Petition for Inter Partes Review of U.S. Patent No. 8,407,609
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Sling TV L.L.C. Vudu, Inc.,
`Petitioner,
`
`v.
`
`Uniloc 2017 LLC
`Patent Owner.
`
`IPR No.: IPR2019-013672020-00677
`Attorney Docket No.: 081841.0123
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,407,609
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`
`Submitted Electronically via the Patent Trial and Appeal Board End to End System
`
`IPR2020-00677
`Vudu Ex. 1013, Page 1
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
`
`TABLE OF CONTENTS
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R. 42.8(a)(1) ..................... vvi
`A.
`Real Party-in-Interest under 37 C.F.R. 42.8(b)(1) ............................ vvi
`B.
`Related Matters under 37 C.F.R. 42.8(b)(2) ..................................... vvi
`C.
`Lead and Back-Up Counsel under 37 C.F.R. 42.8(b)(3) ................ vivii
`D.
`Service Information under 37 C.F.R. 42.8(b)(4)............................. vivii
`INTRODUCTION ........................................................................................ 1
`II.
`III. PAYMENT OF FEES .................................................................................. 1
`IV. REQUIREMENTS UNDER 37 C.F.R. 42.104......................................... 12
`A.
`Grounds for Standing ......................................................................... 12
`B.
`Identification of Challenge and Statement of Precise Relief
`Requested ............................................................................................. 2
`BACKGROUND OF THE TECHNOLOGY............................................. 2
`A. Web Page and Internet Technology ..................................................... 2
`B.
`Applets.................................................................................................. 3
`SUMMARY OF THE ’609 PATENT ......................................................... 3
`A.
`The Alleged Invention.......................................................................... 3
`B.
`Relevant Prosecution History............................................................. 45
`VII. SUMMARY OF THE PRIOR ART ........................................................... 6
`A.
`The Knowledge of a POSA.................................................................. 6
`B.
`Prior Art in this Petition ....................................................................... 6
`VIII. LEVEL OF ORDINARY SKILL IN THE ART ....................................... 7
`IX. CLAIM CONSTRUCTION UNDER 37 C.F.R. 42.104(B)(3).................. 7
`A.
`“applet” (Claim 1) ................................................................................ 7
`B.
`“computer system” (Claim 1)............................................................... 8
`C.
`Timing-related limitations (Claim 1) ................................................... 9
`THE ASSERTED GROUNDS OF INVALIDITY .................................. 11
`A.
`Ground 1: U.S. 2004/0254887 (“Jacoby”) in view of U.S.
`5,732,218 (“Bland”) renders claims 1-3 obvious under 35 U.S.C.
`§103 .................................................................................................... 11
`
`V.
`
`VI.
`
`X.
`
`i
`
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`Vudu Ex. 1013, Page 2
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
`
`B.
`
`Ground 2: PCT WO01/89195 (“Mcternan”) in view of EP
`939,516 (“Robinson”) renders claims 1-3 obvious under 35
`U.S.C. §103 ........................................................................................ 40
`C. Motivation to Combine ...................................................................... 64
`
`ii
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Sling TV L.L.C. v. Uniloc 2017 LLC,
`IPR2019-01367.....................................................................................................1
`STATUTES
`35 U.S.C. §103..................................................................................................passim
`OTHER AUTHORITIES
`37 C.F.R. §42.15(b) ...................................................................................................2
`37 C.F.R. §42.100(b) .................................................................................................7
`37 C.F.R. §42.104(a)..................................................................................................2
`
`iii
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
`
`PETITIONER’S EXHIBIT LIST
`
`Ex. No.1
`
`Description of Documents
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`U.S. Patent No. 8,407,609 (“the ’609 Patent”)
`
`Declaration of Dr. James A. Storer
`
`Curriculum Vitae of Dr. James A. Storer (“Storer CV”)
`
`File History for U.S. Patent No. 8,407,609 (“the ’609 File History”)
`
`First Amended Complaint, Uniloc 2017 LLC v. Sling TV L.L.C., Case
`No. 1:19-cv-00278-RBJ-MEH, Dkt. No. 37 (Apr. 10, 2019) (“FAC”)
`
`U.S. Patent Application Pub. No. 2004/0254887 to Jacoby (“Jacoby”)
`
`PCT Pub. No. WO01/89195 to Mcternan et al. (“Mcternan”)
`
`EP Patent Application Pub. No. 939,516 to Robinson et al. (“Robinson”)
`
`U.S. Patent No. 5,732,218 to Bland et al. (“Bland”)
`
`Gralla, How the Internet Works, Millennium Edition, Que 1999
`(“Gralla”)
`
`Bruce R. Maxim et al., The Internet Encyclopedia (Hossein Bidgoli ed.,
`John Wiley & Sons Inc. 2004) (“Bidgoli”)
`
`1012
`
`U.S. Patent Application Pub. No. 2002/0198781 to Cobley (“Cobley”)
`
`1013
`
`Comparison between the current Petition and the Petition in
`IPR2019-01367
`
`1 Citations to exhibits 1001, 1007, 1009, and 1012 are made by column and line
`
`number; citations to exhibits 1002, 1005, 1006, and 1008 are made by paragraph
`
`number; citations to the other exhibits are made with reference to the Bates-stamped
`
`pagination.
`
`iv
`
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`Vudu Ex. 1013, Page 5
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R. 42.8(a)(1)
`
`A.
`
`Real Party-in-Interest under 37 C.F.R. 42.8(b)(1)
`
`Sling TV L.L.CVudu, Inc. (“SlingVudu”) is the petitioner. SlingVudu is
`
`directly or indirectly owned by the following direct or indirect owners: Sling TV
`
`Holding L.L.C., DISH Network L.L.C., DISH Technologies L.L.C., and DISH
`
`Network Corporationowner: Walmart Inc.
`
`B.
`
`Related Matters under 37 C.F.R. 42.8(b)(2)
`
`The ’609 Patent is the subject of five pending district court cases. The ’609
`
`Patent was also involved in an additional five district court cases that have been
`
`terminated. These ten cases are listed below:
`
`
`
`
`
`
`
`
`
`
`
`
`
`Uniloc 2017, LLC v. Sling TV, LLC,
`Case No. 1:19-cv-00278, District of Colorado (Pending)
`
`Uniloc 2017 LLC v. Netflix, Inc.,
`Case No. 8-18-cv-01899, Central District of California (Terminated)
`
`Broadcasting Companies, Inc.
`Case No. 8-18-cv-01930, Central District of California (Terminated)
`
`Uniloc 2017 LLC et al v. American
`
`Uniloc 2017 LLC et al v. Google LLC
`Case No. 2-18-cv-00456, Eastern District of Texas (Terminated)
`
`Uniloc 2017 LLC et al v. Google LLC
`Case No. 2-18-cv-00502, Eastern District of Texas (Pending)
`
`Uniloc 2017 LLC v. Netflix, Inc.
`Case No. 8-18-cv-02055, Central District of California (TerminatedPending)
`
`v
`
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`Vudu Ex. 1013, Page 6
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
`
`
`
`
`
`
`
`
`
`Broadcasting Companies, Inc.
`Case No. 8-18-cv-02056, Central District of California (PendingTerminated)
`
`Uniloc 2017 LLC v. American
`
`Uniloc 2017 LLC v. Roku, Inc.
`Case No. 1-18-cv-01126, Western District of Texas (Terminated)
`
`Uniloc 2017 LLC v. Vudu, Inc.
`Case No. 1-19-cv-00183, District of Delaware (Pending)
`
`Uniloc 2017 LLC v. Roku, Inc.
`Case No. 8-19-cv-00295, Central District of California (Pending)
`The ’609 Patent is the subject of three pending petitions for inter partes
`
`review. These three cases are listed below:
`
`
`
`
`
`
`
`Sling TV L.L.C. v. Uniloc 2017 LLC
`Case No. IPR2019-01367, Patent Trial and Appeal Board (Pending)
`
`LLC
`Case No. IPR2020-00041, Patent Trial and Appeal Board (Pending)
`
`Netflix, Inc. and Roku, Inc. v. Uniloc 2017
`
`Google LLC v. Uniloc 2017 LLC
`Case No. 2020-00115, Patent Trial and Appeal Board (Pending)
`Petitioner is not a party to any district court action or inter partes review
`
`proceeding identified above other than the Vudu district court action, but seeks to be
`
`joined to Sling TV L.L.C.’s IPR2019-01367.
`
`C.
`
`Lead and Back-Up Counsel under 37 C.F.R. 42.8(b)(3)
`
`Petitioner designates the following: Lead Counsel is Eliot D. WilliamsAlyssa
`
`Caridis (Reg. No. 50,822) of Baker Botts L.L.P.; Back-up57,545) and Backup
`
`Counsel are G. Hopkins Guyis Donald Daybell (Reg. No. 35,886) and Ali Dhanani
`
`vi
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
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`(Reg. No. 66,233) of Baker Botts L.L.P. 50,877), both of Orrick, Herrington &
`
`Sutcliffe LLP.
`
`D.
`
`Service Information under 37 C.F.R. 42.8(b)(4)
`
`A copy of this entire Petition, including all Exhibits and a power of attorney,
`
`is being served by FEDERAL EXPRESS, costs prepaid, to the address of the
`
`attorney or agent of record for Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) in
`
`the district court proceedings regarding the ’609 Patent: (a) Feinberg Day Kramer
`
`Alberti Lim Tonkovich & Belloli LLP, 1600 El Camino Real, Suite 280, Menlo
`
`Park, CA 94025577 Airport Boulevard, Suite 250 Burlingame, CA 94010 and (b)
`
`Farnan LLP, 919 North Market Street, 12th Floor, Wilmington DE 19801; and to the
`
`address of the attorney or agent of record at the USPTO: Uniloc USA Inc., 102 N.
`
`College Avenue, Suite 303, Tyler TX 75702. A courtesy copy of the motion was
`
`also served electronically upon counsel of record in Sling TV L.L.C. v. Uniloc 2017
`
`LLC, IPR2019-01367 at the following addresses:
`
`eliot.williams@bakerbotts.com
`
`hop.guy@bakerbotts.com
`
`ali.dhanani@bakerbotts.com
`
`kurt.pankratz@bakerbotts.com
`
`ryan@etheridgelaw.com
`
`jim@etheridgelaw.com
`
`brett@etheridgelaw.com
`
`jeff@etheridgelaw.com
`
`Petitioner
`
`consents
`
`to
`
`service
`
`to
`
`eliot.williams@bakerbotts.com,
`
`hop.guy@bakerbottsptabdocket@orrick.com, A8CPTABDocket@orrick.com, and
`
`vii
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
`
`ali.dhanani@bakerbottsD2DPTABDocket@orrick.com by electronic mail. A
`
`Power of Attorney is filed concurrently herewith under 37 C.F.R. §42.10(b).
`
`viii
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
`
`II.
`
`INTRODUCTION
`
`Petitioner SlingVudu requests review of claims 1-3 of U.S. Patent No.
`
`8,407,609 (“the ’609 Patent”).
`
`This Petition is being submitted concurrently with a motion for joinder.
`
`Petitioner requests institution and joinder with Sling TV L.L.C. v. Uniloc 2017 LLC,
`
`IPR2019-01367 (“the Sling IPR”), which the Board instituted on February 4, 2020.
`
`This Petition is substantively identical to the Sling IPR’s petition; it contains the
`
`same grounds (based on the same prior art combinations and supporting evidence)
`
`against the same claims. See Ex. 1013.
`
`The ’609 Patent is directed to “tracking the provision of audio and visual
`
`presentations via a computer network.” Ex[1001] Title. The patent uses a “timer
`
`applet” running on a user’s computer to periodically send tracking information via
`
`the computer network. Id. Abstract. The alleged “inventive concept” according to
`
`Uniloc relates to providing “a web page, identifier data and a timer applet
`
`originating at a first computer system” to track a digital media presentation streamed
`
`from a second computer system to a user’s computer.” Ex[1005] ¶108. This
`
`concept was known before the earliest claimed priority date of the ’609 Patent.
`
`III. PAYMENT OF FEES
`
`1
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
`
`The Office is authorized to charge the fee set forth in 37 C.F.R. §42.15(b) to
`
`Deposit Account No. 02-038415-0665 as well as any additional fees that might be
`
`due in connection with this Petition.
`
`IV. REQUIREMENTS UNDER 37 C.F.R. 42.104
`
`A.
`
`Grounds for Standing
`
`Petitioner certifies the ’609 Patent is eligible for inter partes review and
`
`certifies that Petitioner meets the eligibility requirements set forth in 37 C.F.R.
`
`§42.104. Uniloc has sued Petitioner for infringement of the ’609 Patent. 37 C.F.R.
`
`§42.104(a). Petitioner is not barred or estopped from challenging the claims on the
`
`grounds identified within this petition.
`
`B.
`
`Identification of Challenge and Statement of Precise Relief
`Requested
`
`Petitioner requests review as follows.
`
`Ground
`
`’609 Patent
`Claims
`
`1
`
`2
`
`1-3
`
`1-3
`
`Basis for Challenge
`35 U.S.C. §103: Jacoby (Ex[1006]) in view of Bland
`(Ex[1009])
`35 U.S.C. §103: Mcternan (Ex[1007]) in view of
`Robinson (Ex[1008])
`
`V.
`
`BACKGROUND OF THE TECHNOLOGY
`
`A. Web Page and Internet Technology
`
`The Internet has been widely used since the mid-1990s, well before the 2008
`
`priority date claimed by the ’609 Patent. The Internet works on a “client/server
`
`2
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
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`model” in which a client (user’s computer) depends on a server (a more powerful
`
`computer) to deliver information over a network. Ex[1010] 7. Web servers deliver
`
`web pages to client web browsers using a markup language indicating how to
`
`display content and link to other web pages. Id. 11, 43. Links point to addresses
`
`called “uniform resource locators” (URLs) that allow the client to locate
`
`information. Id. 39. The client/server model enables the client to access content
`
`distributed among thousands of host computers across the Internet. Id. 7; Ex[1002]
`
`¶¶50-63.
`
`B.
`
`Applets
`
`A Java applet is a small application written in Java programming language.
`
`Ex[1011] 240, 435-436. The Java applet runs within a web browser to provide more
`
`functionality. Id. The term “applet” has been used in a generalized sense to include
`
`other small applications that run within the context a larger program to perform
`
`specific tasks. For example, ActiveX technology provides a user’s computer with
`
`small applications that run within a browser program. See Ex[1010] 199; Ex[1002]
`
`¶¶64-67.
`
`VI.
`
`SUMMARY OF THE ’609 PATENT
`
`The ’609 Patent alleges an earliest priority date of August 21, 2008, the filing
`
`date of U.S. Provisional No. 61/090,672 to which the patent claims priority.
`
`A.
`
`The Alleged Invention
`
`3
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
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`The ’609 Patent tracks presentations streamed via a network. Ex[1002]
`
`¶¶68-71.
`
` The
`
`’609 Patent concedes
`
`that “commercially available”
`
`presentation-tracking applications were known, but alleges they could not track
`
`content provided by remote hosts distinct from the operator’s own system. Ex[1001]
`
`11:37-46; 12:36-45. The ’609 Patent purports to solve this problem by providing the
`
`user’s computer with a “timer applet” that sends “identifying data” to the system at
`
`predetermined intervals. Id. 12:61-13:9. Figure 10 illustrates that a user’s computer
`
`receives a web page with a media player and a timer applet that runs in a web
`
`browser (step 1010), starts the timer applet (step 1020), and transmits data when the
`
`applet determines a predetermined time period has elapsed (step 1030).
`
`Ex[1001] Fig. 10; see also id. 12:56-13:23. Thus, the system knows that “a viewer
`
`began viewing a particular show at a certain time,” “when a user began viewing a
`
`different page, or show,” and “how long a particular viewer spent on a particular
`
`page.” Ex[1001] 13:10-23, 13:44-14:2. However, using a timer applet to track
`
`4
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
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`presentations streamed from a remote host was known in the prior art. See supra,
`
`§X.
`
`B.
`
`Relevant Prosecution History
`
`During prosecution, the Examiner rejected the claims under §103 over U.S.
`
`Pat. Pub. 2002/0198781 (“Cobley”), which disclosed a “timing applet [] arranged to
`
`send a message back to the server” if a web page “remains loaded for the timing
`
`period of the applet.” Ex[1004] 63-69; Ex[1012] ¶26.
`
`In response, Applicant added limitation 1[h] by amendment. Ex[1004] 32-38.
`
`As a result, claim 1 includes two different timing-related limitations: 1[g] (related to
`
`tracking an “amount of time the digital media presentation data is streamed”) and
`
`1[h] (related to tracking “cumulative time the corresponding web page was
`
`displayed”). Applicant’s remarks during prosecution provide no guidance as to
`
`whether these limitations are related. Applicant argued that Cobley did not disclose
`
`tracking the “cumulative time the corresponding web page was displayed by the
`
`user’s computer” because Cobley’s timing applet sends only a “single message”
`
`back to the web server and does not send any additional message for any additional
`
`period thereafter. Ex[1004] 36. According to Applicant:
`
`[T]he timing applet of Cobley is concerned with only the
`minimum loaded period of the advertiser’s page that is required
`before the customer is allocated a reward and, therefore, need
`only send the message once after the minimum timing period
`
`5
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
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`has passed. Cobley’s message sent from the timing application
`is
`therefore not
`indicative of a cumulative
`time the
`corresponding web page was displayed by the user’s computer.
`
`Id.; Ex[1002] ¶¶72-80.
`
`VII. SUMMARY OF THE PRIOR ART
`
`A.
`
`The Knowledge of a POSA
`
`At the time of the ’609 Patent, a POSA would have been familiar with the web
`
`page, Internet, applet, and tracking technology discussed above. See e.g., supra,
`
`§§V and VI.B.
`
`B.
`
`Prior Art in this Petition
`
`Each reference relied on in this Petition is prior art under at least 102(b), and
`
`none was cited to or considered during prosecution of the ’609 Patent:
`
`
`
`
`
`
`
`U.S. Patent Application Pub. No. 2004/0254887 (“Jacoby”), titled
`
`“Access control and metering system for streaming media,” was filed
`
`on October 6, 2003 and published on December 16, 2004.
`
`PCT Pub. No. WO01/89195 (“Mcternan”), titled “System and method
`
`for secure delivery of rich media,” was filed on May 15, 2001 and
`
`published on November 22, 2001.
`
`EP Patent Application Pub. No. 939,516 (“Robinson”), titled “User
`
`communication and monitoring system for computer networks,” was
`
`filed on January 19, 1999 and published on September 1, 1999.
`
`6
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
`
`
`
`U.S.
`
`Patent
`
`No.
`
`5,732,218
`
`(“Bland”),
`
`titled
`
`“Management-data-gathering system for gathering on clients and
`
`servers data regarding interactions between the servers, the clients, and
`
`users of the clients during real use of a network of clients and servers,”
`
`was filed on January 2, 1997 and published on March 24, 1998.
`
`VIII. LEVEL OF ORDINARY SKILL IN THE ART
`
`A POSA as of the August 21, 2008 priority date would have had a bachelor’s
`
`degree in electrical engineering, computer science, or a similar field with at least two
`
`years of experience in web page and Internet technology or a person with a master’s
`
`degree in electrical engineering, computer science, or a similar field with a
`
`specialization in web page and Internet technology. A person with less education
`
`but more relevant practical experience may also meet this standard. Ex[1002] ¶49.
`
`IX. CLAIM CONSTRUCTION UNDER 37 C.F.R. 42.104(B)(3)
`
`The claim terms below are construed in accordance with 37 C.F.R.
`
`§42.100(b).
`
`A.
`
`“applet” (Claim 1)
`
`A POSA would have understood “applet,” as used in the claims, to refer to “a
`
`software component that runs in the context of another program.” Ex[1002]
`
`¶¶85-88.
`
`7
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
`
`The meaning of “applet” at the time of the ’609 Patent depended on the
`
`context. Id. In certain contexts, “applet” referred only to a Java applet, meaning a
`
`small application running in a browser and written in the Java programming
`
`language. Id. In other contexts, “applet” referred more generally to a small
`
`application running in another program. Id. The ’609 Patent uses the general
`
`meaning because it provides a general definition without referring to Java:
`
`“Applet,” as used herein, generally refers to a software component that
`runs in the context of another program, in the case of page 900 of FIG.
`9, a web browser. Such an applet may typically [be] used to perform a
`specific function or task, usually narrow in scope.
`
`Ex[1001] 12:67-13:3. Examples of such applets include add-ons and plug-ins
`
`delivered via webpage to run in a browser on the user’s computer. Ex[1002] ¶67, 88.
`
`Microsoft’s ActiveX product provided such applets at the time of the ’609 Patent.
`
`Id.; see also Ex[1010] 199 and Ex[1011] 240, 435-436, 692.
`
`B.
`
`“computer system” (Claim 1)
`
`A POSA would have understood “computer system,” as used in the claims, to
`
`refer to “one or more computing devices having a common operator or under
`
`common control.” Ex[1002] ¶¶89-91. The ’609 Patent states:
`
`The terms “computer,” “computer device and/or “computer system” as
`used herein may generally take the form of single computing devices or
`collections of computing devices having a common operator or under
`common control.
`
`8
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`Petition for Inter Partes Review of U.S. Patent No. 8,407,609
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`Ex[1001] 3:52-55. This is consistent with the meaning of the term “computer
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`system” to a POSA. Ex[1002] 91. Thus, “computer system” should be interpreted
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`to mean “one or more computing devices having a common operator or under
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`common control.” Id.
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`C.
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`Timing-related limitations (Claim 1)
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`Claim 1 includes two timing-related limitations:
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`1[g]: 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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`1[h]: 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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`Ex[1001] claim 1. The two timing-related limitations refer to two different timings.
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`Ex[1002] ¶92.
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`1.
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`“amount of time the digital media presentation is streamed”
`(element 1[g])
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`A POSA would have understood “amount of time the digital media
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`presentation is streamed,” as used in element 1[g], to refer to the “amount of time the
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`digital media presentation is presented to the user’s computer.” Ex[1002] ¶¶93-97.
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`The ’609 Patent describes “streaming” in the context of presenting a presentation to
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`a user. Id. The specification explains that “streaming” refers to “transferring data
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`such that it can be processed as a substantially steady or continuous stream and a
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`user’s browser or plug-in can start presenting the data before the entire file has
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`been transmitted.” Ex[1001] 4:43-47 (emphasis added). Additionally, the ’609
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`Patent describes a timer applet that tracks a “temporal cycle having passed while the
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`web page presents the presentation” to determine “how long a user actually
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`watched, and/or listened, to a presented program.” Id. 11:47-58 and 13:34-42
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`(emphasis added).
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`2.
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`“cumulative time the corresponding web page was displayed
`by the user’s computer” (element 1[h])
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`A POSA would have understood
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`the
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`term “cumulative
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`time
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`the
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`corresponding web page was displayed by the user’s computer,” as used in element
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`1[h], to refer to “the total amount of time the user’s computer spent on the web
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`page.” Ex[1002] ¶¶98-102.
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`Certain embodiments of the ’609 Patent track “how long [the] viewer spends
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`on a page.” Ex[1001] 13:43-14:8. For example:
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`[A] table entry may be made of the user, the page the user is on, and, to
`the extent the user is on the same page as was the user upon the last
`expiration of the timer, the user's total time, to the current time, spent
`on that same page using database server 32.
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`Ex[1001] 13:24-33. A POSA would understand that the time spent on a web page
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`could differ from the time spent presenting the presentation, for example, if the web
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`page itself was displayed while the presentation on the web page was paused.
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`Ex[1002] ¶99. A POSA would understand element 1[h] to track the total amount of
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`time the user’s computer spent on the web page, regardless of whether the web page
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`presented the presentation during that time. Id. ¶101.
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`X.
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`THE ASSERTED GROUNDS OF INVALIDITY
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`Petitioner proposes two grounds of invalidity, (1) obvious by Jacoby in view
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`of Bland, (2) obvious by Mcternan in view of Robinson. Petitioner believes that
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`each ground teaches each limitation of the challenged claims using two different
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`mechanisms known in the art, as explained herein.
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`A.
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`Ground 1: U.S. 2004/0254887 (“Jacoby”) in view of U.S. 5,732,218
`(“Bland”) renders claims 1-3 obvious under 35 U.S.C. §103
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`Jacoby describes a computer system that streams movies and other media files
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`to clients over a network. Ex[1006] Abstract. A user’s selection of a media file
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`causes a mediaframe server to send a web page for presenting the selected media file
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`to the user’s computer. Id. ¶¶36, 44. The web page provides the user’s computer
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`with a media player, a URL that points to the location of the media file in a streaming
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`server, a metering URL 127 that points to a user meter located in the mediaframe
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`server, and ActiveX controls. Id. ¶¶44, 49. The web page allows for streaming the
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`media file from the streaming servers to the media player. Id. ¶48.
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`The ActiveX controls allow Jacoby’s mediaframe server to attach a metering
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`applet to a browser running on the user’s computer. At regular intervals (e.g., every
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`35 seconds), Jacoby’s mediaframe server receives the metering URL 127 appended
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`with metering events from the user’s browser. Ex[1006] ¶¶51, 53, 34. The metering
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`events include the amount of time to decrement a meter to “evidence the passage of
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`time as the streaming media file is received by client media player 110.” Id.
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`¶¶51-52. The mediaframe server ticks the meter identified by metering URL 127 to
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`track “the amount of streaming time remaining in a product” and other information.
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`Id. ¶¶50, 42; Ex[1002] ¶¶104-110.
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`Bland describes a system that provides a client with a URL and extensions
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`131 that cause the client to periodically return data via the URL to track timing
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`information, such as the “[a]mount of time that a particular object (e.g., a page, a
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`graphical image, an audio clip, an animation, etc.) is active (i.e., is visible, is audible,
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`etc.) at the client.” See e.g., Ex[1009] 4:9-32 and 4:60-5:23. The extensions 131 can
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`be attached to the client’s browser as “add-ons” (which are “applets”) by using
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`“Microsoft ActiveX.” Id. 5:24-38; Ex[1002] ¶¶126-131.
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`The following sections provide a limitation-by-limitation analysis of how
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`Jacoby in view of Bland renders the claims obvious.
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`1.
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`a.
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`Claim 1
`Element 1[pre]: “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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`Jacoby discloses this limitation. Ex[1002] ¶¶133-139. Jacoby discloses a
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`system that includes “a first computer system” (including at least mediaframe
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`servers 140), “a second computer system” (including at least streaming servers
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`115),2 and “a user’s computer” (including client browser 125 and client media player
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`110), as shown in annotated Figure 1:
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`The ’609 Patent uses “computer system” to refer to “one or more computing
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`devices having a common operator or under common control.” See supra, §IX.B.
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`Jacoby’s first and second computer systems each satisfy this meaning. A POSA
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`would understand that the servers in each of Jacoby’s first and second computer
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`systems are computing devices. Ex[1002] ¶134; Ex[1010] 7. As an example,
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`Jacoby describes using a “computer program product”
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`stored on a
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`2 See element 1[f] for “second computer system.”
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`“computer-readable storage medium” for performing functionality of the first
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`computer system, such as providing a metering URL from a mediaframe server to a
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`client. See e.g., Ex[1006] ¶49 and claim 14. As another example, Jacoby describes
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`streaming servers in the second computer system as “computer servers.” Id. ¶47.
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`A POSA would further understand Jacoby’s first computer system to have a
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`common operator or be under common control of a service provider, and Jacoby’s
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`second computer system to have a common operator or be under common control of
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`a content provider. Ex[1002] ¶135. Jacoby’s first computer system interacts with
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`the client’s browser to facilitate administrative functionality (e.g., metering, billing,
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`authenticating access to content) typically provided by one operator (a service
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`provider), while Jacoby’s second computer system interacts with the client’s media
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`player to facilitate content delivery functionality typically provided by another
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`operator (a content provider). Id.; see e.g., Ex[1006] ¶¶9, 11, 26, 29, 30 (referring to
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`service providers and content providers) and ¶36 (referring to Yahoo! as an operator
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`for web server 130). Additionally, Jacoby teaches that the “set” of streaming servers
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`115 in the second system are under common control of content management server
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`105 (¶33), whereas the first computer system is distinct system that Jacoby does not
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`describe as being under the control of the content manager server 105.
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`Jacoby discloses that the first and second computer systems are “distinct”
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`from each other. For example, Figure 1 illustrates separate servers with separate
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`functionalities, and there is no indication of a common operator or common control.
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`See also Ex[1006] Abstract (describing distinct servers, a first server for metering
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`and a second server for streaming).
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`As to the user’s computer, Jacoby explains that a media player (e.g., client
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`media player 110) runs on a “user device,” such as a “personal computer.” Ex[1006]
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`¶5; Ex[1002] ¶137; Ex[1010] 7.
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`Jacoby discloses “digital media presentations delivered from a first computer
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`system to a user’s computer via a network.” “[M]edia files over the Internet or
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`other network” are “typically sent from prerecorded digitized media files.”
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`Ex[1006] ¶6; see also Abstract, claim 28 and ¶26 (the system streams “media
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`presentations,” such as “digitized movies”). Jacoby discloses that the mediaframe
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`servers 140 of the first computer system deliver the media presentations to the user’s
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`computer (e.g., the client) by serving web pages (HTML pages) that link to the
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`media presentations. See e.g., id. ¶¶6, 44 (explaining that mediaframe servers 140
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`send the user a web page with a URL that points the media player to the location of
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`the streaming media file).
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`Jacoby discloses a “method for tracking” delivery of the digital media
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`presentations that uses a meter to track the “amount of streaming time remaining in a
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`product.” Ex[1006] ¶42. According to Jacoby:
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`invention provides systems and
`The present
`techniques for
`transmitting a streaming media file. One of the techniques includes
`sending a metering uniform resource locator (URL) from a first server
`to a client player over a network, and sending a str