first computer system,
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`wherein the 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
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`temporal period elapses using the first computer system; and
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`storing data indicative of the received at least portion of the
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`identifier data using the first computer system;
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`wherein each provided webpage causes corresponding digital
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`media presentation data to be streamed from a second computer
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`system distinct from the first computer system directly to the user’s
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`computer independent of the first computer system;
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`wherein the stored data is indicative of an amount of time the
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`digital media presentation data is streamed from the second computer
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`system to the user’s computer; and
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`wherein each stored data is together indicative of a cumulative
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`time the corresponding web page was displayed by the user’s
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`computer.
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`2. The method of claim 1, wherein the storing comprises
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`incrementing a stored value dependently upon the receiving.
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`3. The method of claim 2, wherein the received data is
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`indicative of a temporal cycle passing.
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`IV. RELATED PROCEEDINGS
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`The following proceedings are currently pending (including stayed) cases
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`concerning the ’609 patent (Ex. 1001).
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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.
`Uniloc 2017 LLC v. American
`Broadcasting Companies, Inc.
`Uniloc 2017 LLC v. Vudu, Inc.
`Uniloc 2017, LLC v. Sling TV, LLC
`Uniloc 2017 LLC v. Roku, Inc.
`Sling TV LLC et al v. Uniloc 2017 LLC
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`8-18-cv-02055 CACD 11/17/2018
`8-18-cv-02056 CACD 11/17/2018
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`1/30/2019
`1-19-cv-00183 DED
`1/31/2019
`1-19-cv-00278 COD
`8-19-cv-00295 CACD 2/14/2019
`IPR2019-01367 PTAB
`7/22/2019
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`Google, LLC v. Uniloc 2017 LLC
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`IPR2020-00115 PTAB 10/31/2019
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`Two district courts have construed claim terms of the ’609 patent. See Ex.
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`2002, Claim Construction Memorandum and Order, Uniloc 2017 LLC v. Google
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`LLC, Case No. 2:18-CV-00502-JRG-RSP, Dkt. 149 (E.D. Tex. Jan. 20, 2020)
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`(adopted Dkt. 198, Mar. 24, 2020); Ex. 2003, Claim Construction Ruling, Uniloc
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`2017 LLC v. Netflix, Inc., SACV 18-2055-GW-DFMx, Dkt. 138 (C.D. Cal. Mar. 9,
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`2020). One of the court’s claim construction order was previously filed in this matter
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`as Uniloc’s Exhibit 2002; and the other is concurrently filed herewith as Exhibit 2003.
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`V.
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`PETITIONER DOES NOT PROVE UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM
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`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
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`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless
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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 asserts the following redundant Grounds:
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`Reference(s)
`Ground Basis Claims
`1
`103
`1‒3 Davis (U.S. Patent No. 5,796,952, Ex. 1003); Choi (U.S.
`Patent Pub. 2003/0236905, EX. 1006).
`Siler (U.S. Patent Pub. No. 2004/0133467, Ex. 1005);
`Davis
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`2
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`103
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`1‒3
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`A. LEVEL OF ORDINARY SKILL IN THE ART
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`The Petitioner proposes that a person of ordinary skill would have had at least
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`a B.S. degree in computer engineering, or computer science, or electrical
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`engineering, or equivalent experience, and at least two years of experience with web
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`development, including the then-current web technologies such as HTML, XML,
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`Java and JavaScript. Pet. 14. Given Petitioner fails to meet its burden to prove
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`obviousness even if the Board were to adopt Petitioner’s definition for a person of
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`ordinary skill in the art, Patent Owner does not offer a competing definition for
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`purposes of this proceeding.
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`B. CLAIM CONSTRUCTION
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`1.
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`Claim Construction Standard
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`Because the Petition was filed after November 13, 2018, the Board interprets
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`claim terms using “the same claim construction standard that would be used to
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`construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b)
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`(2019).
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`2. Overview of District Court Claim Constructions
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`Two district courts have construed claim terms of the ’609 patent. See Ex.
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`2002, Claim Construction Memorandum and Order, Uniloc 2017 LLC v. Google LLC,
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`Case No. 2:18-CV-00502-JRG-RSP, Dkt. 149 (E.D. Tex. Jan. 20, 2020) (adopted
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`Dkt. 198, Mar. 24, 2020); Ex. 2003, Claim Construction Ruling, Uniloc 2017 LLC v.
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`Netflix, Inc., SACV 18-2055-GW-DFMx, Dkt. 138 (C.D. Cal. Mar. 9, 2020).
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`Because 37 C.F.R. § 42.100(b) further provides that the Board must at least
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`“consider” the prior claim construction rulings issued in the related district court
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`litigation and timely made of record here (as Exhibits 2002 and 2003), what follows
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`is an overview of the claim construction rulings in the parallel litigations.
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`a)
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`“streaming”
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`In parallel litigation involving the same parties, the district court noted the
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`parties had reached agreement (for purposes of that proceeding and in order to narrow
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`the disputed issues) that the term “streamed” (as recited in claim 1 of the ’609 patent)
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`should be construed to mean “transferred via a technique such that the data can be
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`processed as substantially steady or continuance sequence.” Ex. 2003, p. 6.
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`Here, because Petitioner does not meet its burden to prove obviousness even if
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`the Board were to apply the same construction for “streaming,” and in order to allow
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`the Board to focus on more salient issues, Patent Owner acknowledges that for
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`purposes of this proceeding it “may not be necessary to determine the exact outer
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`boundary of claim scope [for this term] because only those terms that are in
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`controversy need be construed, and only to the extent necessary to resolve the
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`controversy.” See 83 Fed. Reg. 51340 at 51353.
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`b)
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`“each stored data is together indicative of a cumulative
`time the corresponding web page was displayed by the
`user’s computer steaming”
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`The same claim construction order provides a construction for only one other
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`term of the ’609 patent. Specifically, the court construed “each stored data is together
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`indicative of a cumulative time the corresponding web page was displayed by the
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`user’s computer” (as recited in claim 1) to mean “there are two or more stored data
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`that are indicative of a cumulative time the corresponding web page was displayed
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`by the user’s computer.” Id., 15‒18.
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`In addressing this phrase, the court reached several findings concerning a
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`relevant portion of the prosecution history. The court observed that when the
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`examiner rejected the claims over Cobley, discussed above, “[t]he applicant
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`responded by incorporating the claim limitation “each stored data is together
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`indicative of a cumulative time the corresponding web page was displayed by the
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`user’s computer” into the independent claim.” Ex. 2003, p. 17 (emphasis original).
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`The court further explained that “[b]y opting to incorporate the phrase ‘together
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`indicative of a cumulative time . . . ,’ into the claims, the applicant differentiated the
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`claims from Cobley in a way that signaled a requirement for multiple time data
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`entries.” Id. (citing Tech. Properties Ltd. LLC v. Huawei Techs. Co., 849 F.3d 1349,
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`1359 (Fed. Cir. 2017) for the proposition that “the scope of surrender is not limited
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`to what is absolutely necessary to avoid a prior art reference; patentees may surrender
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`more than necessary.”). Were it not so, according to the court, “the word ‘together’
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`12
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`would not be given any effect.” Id. (citing Akzo Nobel Coatings, Inc. v. Dow Chem.
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`Co., 811 F.3d 1334, 1340 (Fed. Cir. 2016) for the proposition that “construction that
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`rendered word in a claim superfluous rejected”).
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`c)
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`“identifier data”
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`In another parallel litigation involving the same ’609 patent and naming
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`Google LLC as a defendant, the court construed “identifier data” to mean “data that
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`can be used to identify the user and to identify the provided corresponding web page.”
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`Ex. 2002, p. 62. The court’s construction for “identifier data,” if adopted here, would
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`be dispositive in favor of patentability because the Petition does not apply such a
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`construction in either redundant ground. Accordingly, an overview of the claim
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`construction argument and evidence presented in district court is warranted.
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`The claim construction briefing in the district court addressed certain intrinsic
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`evidence relevant to the construction the court ultimately adopted. This included, for
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`example, the disclosure in the ’609 patent that “at each expiration of temporal period
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`as determined by the timer applet, such as every 15 seconds, a table entry may be
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`made of the user, the page the user is on . . . .” Ex. 1001, 13:24‒30. The same
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`description continues by providing the following example ways in which a user may
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`be identified: “the information the user used to login, the user’s IP address, the user’s
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`response to an identifying query, or the like.” Id., 13:30‒33. In view of this
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`disclosure, the court ultimately found that the “identifier data” must at least include
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`“data that can be used to identify the user . . . .” Ex. 2002, p. 62.
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`d)
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`“computer system”
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`Patent Owner discussed in its Preliminary Response a claim construction
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`dispute injected by the Petition concerning the proper construction of the “computer
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`system” term. See Prelim. Resp. 13‒16; see also Pet. 12‒13. Petitioner
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`acknowledges its obviousness theory for is keyed to a construction that “computer
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`system” means “one or more computing devices having a common operator or under
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`common control.” Pet. 8. Petitioner’s construction for “computer system” also has
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`particular relevance to its obviousness theory for the claim limitation recited as “a
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`second computer system distinct from the first computer system.” If “computer
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`system” means “one or more computing devices having a common operator or under
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`common control,” as Petitioner argues, then it follows that “a second computer
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`system” cannot be “distinct from the first computer system” if both have a common
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`operator or are under common control. Otherwise, these distinct terms would be
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`impermissibly conflated together. As will be shown, this logical consequence of the
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`construction applied in the Petition for “computer system” gives rise to certain fatal
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`deficiencies.
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`C.
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`Petitioner fails at least to prove its proposed Davis-Choi
`combination renders obvious limitations directed to the “timer
`applet,” such as those recited in the “receiving” step (Ground 1)
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`Among other substantive deficiencies, the proposed combination of Davis and
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`Choi fails to meet claim limitations directed to the provided “timer applet,” such as,
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`for example, those recited in the “receiving” step—i.e., “receiving at least a portion
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`14
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`IPR2020-00041
`U.S. Patent No. 8,407,609
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`of the identifier data from the user’s computer responsively to the timer applet each
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`time a predetermined temporal period elapses using the first computer system.”
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`At least one acknowledged deficiency of Davis is with respect to the
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`requirements in claim 1 directed to the “timer applet”—e.g., among other limitations,
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`the “timer applet” must be “operative by the user’s computer as a timer,” such that
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`“at least a portion of the identifier data [is received] from the user’s computer
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`responsively to the timer applet each time a predetermined temporal period elapses
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`using the first computer system.” Petitioner expressly acknowledges this deficiency
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`at least by asserting that Davis does “not disclose that the timer applet used on the
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`client machine repeatedly reported the consumption of a content at the expiration of
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`predetermined time intervals.” Pet. 16.
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`After acknowledging Davis is deficient, the Petition nevertheless asserts Davis
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`teaches “that Server B, part of the first computer system, received the client ID from
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`the client, the user’s computer, when the tracking program, the applet, terminated
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`execution.” Pet. 27. Petitioner fails to explain how its characterization of Davis is
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`relevant. It is not. The claim language is not directed to a server providing a “tracker
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`applet” or to receiving the claimed “identifier data” only when a tracker applet
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`terminates its execution. Rather, the claim language further defines and meaningfully
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`limits the “timer applet” term as not only being provided by the first computer system
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`to
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`the user’s computer system, but also as responsively
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`timing certain
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`communications—i.e., “receiving at least a portion of the identifier data from the
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`user’s computer responsively to the timer applet each time a predetermined temporal
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`15
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`IPR2020-00041
`U.S. Patent No. 8,407,609
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`period elapses using the first computer system.” It is undisputed that Davis fails to
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`disclose a “timer applet” meeting these explicit requirements; and Choi likewise fails
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`to disclose providing a “timer applet” as claimed.
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`Petitioner’s assertion of Choi only underscores its deficiencies with respect to
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`the claimed “timer applet” as defined, in part, in the “receiving” step. Petitioner
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`points to the statement in Choi that “the client 110 periodically transmits state data
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`(e.g., logging statistics) to the server 108 for storage.” Pet. 29. However, Choi
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`discloses the timing of the periodic transmissions is set by the “statistics reporting
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`interval parameter sent in the initial request.” Choi at ¶0097. Citing this statement
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`in Choi, the Petition and its attached declaration concede Choi discloses a client’s
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`initial request dictates the timing interval of the periodic transmissions. Pet. 29‒30
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`(citing Choi at ¶0097; Franz ¶¶103-109).
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`Even under Petitioner’s own characterization of Choi, the cited disclosure is
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`distinguishable on its face, at a minimum, from a first computer system providing a
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`timer applet that operates at the user’s computer system to responsively control the
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`timing of when “identifier data” is received at the first computer system. In other
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`words, as set forth in the claim language, the provided “timer applet” must itself
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`operates as a timer, such that the first computer system receives “at least a portion of
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`the identifier data . . . from the user’s computer system responsively to the timer
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`applet each time a predetermined temporal period elapses.”
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`Petitioner’s proposed modification of Davis based on Choi also presents
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`another fatal flaw, which both the Petition and its attached declaration overlook. The
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`16
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`IPR2020-00041
`U.S. Patent No. 8,407,609
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`Petition partially quotes paragraph 97 of Choi, which is reproduced in its entirety
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`below for the convenience of the Board:
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`
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`Pet. 30 (citing Choi, Appendix C at ¶97). The cited paragraph of Choi discloses, in
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`statements which the Petition and its attached declaration fail to even acknowledge,
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`that if a parameter is “constant,” it is “sent only once at the beginning of the session.”
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`Choi, ¶97. It is only the “dynamically changing parameters” in Choi that “are sent
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`regularly.” Id. This disclosure only further distinguishes the proposed combination
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`from what the claim language expressly requires must be received responsive to
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`timing of the timer applet—i.e., “at least a portion of the identifier data.”
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`
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`To understand this additional flaw in Petitioner’s proposed combination, it is
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`helpful to consider the antecedent basis for the term “at least a portion of the identifier
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`data.” This term derives its antecedent basis from the step recited in claim 1 as
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`“providing identifier data to the user’s computer using the first computer system.”
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`Thus, the claimed “portion of the identifier data” received “from the user’s computer
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`system responsively to the timer applet each time a predetermined temporal period
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`elapses” must be a portion of the same “identifier data” provided to the user’s
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`computer. The above-cited portion of Choi fails to disclose, and indeed teaches away
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`from, this limitation at least by stating that the parameters “sent regularly” are only
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`17
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`IPR2020-00041
`U.S. Patent No. 8,407,609
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`those that are “dynamically changing.” Id. The Petition offers no argument or
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`evidence for how Choi’s changed parameters are somehow the same “identifier data”
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`provided to the user’s computer.
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`
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`Petitioner and its declarant also quote, yet fail to discuss, the statement in the
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`same cited paragraph of Choi that the “frequency of reporting [is] set by the statistics
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`reporting interval parameter sent in the initial request.” Choi, Appendix C at ¶97;
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`Pet. 30. Choi consistently uses the word “request” in the context of a client sending
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`a request to a server. See, e.g., Choi, ¶¶ 8‒10, 12, (“reconnect request”), ¶ 53
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`(playback request). According to Choi, therefore, it is the client that dictates the
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`frequency of reporting; and it does so by setting an interval parameter in its initial
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`request. Setting aside the lack of motivation to modify Davis based on Choi in the
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`manner proposed, such a modification—where the client dictates to the server the
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`frequency at which the client will be reporting—bears no resemblance to the claim
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`language.
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`
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`Petitioner also points to a portion of paragraph 47 of the written description of
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`Choi. The portion quoted in the Petition is reproduced below:
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`[0047] The client 110 periodically transmits state data (e.g.,
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`logging statistics) to the server 108 for Storage. In addition, the
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`server 108 tracks the status of each client viewer state and allows
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`an administrator of server 108 to determine the state of any client
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`110. The state data includes a Session identifier and a Stream
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`identifier corresponding to the current client-Server Session and
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`the Streams being delivered, respectively.
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`18
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`IPR2020-00041
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`Choi, ¶47; see also Pet. 29‒30 (quoting the same). Petitioner acknowledges,
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`however, that paragraph 47 of Choi is properly understood in the context of the
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`additional and more detailed disclosure in Choi’s Appendix C, discussed above. Pet.
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`30 (offering the following citation: “Choi at ¶47; see also id. at ¶¶0096, 0097”).
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`
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`Even if Petitioner had proven sufficient motivation to modify Davis to
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`periodically transmit Choi’s so-called “state data,” and Patent Owner does not
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`concede this is the case, Choi itself explains that its periodic transmittal pertains only
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`to “dynamically changing parameters.” Choi, Appendix C at ¶97. Thus, Petitioner’s
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`selective quotation of Choi’s paragraph 47 suffers at least from the same deficiencies
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`explained above concerning the cited portion of Choi’s Appendix C. As explained
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`further above, Choi discloses (in the very passages cited in the Petition) that if a given
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`parameter is considered constant then it is sent only once. Id.
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