Trials@uspto.gov
`571-272-7822
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`Paper 9
`Date: May 21, 2024
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`LG ELECTRONICS, INC. and LG ELECTRONICS U.S.A., INC.,
`Petitioner,
`v.
`MULTIMEDIA TECHNOLOGIES PTE. LTD.,
`Patent Owner.
`
`IPR2024-00352
`Patent 9,247,174 B2
`
`
`
`
`
`
`
`
`
`Before ST. JOHN COURTENAY III, MICHAEL R. ZECHER, and
`SHARON FENICK, Administrative Patent Judges.
`
`COURTENAY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
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`
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`571-272-7822
`
`Paper 9
`Date: May 21, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`LG ELECTRONICS, INC. and LG ELECTRONICS U.S.A., INC.,
`Petitioner,
`v.
`MULTIMEDIA TECHNOLOGIES PTE. LTD.,
`Patent Owner.
`
`IPR2024-00352
`Patent 9,247,174 B2
`
`
`
`
`
`
`
`
`
`Before ST. JOHN COURTENAY III, MICHAEL R. ZECHER, and
`SHARON FENICK, Administrative Patent Judges.
`
`COURTENAY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
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`
`
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`IPR2024-00352
`Patent 9,247,174 B2
`LG Electronics, Inc. and LG Electronics U.S.A., Inc. (collectively,
`“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes
`review of claims 1–14 (“the challenged claims”) of U.S. Patent
`No. 9,247,174 B2 (Ex. 1001, “the ’174 patent”). Petitioner filed a
`Declaration of Andrew Lippman, Ph.D. (Ex. 1003) with the Petition.
`Multimedia Technologies Pte. Ltd (“Patent Owner”) filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under
`35 U.S.C. § 314(a), we may not authorize an inter partes review unless the
`information in the petition and the preliminary response “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.”
`Upon consideration of the Petition, the Preliminary Response, and the
`evidence of record, we determine that the information presented in the
`Petition demonstrates that there is a reasonable likelihood that Petitioner
`would prevail in establishing the unpatentability of at least one challenged
`claim of the ’174 patent.
`
`
`A.
`
`INTRODUCTION
`
`I.
`Real Parties in Interest
`Petitioner identifies LG Electronics, Inc. and LG Electronics U.S.A.,
`Inc. as the real parties-in-interest. Pet. 100. Patent Owner identifies itself,
`Multimedia Technologies Pte. Ltd., as the real party-in-interest. Paper 4, 2.
`B.
`Related Matters
`The parties identify the following related district court litigation:
`Multimedia Technologies Pte. Ltd. v. LG Electronics Inc. et al., No. 2:22-cv-
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`2
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`IPR2024-00352
`Patent 9,247,174 B2
`00494 (E.D. Tex.) (filed Dec. 23, 2022); Multimedia Technologies Pte. Ltd.
`v. Vizio, Inc., No. 2:23-cv-00124, (E.D. Tex.) (filed Mar. 24, 2023). Pet.
`100; Paper 4, 2.
`We note that in addition to this Petition, Petitioner filed the following
`three other petitions challenging related patents owned by Multimedia: (1)
`LG Electronics, Inc. v. Multimedia Technologies Pte. Ltd., IPR2024-00351,
`Paper 1 (PTAB Dec. 20, 2023) (challenging claims 1–6, 11–16, 21, and 22
`of U.S. Patent No. 9,510,040 B2); (2) LG Electronics, Inc. v. Multimedia
`Technologies Pte. Ltd., IPR2024-00353, Paper 3 (PTAB Dec. 22, 2023) (LG
`Corrected Petition) (challenging claims 1–4, 6, 8–10, 12–17, and 19 of U.S.
`Patent No. 9,055,254 B2); and (3) LG Electronics, Inc. v. Multimedia
`Technologies Pte. Ltd., IPR2024-00354, Paper 1 (PTAB Dec. 22, 2023)
`(challenging claims 1–18 of U.S. Patent No. 10,419,805 B2)). Paper 4, 2
`(Patent Owner’s Mandatory Notices).
`
`The ’174 patent
`The ’174 patent is entitled “Panel user Interface for an Intelligent
`Television,” and relates to methods for displaying content on an intelligent
`television. Ex. 1001, code (57). According to the ’174 patent, there “is a
`need for an Intelligent TV with intuitive user interfaces and with seamless
`user interaction capability.” Id. at 2:3–5.
`Figure 14, reproduced below, is a diagram of a television display
`according to the ’174 patent:
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`C.
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`Figure 14 illustrates Intelligent TV 100, displaying global panel 1404,
`active content view 1408, and application panel 1412. Id. at 30:39–40.
`“The content displayed in the application panel 1412 depends on the content
`displayed in content view area 1408.” Id. at 32:16–17. The ’174 patent
`discloses application panel 1412 may comprise an application panel
`navigation bar 1604, a content area 1608, and a hotkey legend 1612. Id. at
`32:47–49; see also Fig. 16A. “[D]epending on the active content area
`currently selected or being viewed, the panel content area 1608 may change
`and/or may be presented in a different way (i.e., have a slightly different
`look or content).” Id. at 33:1–6.
`Within the application panel 1412, multiple content area panels are
`possible, based on the content of navigation. Id. at 35:26–29. Panel types
`can be categorized, and each category may include several panel types
`within it. Id. at 35:38–44. Figures 17A and 17B illustrate a number of panel
`types, such as “Series Info,” “Collection Info,” Photo Album Info,” “Device
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`Patent 9,247,174 B2
`Info,” “Video Info,” “Movie Info,” “Episode Info,” “Videos,” “Movies,”
`“TV Shows,” “Most Viewed,” and “Search Results.” Id. at Figs. 17A, 17B.
`As an example, if “Info” is selected on navigation bar 1604, a panel
`may display based on the panel type “Series Info” 1704A, or any other panel
`type in the “Info Views” category. Id. at 35:29–45; see also id. at Fig. 17A.
`Figure 20C, reproduced below, illustrates the layout and content of the
`display in the situation just described.
`
`
`Figure 20C shows content area 1408, and info panel 1412A, which
`includes menu bar 1604, and information from “panel type 1704A.” Id.
`at 39:61–66. “The series panel type 1704A may include series information
`2034A and 2034B, a view button 2012, a favorite button 2016, and a
`thumbnail display of the series information 2008.” Id. at 40:1–4.
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`Patent 9,247,174 B2
`D.
`Illustrative Claim
`Petitioner challenges claims 1–14 of the ’174 patent. Pet. 6.
`Claim 1, one of two independent claims, is illustrative of the
`challenged claims, and recites the following (Petitioner’s bracketing and
`identifiers added):
`[1.0] A method for displaying content on a television,
`comprising:
`[1.1] receiving a first input via an input device
`associated with the television;
`[1.2] in response to the first input, displaying, via the
`television, an application panel interface;
`[1.3] determining content currently being shown on the
`television;
`[1.4.1] identifying at least one of a content source and
`content information [1.4.2] associated with the
`content currently being displayed via the
`television;
`[1.5.1] based on the content and the at least one of the
`content source and the content information,
`providing a first content panel in the application
`panel interface, [1.5.2] wherein the first content
`panel is a first type of application panel;
`[1.6] receiving a first directional input via the input
`device associated with the television;
`[1.7.1] determining, based on a first direction associated
`with the first directional input, a second content
`panel to display via the television in the
`application panel interface, [1.7.2] wherein the
`second content panel is a second type of
`application panel;
`[1.8] retrieving, from memory, a second content
`information based on the second type of content
`panel; and
`[1.9] displaying, via the television, the second content
`information in the second content panel.
`Ex. 1001, 48:57–49:16; Pet. 102–103.
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`Patent 9,247,174 B2
`E.
`Prior Art
`Petitioner submits the following references as evidence of
`obviousness:
`
`Prior Art
`
`Istvan, US 2002/0060750 A1 (published May 23, 2002)
`Machida, US 2007/0047920 A1 (published Mar. 1, 2007)
`Woods, US 2010/0262938 A1 (published Oct. 14, 2010)
`
`Exhibit
`No.
`1006
`1008
`1005
`
`Summary of Woods (Ex. 1005)
`a.
`Woods is titled “Systems and Methods for Generating a Media
`Guidance Application with Multiple Perspective Views.” Ex. 1005,
`code (54).
`Woods describes that interactive program guides for media content
`available via the Internet, cable and satellite television, and radio often
`display “guide listings in a single perspective view grid indexed by time and
`program source (e.g., a television channel). In particular, the guide listings
`appear flat on the screen.” Id. ¶ 2.
`Woods discloses instead “a media guidance application with multiple
`perspective views.” Id. ¶ 3. Woods discloses that a “first of a plurality of
`media guidance objects may be displayed in a first perspective view that
`appears flat on the screen,” but that a “second media guidance object may be
`displayed in a second perspective view that appears to be going into the
`screen.” Id. at code 57. This creates “the appearance of a fold between the
`first and second media guidance application objects at a location where the
`first perspective view changes into the second perspective view.” Id.
`Figure 5D, reproduced below, “shows an illustrative display screen of user
`profile representations displayed in different perspectives.” Id. ¶ 17.
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`Figure 5D shows display screen 550d, with “continuous array 530d of
`user profile representations,” which “may include a first user profile
`representation 514d displayed in a first perspective view, a second user
`profile representation 510d displayed in a second perspective view and third
`and fourth user profile representations 512d and 516d displayed in a third
`perspective view.” Id. ¶¶ 112, 116. Figure 5D also shows folds 520d and
`522d. Id. ¶ 117.
`Woods discloses a display that provides “program scheduling
`information,” e.g., “program listings,” for a variety of time periods. Id.
`¶ 152; see also id. at Fig. 9.
`Figure 10, reproduced below, shows a display that provides a
`“selected program listing” of a program selected from the program listings:
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`Figure 10 illustrates display screen 1000, with functions menu
`bar 1010, function options region 1020, and media region 1030. Id. ¶ 170.
`“As the user navigates to select different menu bars by, for example,
`pressing an up/down arrow key or using a movable cursor (e.g., mouse),
`media guidance objects associated with the selected menu bar are
`displayed.” Id. ¶ 132.
`Figure 10 further illustrates the result of selecting “CAST” from menu
`bar 1010, which displays a “selectable list of all or most of the cast members
`that are present in the media asset corresponding to the selected program
`listing.” Id. ¶ 178. Figure 10 further illustrates “highlight region 1022 over
`the desired cast member” a user is ready to select on the display. Id. ¶ 180.
`A “user may select one of the cast member indicators (e.g., names or
`pictures) that is displayed in the list by, for example, pressing up/down
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`arrow keys to position [the] highlight region 1022 over the desired cast
`member.” Id.
`Figure 11, reproduced below, illustrates a display that represents
`“information corresponding to an option or item selected from region 1020.”
`Id. ¶ 183.
`
`
`Figure 11 shows display screen 1100, which includes identifiers 1110,
`information region 1120, which shows the program previously selected in
`identifier 1114, function “CAST” previously selected on the screen in
`Figure 10 in identifier 1112, and information about the cast member
`selected. Id. ¶¶ 183–184.
`b.
`Summary of Istvan (Ex. 1006)
`Istvan is titled “Single-Button Remote Access to a Synthetic Channel
`Page of Specialized Content,” and “pertains to a user interface to television
`broadcasts and Internet content.” Ex. 1006, code (54), ¶ 3.
`Istvan describes that prior art user interfaces for Internet-enabled
`televisions are “limited in their capabilities and do not provide for user-
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`friendly access to both broadcast television (TV) and Internet content.” Id.
`¶ 4. Istvan claims it “provides for user-friendly access to both broadcast
`television and Internet content via a single integrated user interface.” Id. ¶ 6.
`A diagram of an exemplary user interface is shown in Figure 6,
`reproduced below.
`
`
`Figure 6 shows a television user interface, with primary on-screen
`television control menu 302, and with TV submenu 602 activated over
`reduced-size television viewing area 301. Id. ¶¶ 40, 54. Submenu 602
`includes selections such as “Listing,” “Info,” and “Favorites.” Id. at Fig. 6;
`see also id. ¶¶ 54–57.
`c.
`Summary of Machida (Ex. 1008)
`Machida is titled “Multimedia Player with Plurality of Operation
`Panels.” Ex. 1008, code (54). Machida relates “to image rendering
`techniques for reproduction control of digital contents by using user
`operation interfaces,” and is “for an apparatus which reproduces digital
`contents.” Id. ¶ 2.
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`Machida describes that a conventional digital broadcasting compatible
`HDD/DVD (Hard Disk Drive/ Digital Video Disk) decoder (i.e., a digital
`content reproduction apparatus) requires, in addition to channel tuning, a
`number of control keys (e.g., reproduce, stop, fast forward, fast backward,
`temporary stop), as well as keys such as “up,” “down,” “right,” “left,”
`“decide,’ and “four-color keys for operation control of data broadcasting.”
`Id. ¶ 3. Machida describes that a user interface is typically required to
`display all the control keys, so a “wide operation panel rendering area is
`used” on-screen. Id. ¶ 5. Machida discloses it is “an object of the present
`invention to display automatically only usable operation keys.” Id. ¶ 7.
`Figures 2 to 4, reproduced below, show a diagram of a user interface
`on a monitor, along with two examples of operation panels for display in the
`operation panel display area of the user interface:
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`Figure 2 shows a monitor A1 with both content display area A2, and
`“operation panel display area” A3. Id. ¶ 31. Figures 3 and 4 show two
`examples of operations panels for display in area A3, with “linear content
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`operation panel” A4, depicted in Figure 3, and, “interactive content
`operation panel” A5, depicted in Figure 4. Id.
`Machida discloses that “linear content operation panel A4 and
`interactive content operation panel A[5] are displayed exclusively and are
`not displayed at the same time.” Id. ¶ 33. Operation panel A4 is displayed
`during “reproduction of linear contents such as moving image contents.” Id.
`¶ 31. Operation panel A5 is displayed during “reproduction of interactive
`contents such as data broadcast contents.” Id. ¶ 32.
`
`F.
`
`The Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–14 of the ’174 patent based upon the
`following grounds:
`Claim(s) Challenged
`1–14
`6, 8, 14
`1–14
`6, 8, 14
`
`35 U.S.C. §
`103(a)1
`103(a)
`103(a)
`103(a)
`
`Reference(s)/Basis
`Woods
`Woods, Istvan
`Woods, Machida
`Woods, Machida, Istvan
`
`Pet. 12. Patent Owner disputes Petitioner’s asserted grounds of
`unpatentability. See generally Prelim. Resp.
`
`
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103, effective on March 16, 2013.
`The ’174 patent claims the benefit of filing dates prior to the effective date
`of the applicable AIA amendments. See Ex. 1001, code (60). Therefore, we
`refer to the pre-AIA version of 35 U.S.C. § 103.
`
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`II.
` LEVEL OF ORDINARY SKILL IN THE ART
`We consider the asserted grounds of unpatentability in view of the
`understanding of a person of ordinary skill in the art (POSITA). In assessing
`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 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) (quoting Custom
`Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir.
`1986)). “[O]ne or more factors may predominate.” Id.
`Relying on the declaration testimony of Dr. Lippman, Petitioner
`contends that an ordinarily skilled artisan for the ’174 patent “would have
`had a bachelor’s degree in Electrical Engineering, Software Engineering, or
`Computer Engineering, or equivalent training, and approximately two years
`of experience working in the field of television systems and networking,
`human-computer interaction, or related technologies,” and that a “[l]ack of
`professional experience can be remedied by additional education, and vice
`versa.” Pet. 10 (citing Ex. 1003 ¶¶ 18–20).
`At this stage, Patent Owner “adopts Petitioner’s definition of a person
`of ordinary skill in the art.” Prelim. Resp. 30.
`For purposes of this Decision, we adopt Petitioner’s definition of the
`level of ordinary skill in the art. On the present record, we are satisfied that
`this definition comports with the level of skill necessary to understand and
`implement the teachings of the ’174 patent and the asserted prior art. See
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that
`the prior art itself can reflect appropriate level of ordinary skill in art).
`
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`III. CLAIM CONSTRUCTION
`In interpreting the claims of the ’174 patent, we “us[e] the same
`claim construction standard that would be used to construe the claim[s] in a
`civil action under 35 U.S.C. [§] 282(b).” See 37 C.F.R. § 42.100(b)
`(2023). Accordingly, our claim construction standard is the same as that of
`a district court. See id. Under the standard applied by district courts, claim
`terms are generally given their plain and ordinary meaning, as would have
`been understood by a person of ordinary skill in the art at the time of the
`invention and in the context of the entire patent disclosure. Phillips v.
`AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are
`only two exceptions to this general rule: (1) when a patentee sets out a
`definition and acts as his own lexicographer, or (2) when the patentee
`disavows the full scope of a claim term either in the specification or during
`prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362,
`1365 (Fed. Cir. 2012).
`Petitioner does not propose claim construction for any term, although
`it identifies two terms it contends are defined in the Specification of the ’174
`patent. Pet. 11. Patent Owner does not dispute Petitioner’s statements on
`claim construction. Prelim. Resp. 30.
`For purposes of this Decision, we determine that no aspects of the
`challenged claims require explicit construction. See, e.g., Realtime Data,
`LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required
`to construe ‘only those 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))). To the extent
`necessary for institution, we note a disagreement between the parties
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`regarding the term “application panel” in claims 1 and 10, and address it
`below. See infra § VI.A.10.
`
`
`IV. PRINCIPLES OF LAW
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden of persuasion never
`shifts to Patent Owner, except in certain limited circumstances not present
`here. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes
`review).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) 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) when in evidence, objective
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`evidence of nonobviousness.2 Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966). “[W]hen a patent claims a structure already known in
`the prior art that is altered by the mere substitution of one element for
`another known in the field, the combination must do more than yield a
`predictable result.” KSR, 550 U.S. at 416 (citing United States v. Adams,
`383 U.S. 39, 50‒51 (1966)). An obviousness inquiry is not limited to the
`prior art’s preferred embodiment. See, e.g., Pfizer, Inc. v. Apotex, Inc., 480
`F.3d 1348, 1370 (Fed. Cir. 2007). We also recognize that prior art
`references must be “considered together with the knowledge of one of
`ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed.
`Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).
`
`
`V. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a)
`A. Parties Arguments
`Petitioner contends that we should not exercise our discretion to deny
`the Petition under § 314(a), primarily because it stipulates “if instituted,
`Petitioner will not pursue in District Court the specific grounds asserted
`here, or on any other ground that was raised or could have been reasonably
`raised in this IPR.” Pet. 98 (citing Interim Procedure for Discretionary
`Denials in AIA Post-grant Proceedings with Parallel District Court
`Litigation at 3, available at https://www.uspto.gov/sites/default/files/
`documents/interim_proc_discretionary_denials_aia_parallel_district_court_
`litigation_memo_20220621_.pdf. (“Director Memo”)) (emphasis omitted).
`
`
`2 Patent Owner does not present arguments or evidence of secondary
`considerations (i.e., objective indicia of non-obviousness) in its Preliminary
`Response. See generally Prelim. Resp. Therefore, secondary considerations
`do not constitute part of our analysis herein.
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`In response, Patent Owner contends that we should exercise our
`discretion to deny the Petition under § 314(a) because, among other reasons,
`Petitioner failed to file a stipulation consistent with the holding set forth in
`Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB
`Dec. 1, 2020) (precedential as to § II.A) (“Sotera”). Prelim. Resp. 12–
`17. After Patent Owner filed its Preliminary Response, we granted
`Petitioner authorization to file a “Notice of Sotera Stipulation,” asserting
`that a stipulation according to Sotera was entered in the district court case
`where Petitioner is a party. See Ex. 1012.
`B. Fintiv Analysis
`It is well-settled that institution of an IPR is discretionary. Harmonic
`Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he [U.S.
`Patent and Trademark Office] is permitted, but never compelled, to institute
`an IPR proceeding.”); 35 U.S.C. § 314(a) (“The Director may not authorize
`an inter partes review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 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.” (emphasis added)). In Fintiv, the Board
`discussed potential applications of NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential), as well as a
`number of other cases dealing with discretionary denial under
`§ 314(a). Fintiv identifies a non-exclusive list of six factors parties may
`consider addressing, particularly where there is a related district court case
`involving the same patent and whether such a case provides any basis for
`discretionary denial. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at
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`IPR2024-00352
`Patent 9,247,174 B2
`5–16 (PTAB Mar. 20, 2020) (precedential). Those factors include the
`following:
`
`1. whether the court granted a stay or evidence exists that
`one may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and
`the parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise
`of discretion, including the merits.
`Id. at 5–6.
`On June 21, 2022, the Director issued interim guidance in the form of
`a memo that further clarifies how we should approach analyzing the Fintiv
`factors. See Director’s Memo. Notably, the Director stated that “the PTAB
`[Patent Trial and Appeal Board] will not discretionarily deny institution in
`view of parallel district court litigation where a petitioner presents a
`stipulation not to pursue in a parallel proceeding the same grounds or any
`ground that could have been reasonably raised before the
`PTAB.” Director’s Memo at 3.
`In its Preliminary Response, Patent Owner contends that Petitioner
`fails to provide a proper Sotera stipulation for two reasons: (1) Petitioner did
`not file its stipulation in the U.S. District Court for the Eastern District of
`Texas, which is handling the two parallel district court cases; and, (2)
`Petitioner’s stipulation would have little, if any, impact on the district court
`
`20
`
`
`
`IPR2024-00352
`Patent 9,247,174 B2
`case where Vizio, Inc. (“Vizio”) is a party. Prelim. Resp. 12–17. We do not
`agree with Patent Owner’s arguments.
`As an initial matter, we do not share Patent Owner’s view that a
`Sotera stipulation must be filed in the two parallel district court cases. See
`Prelim. Resp. 13–16. This same argument was raised previously in another
`proceeding before the Board. See Taiwan Semiconductor Mfg. Co. Ltd. v.
`Alidouble, Inc., IPR2023-00369, Paper 7 at 10 (PTAB July 12, 2023)
`(Institution Decision) (declining to discount petitioner’s stipulation because
`petitioner did not file it in the district court). In Taiwan Semiconductor,
`patent owner urged the Board to exercise discretion to deny institution under
`§ 314(a) in light of a parallel district court litigation because, in part,
`petitioner had not filed the stipulation in the district court. Id. at 9. The
`Board disagreed and found that the Director’s Memo does not require that
`such a stipulation be filed in the district court, only that the petitioner must
`“stipulate[]” or “present[] a stipulation.” Id. (citing Director’s Memo at 3,
`7).
`
`Here, we agree with the Board’s reasoning in Taiwan Semiconductor
`case, and we understand the Director’s Memo as only requiring Petitioner to
`“stipulate[]” or “present[] a stipulation.” The Director’s Memo is silent
`regarding any requirement for Petitioner to file a stipulation in the district
`court case where Petitioner is a party. Director’s Memo at 3, 7.
`Even if arguendo Petitioner’s Sotera stipulation should also be filed in
`district court, here Petitioner did file a “Notice of Sotera Stipulation” in the
`district court case where Petitioner is a party. Ex. 1012. This Notice states
`that “[LG] hereby stipulate[s], consistent with the stipulation made by the
`[p]etitioner in Sotera that, if the PTAB institutes an IPR in response to
`[LG’s] petition against [Multimedia’s] U.S. Patent No. 9,247,174 (IPR2024-
`
`21
`
`
`
`IPR2024-00352
`Patent 9,247,174 B2
`00352), [LG] will not pursue in this litigation the grounds raised or any other
`grounds that could have reasonably been raised before the PTAB in that
`instituted proceeding.” Id. at 2. Consequently, the purpose of Petitioner’s
`Sotera stipulation has been achieved here because it “mitigates any concerns
`of duplicative efforts between the district court and the Board, as well as
`concerns of potentially conflicting decisions.” Sotera, Paper 12 at 19 (citing
`Sand Revolution II, LLC v. Cont’l Intermodal Group – Trucking LLC,
`IPR2019-01393, Paper 24 at 12 (PTAB June 16, 2020) (Decision Granting
`Request for Rehearing) (informative)).
`Although Patent Owner is correct that Petitioner’s Sotera stipulation
`would have little, if any, impact on the district court case where Vizio is a
`party (see Prelim. Resp. 16–17), the Director’s interim guidance does not
`condition or otherwise qualify the effect of a Sotera stipulation on our
`exercise of discretion to deny this Petition based on any remaining
`defendants in the parallel district court cases that are not subject to the
`stipulation (see Director Memo at 7, 9). Put simply, Petitioner has filed a
`Sotera stipulation in this proceeding and, as a result, we will not exercise our
`discretion to deny its’ Petition.
`
`VI. GROUND 1 – ALLEGED OBVIOUSNESS OVER WOODS
`Petitioner contends that claims 1–14 of the ’174 patent are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Woods. Pet. 13–80.
`Patent Owner opposes, arguing that at least two of the claim limitations are
`not taught by Woods. Prelim. Resp. 31–36.
`
`22
`
`
`
`IPR2024-00352
`Patent 9,247,174 B2
`A.
`Claim 1
`1.
`Preamble [1.0]
`The preamble of claim 1 recites: “[a] method for displaying content
`on a television, comprising.” Ex. 1001 (col. 48).
`To the extent the preamble is treated as limiting, Petitioner contends
`that Woods teaches the preamble of claim 1, because “Woods discloses user
`equipment 300 which may be, for example, a television set.” Pet. 16. Patent
`Owner does not specifically address the preamble in the Preliminary
`Response. See generally Prelim. Resp.
`Based upon our review, we preliminarily find Petitioner has shown
`that Woods teaches or suggest the preamble [1.0] of claim 1.
`
`Limitation [1.1]
`2.
`Limitation [1.1] of claim 1 recites: “receiving a first input via an input
`device associated with the television.” Ex. 1001 (col. 48).
`Petitioner again notes that “Woods discloses user television
`equipment 300 (“the television”),” referring to television 300, as depicted in
`Wood’s Figure 3. Pet. 18–19 (citing Ex. 1005 ¶ 37, Fig. 3). Petitioner
`further notes that Woods discloses that a “user may control the control
`circuitry 304 using user input interface 310.” Pet. 19 (citing Ex. 1005 ¶ 53,
`Fig. 3) (emphasis omitted). Petitioner thus contends that Woods teaches or
`suggests limitation [1.1].
`Patent Owner does not specifically address limitation [1.1] in the
`Preliminary Response. See generally Prelim. Resp.
`Based upon our review, we preliminarily find Petitioner has shown
`that Woods teaches or suggests limitation [1.1] of claim 1.
`
`
`23
`
`
`
`IPR2024-00352
`Patent 9,247,174 B2
`3.
`Limitation [1.2]
`Limitation [1.2] of claim 1 recites: “in response to the first input,
`displaying, via the television, an application panel interface.” Ex. 1001 (col.
`48).
`
`Petitioner notes “First, as discussed at [1.1], Woods discloses
`receiving a user’s input command to select a program listing (‘first input’).”
`Pet. 22 (emphasis omitted). Petitioner further notes:
`Second, Woods discloses that in response to the user selecting a
`program listing (“in response to the first input”), the television
`displays to the user display screen 1000 with functions menu
`bar 1010 and function options region 1020 that together teach
`an “application panel interface.” Ex.1005, [0170]; see also
`Ex.1005, [0036] (“A user may indicate a desire to access media
`information by selecting a selectable option provided in a
`display screen…In response to the user’s indication, the
`media guidance application may provide a display screen
`with media information….”).
`Pet. 22–23 (alterations in original).
`Petitioner refers to Woods’ Fig. 10, and contends that in response to
`the user selecting the program listing corresponding to “‘Heroes,’ (see
`Ex.1005, [0184]), the television displays screen 1000 with functions menu
`bar 1010 and function options region 1020, which together c
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