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` Paper 14
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` Date: October 8, 2021
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HULU, LLC,
`Petitioner,
`v.
`PUCS, INC.,
`Patent Owner.
`____________
`
`IPR2021-00811
`Patent 10,728,619 B2
`____________
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`
`Before JONI Y. CHANG, DANIEL J. GALLIGAN and,
`MICHAEL T. CYGAN, Administrative Patent Judges.
`
`
`CHANG, Administrative Patent Judge.
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`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
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`IPR2021-00811
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`INTRODUCTION
`I.
`Hulu, LLC (“Petitioner”) filed a Petition requesting an inter partes
`review (“IPR”) of claims 1−12 (“the challenged claims”) of U.S. Patent
`No. 10,728,619 B2 (Ex. 1001, “the ’619 patent”). Paper 2 (“Pet.”), 2.
`Pucs, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 9,
`“Prelim. Resp.”). Patent Owner also filed a statutory disclaimer of
`claims 8−12 of the ’619 patent. Ex. 2004 (Statutory Disclaimer).
`Accordingly, we consider only Petitioner’s unpatentability contentions with
`respect to the remaining challenged claims, i.e., claims 1−7 of the
`’619 patent. Cf. 37 C.F.R. § 42.107(e) (“No inter partes review will be
`instituted based on disclaimed claims.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the petition “shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” For the reasons stated
`below, we determine that Petitioner has established a reasonable likelihood
`that it would prevail with respect to at least one claim. We hereby institute
`an inter partes review as to claims 1−7 of the ’619 patent.
`
`A. Related Matters
`The parties indicate that the ’619 patent is involved in Pause
`Commercials, Inc. v. Hulu, Inc., Case No. 2:21-cv-02302-RGK-KES
`(C.D. Cal.). Pet. 80; Paper 4, 1.
`Patent Owner filed a Motion to Correct Clerical Error (Paper 6),
`seeking to correct claim 8. Patent Owner also filed a Request for Certificate
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`of Correction (Ex. 2001) seeking to correct claims 1 and 8, which was
`approved (Ex. 2002). However, as discussed above, Patent Owner filed a
`statutory disclaimer of claims 8−12 of the ’619 patent. Ex. 2004. Under
`these circumstances, Patent Owner’s Motion to Correct Clerical Error is
`dismissed as moot.
`Further, the parties filed a joint Stipulation, agreeing that the
`correction for claim 1 “does not make a substantive change in the meaning
`or scope of claim 1.” Paper 12. This Decision refers to the language of
`claim 1 before the certificate of correction.
`
`B. The ’619 Patent
`The ’619 patent discloses a method for displaying tailored advertising
`in response to user media playback behavior. Ex. 1001, code (57).
`Figure 1 is reproduced below.
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`Figure 1 illustrates a block diagram of a distributed data processing
`environment. Id. at 2:40−41. As shown in Figure 1, distributed data
`processing environment 100 includes user device 104 and server computer
`108 interconnected over network 102, e.g., a telecommunications network, a
`local area network (LAN), and the Internet. Id. at 4:6−12. User device 104
`(e.g., a smart phone or laptop) includes ad interface 106, which provides a
`user interface to ad engine 110. Id. at 4:28−37.
`Figure 3 of the ’619 patent is reproduced below.
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`Figure 3 of the ’619 patent above shows a method of compiling and
`initiating playback of advertisements in response to a media playback action.
`Id. at 2:44−46. At step 302, ad engine 110 detects user initiation of media
`playback. Id. at 7:8−9. For example, ad engine 110 can detect the selection
`of a media file for playback, such as a television comedy from an over-the-
`top media streaming service. Id. at 7:10−15. At step 304, ad engine 110
`retrieves the advertisement policy. Id. at 7:30−31. At step 306, ad engine
`110 analyzes media attributes to filter one or more advertisements from
`available advertisements. Id. at 7:39−41. At step 308, ad engine 110 queues
`advertisements based on the analyzed media attributes and the advertisement
`policy. Id. at 7:61−63. At step 310, ad engine 110 detects a change in
`media playback. Id. at 8: 31−32. At step 312, ad engine 110 initiates
`playback of a queued advertisement.
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`C. Illustrative Claim
`Of the remaining challenged claims 1−7, claim 1 is independent.
`Claims 2−7 depend from claim 1. Claim 1 is illustrative:
`1. [1a] A method for displaying tailored advertising in response
`to user media playback behavior via an over-the-top data
`delivery system, comprising:
`[1b] verifying an identity of the user;
`[1c] analyzing historical data associated with the identity,
`wherein the historical data includes patterns of user behavior
`associated with one or more advertisements;
`[1d] detecting media playback by the user;
`[1e] analyzing content associated with the media playback;
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`[1f] retrieving an advertisement rule associated with the user;
`[1g] queueing user tailored advertisements based on the analyzed
`content and the advertisement rule; and
`[1h] delivering an advertisement from any one or more third-
`party services in response to detecting a pause in the media
`playback.
`Ex. 1001, 11:54–12:3.
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`D. Prior Art Relied Upon
`Petitioner relies upon the references listed below (Pet. 2):
`
`
`
`Name
`
`Santangelo
`
`Reference
`U.S. Patent Application
`Publication No. 2011/0264530
`A1
`Zigmond U.S. Patent No. 6,698,020 B1 Feb. 24, 2004 1005
`
`Date
`
`Exhibit No.
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`Oct. 27, 2011 1004
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`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 10):
`
`Claims Challenged
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`35 U.S.C. §
`
`References
`
`1−7
`
`1−7
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`103
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`103
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`Santangelo
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`Santangelo, Zigmond
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`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
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`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir.
`1995).
`Here, citing to the Declaration of Stephen Gray for support, Petitioner
`asserts that a person of ordinary skill in the art of the ’619 patent would have
`had “a bachelor’s degree in computer science or a similar field with at least
`four years of experience in delivery of media content and advertising over
`the Internet,” or “a master’s degree in computer science or a similar field.”
`Pet. 17 (citing Ex. 1003 ¶¶ 59–61). At this juncture, Patent Owner does not
`proffer any assessment regarding the knowledge of an ordinarily skilled
`artisan.
`To the extent necessary, and for purposes of this Decision, we adopt
`Petitioner’s assessment of the level of ordinary skill in the art, with the
`exception of the open-ended language “at least,” because it is consistent with
`the ’619 patent and the asserted prior art. See Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001).
`
`B. Claim Construction
`In an inter partes review, we construe a patent claim “using the same
`claim construction standard that would be used to construe the claim in a
`civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b) (2020).
`Under this standard, the words of a claim generally are given their “ordinary
`and customary meaning,” which is the meaning the term would have to a
`person of ordinary skill at the time of the invention, in the context of the
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`entire patent including the specification. Phillips v. AWH Corp., 415 F.3d
`1303, 1312–13 (Fed. Cir. 2005) (en banc).
`In light of Petitioner’s arguments and supporting evidence in this
`present record, we find that it is necessary to construe only the following
`claim elements and terms for our determination of whether to institute a
`review: (1) “over-the-top,” (2) “queueing,” and (3) “third-party services.”
`See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that
`are in controversy, and only to the extent necessary to resolve the
`controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999))).
`
`1. “over-the-top data delivery system”
`The preamble of claim 1 recites “[a] method for displaying tailored
`advertising in response to user media playback behavior via an over-the-top
`data delivery system.” Ex. 1001, 11:54−56 (emphasis added).
`At this preliminary stage, both parties treat the preamble of claim 1 as
`limiting. See, e.g., Pet. 21−25; Prelim. Resp. 2−3, 5. “Generally, the
`preamble does not limit the claims,” however. Allen Eng’g Corp. v. Bartell
`Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002)). Regardless of whether
`the preamble is limiting, we find that Petitioner shows sufficiently for
`purposes of institution that the recitation in the preamble is satisfied by the
`prior art, as discussed below. Therefore, on this record, it is unnecessary for
`us to determine whether the preamble of claim 1 is limiting.
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`As to the meaning of the term “over-the-top data delivery system,”
`Petitioner asserts that a person of ordinary skill in the art would have
`understood that the term “is satisfied by, at least, sending data over another’s
`network, which includes using publicly accessible internet connections to
`deliver media streams,” citing the Specification, Mr. Gray’s testimony, and
`Santangelo for support. Pet. 18 (citing Ex. 1001, 9:26−31; Ex. 1003
`¶¶ 63−64; Ex. 1004 ¶ 102). At this juncture, Patent Owner does not dispute
`this claim construction, but merely argues that “terms in the body of the
`claims, including the queueing limitation, must be construed consistently
`with respect to delivering advertising in an over-the-top data delivery
`system.” Prelim. Resp. 1−3. We address that argument in our claim
`construction analysis for the term “queueing” (Section II.B.2 below).
`For purposes of this Decision, we adopt Petitioner’s proposed claim
`construction for the term “over-the-top data delivery system” as it is
`consistent with Specification and Mr. Gray’s testimony. Notably, the
`Specification discloses that “OTT systems can include any one or more
`systems or elements of a larger system that use publicly accessible internet
`connections to deliver video streams.” Ex. 1001, 9:26−31. Mr. Gray also
`explains that “the [S]pecification uses ‘over-the-top’ or ‘OTT’ in various
`embodiments to describe systems that are able to access the internet and
`deliver media streams, or access the internet and establish a connection with
`an ad engine.” Ex. 1003 ¶ 64 (citing Ex. 1001, 1:22−27 (describing prior art
`“Thomas does not disclose analyzing the media content and user data to
`queue advertisements to over-the-top (OTT) internet signals”), 9:32−34
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`(disclosing that “OTT systems advantageously allow digital content to be
`accessible by any devices that can access the internet and establish a
`connection with ad engine 110”)). Moreover, as Mr. Gray testifies,
`Petitioner’s proposed claim construction is further supported by
`Santangelo’s description of “over-the-top” in the context of providing
`content over a network: “network services are sent ‘over the top’ of other
`provider’s infrastructure, thereby making the service network substantially
`network-agnostic” (Ex. 1004 ¶ 102). See Ex. 1003 ¶ 64.
`In light of the Specification and the evidence in this record, we
`determine for purposes of this Decision that the term “over-the-top data
`delivery system” as used in the preamble of claim 1 encompasses a system
`“sending data over another’s network, which includes using publicly
`accessible internet connections to deliver media streams,” adopting
`Petitioner’s proposed claim construction. Pet. 18.
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`2. “queueing”
`Claim 1, among other things, recites:
`queueing user tailored advertisements based on the analyzed
`content and the advertisement rule; and
`delivering an advertisement from any one or more third party
`services in response to detecting a pause in the media playback.
`Ex. 1001, 11:64−12:3 (emphases added).
`Petitioner asserts that a person of ordinary skill in the art would have
`understood that the term “queueing” means “designating one or more
`advertisements for display or delivery,” citing the Specification and
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`Mr. Gray’s testimony for support. Pet. 19 (citing Ex. 1001, 8:18−20,
`9:9−25; Ex. 1003 ¶¶ 65−66).
`Patent Owner counters that a person of ordinary skill in the art would
`have understood the term “queueing” to mean “preparing a user tailored
`advertisement for immediate playback upon detection of a pause.” Prelim.
`Resp. 2−3. Patent Owner argues that “terms in the body of the claims,
`including the queueing limitation, must be construed consistently with
`respect to delivering advertising in an over-the-top data delivery system,”
`and that “realistic insertion of advertising in an over-the-top data delivery
`system requires that queueing in Claims 1−7 must provide for immediate
`playback during a pause in media playback.” Id. Patent Owner also
`contends that the Specification discusses “difficulties in delivering
`advertising in an over-the-top data delivery system.” Id. According to
`Patent Owner, the Specification provides solutions that “include storing
`advertisements on a local memory,” “pre-loading them into RAM,” and
`“actively retrieving them into a buffer.” Id. (citing Ex. 1001, 6:66−67,
`7:2−3, 9:11−13, 9:20−23; Ex. 2003 ¶ 63, 68, 69, 75).
`Based on the current record, we are not persuaded by Patent Owner’s
`arguments. Patent Owner conflates the “queueing” limitation with the
`“delivering” limitation. The “delivering” limitation merely requires
`delivering “an advertisement.” It does not require delivering one of those
`advertisements in the queue.
`More importantly, Patent Owner’s proposed claim construction for the
`term “queueing” would improperly import limitations from the Specification
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`into the claim by requiring (1) “preparing a user tailored advertisement for
`immediate playback upon detection of a pause” and (2) “storing
`advertisements on a local memory,” “pre-loading them into RAM,” and/or
`“actively retrieving them into a buffer.” Notably, claim 1 does not recite an
`“immediate playback” limitation, a local memory, RAM, or a buffer. Patent
`Owner does not argue that the Specification sets forth a special definition of
`the claim term that requires reading those limitations into the claim. The
`Federal Circuit “has repeatedly ‘cautioned against limiting the claimed
`invention to preferred embodiments or specific examples in the
`specification.’” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47
`(Fed. Cir. 2015). Significantly, “[i]t is the claims, not the written
`description, which define the scope of the patent right.” Id. at 1346.
`In addition, the term “immediate playback” is a term of degree and
`highly subjective. Patent Owner does not identify where in the intrinsic
`record provides a person of ordinary skill in the art with objective
`boundaries for ascertaining the term’s scope. Cf. Interval Licensing LLC v.
`AOL Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014) (If a claim employs a term
`of degree, the intrinsic record must provide those skilled in the art with
`“objective boundaries” to assess the term’s scope.); Halliburton Energy
`Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008) (“Even if a
`claim term’s definition can be reduced to words, the claim is still indefinite
`if a person of ordinary skill in the art cannot translate the definition into
`meaningfully precise claim scope.”).
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`The portions of the Specification cited by Patent Owner do not use the
`term “immediate playback.” Ex. 1001, 6:66−67, 7:2−3, 9:11−13, 9:20−23.
`Nor do they make the meaning of “immediate playback” reasonably clear.
`Id. At most, the Specification discloses playing an advertisement during the
`pause in the media playback. See, e.g., Ex. 1001, 8:18−20 (“The queued
`advertisements can then playback in the designated order when the user
`pauses the movie.”).
`To the extent that Patent Owner suggests that the “queueing”
`limitation requires “storing advertisements on a local memory,” “pre-loading
`them into RAM” (random-access memory), or “actively retrieving them into
`a buffer,” we disagree. Prelim. Resp. 2−3. Patent Owner attempts to
`improperly “limit[] the claimed invention to preferred embodiments or
`specific examples in the specification.” Williamson, 792 F.3d at 1346–47.
`Nothing in the portions of the Specification cited by Patent Owner
`requires an over-the-top data delivery system to include a local memory,
`RAM, or buffer. Rather, those portions of the Specification merely describe
`preferred embodiments and specific examples. Ex. 1001, 6:66−7:1
`(“In some embodiments, ad engine 110 . . . stored the advertisement data in
`local memory for later playback.”), 7:1−4 (“For example, ad engine 110 can
`cause user device 104 to pre-load advertisement content into random access
`memory (RAM) for later playback during a user-initiated pause”), 9:11−14
`(“In a preferred embodiment, ad engine 110 initiates the playback of a
`queued advertisement stored on a local storage media (e.g., internal hard
`drive, internal solid-state drive, random access memory, etc.).”), 9:20−22
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`(“For example, ad engine 110 can retrieve actively begin retrieving data for
`an advertisement into a buffer once ad engine 110 detects a pause in the
`playback.”) (emphases added).
`Indeed, the Specification makes clear that “[g]roupings of alternative
`elements or embodiments of the invention disclosed herein are not to be
`construed as limitations.” Id. at 3:33−35. Moreover, the Specification
`contemplates retrieving an advertisement directly from a database residing
`on a server computer. Id. at 9:18−20.
`For these reasons, we decline to adopt Patent Owner’s proposed claim
`construction. Rather, for purposes of this Decision, we construe the term
`“queueing” as “designating one or more advertisements for display or
`delivery,” adopting Petitioner’s proposed claim construction because it is
`consistent with the Specification and Mr. Gray’s testimony. Pet. 19;
`Ex. 1001, 8:18−20, 9:9−25; Ex. 1003 ¶¶ 65−66.
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`3. “third-party services”
`Claim 1 recites “delivering an advertisement from any one or more
`third party services in response to detecting a pause in the media playback.”
`Ex. 1001, 12:1−3 (emphasis added). In this regard, Petitioner argues that the
`term “third-party services” encompasses “a service by a party that is not the
`content provider that provides advertisements.” Pet. 19 (citing Ex. 1003
`¶¶ 67−68). At this juncture, Patent Owner does not proffer a claim
`construction for this term.
`Petitioner’s proposed claim construction is consistent with the
`Specification. As Petitioner notes (Pet. 19), in the context of interactive
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`software applications such as video games, for example, the Specification
`refers to “third-party entities” as separate from the party associated with the
`video game. Ex. 1001, 8:63−9:8 (describing “advertisements for third
`parties (e.g., an interactive advertisement allowing a user to order delivery
`from a food delivery service directly in the video game)”).
`For purposes of this Decision, we adopt Petitioner’s claim
`construction for the term “third-party services,” construing the term to
`encompass “a service by a party that is not the content provider that provides
`advertisements.” Pet. 19.
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`C. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103 if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, “would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`non-obviousness.1 See Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
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`1 Neither party presents evidence or arguments regarding objective evidence
`of non-obviousness in the instant proceeding.
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`D. Brief Overviews of the Asserted Prior Art References
`1. Santangelo (Ex. 1004)
`Santangelo discloses an apparatus and methods for dynamic
`secondary content (e.g., advertisement) and data insertion and delivery.
`Ex. 1004, codes (54), (57).
`Figure 2 of Santangelo is reproduced below (with color annotations
`added by Petitioner). Pet. 13.
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`Annotated Figure 2 of Santangelo above is a high-level block diagram
`of a content and data distribution network for use in dynamic secondary
`content insertion or dynamic advertisement insertion (“DAI”). Ex. 1004
`¶ 99. Network 200 comprises (1) primary content sources 202, (2) content
`server 206, (3) secondary content sources 208, (4) package media gateway
`(“PMG”) 210, (5) business management system (“BMS”) 212,
`(6) application server (“AS”) 214 (yellow), and (7) content management
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`entities, which include e.g., advertisement management system,
`advertisement delivery manager, or advertisement decision manager
`(collectively and individually referred to as “ADM”) 220 (green),
`advertisement decision service (“ADS”) 222 (orange), and campaign
`manager (“CM”) 224. Id. Management entities cooperate to provide
`content, including secondary content, to customer premises equipment
`(“CPE”) 106 and portable media devices (“PMD”) 107 in communication
`with network 101, including via non-multiple systems operator (“MSO”)
`network 103. Id.
`Figure 6a is reproduced below (with color annotations added by
`Petitioner). Pet. 24.
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`Annotated Figure 6a of Santangelo is a logical flow diagram,
`illustrating an exemplary method of providing secondary content insertion.
`Ex. 1004 ¶ 39. At step 622, a request for primary content from a user
`terminal is received at primary content server 206. Id. ¶ 193. At step 624,
`primary content server 206 sends a message to ADM 220, triggering the
`creation of a playlist of secondary content at step 624 (pink). Id. ¶ 195.
`The message identifies the subscriber in order to enable the entities charged
`with identifying secondary content to perform the selection based on what is
`known about the subscriber (such as demographic, psychographic,
`firmographic, geographic and/or behavioral variables). Id. At step 626
`(yellow), the dynamic secondary content insertion application determines
`whether content will be inserted at the beginning of play out of the requested
`primary content. Id. ¶ 196.
`At step 636, when a pause or stop command is received during the
`playback of the primary content, the dynamic secondary content insertion
`application determines whether secondary content should be inserted. Id.
`¶¶ 197, 198. At step 638 (blue), if it determines that secondary content
`should be inserted, the secondary content from the playlist is inserted at the
`pause/stop command. Id. ¶ 200. At step 640 (red), the secondary content is
`presented to the user. Id. At step 642, subsequent to the presentation of the
`secondary content, the primary content resumes play if there is any portion
`of the primary content which remains to be played. Id. The user may select
`a specific secondary content to receive from among the available secondary
`content. Id. ¶ 203.
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`2. Zigmond (Ex. 1005)
`Zigmond discloses a system and method for selecting and inserting
`advertisements into a video programming feed. Ex. 1005, code (57).
`Zigmond recognizes the need to select user tailored advertisements. Id. at
`1:23−26. Zigmond allows advertisers to target individual viewers based on
`the needs and interests of individual viewers and households. Id. at
`4:10−12. Zigmond discloses using advertisement selection rules and
`criteria, such as viewer characteristics, video programming content,
`geographical location, programming content, and advertisement content to
`select advertisements for display. Id. at code (57), 4:25−29, 10:58−61,
`11:30−49, 12:62−66, 13:51−58.
`Figure 4 of Zigmond is reproduced below.
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`Figure 4 of Zigmond above is a diagram illustrating a system for
`receiving advertisements from an advertising source and video programming
`from a programming source. Id. at 5:52−55. Advertisement source 62 may
`be a local repository storing a plurality of advertisements. Id. at 8:3−7.
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`Advertisement stream 64 delivers the advertisements from advertisement
`source 62 to ad insertion device 60 over an advertisement or other video
`channel. Id. Alternatively, advertisement source 62 may be a just-in-time
`system for delivering advertisement stream 64 to ad insertion device. Id. at
`8:9−11.
`
`E. Ground 1 – Obviousness over Santangelo
`Petitioner asserts that claims 1−7 are unpatentable under § 103 as
`obvious over Santangelo (Ground 1). Pet. 21−49. Patent Owner opposes.
`Prelim. Resp. 5. Upon consideration of the parties’ arguments and
`supporting evidence, we are persuaded that Petitioner has demonstrated a
`reasonable likelihood of prevailing in showing that claims 1−7 are
`unpatentable under § 103 as obvious over Santangelo.
`
`1. Claim 1
`Petitioner asserts that Santangelo teaches or suggests all of the
`limitations recited in claim 1. Pet. 21−41. Based on the evidence in this
`record, we agree with Petitioner for purposes of this Decision.
`Notably, for the preamble of claim 1 (Element 1a, “[a] method for
`displaying tailored advertising in response to user media playback behavior
`via an over-the-top data delivery system”), Petitioner explains that
`Santangelo discloses “an apparatus and methods for inserting targeted
`advertising into content requested by a user.” Id. at 21 (citing Ex. 1004,
`codes (54), (57), ¶ 61 (disclosing “methods and apparatus for providing
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`primary content to network users, the primary content having secondary
`content (e.g., targeted advertisements . . . , etc.) inserted therein”)).
`Petitioner also explains that a person of ordinary skill in the art would
`have understood that Santangelo teaches an over-the-top data delivery
`system because, as shown in Figure 2 of Santangelo (reproduced above), the
`system sends contents and advertisements to a user over a network
`controlled by the system provider (e.g., network 101) or over another
`provider’s network (e.g., non-MSO network 103). Pet. 22−23 (citing
`Ex. 1004 ¶¶ 75, 79, 99, 102, Fig. 2; Ex. 1003 ¶¶ 75−77). And Santangelo
`further teaches “network services are sent ‘over-the-top’ of other provider’s
`infrastructure, thereby making the service network substantially
`network-agnostic” and “selection of a video for play via the Internet, such as
`via the ‘YouTube®’ website.” Ex. 1004 ¶¶ 79, 102, cited in Pet. 23; see
`Ex. 1003 ¶¶ 76–77. In addition, Petitioner explains that Santangelo also
`teaches “displaying tailored advertising in response to user media playback
`behavior.” Pet. 23−25 (citing Ex. 1004, code (57), ¶¶ 39, 99, 148, 149, 186,
`193−201, 203, Figs. 2, 6, 6a; Ex. 1003 ¶¶ 78−81).
`As to Element 1b (“verifying an identity of the user”), Petitioner
`explains that Santangelo teaches authenticating the subscriber (i.e., user)
`before providing content to the subscriber. Pet. 25−27 (citing Ex. 1004
`¶¶ 126 (incorporating by reference U.S. Patent Application No. 12/536,724,
`which discloses that “[c]ontent should only be provided to a subscriber
`whose identity has been authenticated to an identity server” (Ex. 1014
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`¶ 18)), 163 (“the user must be authenticated in order to receive content”),
`193, 194, 268, 269, Fig. 6a).
`With respect to Element 1c (“analyzing historical data associated with
`the identity, wherein the historical data includes patterns of user behavior
`associated with one or more advertisements”), Petitioner explains that
`Santangelo discloses capturing the patterns of user behavior associated with
`one or more advertisements, such as the user’s reactions to sports-related
`versus family programming advertisements. Pet. 28−29 (citing Ex. 1004
`¶¶ 243−245, 268; Ex. 1003 ¶¶ 87−89). Petitioner argues that a person of
`ordinary skill in the art would have found this limitation obvious because
`“analyzing captured behavior of an identified user that often fast forwards
`through sports-related advertisements (i.e., one viewing pattern with respect
`to a first advertisement), but views advertisements for family programming
`(i.e., another viewing pattern with respect to a second advertisement) is
`analyzing historical data capturing patterns of user behavior associated with
`one or more advertisements.” Id.
`Regarding Element 1d (“detecting media playback by the user”),
`Petitioner explains that Santangelo discloses “detecting button presses by the
`user that activates play, pause, and other playback and trick mode events that
`control media playback by the user.” Pet. 29−31 (citing Ex. 1004 ¶¶ 182,
`193, 268, 269, Fig. 6a; Ex. 1003 ¶¶ 90−92).
`In connection with Element 1e (“analyzing content associated with the
`media playback”), Petitioner explains that Santangelo teaches selecting
`advertisements based on the content of the media being played. Pet. 31−33
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`(citing Ex. 1004 ¶¶ 119, 186 (describing selecting content for an
`advertisement playlist based on “genre of the selected primary content”),
`195, 244−247, Fig. 6a; Ex. 1003 ¶¶ 87−89, 93−99).
`For Element 1f (“retrieving an advertisement rule associated with the
`user”), Petitioner explains that Santangelo teaches using business or
`operational rules associated with the user for controlling the selection and
`insertion of advertisements. Pet. 33−36 (citing Ex. 1004 ¶¶ 185, 186, 195
`(the content management entities select an advertisement playlist based on
`what is known about the subscriber, such as demographic, psychographic,
`firmographic, geographic and/or behavioral variables), 245, 272−274 (“the
`business/operational rules can be used to dynamically (or manually) control
`the selection and/or insertion of secondary content”), 281−284; Ex. 1003
`¶¶ 87−89, 100−106).
`As to Element 1g (“queueing user tailored advertisements based on
`the analyzed content and the advertisement rule”), Petitioner explains that
`Santangelo teaches “generating a secondary content playlist that is ready to
`be used, based on analyzed characteristics and the advertisement rule” as
`discussed for Element 1f. Pet. 36−38 (citing Ex. 1003 ¶¶ 107−110).
`According to Petitioner, Santangelo teaches that the secondary content
`playlist is generated at step 624 before any secondary content is inserted in
`response to a pause at step 638 and presented to the user, as shown in
`Figure 6a of Santangelo (reproduced above). Id. (citing Ex. 1004 ¶¶ 186,
`197, 198, 200, Fig. 6a). Mr. Gray testifies that a person of ordinary skill in
`the art would have understood that “Santangelo’s teaching of generating a
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`playlist of advertisements that are ready and waiting
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