`
`
`
`
`Paper 13
`Filed: November 21, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`NETFLIX, INC.,
`PETITIONER,
`
`v.
`
`GOTV STREAMING, LLC,
`PATENT OWNER.
`
`
`
`CASE IPR2023-00757
`PATENT 8,989,715
`
`
`
`
`
`
`
`PATENT OWNER’S REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`

`

`IPR2023-00757
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`
`
`Patent 8,989,715
`
`TABLE OF CONTENTS
`TABLE OF AUTHORITIES .................................................................................... ii
`CURRENT EXHIBIT LIST .................................................................................... iii
`I.
`INTRODUCTION ........................................................................................... 1
`II.
`RELIEF REQUESTED AND BASIS FOR ITS
`ENTITLEMENT .............................................................................................. 2
`III. LEGAL STANDARD ..................................................................................... 2
`IV. NEW EVIDENCE FOR THE BOARD’S CONSIDERATION ..................... 4
`V. GOOD CAUSE FOR NEW EVIDENCE ........................................................ 7
`VI. MATTERS THE BOARD MISAPPREHENDED OR
`OVERLOOKED AND THE PLACE WHERE EACH
`MATTER WAS PREVIOUSLY ADDRESSED IN A REPLY ................... 10
`VII. THE PARTIES CLEARLY CONTESTED THAT THE
`APPLICATION MUST RUN ON THE SERVER, AND
`PETITIONER’S CONCESSION THAT IT DOES UPENDS
`THE BASIS FOR THE BOARD’S INSTITUTION DECISION ................. 10
`VIII. CONCLUSION .............................................................................................. 15
`
`
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`IPR2023-00757
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`Patent 8,989,715
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`TABLE OF AUTHORITIES
`
`Cases
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019-11 (PTAB Mar. 20, 2020) (precedential) ........................... 14, 15
`Canadian Solar Inc. v. The Solaria Corp.,
`IPR2021-00095-17 (PTAB Sept. 24, 2021) ........................................................... 3
`Conopco, Inc. v. Procter & Gamble Co.,
`IPR2014-00506-25 (PTAB Dec. 10, 2014) (informative) ..................................... 2
`Facebook, Inc. v. Sound View Innovations,
` IPR2017-00998-13 (PTAB Sept. 5, 2017) ............................................................ 7
`Facebook, Inc. v. Sound View Innovations,
`IPR2017-01003-14 (PTAB Sept. 1, 2017) ........................................................ 13
`Ford Motor Co. v. MIT,
`IPR2021-00341-17 (PTAB Nov. 21, 2022) ........................................................... 3
`GTNX, Inc. v. INTTRA, Inc.,
`789 F.3d 1309 (Fed. Cir. 2015) .............................................................................. 3
`OpenSky Indus., LLC v. VLSI Tech. LLC,
`IPR2021-01064-102 (Oct. 4, 2022) (precedential) .................................................. 2
`Resmed Corp. v. Cleaveland Med. Devices Inc.,
`IPR2023-00565-13 (PTAB Sept. 25, 2023) ...................................................... 14
`Samsung Elecs. Co. v. Smart Mobile Techs. LLC,
`IPR2022-01248-13 (PTAB Jan. 24, 2023) ............................................................. 6
`Vector Flow, Inc. v. HID Global Corp.,
`IPR2023-00353-11 (PTAB Aug. 10, 2023) (Director Review) .........................3, 9
`Rules
`37 C.F.R. § 42.11(a) ................................................................................................... 7
`37 C.F.R. § 42.51(b) .................................................................................................. 8
`37 C.F.R. § 42.71(c) ................................................................................................... 2
`37 C.F.R. § 42.71(d) .................................................................................................. 3
`Other Authorities
`Consolidated Trial Practice Guide (Nov. 2019) ....................................................3, 8
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`IPR2023-00757
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`Patent 8,989,715
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`CURRENT EXHIBIT LIST1
`
`1014
`
`No. Brief Description
`1001 U.S. Patent No. 8,989,715
`1002
`Expert Declaration of Ben Bederson (“Bederson”)
`1003 Curriculum Vitae of Benjamin B. Bederson, Ph.D.
`1004
`File History of U.S. Patent No. 8,989,715
`1005
`File History of U.S. Patent No. 8,478,245
`1006 U.S. Patent Application Publication No. 2007/0150617 (“Hariki”)
`1007 U.S. Patent Application Publication No. 2003/0023755 (“Harris”)
`1008 U.S. Patent No. 7,447,486 (“Tamura”)
`1009 U.S. Patent No. 6,996,627 (“Carden”)
`1010 U.S. Patent No. 6,669,564 (“Young”)
`1011 U.S. Patent No. 6,732,183 (“Graham”)
`1012 U.S. Patent No. 6,507,727 (“Henrick”)
`1013 Webpage excerpt from Computer History Museum at
`https://www.computerhistory.org/tdih/april/6/ (last accessed
`March 29, 2023)
`https://www.webdesignerdepot.com/2009/05/the-evolution-of-cell-
`phone-design-between-1983-2009/
`Excerpts from Dan R. Olsen, Jr., Developing user interfaces (1998)
`1015
`1016 Alok Sinha, Client-server computing, in Communications of the ACM,
`35, 7 (1992)
`Tim Berners-Lee, Robert Cailliau, Ari Luotonen, Henrik Frystyk
`Nielsen, and Arthur Secret, The World-Wide Web,
`Communications
`Eric Kasten, HTML: A Gentle Introduction, Linux Journal (July 1995),
`available at https://www.linuxjournal.com/article/1081
`1019 U.S. Patent Application Publication No. 2013/0124961 (“Linburn ”)
`
`1 Relevant portions of exhibits may be highlighted to help the Panel locate cited
`sections.
`
`1017
`
`1018
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`IPR2023-00757
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`Patent 8,989,715
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`No. Brief Description
`1020 U.S. Patent No. 8,111,326 (“Talwar”)
`1021 Order re Scheduling Conference, GoTV Streaming, LLC v. Netflix, Inc.,
`No. 2:22-cv-07556 (C.D. Cal. Feb. 13, 2023) (Doc. 61)
`1022 Complaint in GoTV Streaming, LLC v. Netflix, Inc., No. 2:22-cv-
`07556-RGK-SHK (C.D. Cal. Oct. 17, 2022) (Doc. 1)
`1023 Netflix’s Memorandum in Opposition to GoTv Streaming, LLC’s
`Motion for Judgment as a Matter of Law, No. 2:22-cv- 07556-
`RGK-SHK (C.D. Cal. Oct. 26, 2023) (Doc. 406)
`2001 CAMPBELL-KELLY ET AL., Mainframes to Smartphones: A History of
`the International Computer Industry, Ch. 11 (Harvard Univ.
`Press 2015)
`2002 GALAZZO, Timeline from 1G to 5G: A Brief History on Cell Phones
`(Sept. 21, 2020), available at https://www.cengn.ca/information-
`centre/innovation/timeline-from-1g-to-5g-a-brief-history-on-cell-
`phones/
`2003 Cingular MEdia Mall Games and Motorola Page (March 23, 2006),
`available at
`https://web.archive.org/web/20060323054853/http://www-
`xl.cingularextras.com/fuel/enduser/portal/endUserHTMLDir?c1=
`3&dc=0 and
`https://web.archive.org/web/20060323054841/http://www-
`xl.cingularextras.com/fuel/enduser/portal/endUserHTMLSelectP
`hone?makeName=motorola&dc=0
`Suite, Definition & Meaning - Merriam-Webster, available at
`https://www.merriam-webster.com/dictionary/suite
`2005 U.S. Patent No. 7,380,205 to Bezrukov et al.
`2006
`TUTENEL ET AL., Rule-Based Layout Solving and Its Application to
`Procedural Interior Generation, Netherlands Organization for
`Scientific Research and the Netherlands ICT Research and
`Innovation Authority (2009)
`2007 KRÖNER, Adaptive Layout of Dynamic Web Pages, Deutsches
`Forschungszentrum fur Künstliche Intelligenz GmH (2000)
`
`2004
`
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`IPR2023-00757
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`Patent 8,989,715
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`No. Brief Description
`2008
`Scheduling Order, GoTV Streaming, LLC v. Netflix, Inc., No. 2:22-cv-
`07556 (C.D. Cal. Feb 14, 2023) (Doc. 62)
`2009 Klausner Decisions re Motions to Stay Pending IPR, Docket Navigator
`(generated June 8, 2023)
`2010 Order Granting Stipulated Stay Pending IPR, Flexstent, LLC v. Abbott
`Labs., No. 5-18-cv-02479 (C.D. Cal. Oct. 18, 2019) (Doc.77)
`2011 Order Denying Renewed Stipulated Stay Pending IPR, Shenzhen
`Gooloo E-Commerce Co., Ltd. v. Pilot, Inc., No. 2-22-cv-02219
`(C.D. Cal. Jan. 12, 2023) (Doc. 95)
`2012 Renewed Joint Stipulation to Stay Case Pending Resolution of Inter
`Partes Reviews of ’653 Patent, Shenzhen Gooloo E-Commerce
`Co., Ltd. v. Pilot, Inc., No. 2-22-cv-02219 (C.D. Cal. Jan. 11,
`2023) (Doc. 94)
`2013 Klausner Time to Trial in Patent Cases, Docket Navigator (generated
`June 8, 2023)
`2014 U.S. District Court—Judicial Caseload Profile for Central California
`from Federal Court Management Statistics–Profiles
`(Mar. 31, 2023), available at
`https://www.uscourts.gov/sites/default/files/data_tables/fcms_na
`_distprofile0331.2023.pdf
`2015 Order Denying Netflix’s Motions, including for Invalidity under § 101,
`GoTV Streaming, LLC v. Netflix, Inc., No. 2:22-cv-07556 (C.D.
`Cal. May 24, 2023) (Doc. 109)
`2016 Order re Scheduling Conference, GoTV Streaming, LLC v. Netflix, Inc.,
`No. 2:22-cv-07556 (C.D. Cal. Feb. 13, 2023) (Doc. 61)
`Excerpts from Redacted and De-designated Corrected Declaration of
`Dr. John Villasenor Regarding Invalidity of U.S. Patent Nos.
`8,989,715; 8,478,245; and 8,103,865, GoTV Streaming, LLC v.
`Netflix, Inc., No. 2:22-cv-07556 (C.D. Cal. served June 23, 2023)
`2018 Declaration of Joshua S. Wyde regarding authentication of exhibits
`(Aug. 10, 2023)
`
`2017
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`IPR2023-00757
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`Patent 8,989,715
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`2020
`
`No. Brief Description
`2019
`Excerpts from Trial Transcript Day 2, GoTV Streaming, LLC v. Netflix,
`Inc., No. 2:22-cv-07556 (C.D. Cal. Oct. 18, 2023)
`Excerpts from Trial Transcript Day 3, GoTV Streaming, LLC v. Netflix,
`Inc., No. 2:22-cv-07556 (C.D. Cal. Oct. 19, 2023)
`Excerpts from Defendant Netflix, Inc.’s Notice of Motion and Rule
`50(a) Motion for Judgment as a Matter of Law, GoTV Streaming,
`LLC v. Netflix, Inc., No. 2:22-cv-07556 (C.D. Cal. Oct. 19, 2023)
`(Dkt. 389)
`
`2021
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`IPR2023-00757
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`I.
`
`INTRODUCTION
`
`
`
`Patent 8,989,715
`
`Petitioner materially changed its claim construction position during the
`
`District Court trial a little over two weeks before the Institution Decision, and now
`
`agrees with Patent Owner that the claims require the application to be executing
`
`remotely on the server. Petitioner’s new construction cannot support that Hariki’s
`
`web browser—the only “application” the Board found met all the limitations for
`
`claims 1–2, 4–10, and 12–16—satisfies the claim limitations. Or, at a minimum,
`
`Petitioner’s new claim construction position introduces enough of a question such
`
`that there is not compelling evidence of unpatentability.
`
`As explained herein, Petitioner’s adoption of a diametrically opposed claim
`
`construction from the one Petitioner required for its arguments is a factual change of
`
`status that the Board can—and should—consider in deciding this request for
`
`rehearing. There is good cause for the Board to consider this new evidence, at least
`
`because: (1) this inconsistent position is the type that the rules say should be
`
`considered as a matter of course; (2) Petitioner’s about-face did not occur until after
`
`Patent Owner filed its Preliminary Response; and (3) the material change goes to the
`
`very heart of both the discretionary denial and merits decision.
`
`While Patent Owner believes the Petition should be denied because
`
`Petitioner’s change of position precludes a factual finding supported by substantial
`
`evidence—i.e., that Hariki’s web browser could be the claimed application—the
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`IPR2023-00757
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`Patent 8,989,715
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`Board should at least find the weakened Petition (in light of the agreed-upon claim
`
`construction) cannot meet the much higher compelling evidence standard, and
`
`reverse the discretionary denial decision.
`
`II. RELIEF REQUESTED AND BASIS FOR ITS ENTITLEMENT
`Patent Owner requests that the Board reverse its decision instituting trial.
`
`See Paper 11 (“Inst. Dec.”). The basis for this relief is that the only “application”
`
`the Board identified as meeting the limitations of independent claims 1 and 9 (and
`
`dependent claims 2, 4–8, 10, and 12–16) is Hariki’s “web browser,” id. 65; however,
`
`the web browser in Hariki is not running on a server, remote from the “wireless
`
`device,” as both Parties agree is required by the claims. Relatedly, there is at least a
`
`question as to whether a claim is obvious, so the Board should reverse its compelling
`
`evidence finding and discretionarily deny the Petition. See OpenSky Indus., LLC v.
`
`VLSI Tech. LLC, IPR2021-01064-102, at 49 (Oct. 4, 2022) (precedential).
`
`III. LEGAL STANDARD
`When deciding a request for rehearing, the Board will reverse if it finds an
`
`“abuse of discretion.” 37 C.F.R. § 42.71(c). “An abuse of discretion may arise if
`
`the decision is based on an erroneous interpretation of law, if a factual finding is not
`
`supported by substantial evidence, or if an unreasonable judgment is made in
`
`weighing relevant factors.” Conopco, Inc. v. Procter & Gamble Co., IPR2014-
`
`00506-25, at 2–3 (PTAB Dec. 10, 2014) (informative) (citations omitted).
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`Patent 8,989,715
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`Additionally, the Board has inherent authority to reverse an institution
`
`decision based upon changed facts. Canadian Solar Inc. v. The Solaria Corp.,
`
`IPR2021-00095-17, at 7–8 (PTAB Sept. 24, 2021) (citing GTNX, Inc. v. INTTRA,
`
`Inc., 789 F.3d 1309, 1313 (Fed. Cir. 2015)). A factual change in a parallel
`
`proceeding, such as a party’s complete reversal of a claim construction, is a change
`
`of status that the Board should consider. Director Review, Vector Flow, Inc. v. HID
`
`Global Corp., IPR2023-00353-11, at 2 & 7 (PTAB Aug. 10, 2023) (reversing
`
`institution decision and mandating the Board allow additional briefing regarding
`
`changes in the parallel district court proceeding, including a party’s inconsistent
`
`claim construction); see also Ford Motor Co. v. MIT, IPR2021-00341-17, at 2–3
`
`(PTAB Nov. 21, 2022) (granting request for rehearing upon claim construction
`
`reversal in parallel litigation); Consolidated Trial Practice Guide (“TPG”), 48
`
`(Nov. 2019) (“The Board, in its claim construction determinations, will consider
`
`statements regarding claim construction made . . . by a petitioner filed in other
`
`proceedings.”).
`
`“The burden of showing a decision should be modified lies with the party
`
`challenging the decision.” 37 C.F.R. § 42.71(d).
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`Patent 8,989,715
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`IV. NEW EVIDENCE FOR THE BOARD’S CONSIDERATION2
`In the Petition, Petitioner said “POSITAs would have understood that the
`
`‘application’ is not limited to one residing only on a client or only on a server.”
`
`Pet. at 36 n.10 (emphasis added). Subsequent, during trial, Petitioner and its expert
`
`materially changed its claim construction position, arguing that the claims do require
`
`that the application execute exclusively on a server.3 Ex. 2019, Trial Testimony of
`
`Netflix’s Technical Expert, 209:12–14 (“The claimed application—it’s very clear in
`
`the claims in the patent—the application has to be executing on the server.”); id.
`
`216:8–10 (“So the patents, the asserted claims require an application that’s executing
`
`on a server.”); id. 222:10–12 (“So it’s important to emphasize that the claims require
`
`they recite an application, and that application has to be executing on the server.”);
`
`id. 225:11–12 (“Well, according to the patent, the application is—needs to be
`
`executing on the server.”); id. 228:6–9 (“Yeah. The—it has to be for an application,
`
`the claimed application. And the claimed application in the patents has to be
`
`executing on the server.”); id. 229:4–6 (“And that application has to be the same
`
`application that I discussed before, the one that’s executing on the server.”);
`
`
`2 The Board authorized Patent Owner to submit the cited exhibits and to argue that
`good cause exists for admitting the new evidence by email on November 16, 2023.
`3 During trial, Patent Owner asserted Claim 4 of the ’715 Patent, which is
`dependent on Claim 1.
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`Ex. 2020, Netflix Closing Arguments, 42:12–13 (“[R]emember, the application in
`
`the claims is what’s on the server.”); id. 46:10–17 (“[F]ocus[ing] on where that
`
`application lives . . . Again, Dr. Malek and Dr. Villasenor both agree that the
`
`application lives on the server, on the back end. No dispute about that.”).
`
`Netflix and its expert explicitly differentiated the claimed application from
`
`anything that could be called an application on the wireless device:
`
`Q. The device has its own software application on it,
`correct?
`
`A. It has software on it.
`
`Q. Is that software not an application?
`
`A. Well, I just want to be careful to make sure that the
`word application is not misused. It is not the claimed
`application. . . .
`
`Q. So you have an application, claimed application on
`the server, correct?
`
`A. There must be an application on the server. That’s
`right.
`
`Q. Then the app—a different application on the wireless
`device renders a user display, correct?
`
`A. Well, it renders a display that shows the application
`that’s running on the server, yeah.”
`
`Ex. 2019, 243:4–24; see also Ex. 2020, 39:7–13 (“So remember, I showed you
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`the evidence that both experts agree that the application that’s in the claim is a
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`back-end application. In fact, you remember I asked Dr. Malek: If I download
`
`the Netflix app on my phone, is that the application in the claim? He said no. He
`
`agreed with me. Both experts agree. The application must be on the back end.”).
`
`Then, in a preview of the claim construction that Petitioner will argue to this
`
`agency’s reviewing court on appeal, Petitioner filed a Motion for Judgment as a
`
`Matter of Law that there is no infringement of the ’715 Patent because “[t]he
`
`‘application’ required by the claims is on the server.” Ex. 2021, p. 6, ll. 2–3 (citing
`
`Ex. 2019 209:12–14, 216:8–9, 222:7–16).
`
`In short, there is no question that Petitioner has changed its position and now
`
`agrees with Patent Owner that “it’s very clear in the claims in the patent—the
`
`application has to be executing on the server.” Ex. 2019, 209:12–14. The Institution
`
`Decision cited a routine decision, Samsung Elecs. Co. v. Smart Mobile Techs. LLC,
`
`IPR2022-01248-13, at 58 (PTAB Jan. 24, 2023), for the proposition that a
`
`petitioner can advance “different constructions” in District Court and before the
`
`Board. Inst. Dec. 105. However, Samsung merely permitted a petitioner to
`
`maintain that “no formal claim construction” was necessary instead of using the
`
`specific construction proposed in district court, or that Petitioner could adopt a
`
`construction “advanced by a patent owner that is seeking to broadly construe the
`
`claims to prove infringement,” which is not being done here. IPR2022-01248-
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`13, at 58. Nothing in Samsung permits a petitioner to advance a construction
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`that is diametrically opposite from the construction it advanced during
`
`trial. A Petitioner cannot reasonably state that a claim requires X in the district
`
`court and, simultaneously, state that the same claim means does not require X in
`
`the PTAB. Offering such contradictory positions necessitates that is being
`
`untruthful4 or advancing a position with which it expressly disagrees. Hologic,
`
`Inc. v. Enzo Life Sciences, Inc., IPR2018-00019-21, at 2 (PTAB Nov. 28, 2018)
`
`(finding a petitioner may not “satisfy its obligations under our rules by
`
`conducting unpatentability analysis only under a claim construction with
`
`which it expressly disagrees”); CommScope Techs. LLC v. Dali Wireless Inc., 10
`
`F.4th 1289, 1299 (Fed. Cir. 2021) (prohibiting “simultaneously argu[ing]”
`
`“incongru[ous] . . . claim[] requirements for infringement versus invalidity”).
`
`V.
`
`GOOD CAUSE FOR NEW EVIDENCE
`
`There is good cause to allow Patent Owner to submit new evidence. First,
`
`Petitioner would have been obligated to provide this relevant, non-privileged,
`
`information inconsistent with its position in its Petition had it existed at the time the
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`4 “Petitioner’s failure to inform [the PTAB] of its differing claim construction
`arguments before the district court raises the specter of lack of candor.” Facebook,
`Inc. v. Sound View Innovations, IPR2017-00998-13, at 17–18 (PTAB Sept. 5, 2017)
`(citing 37 C.F.R. § 42.11(a)).
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`Petition was filed. TPG 47 (citing 37 C.F.R. § 42.51(b)). This rule demonstrates
`
`that the Board has a policy that inconsistent evidence—in this case created by
`
`Petitioner itself—is important to a fair proceeding, and Petitioner is not harmed by
`
`admitting the evidence. This supports finding good cause.
`
`Second, the evidence goes to the heart of the related substantive and
`
`procedural matters that the Board relied upon in making its Institution Decision as
`
`described above and below. The highly relevant nature of the evidence—that the
`
`Board should have when reconsidering its decision—also supports good cause.
`
`Third, the new evidence was not available when Patent Owner filed its
`
`Preliminary Response, so Patent Owner could not have included the evidence in its
`
`prior filing. That Patent Owner did not choose to omit evidence available to it also
`
`marshals for finding good cause.
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`Fourth, Patent Owner did not delay in bringing its request. Patent Owner
`
`sought a call for permission to include new evidence with the Board approximately
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`8 days after the Institution Decision was issued, and the Board instituted only 12
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`business days after the trial. This is reasonable given that Patent Owner needed time
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`to appreciate the change vis-à-vis the Petition, analyze the Institution Decision,
`
`research the caselaw to determine whether there was a strong basis to bring a request,
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`and to meet and confer with opposing counsel. The lack of delay also militates for
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`a good cause finding.
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`Patent 8,989,715
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`Fifth, the evidence is minimal and focused. Patent Owner is only providing
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`and citing a few pages from the trial transcript, and two lines from Petitioner’s post-
`
`trial motion, which collectively and unambiguously show that Petitioner has
`
`changed its position. As such, it is not burdensome to consider the evidence, or
`
`evidence that is open to interpretation—again supporting good cause.
`
`Indeed, the material change in Petitioner’s claim construction position—
`
`between the filing of the Preliminary Response and the Institution Decision—is the
`
`type of factual change that warranted “good cause” to present new evidence in a
`
`similar case, where “Petitioner sought authorization to file a reply addressing the
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`Patent Owner’s arguments for discretionary denial and alleged inconsistencies in
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`claim construction positions taken in the pending litigation.” Vector Flow, IPR2023-
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`00353-11, at 2. The Director reversed the institution decision and ordered the Panel
`
`to allow additional briefing because “[t]he Board’s reasoning in denying Petitioner’s
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`request to file a reply did not take into account the change in status of the parallel
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`district court proceeding that occurred between the Petition and the Preliminary
`
`Response.” Id. 7. In a similar manner, the changed factual circumstances that
`
`occurred after the Preliminary Response was filed and before the Institution
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`Decision was issued demonstrate good cause to present new evidence in this request
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`for rehearing.
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`IPR2023-00757
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`Patent 8,989,715
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`VI. MATTERS THE BOARD MISAPPREHENDED OR OVERLOOKED
`AND THE PLACE WHERE EACH MATTER WAS PREVIOUSLY
`ADDRESSED IN A REPLY
`
`While the Board could have taken judicial notice of the Petitioner’s change of
`
`position as it did with other activities in the District Court, see, e.g., Dec. Inst. 22
`
`(citing Ex. 3003, Jury Verdict); see also Ex. 3004 (Order re MSJ); Nov. 2, 2023
`
`Email from PTAB (explaining that “the Board may take judicial notice of
`
`information available from those [district court] docket entries,” such as filed
`
`Ex. 1023, Netflix’s Memorandum in Opposition to GoTV Streaming, LLC’s Motion
`
`for Judgment as a Matter of Law), the Board could not have overlooked Petitioner’s
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`change of position in the Petition or Preliminary Response because the reversal did
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`not occur until after those documents were filed. Patent Owner is asking the Panel
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`to base its decision upon the after-arising factual changes as allowed under its
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`inherent authority as explained above.
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`VII. THE PARTIES CLEARLY CONTESTED THAT THE APPLICATION
`MUST RUN ON THE SERVER, AND PETITIONER’S CONCESSION
`THAT IT DOES UPENDS THE BASIS FOR THE BOARD’S
`INSTITUTION DECISION
`
`The claim construction issue of whether an application must be remotely
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`executing on a server as Patent Owner contended, or whether the claimed application
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`“is not limited to one residing . . . only on a server” as Petitioner argued, Pet. at
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`36 n.10, was clearly at issue for claims 1–2, 4–10, and 12–16. Patent Owner said
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`of Petitioner’s construction: “[t]his is incorrect.” Paper 8 (“POPR”), at 9 n.3.
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`IPR2023-00757
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`
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`Patent 8,989,715
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`Petitioner agreed Hariki’s browsers run on the client. See, e.g., Pet. at 10
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`(“Web browsers are client applications.”), 39 (“[T]he application (e.g., a web
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`browser) [is] executed on the mobile device.”), 43 (“[T]he mobile device ‘executes’
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`the application, i.e., web browser.”). Petitioner then relied upon this claim
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`construction by identifying “the web browser” running on the wireless devices
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`as the application. See, e.g., Pet. 36.
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`The Board agreed with Petitioner that “Hariki teaches ‘an application’ on a
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`mobile device, i.e., a web browser program.” Inst. Dec. 65 (emphasis added).
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`From the very first page of the Preliminary Response, Patent Owner argued
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`that the claims only covered “a remotely executing application on a wireless
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`device.” POPR, at 1 (emphasis added). Patent Owner noted that, at the time of the
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`patent, “wireless devices generally ran ‘application[s] locally,’” id. at 7 (citing
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`Ex. 1001, at 2:3–5), that these local applications had problems that the inventor
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`sought to overcome, id. at 7–8, and, therefore, the ’715 Patent’s solution was to run
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`“applications centrally,” id. at 8. Patent Owner specifically noted that “[t]he Patent-
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`at-Issue’s applications are ‘stored’ and ‘executed’ ‘on the remote server,’ in contrast
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`to traditional applications that were downloaded and locally run on wireless
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`devices.” Id. at 9 (citing Ex. 1001, at 2:37–38; 2:63–64; 3:8–9; 5:54–56; 6:6–7;
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`16:44–45). Patent Owner provided Figure 5 from the ’715 Patent to show that the
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`application is located on the server, and explained that “the server ‘locate[s] and
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`IPR2023-00757
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`Patent 8,989,715
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`execute[s] the requested application.’” Id. at 10 (citing Ex. 1001, at 16:39–42 &
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`Fig. 5). Patent Owner described the remote applications’ compiled pages as
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`“sent to the wireless client device.” Id. at 12 (citing Ex. 1001, at 18:11–14).
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`In contrast, Patent Owner noted that the “software on the wireless devices
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`that interacts with the server,” and renders the remotely running application, was
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`called the “client” by the ’715 Patent. Id. at 14–15.
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`For limitations [1c]/[9c], Patent Owner argued that “Hariki does not speak
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`of the browser running remotely from a wireless device and having its interface,
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`including any ‘pages,’ sent to a device” or that the “locally running browser and
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`its pages were transmitted from server 120.” Id. at 35. Rather, Patent Owner
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`noted that Hariki, at best, intimated that the device manufacturers locally
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`installed the mobile device browser on the wireless device. Id. at 35 n.7. Patent
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`Owner argued that “[t]he web browser running on the wireless device in Hariki
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`may be analogous to the Patent-at-Issue’s client 210 that consumes pages of an
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`application but is not the claimed application.” Id. at 36.
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`For limitations [1d]/[9d], Patent Owner asserted that a browser could not
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`be the application that generates the identified compiled page content because
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`“[t]he requested application is executed on the server” and “that it is the server
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`that ‘produces dynamic or static pages’ ‘during execution of an application [on]
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`the server.’” Id. at 40 (citing Ex. 1001, at 3:4–9; 3:29–31).
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`IPR2023-00757
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`Patent 8,989,715
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`Petitioner anticipated the Patent Owner’s position that the application must be
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`remote, and implicitly conceded the web browser is not remote, by arguing “[t]o the
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`extent that the Patent Owner might contend that the ‘associated application’ must be
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`remote to the mobile device” . . . the UI content package w[as] associated also with
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`the web server.” Pet. 36–37 (emphasis added).
`
`Ultimately, the Board tacitly adopted Petitioner’s construction that the
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`claimed application “is not limited to one residing . . . only on a server,” because
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`the Board identified Hariki’s “web browser”—that everyone agrees is solely
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`executing on wireless devices—as the “application” of claims for which the Board
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`found a likelihood of unpatentability, i.e., claims 1–2, 4–10, and 12–16. See, e.g.,
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`Inst. Dec., at 65 (“Hence, based on the current record, Petitioner establishes
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`sufficiently that Hariki teaches ‘an application’ on a mobile device, i.e., a web
`
`browser program . . . however, we disagree with Petitioner’s alternative assertion
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`that Hariki teaches ‘an application’ on a server.”).
`
`Given Petitioner’s concession during trial that the application must run on the
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`server, there is no longer substantial evidence to support a finding that Hariki’s web
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`browser is the claimed application. See Facebook, Inc. v. Sound View Innovations,
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`IPR2017-01003-14, at 22 (PTAB Sept. 1, 2017) (explaining that Petitioner’s
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`failure to “offer[] any explanation as to why now these terms may be interpreted
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`. . . [i]n light of [its expert’s] conflicting testimony and Petitioner’s reliance on
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`IPR2023-00757
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`Patent 8,989,715
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`that conflicting testimony [in District Court], we are not persuaded Petitioner
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`has established a reasonable likelihood of prevailing in its assertion that [a]
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`claim . . . would have been obvious”).
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`Finally, Petitioner’s prior polar opposite position from that in the related
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`litigation was also key to the procedural, Fintiv discretionary denial
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`determination. Patent Owner argued such inconsistent positions—though not
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`the location of the application, as Petitioner had not yet reversed its position—
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`should be considered when considering Factor 6 of Fintiv, POPR 65, for which
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`the Board said, “Patent Owner does not explain how Petitioner’s proposed
`
`explicit constructions for certain claim terms in the California case conflict with
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`how Petitioner applies those claim terms to the asserted references in this
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`proceeding.” Inst. Dec. 32. It is now clear that Petitioner’s construction that the
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`application must run on the server directly conflicts with Petitioner’s position
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`that a browser—that does not run on the server—can be the claimed application.
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`This conflict at least diminishes the Petition to the point where there is
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`insufficient basis to find the Petition meets the “substantial evidence” standard
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`to trump the other Fintiv factors that favor discretionary denial. See Resmed
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`Corp. v. Cleaveland Med. Devices Inc., IPR2023-00565-13, at 16–18 (PTAB
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`Sept. 25, 2023) (“Petitioner’s strategy [of asking us to review the unpatentability
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`arguments under a construction it already asserted in district court is wrong]
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`IPR2023-00757
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`
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`Patent 8,989,715
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`undermines its argument that the Petition presents a compelling unpatentability
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`challenge.”).
`
`VIII. CONCLUSION
`Regardless of whether the Board’s decision granting institution was
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`appropriate under the facts as they existed at the time, Petitioner now agrees with
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`Patent Owner’s position that the application must be running remotely on a server,
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`and this change in circumstances warrants rehearing of the Board’s decision based
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`on Hariki’s browser as the claimed application. Patent Owner requests that the
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`Board modify its earlier decision and exercise its Fintiv discretion to deny institution
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`or deny institution on the merits.
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`Dated: November 21, 2023
`
`
`
` Respectfully submitted,
` /Joshua S. Wyde/
`Joshua S. Wyde (Reg. No. 57,698)
`ALAVI & ANAIPAKOS PLLC
`609 Main Street, Suite 3200
`Houston, Texas 77002
`Tel: (713) 751–2365
`Fax: (713) 751–2341
`jwyde@aatriallaw.com
`Counsel for Patent Owner,
`GOTV STREAMING, LLC
`
`
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`IPR2023-00757
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`Patent 8,989,715
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`CERTIFICATE OF SERVICE
`The undersigned certifies that on the twenty-first day of November, 2023, a
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`complete and entire copy of the foregoing “PATENT OWNER’S REQUEST FOR
`
`REHEARING,” including exhibits, if any, was served on the date below on the
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`following counsel of record show