UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`NETFLIX, INC.,
`
`Petitioners,
`
`v.
`
`UNILOC 2017, LLC,
`
`Patent Owner.
`
`__________________
`
`Case No. IPR2020-00041
`Patent No. 8,407,609
`
`__________________
`
`SUPPLEMENTAL DECLARATION OF MICHAEL FRANZ IN SUPPORT OF
`PETITIONER’S REPLY FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,407,609
`
`NETFLIX, INC. EXHIBIT 1009
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`NETFLIX, INC.,
`
`Petitioners,
`
`v.
`
`UNILOC 2017, LLC,
`
`Patent Owner.
`
`__________________
`
`Case No. IPR2020-00041
`Patent No. 8,407,609
`
`__________________
`
`SUPPLEMENTAL DECLARATION OF MICHAEL FRANZ IN SUPPORT OF
`PETITIONER’S REPLY FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,407,609
`
`NETFLIX, INC. EXHIBIT 1009
`
`
`
`TABLE OF CONTENTS
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`
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`INTRODUCTION .......................................................................................1
`RESPONSES TO UNILOC’S PATENT OWNER RESPONSE ..................2
`
`
`I.
`II.
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`
`
`
`
`ii
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`NETFLIX, INC. EXHIBIT 1009
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`
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`
`
`I.
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`INTRODUCTION
`
`Supplemental Declaration of Michael Franz
`In Support of Reply for Inter Partes Review of
`U.S. Pat. No. 8,407,609
`
`1.
`
`I, Michael Franz, have been retained by Petitioners Netflix, Inc.
`
`(“Netflix”) (“Petitioner”) to investigate and opine on certain issues relating to
`
`United States Patent No. 8,407,609 (“the ’609 patent”) in ITS Petition for Inter
`
`Partes Review of that patent. The Petition requests that the Patent Trial and
`
`Appeal Board (“PTAB” or “Board”) review and cancel claims 1-3 of the ’609
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`patent.
`
`2.
`
`Last year, I provided a declaration in support of Netflix’s IPR Petition.
`
`My 2019 Declaration is Exhibit 1002 to the Petition. My 2019 Declaration
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`provides an explanation of my qualifications, a discussion of the technology
`
`relevant to the ’609 patent, and my opinions with respect to the ’609 patent.
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`3.
`
`I have prepared this declaration to address arguments made in
`
`Uniloc’s Patent Owner Response (“POR”).
`
`4.
`
`In addition to the materials referenced and cited in my 2019
`
`Declaration, I have now reviewed and considered the Board’s Institution Decision
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`(Paper 10) and Uniloc’s POR (Paper 15).
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`5.
`
`The opinions set forth in this declaration are based on my personal
`
`knowledge, my professional judgment, and my analysis of the materials and
`
`information referenced in this declaration and its exhibits.
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`1
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`NETFLIX, INC. EXHIBIT 1009
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`
`
`Supplemental Declaration of Michael Franz
`In Support of Reply for Inter Partes Review of
`U.S. Pat. No. 8,407,609
`
`II. RESPONSES TO UNILOC’S PATENT OWNER RESPONSE
`6.
`In the Patent Owner Response, Uniloc argues that Choi suggests that
`
`identifier information would not be sent by the client to the server with each
`
`periodic reporting message. POR, pp. 16-18. Uniloc’s argument is based on
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`paragraph 0097 of Choi, which is reproduced below.
`
`[0097] The various statistical parameters that remain constant
`
`throughout the session are sent only once at the beginning of the
`
`session. The other dynamically changing parameters are sent regularly,
`
`the frequency of reporting set by the statistics reporting interval
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`parameter sent in the initial request.
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`7.
`
`This passage does not indicate what Uniloc suggests. What this
`
`passage indicates is that “statistical parameters” that do not change may not need to
`
`be transmitted from the client to the server more than once. For instance, one
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`statistical parameter that is likely to be constant would be the “c-cpu” parameter,
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`which indicates the “client computer’s CPU.” Choi, Table C1. It is unlikely that a
`
`client’s CPU would change during a single streaming session. The same is true for
`
`“c-playerversion” for “The player version number” and “c-os” for the “Client
`
`computer’s operating system.” Choi, Table C1.
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`8.
`
`But this does not mean that identifier information would not be sent
`
`from the client to the server in each reporting message. In paragraph 0047, Choi
`2
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`NETFLIX, INC. EXHIBIT 1009
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`suggests that identifier data like the session identifier and the stream identifier
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`Supplemental Declaration of Michael Franz
`In Support of Reply for Inter Partes Review of
`U.S. Pat. No. 8,407,609
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`would be sent in every periodic reporting message.
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`[0047] The client 110 periodically transmits state data (e.g., logging
`
`statistics) to the server 108 for storage. In addition, the server 108 tracks the
`
`status of each client viewer state and allows an administrator of server 108 to
`
`determine the state of any client 110. The state data includes a session
`
`identifier and a stream identifier corresponding to the current client-server
`
`session and the streams being delivered, respectively.
`
`And identifier information would naturally be required in each reporting message
`
`so that the server is able to determine which client it is communicating with. One
`
`of the main purposes of Choi is to track media streams provided to clients. Choi,
`
`paragraph 0006. That would be impossible if the clients anonymously sent
`
`reporting messages to the server, i.e., without identifier data. There would be no
`
`ability, or reason, to perform the stream tracking information described in Choi if
`
`the server cannot determine which client provides each reporting message.
`
`9.
`
`The same is also true for Davis. Davis discloses one of its purposes as
`
`tracking “individual user interaction with and use of network resource, including,
`
`for example, Network IDs (known as ‘IP address’) and client IDs (known as
`
`‘cookies’) that have accessed particular resources, the amount of time spent by
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`
`
`
`3
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`NETFLIX, INC. EXHIBIT 1009
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`users interacting with and/or using particular resources, and details of choices
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`Supplemental Declaration of Michael Franz
`In Support of Reply for Inter Partes Review of
`U.S. Pat. No. 8,407,609
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`created by individual users within a particular resource.” Davis, 4:24-32. This is
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`one of the reasons why Davis discloses providing identifier data in the HTTP
`
`request header sent from the client to the Server B. Davis, 11:59-12:50. That
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`identifier data includes the client ID / cookie, the network ID / IP address, as well
`
`as the URL for the webpage that the client is displaying. Davis, 11:59-12:50.
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`Without that identifier information in each message, there would be no way for the
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`Server B to achieve the purpose of Davis’s disclosed invention: tracking the user
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`and the resource (e.g., webpage) being accessed by the user.
`
`10.
`
`I also note that the use of “cookies” has long been standard practice
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`for keeping track of state between clients and servers on the web. This technology
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`originated at Netscape and found its way even into competing browsers by 1995
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`(Sandi Hardmeier, The History
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`of
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`Internet Explorer, Microsoft,
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`https://web.archive.org/web/20051001113951/http://www.microsoft.com/windows
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`/IE/community/columns/historyofie.mspx). The U.S. Patent office granted U.S.
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`Patent 5,774,670 on web browser cookies to Netscape Communications Corp in
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`1998, based on a filing in 1995. Because of the widespread discussion of their
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`privacy implications, the use of cookies would have been well known to a POSA at
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`the time of the filing of the Davis, Siler, and Choi patents.
`
`
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`4
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`NETFLIX, INC. EXHIBIT 1009
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`Supplemental Declaration of Michael Franz
`In Support of Reply for Inter Partes Review of
`U.S. Pat. No. 8,407,609
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`11. For these foregoing reasons, it is my opinion that the Patent Owner
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`
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`Response misinterprets paragraph 0097 of Choi. And that disclosure of Choi does
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`not suggest that the modified version of Davis would lack identifier data in each
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`message from the client to the Server B.
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`12.
`
`In the Patent Owner Response, Uniloc also argues that Siler’s web
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`servers and streaming servers are not “distinct” from one another, and do not
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`operate the claimed streaming “independent[ly]” of one another. However, the
`
`description in Siler, paragraph 0027 that a “URL points to a streaming service on
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`streaming server 105, which is transmitting the stream from source 107” does not
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`merely speak of a server (in terms of a hardware device), but also explicitly
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`mentions a service running on said server. This is consistent with Siler’s
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`description in the specification of a stand-alone entity that responds (only) to
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`requests over the packet network 103.
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`13. According to Siler, paragraph 0018: “The signal source may be a
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`terrestrial radio station or television station, or other service that provides audio
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`and/or video programming content. For reasons explained below, the system 100,
`
`in its preferred embodiment, may be used to best advantage in transmitting live
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`radio broadcasts.” As I explained in my 2019 Declaration (paragraphs 234-236), a
`
`person of ordinary skill would have understood that in many situations, especially
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`5
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`NETFLIX, INC. EXHIBIT 1009
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`for the preferred embodiment of providing live broadcasts, it would be
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`Supplemental Declaration of Michael Franz
`In Support of Reply for Inter Partes Review of
`U.S. Pat. No. 8,407,609
`
`advantageous for the content owner to encode and stream their content directly to
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`the end user via the packet network rather than first having to divert it to the
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`operator of the stream selection server so that it could subsequently be re-broadcast
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`from a server under that party’s control. Besides introducing unnecessary extra
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`operational complexity, this might also inject an additional time delay into a live
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`broadcast. The distribution architecture described in Siler is elegant and highly
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`scalable precisely because it does not require the streaming servers to be under the
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`same control as the stream selection service.
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`6
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`NETFLIX, INC. EXHIBIT 1009
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`
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`Supplemental Declaration of Michael Franz
`In Support of Reply for Inter Partes Review of
`U.S. Pat. No. 8,407,609
`
`I hereby declare that all statements made herein of my own knowledge are true and
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`that all statements made on information and belief are believed to be true; that
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`these statements were made with knowledge that willful false statements and the
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`like so made are punishable by fine or imprisonment, or both, under 18 U.S.C.
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`§ 1001; and further that such willful false statements may jeopardize the validity of
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`the application or any patent issued thereon. I declare under penalty of perjury
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`under the laws of the United States of America that the foregoing is true and
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`correct.
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`Executed on 10/13/2020 in Irvine, California .
`
`Michael Franz
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`7
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`NETFLIX, INC. EXHIBIT 1009
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