`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`VUDU, INC.
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2020-00677
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`PATENT 8,407,609
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`I.
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`II.
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`III.
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`IV.
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`IPR2020-00677
`U.S. Patent 8,407,609
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`TABLE OF CONTENTS
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`INTRODUCTION ....................................................................................... 1
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`THE ’609 PATENT ..................................................................................... 2
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`A.
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`Effective Filing Date of the ‘609 Patent ........................................... 2
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`B.
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`Overview of the ‘609 Patent ............................................................. 2
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`RELATED PROCEEDINGS .................................................................... 10
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`PETITIONER DOES NOT PROVE THAT ANY CHALLENGED
`CLAIM IS UNPATENTABLE ................................................................. 11
`
`A.
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`The Level of Ordinary Skill in the Art ............................................ 12
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`B.
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`Claim Construction ......................................................................... 12
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`1.
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`“computer system” ................................................................ 14
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`C.
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`Jacoby and Bland do not disclose each element of each of the
`claims of the ‘609 patent. (Ground 1) ............................................. 15
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`1.
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`2.
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`3.
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`Neither Jacoby nor Bland discloses “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.” .................... 15
`
`Jacoby does not teach “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.” ............................................... 21
`
`Jacoby does not teach “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.” ............................................................................. 25
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`4.
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`Jacoby does not teach “providing a corresponding web page
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`U.S. Patent 8,407,609
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`to the user’s computer for each digital media presentation to
`be delivered.” ........................................................................ 28
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`5.
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`The Petition fails to prove obviousness of any dependent
`claim. ..................................................................................... 31
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`D.
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`The combination of McTernan and Robinson does not teach all of
`the elements of the claims of the ‘609 patent. (Ground 2) .............. 31
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`1. McTernan does not teach “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.” .......................... 31
`
`2.
`
`The combination of McTernan and Robinson does not teach
`“wherein each stored data is together indicative of a
`cumulative time the corresponding web page was displayed
`by the user’s computer” because the combination is based
`upon impermissible hindsight. .............................................. 34
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`3.
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`The Petition fails to prove obviousness of any dependent
`claim. ..................................................................................... 44
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`V.
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`APJS ARE UNCONSTITUTIONALLY APPOINTED PRINCIPAL
`OFFICERS ................................................................................................. 44
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`VI.
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`CONCLUSION ......................................................................................... 48
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`CERTIFICATE OF COMPLIANCE ..................................................................... 49
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`CERTIFICATE OF SERVICE ............................................................................... 50
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`iii
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`IPR2020-00677
`U.S. Patent 8,407,609
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`Exhibits
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`2001 Claim Construction Ruling, Uniloc 2017 LLC v. Netflix, Inc., SACV 18-
`2055-GW-DFMx, Dkt. 138 (C.D. Cal. Mar. 9, 2020)
`
`2002 Claim Construction Memorandum and Order, Uniloc 2017 LLC v. Google
`LLC, Case No. 2:18-CV-00502-JRG-RSP, Dkt. 149 (E.D. Tex. Jan. 20,
`2020) (adopted Dkt. 198, Mar. 24, 2020)
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`iv
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`IPR2020-00677
`U.S. Patent 8,407,609
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`I.
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`INTRODUCTION
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`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Preliminary
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`Response to Petition IPR2020-00677 for Inter Partes Review (“Pet.” or
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`“Petition”) of United States Patent No. 8,407,609 (“the ’609 patent” or
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`“EX1001”) filed by Vudu, Inc. (“Petitioner”).
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`In view of the reasons presented herein, the Petition should be denied in its
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`entirety, as Petitioner has failed to meet its burden of showing that any challenged
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`claim is unpatentable. 35 U.S.C. § 316(e). In addition, Petitioner was served with a
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`complaint alleging infringement of the ’609 patent on January 31, 2019. See Uniloc
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`2017 LLC v. Vudu, Inc., 1-19-cv-00183, Dkt. Nos. 1, 4 (D. Del.). Thus, inter partes
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`review may not be instituted if Petitioner’s motion for joinder to IPR2019-01367
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`(“Sling IPR”) is not granted.
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`Uniloc addresses each ground and provides specific examples of how
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`Petitioner failed to establish that any of the challenged ‘609 Patent claims is
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`unpatentable. As a non-limiting example described in more detail below, the Petition
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`fails to show that the cited art teaches every feature of any of the challenged claims.
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`Accordingly, Uniloc respectfully requests that the Board find that Petitioner
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`has failed to carry its burden of proof that any of Claims 1-3 of the ‘609 Patent are
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`unpatentable. Thus, this Petition should not be instituted or joined to the Sling IPR.
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`1
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`II. THE ’609 PATENT
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`A. Effective Filing Date of the ‘609 Patent
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`The ’609 patent is titled “System and method for providing and tracking the
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`provision of audio and visual presentations via a computer network.” The ʼ609
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`patent issued March 26, 2013, from U.S. Patent Application No. 12/545,131 filed
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`August 21, 2009, claiming priority to provisional application No. 61/090,672, filed
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`on August 21, 2008. The Petition does not dispute that the effective filing date of
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`the ‘609 Patent is August 21, 2008.
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`B. Overview of the ‘609 Patent
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`The ’609 patent discloses systems and methods for providing digital media
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`presentations to user computers, and for tracking the viewing of the presentations
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`on user computers. Ex. 1001, Abstract.
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`Fig. 1 of the ‘609 patent depicts a server system 30 that might be used to
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`deliver content to user computers 20:
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`The server system 30 includes database server 32, content server 34, and file
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`
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`server 36.
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`As explained in the ‘609 patent, a user of device 20 may request a page of
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`from the content server 34, and the content server 34 may provide a web page to the
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`device 20. Id. 4:57-62. Figures 2 and 3 of the ‘609 patent depict web pages that
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`include a number of different presentations from which a user may select a particular
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`presentation to play. Id. 4:36-38; Id. 5:34-39. After the user selects a particular
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`presentation, a page as in Figure 9 is provided to the user:
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`Ex. 1001, Fig. 9. As shown, Figure 9 depicts a web page (900) with portion 930
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`(including portion 920, where a presentation selected by the user may be displayed)
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`and portions 910 and 940, which “may be used to display related information, such
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`as advertisements.” Id. at 11:59–12:6, 12:12–14.
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`The ‘609 patent discloses several different methods by which content (e.g. a
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`presentation) shown on web page 900 and played in presentation area 920 may be
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`made available to a content server, so that the content server may then make that
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`data available to user computers. Figure 4 depicts an embodiment method in which
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`a user uploads content, such as a podcast, to a system 30 that includes a content
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`server 34, a database server 32, and a file server 36. Figure 5 depicts an embodiment
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`in which the user uploads a link to content, such as a link to a podcast, housed
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`elsewhere, rather than uploading the content itself, to system 30. Figure 6 depicts
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`an embodiment method in which the content is also saved on system 30, however
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`rather than upload existing content to the system 30, the user creates the content via
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`telephone and the content is saved onto the system 30. Figure 8 depicts an
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`embodiment in which a content feed, such as an RSS feed, uploads content to system
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`30.
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`The ‘609 patent notes that in order to value the advertising space 910 and 940
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`on the web page 900, the ’609 patent seeks to “identify how long the media was
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`actually, or may typically be played.” Id. at 12:6–15. In the embodiments in which
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`the content is loaded to one of the servers 32 (database server), 34 (content server),
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`and 36 (file server) of system 30, determining how long content is played can be
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`determined simply because system 30 can monitor the playing of content hosted on
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`its system 30:
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`For example, it may be determined when a user begins and ends
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`listening to and/or watching a presentation, e.g., a podcast, for example.
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`Where a selected presentation is streamed from computers 30, such an
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`inquiry may be relatively simple, by confirming the content streaming
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`is progressing as expected, for example.
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`Id. at 7:23-28 (emphasis added). However, in embodiments in which the content is
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`not hosted on the system 30, such as in the embodiment of Figure 5 in which the
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`5
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`content is hosted elsewhere, system 30 does not have the control necessary to track
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`how long the content is streamed:
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`As an operator of system 30 does not necessarily exercise control over
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`the content data storage resource, the operator may not be able to
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`directly operate the storage resource in a manner to directly track how
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`long content is streamed therefrom to a particular user.
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`Id. at 12:40-45 (emphasis added). The ‘609 patent further states that when content
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`is hosted elsewhere, the system 30 may use a timer to monitor playing time:
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`Where content is housed elsewhere and linked to by computers 30, such
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`a direct inquiry may not be readily available though. Tracking may be
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`performed, for example, via entry into one or more tables of database
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`server 32 of timed data. At each expiration of a timer, such as every 15
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`seconds, a table entry may be made corresponding to the user, the page
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`the user is on, and, to the extent the user is on the same page as was the
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`user upon the last expiration of the timer, the user's total time, to the
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`current time, spent on that same page. The user may be identified by,
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`for example, any of a number of known methodologies, such as the
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`information the user used to login, the user's IP address, the user's
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`response to an identifying query, or the like.
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`Id. at 7:28-41 (emphasis added). The ‘609 patent notes that determining a viewing
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`time for presentations hosted elsewhere is “unconventional”:
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`Thus, certain embodiments of the present invention provide a capability
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`to know that a viewer began viewing a particular show at a certain time,
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`and when a user began viewing a different page, or show, thereby
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`providing knowledge of how long a particular viewer spent on a
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`particular page. Such knowledge is not conventionally available, and
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`the provision of such knowledge by certain embodiments of the present
`
`invention allows for an increasing scale of payments for advertising
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`displayed on a given page correspondent to how long a viewer or
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`viewers remain, or typically remain, on that particular page or like
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`pages. Thus, a tabular tracking of the present invention allows for the
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`knowledge of how long a viewer spends on a page, what the viewer was
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`viewing or listening to on the given page, the ads shown while the
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`viewer was viewing or listening, how long the ads were shown, and
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`what ads were shown to the view correspondent to that viewer's
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`identification and/or login.
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`Id. at 7:42-58 (emphasis added); see also Id. at 13:43-14:8.
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`In an embodiment, the ‘609 patent explains that the “timer” that may be used
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`to monitor the playing of content housed elsewhere may be a “timer applet,” which
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`is included in the web page 900. Id. at 12:66-67. The ‘609 patent states:
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`Regardless, page 900 may include a timer applet. "Applet," as used
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`herein, generally refers to a software component that runs in the context
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`of another program, in the case of page 900 of FIG. 9, a web browser.
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`Such an applet may typically used to perform a specific function or task,
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`usually narrow in scope. In the case of FIGS. 9 and 10, such a timer
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`7
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`applet may be used to indicate when a pre-determined temporal period
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`has elapsed. For example, such an applet may be used to indicate each
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`time some temporal period, such as 10, 15 or 30 seconds, elapses. Such
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`a timer applet may be started at block 1020.
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`Id. at 12:67-13:9 (emphasis added). “[W]hen the applet determines the
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`predetermined temporal period has elapsed, it signals its continued execution to
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`system 20.” Id. at 13:10–12. In addition, “the applet may cause [a] cookie [received
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`with web page 900], or associated data, to be transmitted from the user’s computer
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`20 to system 30.” Id. at 13:14–21; see id. at Fig. 1 (illustrating user computers 20
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`and server computers 30). The system logs receipt of the applet’s signal and the
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`client’s cookie data (or data associated with it). Id. at 13:12–13, 13:21–23. For
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`example, “a table entry” may be made identifying the user, the page, and total time
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`on that page. Id. at 13:24–30.
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`As noted in the ’609 patent, the use of the applet “provide[s] the capability to
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`know that a viewer began viewing a particular show at a certain time, and to know
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`when a user began viewing a different page, or show, thereby providing knowledge
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`of how long a particular viewer spent on a particular page.” Id. at 13:43–48. The
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`’609 patent states that this knowledge allows the cost of “advertising displayed on a
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`given page” to correspond to the length of time that page is viewed. Id. at 13:49–
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`14:2; see also id. 7:42–52, 11:53–58.
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`8
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`The ‘609 patent issued with one independent claim, claim 1. The text of
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`independent claim 1 is copied herein for the convenience of the Board:
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`IPR2020-00677
`U.S. Patent 8,407,609
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`1.
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`A method for tracking digital media presentations delivered from
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`a first computer system to a user’s computer via a network comprising:
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`providing a corresponding web page to the user’s computer for
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`each digital media presentation to be delivered using the first computer
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`system;
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`providing identifier data to the user’s computer using the first
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`computer system;
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`providing an applet to the user’s computer for each digital media
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`presentation to be delivered using the first computer system, wherein
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`the applet is operative by the user’s computer as a timer;
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`receiving at least a portion of the identifier data from the user’s
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`computer responsively to the timer applet each time a predetermined
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`temporal period elapses using the first computer system; and
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`storing data indicative of the received at least portion of the
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`identifier data using the first computer system;
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`wherein each provided webpage causes corresponding digital
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`media presentation data to be streamed from a second computer system
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`distinct from the first computer system directly to the user’s computer
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`independent of the first computer system;
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`wherein the stored data is indicative of an amount of time the
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`digital media presentation data is streamed from the second computer
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`system to the user’s computer; and
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`9
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`wherein each stored data is together indicative of a cumulative
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`time the corresponding web page was displayed by the user’s computer.
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`IPR2020-00677
`U.S. Patent 8,407,609
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`III. RELATED PROCEEDINGS
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`The following proceedings concern the ’609 patent.
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`Case Name
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`Case Filing
`Date
`10/23/2018 Uniloc 2017 LLC, et al v. Netflix,
`Inc.
`10/29/2018 Uniloc 2017 LLC et al v. American
`Broadcasting Companies, Inc.
`11/1/2018 Uniloc 2017 LLC et al v. Google
`LLC
`11/17/2018 Uniloc 2017 LLC et al v. Google
`LLC
`11/17/2018 Uniloc 2017 LLC v. Netflix, Inc.
`
`11/17/2018 Uniloc 2017 LLC v. American
`Broadcasting Companies, Inc.
`12/27/2018 Uniloc 2017 LLC v. Roku, Inc.
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`Case Number
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`Court
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`8-18-cv-01899
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`CDCA
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`8-18-cv-01930
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`CDCA
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`2-18-cv-00456
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`EDTX
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`2-18-cv-00502
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`EDTX
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`8-18-cv-02055
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`CDCA
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`8-18-cv-02056
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`CDCA
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`1-18-cv-01126 WDTX
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`1/30/2019 Uniloc 2017 LLC v. Vudu, Inc.
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`1-19-cv-00183
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`DDE
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`1/31/2019 Uniloc 2017, LLC v. Sling TV, LLC 1-19-cv-00278
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`DCO
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`2/14/2019 Uniloc 2017 LLC v. Roku, Inc.
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`8-19-cv-00295
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`CDCA
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`7/22/2019
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`Sling TV LLC et al v. Uniloc 2017
`LLC
`10/18/2019 Netflix, Inc. et al v. Uniloc 2017
`LLC
`10/31/2019 Google, LLC v. Uniloc 2017 LLC
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`IPR2019-01367
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`PTAB
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`IPR2020-00041
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`PTAB
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`IPR2020-00115
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`PTAB
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`3/3/2020
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`Vudu, Inc. v. Uniloc 2017 LLC
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`IPR2020-00677
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`PTAB
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`Two district courts have construed claim terms of the ’609 patent. See Ex.
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`2001, Claim Construction Ruling, Uniloc 2017 LLC v. Netflix, Inc., SACV 18-2055-
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`GW-DFMx, Dkt. 138 (C.D. Cal. Mar. 9, 2020); Ex. 2002, Claim Construction
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`Memorandum and Order, Uniloc 2017 LLC v. Google LLC, Case No. 2:18-CV-
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`00502-JRG-RSP, Dkt. 149 (E.D. Tex. Jan. 20, 2020) (adopted Dkt. 198, Mar. 24,
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`2020).
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`IV. PETITIONER DOES NOT PROVE THAT ANY CHALLENGED
`CLAIM IS UNPATENTABLE
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`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
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`§ 42.108(c) (“review shall not be instituted for a ground of unpatentability unless . .
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`. there is a reasonable likelihood that at least one of the claims challenged . . . is
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`unpatentable”). The Petition should be denied as failing to meet this burden.
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`The Petition raises the following obviousness challenges:
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`Ground
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`1
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`2
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`1–3
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`1–3
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`Claims
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`Reference(s)
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`Jacoby1 and Bland2
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`McTernan3 and Robinson4
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`A. The Level of Ordinary Skill in the Art
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`Given that Petitioner fails to meet its burden of proof in establishing
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`obviousness when applying its own definitions of a person of ordinary skill in the art
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`(“POSITA” or “POSA”), Patent Owner does not offer a competing definition for
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`POSITA.
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`B. Claim Construction
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`“In an inter partes review proceeding, a claim of a patent . . . shall be
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`construed using the same claim construction standard that would be used to construe
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`the claim in a civil action,” which includes “construing the claim in accordance with
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`the ordinary and customary meaning of such claim as understood by one of ordinary
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`1 EX1006, U.S. Pat. Pub. No. 2004/0254887.
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`2 EX1009, U.S. Pat. No. 5,732,218.
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`3 EX1007, WO 01/89195.
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`4 EX1008, EP 0,939,516.
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`skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R.
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`§ 42.100(b).
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`Patent Owner submits that the Board need not expressly construe any claim
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`term in a particular manner in order to arrive at the conclusion that the Petition is
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`substantively deficient. Patent Owner reserves the right to challenge any
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`construction offered by Petitioner. Although Patent Owner provides arguments
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`below on the scope of certain claim terms, Patent Owner does not propose a
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`comprehensive construction, as it would not be necessary to resolve the controversy
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`and deny the Petition. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.
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`Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms
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`‘that are in controversy, and only to the extent necessary to resolve the
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`controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803
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`(Fed. Cir. 1999)); see also Changes to the Claim Construction Standard for
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`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board,
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`83 Fed. Reg. 51,340, 51,353 (Oct. 11, 2018) (Final Rule) (“Moreover, it also may not
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`be necessary to determine the exact outer boundary of claim scope because only
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`those terms that are in controversy need be construed, and only to the extent
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`necessary to resolve the controversy (e.g., whether the claim reads on a prior art
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`reference).” (citing Nidec)).
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`1.
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`“computer system”
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`Petitioner argues a POSITA would have understood “computer system” to
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`mean “one or more computing devices having a common operator or under common
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`control.” Pet. 8-9. Petitioner bases its definition on this description in the ’609
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`patent: “The terms ‘computer,’ ‘computer device[’] and/or ‘computer system’ as
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`used herein may generally take the form of single computing devices or collections
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`of computing devices having a common operator or under common control.”
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`EX1001, 3:52–55 (emphasis added). The ’609 patent’s use of the permissive “may
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`generally” (as emphasized) indicates a “computer system” is not limited to one or
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`more computing devices “having a common operator or under common control.” At
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`the same time, the passage also does not suggest that mere control over two
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`computers would always make them part of the same “computer system.” Rather,
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`one or more computers under common control “may” be a “system,” but such
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`determination depends on the plain and ordinary meaning of a “computer system”
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`and use of the term in the context of the claims. Petitioner’s interpretation attempts
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`to read the term “system” out of the claim.
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`Petitioner’s erroneous construction for the “computer system” term should be
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`rejected, and Petitioner’s obviousness theory should likewise be rejected as tainted
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`by reliance on an incorrect claim construction.
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`C.
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`Jacoby and Bland do not disclose each element of each of the
`claims of the ‘609 patent. (Ground 1)
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`The Petition fails to show the combination of Jacoby and Bland teaches at
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`least the limitations discussed herein and fails to show the references would have
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`been combined in a manner that would meet the limitations of claim 1.
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`1.
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`Neither Jacoby nor Bland discloses “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.”
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`a)
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`Jacoby
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`The Petition contends Jacoby teaches the “providing an applet” limitations of
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`claim 1. The Petition argues “[a] POSA would understand that Jacoby uses applets
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`with the media player based on Jacoby’s disclosure of delivering the media player
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`using ActiveX controls on the web page.” Pet. 19. The Petition does not, however,
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`connect any alleged applet to the metering function or show that Jacoby teaches an
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`applet that “is operative by the user’s computer as a timer” as recited in the claim.
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`Indeed, Jacoby meters use of its “products” by embedding metering events in the
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`streaming media file. See Pet. 20 (citing EX1006 ¶ 53). Rather than use an “applet
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`operative by the user’s computer as a timer,” as recited in claim 1, Jacoby’s media
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`player merely appends the embedded metering events to metering URL 127 and
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`returns the appended metering URLs to the mediaframe servers. See id. Thus,
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`Jacoby does not teach the “providing an applet” limitations of claim 1 recited above.
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`In view of the reasons presented herein, Petitioner has failed to meet its burden of
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`showing that any challenged claim is unpatentable in view of Jacoby and Bland.
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`In the Sling IPR, the Institution Decision there correctly determines that the
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`metering function of Jacoby does not teach a timer applet. Sling IPR, Inst. Dec. at
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`33. In reaching this determination, the Sling IPR Institution Decision correctly
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`discounts the relevance of the purported expert declaration (Ex. 1002) because it
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`merely repeats language in the Petition, id., and because “An expert’s conclusory
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`testimony, unsupported by the documentary evidence, cannot supplant the
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`requirement of anticipatory disclosure in the prior art reference itself.” Id. at. 32.
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`b)
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`Bland
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`The Petition next contends that Bland teaches the “providing an applet”
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`limitations of claim 1. Pet. 21–23. As quoted by the Petition, Bland teaches:
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`Data collected by browser extension 131 on each client 101-102
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`preferably include the following: … Amount of time that a particular
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`object (e.g., a page, a graphical image, an audio clip, an animation,
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`etc.) is active (i.e., is visible, is audible, etc.) at the client. This data
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`indicates how long a user of the client is exposed to the information
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`being provided by that object. Ex[1009] 4:9-32
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`Pet. 22. The Petition does not explain, however, how Bland teaches at least the
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`limitations of “providing an applet . . . for each digital media presentation.” The
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`language cited by the Petition indicates that each client has a browser extension 131.
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`Even if the Bland extensions on a client are capable of tracking multiple objects,
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`there is no disclosure in Bland that a separate extension is provided for “for each
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`digital media presentation” as recited in the claim. The Sing IPR Institution Decision
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`contends that the Patent Owner does not show where Bland teaches that there is not
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`a separate extension for each media presentation. Sling IPR Inst. Dec. at 36.
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`However, it is the Petitioner’s burden to show that Bland affirmatively teaches a
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`separate extension for each media presentation, not the Patent Owner’s burden to
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`provide that it does not. The Petitioner has not met this burden. The mere existence
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`of one or more extensions is not a disclosure of a separate extension for each media
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`presentation. Nowhere in the Sling IPR Institution Decision is there a citation to
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`evidence placed in the record to show that Bland teaches a separate extension for
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`each media presentation. The Sling IPR Institution Decision’s statement that “Bland
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`states that its extensions may be sent to the client with a data collection request or
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`may be permanently included in a client” is not a disclosure of a separate extension
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`for each media presentation. Sling IPR Inst. Dec., at 36. Thus, Bland does not teach
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`the “providing an applet” limitations of claim 1.
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`In view of the reasons presented herein, Petitioner has failed to meet its burden
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`of showing that any challenged claim is unpatentable in view of Jacoby and Bland.
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`c)
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`The combination of Jacoby and Bland does not
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`overcome the individual deficiencies of Jacoby or
`Bland as to the “providing an applet” limitations.
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`Petitioner contends that “using an applet to deliver Jacoby’s metering
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`software was obvious in view of Bland.” Pet. 23. Petitioner contends “Jacoby and
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`Bland both disclose a server providing a client with software that runs in a browser
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`and instructs the client to periodically report tracking information via a specified
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`URL” and that “[a] POSA would have been motivated to combine these teachings
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`as a simple substitution of one known element (Jacoby discloses providing a client
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`with metering software that runs in a browser) for another.” Pet. 64. The premise
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`of Petitioner’s contentions is false, however, at least because, as discussed above,
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`Jacoby’s client does not run metering software. At most, Jacoby’s client passes
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`along metering events embedded in the streaming media file. See EX1006 ¶ 53.
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`Petitioner fails to provide an explanation as what “metering software” Petitioner
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`proposes to be delivered using an applet.
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`Petitioner next contends that “[a] POSA would have been motivated to
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`combine Bland’s object-tracking and timing mechanism with the system taught by
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`Jacoby.” Pet. 23. Using Bland’s object-tracking mechanism, however, even in
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`Jacoby’s system, suffers from the same deficiencies identified above. Specifically,
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`even if Bland’s extensions are capable of tracking multiple objects, they are always
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`present and an applet is not provided “for each digital media presentation” as recited
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`in the claim. See EX1009, 4:9–23. The Petition’s purported reasoning for combining
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`teachings of Jacoby and Bland does not explain how or why the alleged combination
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`would result in providing an applet “for each digital media presentation,” as opposed
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`to a global extension that may track data for multiple objects. See Pet. 66–68.
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`Patent Owner respectfully submits that although the Sling IPR Institution
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`Decision properly recognized that Jacoby does not teach a timer applet, it improperly
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`determined that the combination of Jacoby and Bland teaches the recited applet for
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`each digital media presentation. The Sling IPR Institution Decision’s determination
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`that Jacoby teaches metering “software” is contrary to the disclosure of Jacoby.
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`Sling IPR Inst. Dec. at 35 (stating “Jacoby’s metering function is performed by
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`software”). In fact, Jacoby teaches that the metering function is implemented by
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`embedding metering events as metadata. Ex. 1006, ¶56. Jacoby then states: “The
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`client media player concatenates the metering URL and the embedded metering
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`event, step 710, and pushes them up to the mediaframe servers, which causes a user
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`meter to be ticked/decremented, step 715.” Id. at ¶ 58. Thus, it is the media player
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`that is implementing the metering functionality in Jacoby, not separate metering
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`software.
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`Because Jacoby does not teach separate metering software, the Sling IPR
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`Institution Decision’s contention that one of ordinary skill could simply swap the
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`“metering software” of Jacoby with the applet of Bland is without basis. Sling IPR
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`Inst. Dec. at 35. Further, as noted above, the Petitioner has not shown that Bland
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`teaches “providing an applet . . . for each digital media presentation.” Therefore,
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`even if the timer applet of Bland is combined with the system of Jacoby, there is no
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`suggestion in either Jacoby or Bland of an applet for each digital media presentation.
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`Still further, replacing the metering performed in Jacoby with an applet timer,
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`as suggested by Petitioner, would change the principle of operation of Jacoby, and
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`render Jacoby unable to perform the functions it performs with its embedded
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`metering events based metering. Jacoby teaches that the embedded metering events
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`may be strategically placed at different points of a streaming media file, to provide
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`indications of different events:
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`The intervals at which embedded metering events are placed in a
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`streaming media file need not be uniform. For example, a long movie
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`may have embedded metering events embedded in a streaming media
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`file with an increasing time interval between the metering events, such
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`as at 5 seconds, 2 minutes, 10 minutes, and 30 minutes interval
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`thereafter. Preferably, the position of metering events in a streaming
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`media file provides indicators desired by content providers. For
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`example, a movie provider might want to position an embedded
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`metering event 5 seconds after video frame 1 has played so that the
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`movie provider knows that the user has started a movie and, therefore,
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`may log the event. Another embedded metering event may be
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`positioned five minutes after the first mentioned embedded metering
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`event so that the movie provider can determine whether the user is still
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`watching the movie. For example, users who are simply previewing a
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`movie and stop receiving the movie after the first few minu