`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`Google LLC
`
`Petitioner
`
`v.
`
`UNILOC 2017 LLC
`
`Patent Owner
`
`U.S. Patent No. 8,407,609
`Filing Date: August 21, 2009
`Issue Date: March 26, 2013
`
`____________________
`
`Case No. IPR2020-00115
`
`
`
`PETITION FOR INTER PARTES REVIEW
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`
`
`
`

`

`
`
`IPR2020-00115 Petition
`U.S. Patent 8,407,609
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`TABLE OF CONTENTS
`
`
`I.
`PRELIMINARY STATEMENT ..................................................................... 1
`II. OVERVIEW OF PRIOR ART ........................................................................ 2
`III. THE ’609 PATENT .......................................................................................15
`A. Overview .............................................................................................15
`B.
`Challenged Claims ..............................................................................20
`IV. LEVEL OF ORDINARY SKILL IN THE ART ...........................................22
`V.
`CLAIM CONSTRUCTION ..........................................................................23
`VI. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED ..............................................................................24
`VII. THE CHALLENGED CLAIMS ARE UNPATENTABLE OVER
`THE PRIOR ART ..........................................................................................24
`A. Ground 1: Claim 1 is anticipated by Hayward....................................24
`B. Ground 2: Claim 1 is rendered obvious by Hayward and
`Middleton .............................................................................................46
`C. Ground 3: Claims 2 and 3 are rendered obvious by Hayward, or
`Hayward and Middleton, in combination with Ryan ..........................56
`VIII. GOOGLE RAISES NEW GROUNDS OF UNPATENTABILITY .............60
`IX. MANDATORY NOTICES ...........................................................................63
`A.
`Real Parties-in-Interest ........................................................................63
`B.
`Related Matters ....................................................................................63
`C.
`Lead and Back-Up Counsel, and Service Information .......................64
`X. GROUNDS FOR STANDING ......................................................................65
`XI. CONCLUSION ..............................................................................................65
`
`
`
`i
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`IPR2020-00115 Petition
`U.S. Patent 8,407,609
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`LIST OF EXHIBITS
`
`Description
`Exhibit
`Ex. 1001 U.S. Patent No. 8,407,609
`Ex. 1002
`Prosecution File History of U.S. Patent No. 8,407,609
`Ex. 1003 Declaration of Dr. Jeffrey Chase
`Ex. 1004 Curriculum Vitae of Dr. Jeffrey Chase
`Ex. 1005 U.S. Patent App. Pub. No. 2004/0045040 to Hayward (“Hayward”)
`Ex. 1006 U.S. Patent App. Pub. No. 2002/0111865 to Middleton (“Middleton”)
`Ex. 1007 U.S. Patent No. 6,421,675 to Ryan (“Ryan”)
`Ex. 1008 Defendant Google LLC’s Claim Term Disclosure in Uniloc 2017 LLC
`v. Google LLC, 2:18-cv-00502 (E.D. Tex., Sep. 24, 2019)
`Plaintiffs’ Preliminary Claim Constructions and Identification of
`Extrinsic Evidence Pursuant to P.R. 4-2 in Uniloc 2017 LLC v.
`Google LLC, 2:18-cv-00502 (E.D. Tex., Sep. 24, 2019)
`Sling TV L.L.C. v. Uniloc 2017 LLC, Petition for Inter Partes Review
`of U.S. Patent No. 8,407,609, IPR2019-01367 (July 22, 2019)
`Ex. 1011 Netflix, Inc. and Roku, Inc. v. Uniloc 2017 LLC, Petition for Inter
`Partes Review of U.S. Patent No. 8,407,609, IPR2020-00041 (Oct.
`18, 2019)
`Ex. 1012 U.S. Patent Application Pub. No. 2004/0254887 to Jacoby (“Jacoby”)
`
`Ex. 1009
`
`Ex. 1010
`
`ii
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`I.
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`IPR2020-00115 Petition
`U.S. Patent 8,407,609
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`PRELIMINARY STATEMENT
`Petitioner Google LLC requests inter partes review and cancellation of
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`claims 1–3 of U.S. Patent No. 8,407,609 (“the ’609 patent”) (Ex. 1001), assigned
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`to Uniloc 2017 LLC. These claims are directed to tracking a user’s viewing of a
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`digital media presentation, something well-known before the earliest claimed
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`priority date of the ’609 patent.
`
`The ’609 patent describes a content or web server and database server that
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`allow a user, through a device, to search for digital media presentations such as
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`videos. Ex. 1001, 4:57–61, 5:29–67. When the user selects a digital media
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`presentation from a list of search results, the content or web server provides to the
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`device a web page, and the selected digital media presentation is streamed to the
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`device through a media player associated with the web page. Id., 5:20–25, 11:62–
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`64, 12:1–5. The web page includes portions that “may be used to display . . .
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`advertisements.” Id., 12:5–6.
`
`The ’609 patent recognizes that “it may be desirable to be able to reliable
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`[sic] identify how long the media was actually, or may typically, be played, in
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`order to appropriately value [the] portions [] as available advertising billboard
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`space.” Id., 12:6–10. According to the ’609 patent, “[s]uch knowledge is not
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`conventionally available.” Id., 13:47–48.
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`1
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`But by 2008, when the provisional application leading to the ’609 patent was
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`IPR2020-00115 Petition
`U.S. Patent 8,407,609
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`filed, tracking a user’s viewing of a digital media presentation, including how long
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`a digital media presentation is played, was well known. For example,
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`Hayward (Ex. 1005), filed in 2001, discloses tracking a user’s viewing of a media
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`file, including how long the media file is played. As another example,
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`Middleton (Ex. 1006), filed in 2002, discloses tracking a user’s interactions with an
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`element displayed on a web page, including how long the element is displayed.
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`Similarly, Ryan (Ex. 1007), issued in 2002, discloses measuring a user’s interest in
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`a web page by tracking how long a user looks at the web page. Ex. 1007, 12:27–
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`31, 16:40–42. Hayward, Middleton, and Ryan each recognize that this knowledge
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`is valuable to advertisers. Ex. 1005, ¶0064; Ex. 1006, ¶0010; Ex. 1007, 9:22-30,
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`12:22-30. And together, they anticipate and/or render obvious the claimed
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`concepts of the ’609 patent.
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`II. OVERVIEW OF PRIOR ART
`1. Hayward
`U.S. Patent App. Pub. No. 2004/0045040 to Hayward was filed October 24,
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`2001 and published March 4, 2004, constituting prior art under at least pre-AIA §
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`102(b). Ex. 1005. Hayward was not cited or considered during prosecution of the
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`’609 patent.
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`2
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`Hayward was published more than four years before the priority date of the
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`IPR2020-00115 Petition
`U.S. Patent 8,407,609
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`’609 patent and teaches “a method of displaying video data using an embedded
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`media player page.” Id., Abstract. As shown in annotated Figure 1A below,
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`Hayward’s method is carried out by a system including a client 110, a customer
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`system 118 and media file index and log system 122, and a media file source 116,
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`all of which are connected by the Internet 114.
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`According to Hayward, “[a] user of client 110 accesses customer system 118
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`through Internet 114,” and “customer system 118 transmits a web page to
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`client 110 through Internet 114.” Id., ¶0025. The transmitted web page includes
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`IPR2020-00115 Petition
`U.S. Patent 8,407,609
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`“a media file search prompt.” Id., ¶0026.
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`Through the client 110, the user may enter a search request, such as “Pearl
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`Harbor” and “movie trailer.” Id., ¶0028. “The search request is received by
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`customer system 118 and is transmitted to media file index and log system 122.”
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`Id.
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`The media file index and log system 122 “includes a database having
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`indexed therein a plurality of media files,” each of which is identified by “a unique
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`identifier for the media file.” Id., ¶0027. When the search request is transmitted
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`by the customer system 118, the media file index and log system 122 searches “for
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`indexed media files that satisfy the search request” and “transmits the results to
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`customer system 118.” Id., ¶0028. The search results include, among other things,
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`the unique identifier for the media file. Id.
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`The customer system 118 transmits the search results to the client 110 “as a
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`Web page that preferably includes a list of links to media files located at media file
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`sources 116.” Id. The client 110 displays the web page with the search results to
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`the user. Id.
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`4
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`The user, Hayward teaches, may “view the video data contained within a
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`IPR2020-00115 Petition
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`video file listed in the search results displayed to the user by clicking a link to one
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`of the video files.” Id., ¶0029. When the user clicks a link for a selected media
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`file, “the customer system 122 instructs the client to request [an] embedded media
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`player page from the customer system 122.” Id. An example embedded media
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`player page is shown in Figure 2, annotated below.
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`As Hayward explains, the embedded media player page “includes a
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`reference to a functional media player object” that can play the selected media file.
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`Id., ¶0031. As shown in Figure 2, the embedded media player page “includes
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`video display area 202 (when the embedded player plays video files).” Id., ¶0032.
`5
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`The embedded media player page may locate a media file at the media file
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`IPR2020-00115 Petition
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`source 116 and stream the media file, which may be output by the media player.
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`Id., ¶0046. For example, a media file titled “thestream.asx” may be “found and
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`streamed by the media player from a media file source 116 located at
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`‘thestreamhost.com’ through Internet 114” and may be “outputted by the
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`embedded media player in a window 202,” as shown. Id.
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`6
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`In some embodiments, Hayward teaches, the “embedded media player page
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`also facilitates the collection of data in connection with the playing of a media
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`file.” Id., ¶0057. Hayward’s data collection is described in connection with
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`Figure 5, right. As shown, “[a]t step 502, the embedded media player page
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`instructs the client 110 to transmit a media file identification message to a log
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`server of the media file index and log system 122.” Id., ¶0058. The media file
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`identification message is transmitted
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`“substantially proximate in time to when the
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`media file begins to play in the embedded media
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`player of the embedded media player page.” Id.,
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`¶0059. The media file identification message
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`may include, among other things, the “unique
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`identifier to the media file (such as [the] unique
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`identifier of the media file used in the media
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`fil[e] index and log system 122 and received
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`along with a search results page).” Id., ¶0058.
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`At step 504, the media file index and log
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`system 122 stores “the information contained
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`within the media file identification message in
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`the media file’s respective log,” including “the time at which the media file
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`IPR2020-00115 Petition
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`identification message was transmitted.” Id.
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`At step 506, the client 110 “transmit[s] at least one subsequent message . . .
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`to the log server of the media file index and log system 122.” Id., ¶0060. The
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`subsequent messages are transmitted “at predetermined time intervals while the
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`embedded media play page remains open.” Id. “At step 508, a time stamp for the
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`at least one subsequent message is stored in the log associated with the media file.”
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`Id.
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`The media file identification message and the subsequent messages are
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`transmitted using “scripting” in the embedded media player page. Id., ¶¶0058,
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`0060; Ex. 1003, ¶¶93–94. Hayward defines “scripting” as “programming which
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`supplements a static HTML page,” such as “Java” or “JavaScript.” Ex. 1005,
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`¶0016. According to Hayward, “much information can be gleaned about the user
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`and the playing event” from the time stamps stored in a media file’s log at the
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`media file index and log system 122. Id., ¶0063. In particular, Hayward teaches,
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`“by calculating the difference in time between the first and last time stamps for a
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`media file during a selected playing session recorded in the log, the approximate
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`length of time that the embedded media player page was left open by the user can
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`be calculated.” Id. Hayward recognizes that this information may be valuable to,
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`for example, an advertiser whose advertisement was displayed while the embedded
`8
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`media player page was open. Id., ¶0064. This information may also determine
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`“how pertinent or relevant a played media file was to a user’s initial search
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`request.” Id.
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`Hayward is analogous art to the ’609 patent. Hayward “is from the same
`
`field of endeavor”—namely, systems facilitating the provision and tracking of
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`content on a web page. Moreover, Hayward “is reasonably pertinent to the
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`particular problem with which the inventor is involved” —namely, tracking a
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`user’s viewing of a digital media presentation. Tinnus Enterprises, LLC v.
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`Telebrands Corporation, 846 F.3d 1190, 1207 (Fed. Cir. 2017) (citing Unwired
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`Planet, LLC v. Google Inc., 841 F.3d 995, 1000–01 (Fed. Cir. 2016) (quoting In re
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`Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992))); see also Bigio, 381 F.3d at 1325.
`
`2. Middleton
`U.S. Patent App. Pub. No. 2002/0111865 to Middleton was filed March 14,
`
`2002 and published August 15, 2002, constituting prior art under at least pre-AIA
`
`§ 102(b). Ex. 1006. Middleton was not cited or considered during prosecution of
`
`the ’609 patent.
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`Middleton was published six years before the priority date of the ’609 patent
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`and describes an applet, downloaded to a user’s web browser, that tracks the user’s
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`interactions with objects on a web page. Id., Abstract. Among other things, the
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`9
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`applet tracks “how long an object,” such as an advertisement, “is displayed.” Id.,
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`IPR2020-00115 Petition
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`¶0012.
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`In Middleton, a client computer 20 allows a user to view a web page in a
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`browser program. Id., ¶0024. Middleton’s web page includes “JavaTM code 44
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`that includes instructions to be run while [a] user computer 20a is displaying the
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`web page.” Id., ¶0026. The JavaTM code 44, Middleton teaches, “includes an
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`applet program and data for tracking and logging the activities of the user in
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`memory 24 while the user is viewing the Web page.” Id., ¶0029. “The applet
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`program 44,” Middleton explains, “permits the authors of the advertisement 39 to
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`better understand how the users interact with the Web page advertisement.” Id.
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`For example, as illustrated in Figure 2 below, the applet may permit an
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`advertiser to track “the elapsed time that [an] element 48 [of the advertisement 39]
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`has been displayed on the page.” Id., ¶0037. In state 104, Middleton teaches,
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`IPR2020-00115 Petition
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`“user activities with respect to
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`objects within the advertisement 39
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`may begin to be tracked by logging
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`information in local memory
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`locations 24 at the client 20.” Id.,
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`¶0036. The “the elapsed time” is
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`tracked in state 106. Id., ¶0037. “At
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`certain times,” Middleton teaches,
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`“state 120 is entered in which the
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`activity log 60 is sent from the local
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`memory 24 by the applet 44 back to
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`a server,” which “may or may not be
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`the same server [] from which the
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`Web page 46 was originally
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`downloaded.” Id., ¶0045.
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`According to Middleton, this information may be valuable to, for example,
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`an advertiser, who may wish to understand “what motivates users to pay initial
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`attention to and/or otherwise interact with Web page advertising.” Id., ¶0010.
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`Middleton is analogous art to the ’609 patent. Middleton “is from the same
`
`field of endeavor”—namely, systems facilitating the provision and tracking of
`11
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`content on a web page. Moreover, Middleton “is reasonably pertinent to the
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`particular problem with which the inventor is involved” —namely, tracking a
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`user’s viewing of a digital media presentation. Tinnus, 846 F.3d at 1207 (citing
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`Unwired Planet, 841 F.3d at 1000–01 (quoting Clay, 966 F.2d at 658–59)); see
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`also Bigio, 381 F.3d at 1325.
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`3.
`Ryan
`U.S. Patent No. 6,421,675 to Ryan issued on July 16, 2002, constituting
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`prior art under at least pre-AIA § 102(b). Ex. 1007. Ryan was not cited or
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`considered during prosecution of the ’609 patent.
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`Ryan describes a search engine that includes a server and a database. Id.,
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`1:23–29. When a user enters a search command at a personal computer, Ryan
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`teaches, the server receives the search command, uses it to search the database, and
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`provides search results, such as a list of web pages, to the user’s personal computer
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`for display to the user. Id., 1:23–30. The search engine could be used to provide,
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`for example, videos. Id., 36:64–67.
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`A problem with search engines, Ryan notes, is that they fail to take into
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`account “any measure of the actual users’ opinions” regarding the search results.
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`Id., 1:66–2:4. According to Ryan, considering users’ opinions “directly benefits
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`the advertiser, because it allows for content to be targeted in real time based upon
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`various criteria.” Id., 4:57–60. To this end, Ryan proposes determining a
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`“relevance” to the user of a web page selected from the search results. Id.,
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`9:17-18.
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`As Ryan explains, “[d]epending on the relevance of the site, the user may
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`spend time reading, downloading exploring further pages, embedded links and so
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`forth, or if the site appears irrelevant/uninteresting, the user may return directly
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`back to the search results after a short period.” Id., 9:17–22. Accordingly, a “Java
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`applet” is used to record a “date-time” when the user selects a site. Id., 8:63–67,
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`9:41–56. “The time difference between the two selections,” Ryan teaches, “is
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`recorded as the difference between two time date/time data 132 from subsequent
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`selections from the list of web page searches.” Id., 9:22–25. This time difference
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`is recorded as “surfer trace data on the popularity of web pages.” Id., 9:29–30.
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`From the surfer trace data, the server generates a “cumulative surfer trace
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`table,” also called Table 4, shown below. Id., 13:62–14:3. According to Ryan,
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`Table 4 is updated each time a user selects a web page from the search results. Id.,
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`16:10-16.
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`The server also maintains a table, “Table 3,” shown below, linking web
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`pages with keywords entered in search commands. Id., 12:16–41. Table 3
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`includes “the cumulative number of significant visits (hits) to each URL addresses
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`corresponding to each key-word,” referred to “weighting factor X.” Id., 12:27–29.
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`The weighting factor X, Ryan explains, “is a measure of the popularity of the URL
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`for each keyword and is determine [sic] from the surfer traces.” Id., 12:29–31.
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`The weighting factor X may be “increment[ed] . . . based on the time spent at the
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`web page,” Ryan teaches. Id., 16:40–41. “The longer the time spent the more this
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`increments the value of X.” Id., 16:41–42.
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`Ryan is analogous art to the ’609 patent. Ryan “is from the same field of
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`endeavor”—namely, systems facilitating the provision and tracking of content on a
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`web page. Moreover, Ryan “is reasonably pertinent to the particular problem with
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`which the inventor is involved” —namely, tracking a user’s viewing of a web
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`page. Tinnus, 846 F.3d at 1207 (citing Unwired Planet, 841 F.3d at 1000–01
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`(quoting Clay, 966 F.2d at 658–59)); see also Bigio, 381 F.3d at 1325.
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`III. THE ’609 PATENT
`A. Overview
`The ’609 patent describes a method for tracking digital media presentations
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`delivered to a user’s computer. Ex. 1001, Abstract. As shown in annotated
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`Figure 1 below, the method is carried out in a system much like Hayward’s: a user
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`computer 20, a content or web server 34 and database server 32, and a file
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`server 36, all of which are connected by a network 40.
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`The ’609 patent purportedly teaches that “a user of a device 20 may request
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`[a web] page 200 from content server 34 using a browser application,” “[s]erver 34
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`may provide page 200 to the requesting computer 20,” and “[a] user may enter a
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`search term.” Id., 4:57–61, 5:29–34. All are done “in a conventional manner.”
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`Id., 4:59-61, 5:33.
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`“Responsively thereto,” the ’609 patent explains, “content server 34 may
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`request database server 32 to identify which presentations should be used to
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`populate page 200 according to the entered search term(s).” Id., 5:34–37.
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`“Server 34 may then provide such a populated page 200 to the requesting user
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`computer 20.” Id., 5:37–39. An example web page 200 showing “aggregate[d] . . .
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`video content for presentation to users of computers 20” is shown in Figure 2,
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`below.
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`For example, “presentations 265, 270, 275” may be shown. Id., 4:38–40.
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`Much as in Hayward, “a user may select a populated presentation (e.g., 265, 270,
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`or 275, FIG. 2)” and, “[i]n response thereto, server 34 may request file server 36
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`. . . stream . . . the selected presentation to the requesting user’s computer 20, such
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`as via web page 200 in a conventional manner.” Id., 5:20-25.
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`A “[w]eb page 900,” shown in Figure 9 above, “may be provided to user’s
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`computer [20] responsively to user selection of a presentation shown on a
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`populated web page 200,” just as in Hayward. Id., 11:61–64. On the web
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`page 900, a “portion 930 [green] may be utilized to playback the selected
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`presentation in a conventional manner, e.g., by . . . streaming the content to a
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`media player application or plug-in.” Id., 12:1-5.
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`Just as Hayward and Middleton recognized, the ’609 patent states “it may be
`
`desirable to know . . . how long a user actually watched, and/or listened, to a
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`presented program.” Id., 11:47–52. For example, where advertisements are
`
`displayed in the web page alongside the presentation, the ’609 patent states “it may
`
`be desirable to be able to reliable [sic] identify how long the media was actually
`
`. . . played, in order to appropriately value portions [of the web page] as available
`
`advertising billboard space.” Id., 12:5–10. But while Hayward discloses tracking
`
`a user’s viewing of a media file, including how long the media file was played, the
`
`’609 patent claims “[s]uch knowledge is not conventionally available.” Id., 13:47–
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`48.
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`The ’609 patent tracks the user’s viewing of the digital media presentation
`
`using a “timer applet” that functions like the scripting in Hayward. Id., 12:66–67.
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`As shown in Figure 10, below right, the timer applet “may be used to indicate each
`
`time some temporal time period, such as 10, 15, or 30 seconds, elapses.” Id., 13:6–
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`9. “[W]hen the applet determines the predetermined temporal period has elapsed,
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`. . . system 30 may log receipt of this indication, such as by using database
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`server 32.” Id., 13:10–13. In some
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`embodiments, the applet may cause
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`“identifying data” to be transmitted with the
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`indication. Id., 13: 14–16. The identifying
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`data may be “logged, such as by using
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`database server 32.” Id., 13:22–23.
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`Based on the logged data, it may be
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`determined “that a viewer began viewing a
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`particular show at a certain time,” as well as
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`“when a user began viewing a different
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`page, or show, thereby providing
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`knowledge of how long a particular viewer spent on a particular page.” Id., 13:43–
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`48. Like Hayward and Middleton, the ’609 patent recognizes the value of this
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`information to advertisers. Using this information, the ’609 patent envisions that
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`“an increasing scale of payments for advertising displayed on a given page” could
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`be determined, “correspondent to how long a viewer or viewers remain, or
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`typically remain, on that particular page.” Id., 13:49–14:2.
`
`B. Challenged Claims
`Google challenges claims 1–3.
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`1. A method for tracking digital media presentations delivered from a first
`computer system to a user’s computer via a network comprising:
`
`providing a corresponding web page to the user’s computer for each
`digital media presentation to be delivered using the first computer
`system;
`
`providing identifier data to the user’s computer using the first
`computer system;
`
`providing an applet to the user’s computer for each digital media
`presentation to be delivered using the first computer system, wherein
`the applet is operative by the user’s computer as a timer;
`
`receiving at least a portion of the identifier data from the user’s
`computer responsively to the timer applet each time a predetermined
`temporal period elapses using the first computer system; and
`
`storing data indicative of the received at least portion of the identifier
`data using the first computer system;
`
`wherein each provided webpage causes corresponding digital media
`presentation data to be streamed from a second computer system
`distinct from the first computer system directly to the user’s computer
`independent of the first computer system;
`
`wherein the stored data is indicative of an amount of time the digital
`media presentation data is streamed from the second computer system
`to the user’s computer; and
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`wherein each stored data is together indicative of a cumulative time
`the corresponding web page was displayed by the user’s computer.
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`2. The method of claim 1, wherein the storing comprises incrementing a
`stored value dependently on the receiving.
`
`3. The method of claim 2, wherein the received data is indicative of a
`temporal cycle passing.
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`The level of ordinary skill in the art may be reflected by the prior art of
`
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Here, a
`
`person of ordinary skill in the art (“POSA”) at the time the provisional application
`
`leading to the ’609 patent was filed would have had either (a) a Master’s or
`
`doctoral degree in computer science, electrical engineering, or a similar discipline
`
`involving relevant experience; or (b) a Bachelor's degree in computer science,
`
`electrical engineering, or a similar discipline and at least two years of additional
`
`relevant experience. Ex. 1003, ¶33. Working in the design and implementation of
`
`networked computing systems constitutes relevant work experience. Examples of
`
`such work in networked computing systems could include work in networked
`
`computing communication and data streaming. Ex. 1003, ¶33.
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`V. CLAIM CONSTRUCTION
`The Board construes claims in accordance with Phillips v. AWH Corp., 415
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`F.3d 1303 (Fed. Cir. 2005), the same standard used in district court litigation. 83
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`Fed. Reg. 51340 (Oct. 11, 2018). However, only terms subject to a legitimate
`
`dispute need to be construed. See Nidec Motor Corp. v. Zhongshan Broad Ocean
`
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). In particular, “only those terms
`
`need to be construed that are in controversy, and only to the extent necessary to
`
`resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
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`795, 803 (Fed. Cir. 1999) (emphasis added).
`
`The parties proposed construing various terms in the ’609 patent in a related
`
`district court litigation. Google submits the proposed constructions (Ex. 1008;
`
`Ex. 1009), as encouraged by the PTAB Trial Practice Guide July 2019 Update.
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`PTAB Trial Practice Guide July 2019 Update at 17. In this proceeding, however,
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`the Board need not resolve those disputes because the claims read on the prior art
`
`under both parties’ constructions. The PTO has recognized that constructions
`
`proposed by parties before the PTAB and the district court may differ because
`
`parties in each forum may dispute different issues. See 83 Fed. Reg. 51340 at
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`51351 (“the PTAB will continue to construe claims in the context of patentability
`
`. . . not infringement.”), 51353 (“Moreover, it also may not be necessary to
`
`determine the exact outer boundary of claim scope because only those terms that
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`are in controversy need be construed, and only to the extent necessary to resolve
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`the controversy (e.g., whether the claim reads on a prior art reference).”).
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`VI. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`Google requests review of claims 1–3 under the following grounds:
`
`References
`
`Hayward
`
`Basis
`
`§ 102
`
`Hayward and Middleton
`
`§ 103
`
`Hayward, Middleton, and
`
`§ 103
`
`Ryan
`
`
`
`Claims
`
`1
`
`1
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`2, 3
`
`VII. THE CHALLENGED CLAIMS ARE UNPATENTABLE OVER THE
`PRIOR ART
`A. Ground 1: Claim 1 is anticipated by Hayward
`As described below, Hayward discloses every element of claim 1. Ex. 1003,
`
`¶¶74–124.
`
`1.
`
`Claim 1
`[1a] “A method for tracking digital media
`a.
`presentations delivered from a first computer system
`to a user’s computer via a network comprising:”
`Hayward discloses this preamble. Id., ¶¶74–80. Hayward discloses “a
`
`method of displaying video data using an embedded media player page.” Ex.
`
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`1005, Abstract. The embedded media player page is provided by a “customer
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`system” to a “client” where the video data is displayed. Id., ¶0031. Hayward’s
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`“embedded media player page also facilitates the collection of data in connection
`
`with the playing of a media file.” Id., ¶0057. This data is collected from the client
`
`by a “media file index and log system.” Id., ¶0058.
`
`Hayward’s method can be implemented in a “system of interconnected
`
`computer system networks,” as shown in annotated Figure 1 below. Id., ¶0019.
`
`Each of the computer system networks 102, such as that labeled in orange, is
`
`connected to the client 110 via the Internet 114. Id.
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`According to Hayward, a computer system 102, such as that labeled in
`
`orange above, may include a customer system 118 and media file index and log
`
`system 122, as shown in Figure 1A, annotated below. Id., ¶0024; Ex. 1003, ¶78.
`
`As shown, the first computer system (customer system 118 and media file index
`
`and log system 122) and the user’s computer (client 110) are connected via a
`
`network (internet 114).
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`Because Hayward thus discloses a method for tracking video data displayed
`
`using an embedded media player page provided by a customer system to a client
`
`via the Internet, Hayward discloses “[a] method for tracking digital media
`
`presentations delivered from a first computer system to a user’s computer via a
`
`network.”
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`b.
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`[1b] “providing a corresponding web page to the
`user’s computer for each digital media presentation to
`be delivered using the first computer system;”
`Hayward discloses providing a corresponding web page (e.g., the embedded
`
`media player page) to the user’s computer (e.g., the client 110) for each digital
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`media presentation to be delivered using the first computer system (e.g., the
`
`customer system 118). Ex. 1003, ¶¶81–85.
`
`In Hayward, a user can search for media files by providing a search request
`
`through the client 110. Ex. 1005, ¶0028. The customer system 118 receives the
`
`search request and shares it with the media file index and log system 122. Id.
`
`Together, the media file index and log system 122 and customer system 118
`
`generate search results and provide the search results to the client 110 for display
`
`to the user. Id. When the user selects one of the search results, the client 110
`
`requests the embedded media player page from the customer system 118. Id.,
`
`¶0029. The embedded media player page is then “transmitted from customer
`
`system 118 through