Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper:18
`Date: December 21, 2023
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`GOTV STREAMING, LLC,
`Patent Owner.
`____________
`
`IPR2023-00758
`Patent 8,478,245 B2
`____________
`
`
`
`
`Before RICHARD M. LEBOVITZ, BRIAN J. McNAMARA, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`AMUNDSON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Request on Rehearing of
`Decision Granting Institution of Inter Partes Review
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper:18
`Date: December 21, 2023
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`GOTV STREAMING, LLC,
`Patent Owner.
`____________
`
`IPR2023-00758
`Patent 8,478,245 B2
`____________
`
`
`
`
`Before RICHARD M. LEBOVITZ, BRIAN J. McNAMARA, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`AMUNDSON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Request on Rehearing of
`Decision Granting Institution of Inter Partes Review
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
`IPR2023-00758
`Patent 8,478,245 B2
`
`
`I. INTRODUCTION
`Netflix, Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–33 in U.S. Patent No. 8,478,245 B2 (Exhibit 1001,
`“the ’245 patent”) under 35 U.S.C. §§ 311–319. Paper 2 (“Pet.”). In the
`Petition, Petitioner contended that claims 1–33 are unpatentable under
`§ 103(a) as obvious over Hariki and Harris. 1,2 See Pet. 2, 24–82; 35 U.S.C.
`§ 103(a) (2006). Petitioner also contended that “the claims should be given
`their plain and ordinary meaning.” Pet. 18.
`GoTV Streaming, LLC (“Patent Owner”) filed a Preliminary
`Response. Paper 7 (“Prelim. Resp.”). In the Preliminary Response, Patent
`Owner disputed Petitioner’s unpatentability contentions for various reasons.
`See Prelim. Resp. 1–2, 20–52. Patent Owner did not propose an explicit
`construction for any claim language. See, e.g., id. at 6–14, 19–20.
`II. BACKGROUND
`In October 2023, the district court in GoTV Streaming, LLC v. Netflix,
`Inc., No. 2:22-cv-07556 in the Central District of California (the “California
`case”), conducted a jury trial. See Ex. 3001. The jury returned a verdict
`finding, among other things, that Petitioner did not infringe claim 16 in the
`’245 patent. Id. at 3.
`In early November 2023, after considering the submissions by the
`parties and the evidence of record in this proceeding, the Board instituted an
`
`
`1 See U.S. Patent Application Publication 2007/0150617 A1 (“Hariki”); and
`U.S. Patent Application Publication 2003/0023755 A1 (“Harris”).
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`125 Stat. 284 (2011), amended 35 U.S.C. § 103 effective March 16, 2013.
`Because the filing date of the challenged claims predates the AIA’s
`amendment to § 103, this decision refers to the pre-AIA version of § 103.
`2
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`IPR2023-00758
`Patent 8,478,245 B2
`
`inter partes review of claims 1–33 in the ’245 patent. Paper 10 (“Institution
`Decision” or “Inst. Dec.”). Among other things, the Board determined that
`Petitioner:
`• demonstrated a reasonable likelihood of proving that
`claims 1–3, 5–14, and 16–22 are unpatentable under
`§ 103(a) as obvious over Hariki and Harris;
`• did not demonstrate a reasonable likelihood of proving
`that claims 4, 15, and 23–33 are unpatentable under
`§ 103(a) as obvious over Hariki and Harris; and
`• presented “compelling evidence” of unpatentability for
`at least independent claims 1 and 12.
`Inst. Dec. 94–98, 102, 104–05.
`In the Institution Decision, the Board determined that “no claim term
`requires an explicit construction” to decide the issues presented at that stage
`of the proceeding. Inst. Dec. 32.
`In late November 2023, Patent Owner requested rehearing of the
`Institution Decision based on an alleged change in Petitioner’s claim-
`construction position in the California case that occurred during the October
`2023 trial. See Paper 13 (“Req. Reh’g”). With its rehearing request, Patent
`Owner submitted the following new evidence:
`• excerpts from the October 18, 2023, Day 2 Trial
`Transcript (Exhibit 2019);
`• excerpts from the October 19, 2023, Day 3 Trial
`Transcript (Exhibit 2020); and
`• excerpts from the October 19, 2023, Memorandum in
`Support of Netflix’s Rule 50(a) Motion for Judgment
`as a Matter of Law (Exhibit 2021).
`See Exs. 2019–2021.
`
`3
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`IPR2023-00758
`Patent 8,478,245 B2
`
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`III. STANDARD OF REVIEW
`“The burden of showing a decision should be modified lies with the
`party challenging the decision.” 37 C.F.R. § 42.71(d) (2023). In a rehearing
`request, the party challenging the decision “must specifically identify”
`(1) “all matters the party believes the Board misapprehended or overlooked”
`and (2) “the place where each matter was previously addressed” in an earlier
`submission. Id.; see Consolidated Trial Practice Guide at 90. 3
`“A rehearing request is not an opportunity for the requesting party
`to reargue its case or merely to express disagreement with the underlying
`decision.” MicroSurgical Tech., Inc. v. Regents of Univ. of Colo.,
`PGR2021-00026, Paper 14 at 2 (PTAB Aug. 12, 2021). “Nor is it an
`opportunity for the moving party to present new arguments that were not
`in its original submissions.” Id.
`“When rehearing a decision on petition, a panel will review the
`decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “An abuse of
`discretion occurs if a decision is based on an erroneous interpretation of
`law, if a factual finding is not supported by substantial evidence, or if the
`decision represents an unreasonable judgment in weighing relevant factors.”
`Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).
`IV. ANALYSIS
`In its rehearing request, Patent Owner asserts that Petitioner:
`(1)
`“materially changed its claim construction position”
`during the October 2023 trial;
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`4
`
`
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`IPR2023-00758
`Patent 8,478,245 B2
`
`
`(2)
`
`(3)
`
`“now agrees with Patent Owner that the claims require
`the application to be executing remotely on the server”;
`and
`“explicitly differentiated the claimed application from
`anything that could be called an application on the
`wireless device.”
`Req. Reh’g 1, 4–6, 9–10, 15.
`Patent Owner “believes the Petition should be denied because
`Petitioner’s change of position precludes a factual finding supported by
`substantial evidence.” Req. Reh’g 1; see id. at 13–14. Further, Patent
`Owner asserts that “the Board should at least find the weakened Petition (in
`light of the agreed-upon claim construction) cannot meet” the “compelling
`evidence” standard. Id. at 1–2; see id. at 14–15. Patent Owner “requests
`that the Board modify its earlier decision and exercise its Fintiv discretion to
`deny institution or deny institution on the merits.” Id. at 15.
`Patent Owner argues that “[t]here is good cause to allow Patent
`Owner to submit” the new evidence from the October 2023 trial because,
`among other things, “the evidence goes to the heart of the related substantive
`and procedural matters that the Board relied upon in making its Institution
`Decision.” Req. Reh’g 7–8. According to Patent Owner, “the changed
`factual circumstances that occurred after the Preliminary Response was filed
`and before the Institution Decision was issued demonstrate good cause to
`present” the new evidence. Id. at 9–10.
`As Patent Owner acknowledges, however, Petitioner asserted in the
`Petition that an ordinarily skilled artisan would have understood for claim 1
`that “the ‘application’ is not limited to one residing only on a client or only
`on a server.” Pet. 36 n.10 (citing Ex. 1002 ¶ 127); see Req. Reh’g 4, 10–11
`
`5
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`IPR2023-00758
`Patent 8,478,245 B2
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`(citing Pet. 36 n.10). As support for that assertion, Petitioner quoted claim 4
`that depends directly from claim 1 and requires “said application operating
`on a remote server.” Pet. 36 n.10; see Ex. 1001, 21:8–10. After quoting
`claim 4, Petitioner asserted that an ordinarily skilled artisan “would have
`understood that the ‘application’ in claim 1 could reside anywhere, for
`example on a client or on a server.” Pet. 36 n.10 (citing Ex. 1002 ¶ 127).
`Petitioner’s assertions in the Petition about claim scope comport with
`the principle that “an independent claim is broader than a claim that depends
`from it.” See Littelfuse, Inc. v. Mersen USA EP Corp., 29 F.4th 1376, 1380
`(Fed. Cir. 2022); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911
`(Fed. Cir. 2004) (“[T]he presence of a dependent claim that adds a particular
`limitation raises a presumption that the limitation in question is not found in
`the independent claim.”); 35 U.S.C. § 112 ¶ 4 (2006) (“a claim in dependent
`form shall contain a reference to a claim previously set forth and then
`specify a further limitation of the subject matter claimed”); Pet. 36 n.10.
`Petitioner’s assertions in the Petition about claim scope also comport with
`the principle that interpretations rendering some portion of the claim
`language “void, meaningless, or superfluous” are “highly disfavored.” See
`Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 810 (Fed. Cir. 2021); Pet.
`36 n.10.
`In contrast to Petitioner’s position in the Petition, Patent Owner’s
`position that “the claims require the application to be executing remotely on
`the server” would render claim 4 “void, meaningless, or superfluous.” See
`Req. Reh’g 1; see id. at 10, 15; Ex. 1001, 20:41–64 (claim 1), 21:8–10
`(claim 4). Based on the current record, Patent Owner does not identify
`anything in the intrinsic evidence (the patent’s claim language, written
`
`6
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`IPR2023-00758
`Patent 8,478,245 B2
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`description, and prosecution history) warranting a contrary conclusion. See,
`e.g., Prelim. Resp. 6–14, 8 n.4, 19–50; Req. Reh’g 10–13.
`In the Preliminary Response, Patent Owner cited a few portions of
`the written description to show that the claimed “application” may “be
`executing remotely on the server.” Prelim. Resp. 8 (citing Ex. 1001,
`2:40–41, 2:66–67, 3:11–12, 5:58–60, 6:10–11, 16:45–46). But the cited
`portions do not indicate that the claimed “application” must “be executing
`remotely on the server.” See Ex. 1001, 2:40–41, 2:66–67, 3:11–12, 5:58–60,
`6:10–11, 16:45–46. Federal Circuit case law “counsels against incorporating
`a feature of a preferred embodiment into the claims.” Arthrex, Inc. v. Smith
`& Nephew, Inc., 935 F.3d 1319, 1330 (Fed. Cir. 2019).
`In the Preliminary Response, Patent Owner did not identify—or even
`allege—a clear disavowal of claim scope. See, e.g., Prelim. Resp. 6–14,
`8 n.4, 19–50. Nor did Patent Owner allege that prosecution-history
`disclaimer limits claim scope. See, e.g., id. at 6–14, 8 n.4, 19–50.
`Consistent with Petitioner’s position in the Petition, the Federal
`Circuit “strives to reach a claim construction that does not render claim
`language in dependent claims meaningless.” See Ortho-McNeil Pharm., Inc.
`v. Mylan Lab’ys, Inc., 520 F.3d 1358, 1362 (Fed. Cir. 2008). Additionally,
`the district court did not construe the claims according to Patent Owner’s
`position. See Ex. 3002, 2–10.
`As for the new evidence from the October 2023 trial, it is unclear
`from that evidence whether Petitioner advocated a claim construction
`or whether Petitioner attempted to identify flaws in Patent Owner’s
`infringement position based on a claim construction originating from Patent
`Owner. See Ex. 2019, 2–8; Ex. 2020, 2–4; Ex. 2021, 3.
`
`7
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`IPR2023-00758
`Patent 8,478,245 B2
`
`
`As for inconsistencies in a party’s claim-construction positions, the
`Institution Decision explained that “there is no requirement that a party
`present the same construction before the Board and the district court.” Inst.
`Dec. 32 (citing Abbott Diabetes Care Inc. v. Dexcom, Inc., IPR2022-00913,
`Paper 14 at 11–17 (PTAB Nov. 3, 2022); Sony Mobile Commc’ns AB v.
`Ancora Techs., Inc., IPR2021-00663, Paper 17 at 24–25 (PTAB June 10,
`2021); Huawei Techs. Co. v. WSOU Invs., LLC, IPR2021-00228, Paper 9
`at 24–25 (PTAB June 10, 2021)). Further, as the Institution Decision noted,
`“[t]here is nothing to prevent a petitioner from advancing one construction in
`the District Court as an infringement defendant and a different construction
`as a Petitioner before the Board. In fact, it happens all the time.” Samsung
`Elecs. Co. v. Smart Mobile Techs. LLC, IPR2022-01248, Paper 13 at 58
`(PTAB Jan. 24, 2023); see Inst. Dec. 105.
`Patent Owner asserts that Samsung “merely” permits a petitioner
`to either (1) propose a specific claim construction in a district court and
`maintain before the Board that “no formal claim construction” is necessary
`or (2) “adopt a construction ‘advanced by a patent owner that is seeking to
`broadly construe the claims to prove infringement.’” Req. Reh’g 6–7
`(quoting Samsung, IPR2022-01248, Paper 13 at 58). We disagree. In
`Samsung, the Board rejected the argument that “[b]y proffering inconsistent
`claim construction positions, Petitioner has failed to comply with the
`Office’s rules concerning claim construction.” Samsung, IPR2022-01248,
`Paper 13 at 58 (alteration in original).
`In arguing that Petitioner’s “contradictory positions” are improper,
`Patent Owner cites the following two cases: (1) Hologic, Inc. v. Enzo Life
`Sciences, Inc., IPR2018-00019, Paper 21 at 2 (PTAB Nov. 28, 2018); and
`
`8
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`IPR2023-00758
`Patent 8,478,245 B2
`
`(2) CommScope Technologies LLC v. Dali Wireless Inc., 10 F.4th 1289,
`1299 (Fed. Cir. 2021). Req. Reh’g 7. But neither case stands for the
`proposition that a party in an Office proceeding must present the same
`claim-construction position to the Board and a district court.
`In Hologic, the Board decided that a party in an Office proceeding
`may not “expressly disagree” with a claim-construction position in the
`proceeding and still advance the disagreed-with position in the proceeding.
`See Hologic, IPR2018-00019, Paper 21 at 2–7. Unlike the situation in
`Hologic, Petitioner did not “expressly disagree” with a claim-construction
`position in this proceeding and still advance the disagreed-with position in
`this proceeding. See, e.g., Pet. 36 n.10, 36–37 (identifying for limitation 1b
`an “application” on a mobile device and alternatively an “application” on a
`server).
`In CommScope, the Federal Circuit criticized a patentee for taking
`incongruous claim-construction positions when arguing for infringement and
`against anticipation. CommScope, 10 F.4th at 1299. The Federal Circuit
`said, “This case falls squarely within the principle that a ‘patent may not,
`like a nose of wax, be twisted one way to avoid anticipation and another to
`find infringement.’” Id. (quoting Amazon.com, Inc. v. Barnesandnoble.com,
`Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001)). In the Petition, Petitioner did
`not take incongruous claim-construction positions when arguing for
`unpatentability. See Pet. 24–82.
`Based on the current record and for the reasons discussed above, the
`Petition rests on sound claim-construction positions for independent claims 1
`
`9
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`IPR2023-00758
`Patent 8,478,245 B2
`
`and 12, 4 and the new evidence from the October 2023 trial does not erase
`those positions. Nor does that evidence warrant denying the Petition, either
`on the merits or discretionarily under Fintiv.
`During the trial, Patent Owner will have an opportunity to address
`whether “the claims require the application to be executing remotely on
`the server,” as Patent Owner asserts, based on the intrinsic evidence (the
`patent’s claim language, written description, and prosecution history) and
`the extrinsic evidence, including the new evidence from the October 2023
`trial. And Petitioner will have an opportunity to respond. Further briefing
`from both parties should assist the Board in determining claim scope and
`deciding the patentability issues.
`V. CONCLUSION
`For the reasons discussed above, Patent Owner has not demonstrated
`that the Board abused its discretion when instituting an inter partes review
`of claims 1–33 in the ’245 patent.
`VI. ORDER
`
`Accordingly, it is
`ORDERED that Patent Owner’s Request for Rehearing (Paper 13) is
`denied.
`
`
`
`4 Claims 1 and 12 recite similar limitations, although their respective
`preambles differ. Compare Ex. 1001, 20:41–64, with id. at 21:42–67.
`Claim 1’s preamble recites “[a] method of rendering content on a wireless
`device.” Id. at 20:41. Claim 12’s preamble recites “[a] non-transitory
`computer usable medium comprising instructions therein that when executed
`by a processor implement a method of rendering content on a wireless
`device.” Id. at 21:42–44. Claim 15 depends directly from claim 12 and
`recites subject matter similar to claim 4. Id. at 22:14–16; see id. at 21:8–10.
`10
`
`
`
`IPR2023-00758
`Patent 8,478,245 B2
`
`For PETITIONER:
`
`Aliza George Carrano
`Indranil Mukerji
`J. Christopher Moulder
`WILLKIE FARR & GALLAGHER LLP
`acarrano@willkie.com
`imukerji@willkie.com
`cmoulder@willkie.com
`Netflix-GTS-WFG@willkie.com
`
`
`For PATENT OWNER:
`
`Joshua S. Wyde
`Steven T. Jugle
`ALAVI & ANAIPAKOS PLLC
`jwyde@aatriallaw.com
`sjugle@aatriallaw.com
`IPR2023-00758@aatriallaw.com
`
`
`
`11
`
`
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