Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 13
`Entered: June 24, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETFLIX,INC.,
`Petitioner,
`-
`
`Vv.
`
`OPENTV,INC.,
`Patent Owner.
`
`IPR2014-00269
`Patent 6,233,736
`
`Before SALLY C. MEDLEY, JAMEST. MOORE,and
`JUSTIN BUSCH,Administrative Patent Judges.
`
`BUSCH,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`Tel: 571-272-7822
`
`Paper 13
`Entered: June 24, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETFLIX,INC.,
`Petitioner,
`-
`
`Vv.
`
`OPENTV,INC.,
`Patent Owner.
`
`IPR2014-00269
`Patent 6,233,736
`
`Before SALLY C. MEDLEY, JAMEST. MOORE,and
`JUSTIN BUSCH,Administrative Patent Judges.
`
`BUSCH,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`
`IPR2014-00269
`Patent 6,233,736
`
`I.
`
`INTRODUCTION
`A.
`| Background
`Netflix, Inc. (“Petitioner”) filed a Petition requesting an interpartes
`review of claims 1-12 of U.S. Patent No. 6,233,736 (Ex. 1001, “the °736
`patent”) on December 18, 2013. Paper 1 (“Pet.”). OpenTV,Inc.(“Patent
`
`Owner”) filed a Patent Owner Preliminary Response on March 27, 2014.
`
`Paper 11 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. §§ 6(b)
`
`and 314.
`
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), whichstates:
`
`THRESHOLD-- 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 challengedin the petition.
`
`Inter partes review is instituted only if the petition supporting the
`ground demonstrates “that thereis a reasonable likelihood that at least one of
`the claims challengedin the petition is unpatentable.”
`
`37 C.F.R. § 42.108(c).
`
`Upon consideration ofthe Petition and the Patent Owner Preliminary
`Response, we conclude Petitioner has established a reasonable likelihood .
`that it would prevail with respect to claims 1-12 of the ’736 patent and,
`
`accordingly, weinstitute an inter partes review of claims 1-12.
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`IPR2014-00269
`Patent 6,233,736
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`B.
`
`Related Proceedings
`
`Petitioner indicates that the ’736 patent wasasserted against
`Petitioner in OpenTV, Inc.v. Netflix, Inc., No. 1:12-cv-01733 (D. Del.).
`Pet. 1. Petitioner also indicates that “a proceeding relating to European
`
`Patent EP 0 879 534, which claimspriority to the parentof the ’736 patent,
`arising out of request number KG RK 13-1834 is pending in The Hague
`
`District Court, The Netherlands.” Jd. The sameparties and related patents
`~ are involvedin the followingpetitions for inter partes review before this
`
`Board: Netflix, Inc. v. OpenTV, Inc., Case IPR2014-00252 (Dec. 16, 2013);
`
`Netflix, Inc. v. OpenTV, Inc., Case IPR2014-00267 (PTAB Dec. 17, 2013);
`
`and Netflix, Inc. v. OpenTV, Inc., Case IPR2014-00274 (PTAB Dec.19,
`
`2013).
`
`C.
`
`The ’736 Patent (Ex. 1001)
`
`The specification of the ’736 patent describes a method and system
`“for providing direct automated accessto an online information services
`provider” by extracting an address that is embeddedin a signal containing an
`
`audio or video program. Ex. 1001, Abstract. The ’736 patent explains that
`the address used to access online information is encoded either in the
`vertical blanking interval (VBI) of a video signal or someother portion of a
`
`signalthat is not displayedso that the encoded address does notinterfere
`with the program. Jd. The system and method disclosed by the ’736 patent
`can detect and decode an encoded address andalert the user that additional
`
`information is available. /d.
`
`In responseto the indication that additional
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`informationis available, the user may opt to access the online information
`
`.
`
`provider “by giving a simple command,e.g., pushing a special button on a
`remote control.” Jd. “The system then automatically establishes a direct
`digital communication link to the online information provider through the
`address.” Jd. One described embodimentprovides a system that generates a
`secondary advertisementthat is not derived from the primary advertisement
`
`whenauser elects to skip or fast forward through the primary advertisement.
`Ex. 1001, 2:53-61.
`Ofthe challenged claims, claims 1 and 6-9 are independent claims.
`Claims 1 and 6-8 are directed to methods, and claim 9 is directed to a system
`
`_
`
`with means-plus-function limitations that provide similar function as the
`
`method steps of claim 1. Illustrative claim 1 is reproducedas follows:
`
`A methodofprovidingto a user of online information
`1.
`services automatic and direct access to online information
`through an address associated with an online information source
`provided with a video program comprising:
`indicating to the user that an address has been provided
`with said video program; and
`electronically extracting said address and automatically
`establishing, in responseto a userinitiated command,a direct
`communication link with the online information source
`associated with said address so that the user has direct access to
`the online information.
`,
`
`
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`IPR2014-00269
`Patent 6,233,736
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`D.
`
` Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability under 35
`
`U.S.C. § 103:
`ees
`IES
`
`Throckmorton and Kerman*
`
`1
`
`Throckmorton
`Throckmorton and Williams?
`
`Il.
`
`ANALYSIS
`
`Claim Construction
`A,
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear. 37 C.F.R. § 42.100(b). Underthe broadest|
`
`reasonable construction standard, claim terms are given their ordinary and
`customary meaning, as would be understood by oneofordinary skill in the
`art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`
`F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term
`
`must be set forth with reasonable clarity, deliberateness, and precision. Jn re
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`' Throckmorton et al. (“Throckmorton”), U.S. Patent No. 5,818,441, Oct. 6,
`1998 (Ex. 1004).
`* Williamsetal. (“Williams”), U.S. Patent No. 5,701,161, Dec. 23, 1997
`(Ex. 1005).
`> Kerman, U.S. Patent No. 5,659,366, Aug. 19, 1997 (Ex. 1006).
`5
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`IPR2014-00269
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`Independentclaim 1 recites “automatically establishing, in response to
`
`a user initiated command,a direct communication link with the online
`
`information source.” Independent claims 1 and 6-9 eachrecite “so that the
`
`user has direct access to the online information.” Claim 9 recites “means for
`
`indicating to the user that an addressis available for extraction from said
`
`electronic signal,” and “means for extracting an address associated with an
`
`online information source from an information signal embeddedin said
`
`electronic signal, and for automatically establishing, in response to a user
`
`initiated command,a direct link with the online information source.”
`
`Dependent claim 10 recites “means for receiving an information signal from
`
`said online information source,” and “means for displaying an imagesignal
`
`detected from said received information signal.”
`Petitioner argues that the inventor of the ’736 patent did not provide
`any special meaning for the claim terms and,thus, the terms should be given
`their ordinary and customary meanings, as understood by an ordinarily
`skilled artisan. Pet. 6-7. Petitioner proposes a construction for each ofthose
`terms based on the customary and ordinary meaning. /d. at 7-8. Patent
`
`Ownerdoesnot propose a construction for any term but arguesthat
`
`Petitioner’s proposed constructions lack material facts necessary to construe
`
`the claims. Prelim. Resp. 4-9. In particular, Patent Ownerargues the
`Petition does not point to anything in the specification of the ’736 patent
`
`supporting the proposed constructions. Jd. Patent Ownerfurther asserts that
`
`any argumentin Mr. Kramer’s declaration should not be considered because
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`the Petition itself must identify the evidenceto support Petitioner’s
`
`constructions. Id.
`
`I. “automatically establishing, in responseto a userinitiated
`command, a direct communication link with the online information
`source” (the “automatically establishing limitation”)
`
`Petitioner asserts the ordinary and customary meaning of the
`
`automatically establishing limitationis “in responseto a userinitiated
`command,establishing a communication link to an online information
`
`source without the user performing additional steps.” Pet. 7. We do notsee,
`
`nor does Patent Ownerpoint to, anything in the specification of the 736
`
`patent providing a definition for the automatically establishing limitation or
`any terms therein. Therefore, we agree with Petitioner that the automatically
`
`establishing limitation should be construed according to its ordinary and
`
`customary meaning,in light of the specification.
`
`Wenote that the ’736 patent explains that existing media receiving
`and display systems (e.g., radio and television receivers) provide only
`limited access to interactive information providers. Ex. 1001, col. 1, ll. 15-
`17. The °736 patent expoundsthat current systems mayeither display an
`Internet address the viewer can access using his computer or provide access
`to a single information source from the mediaprovider(e.g., the broadcast or
`cable operator), leaving the media providerin control of selecting the
`information provider. Jd.at col. 1, Il. 17-29. The ’736 patentalso points out
`
`that, while systems providing interactive access “through a broadcast or
`cable television signal” exist, “such systems are limited in the access they
`
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`provideto information sourcesdirectly available through the unitary cable or
`broadcast provider,” whereas “the present invention facilitates direct
`
`automated user access to an unlimited numberofonline information
`
`providers through provider addresses.” Jd. at col. 2, ll. 59-67 (emphasis
`
`added); see also id. at col. 1, ll. 29-32 (“[n]o system yet exists which
`
`provides automated and direct user access to online information providers
`
`through an address embeddedin a video or audio program signal”).
`
`While we conclude Petitioner’s proposed construction usesa plain
`
`and ordinary meaning of the relevant terms, we determineit is not complete.
`In particular, Petitioner’s proposed construction does not appear to provide
`any meaningfor the recited term “direct.” Therefore, based on the record,
`the broadest reasonable construction of the automatically establishing
`
`|
`
`limitation is in response to a command fromauser, establishing, without
`
`further input from the user, a communication link directly between the user
`
`and the online information source. As seen in the aboveanalysis, each of the
`limitations includes receiving a commandinitiated by a user, which then
`
`triggers the connection being established automatically.
`
`Additionally, we note that, while a communication link is established
`
`in response to a user commandand with no further input required from the
`| user, there is no limitation on when or how the communicationlink is
`
`established. Furthermore, while the communication link must be established
`
`directly between the user and the information source, one of ordinary skill in
`
`the art would have understood that Internet routing involves various
`
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`intermediaries inherent to Internet traffic routing. The direct connection
`
`merely implies. that the user does not need to go “through”the provider of
`the video program or any other intermediary not inherent to Internettraffic
`routing.
`
`2.
`
`“so that the user has direct access tothe online information”
`(the “direct access limitation”)
`
`Petitioner asserts the ordinary and customary meaningofthe direct
`
`access limitation is “displaying online information withoutthe user leaving
`
`the screen to access the online information.” Pet. 7. Once again, we do not
`
`see, nor does Patent Ownerpoint to, anything in the specification of the ’736
`
`patent providing a definition for the direct access limitation or any terms
`
`therein. Therefore, we agree with Petitioner that the direct access limitation
`
`should be construed accordingto its ordinary and customary meaning,in
`
`light of the specification.
`
`Wedisagree with Petitioner’s proposed construction. We are not
`
`directed to anything in the specification of the ’736 patent that indicates
`
`“direct access to the online information” requires the system to display the
`online informationto the user without the user leaving the screen to access
`the information. See id. As discussed above with respectto the
`automatically establishing limitation, the ’736 patent indicates that direct
`
`access meansthat the user does not need to go through the program provider
`
`in order to access the online information. Therefore, the broadest reasonable
`construction ofthe direct accesslimitationis thatthe user hasaccessto the
`
`online information directly from the online information source. Once again,
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`this meansthat the system establishes a communication link directly
`
`between the user and the online information source, without any intervening
`
`intermediary that is not inherent to Internettraffic routing.
`
`3.
`
`“meansfor indicating to the user that an addressis available
`for extraction from said electronic signal”
`(the “indicating means”)
`
`Weagree with Petitioner that the indicating means should be
`construed in accordance with 35 U.S.C. § 112, 7 6.’ Moreover, we agree
`with the Petitioner that the function of the indicating meansis stated clearly
`in the claim as “indicating to the user that an addressis available for
`extraction,” and does not need further explanation. Pet. 7. We also agree
`
`with Petitioner that the structure of the indicating means includes “a message
`or other indicator, or equivalents.” Id; Ex. 1001, 3:60-63. However, the
`
`specification of the ’736 patent provides additional detail regarding the
`
`structure of the indicating means. Specifically, the structure of the
`
`indicating meansis “a message displayed on a videoscreen, ...alight,a _
`sound or a wirelesstactile indicator, e.g., vibrating wristbandorclip-on unit
`
`... [or] a logo or message to be displayed for the user at points in the
`
`program which coincide with the presence of an embedded online
`information provider address” and equivalents thereof. Ex. 1001, 3:60-67.
`
`* Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C. § 112,
`6, as
`35 U.S.C. § 112(f). Because the ’736 patent has a filing date before
`September 16, 2012 (effective date of AIA), we use the citation § 112, ] 6.
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`According to Patent Owner,the Petition cites only to Mr. Kramer’s
`
`declaration and notto the specification of the ’736 patent in support of
`
`Petitioner’s proposed construction. Prelim. Resp. 5-6. While, in some
`
`instances, we may denyinstituting review becausethe Petitioner does not
`
`cite to the appropriate evidence for support, we decline to do sointhis case.
`
`Petitioner should have directly cited to the specification of the ’736 patent,
`
`rather than citing to the declaration, which in turn cites to the relevant
`
`portion of the specification. However, Petitioner’s failure to cite to the
`
`specification does not appear to be an attempt to circumventthe page limits.
`Moreover,the portion ofthe ’736 patent cited in Mr. Kramer’s declaration
`reveals the relevant structure without need for further analysis.
`4. “meansfor extracting an address associated with an online
`information sourcefrom an information signal embeddedin
`said electronic signal, andfor automatically establishing, in
`responseto a userinitiated command, a direct link with the
`online information source”(the “extracting and connecting
`means”
`
`Weagree with Petitioner that the extracting and connecting means
`
`should be construed in accordance with 35 U.S.C. § 112, 7 6. Petitioner
`
`asserts the ordinary and customary meaningofthe function of the indicating
`
`meansis “(i) extracting an address associated with an online information
`
`source from an information signal embeddedin said electronic signal and
`(11) automatically establishing, in response to auserinitiated command,a
`direct link with the online information source.” Pet. 7-8. For the same
`
`reasonsas discussed above with respect to the indicating means, the function
`
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`of the extracting and connecting meansis stated clearly in the claim. We see
`
`nothing in the specification of the ’736 patent to alter the proposed
`
`construction of the function of the extracting and connecting means nor a
`need for further explanation. Wealso agree with Petitioner’s assertion that
`
`the structure of the extracting and connecting meansis hardware and/or
`
`software. /d. at 8. According to the specification, the extracting and
`connecting meansis an access controller including both an address extractor
`and a modem. Ex. 1001, Fig. 1, 5:43-6:7, 8:53-65. However, as identified
`
`in Mr. Kramer’s declaration, the specification provides additional detail. Ex.
`
`-
`
`1005 ¢ 38.
`
`Specifically, the address extractor portion of the extracting and
`
`connecting meansis “hardware and/or software to detect, decode and store
`an address which has been embeddedin a video or audio program signal.”
`Ex. 1001, 5:45-47. The ’736 patent also explains that there are multiple
`waysto detect an addresssignal, including detecting an address transmitted
`in the vertical blanking interface or other portion of a video signal. Id. at
`5:50-52. The ’736 patent states that “[t]he details ofthe construction of
`address extractor 42 are well knownin the art and need not be described in-
`
`further detail.” Jd. at 6:5-7. The modem portion of the extracting and
`
`connecting meansalso is described as hardware and/orsoftware that can
`
`automatically establish a direct digital communication link to the online
`
`information provider. Jd. at 8:60-65. Therefore, the extracting and
`
`connecting meansis hardware, software, or some combination of hardware
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`and software that is programmedor configured to detect, decode and store
`an address transmitted as part of a program and usethe address to establish a
`digital communications link directly between the user and the online
`
`information source, and equivalents thereof.
`Once again, we have considered Patent Owner’s argument regarding
`
`the failure of the Petition to cite to the specification of the ’736 patent but
`
`decline to deny institution on that basis in this case.
`
`5. “meansfor receiving an information signalfrom said online
`information source” (the “receiving means”)
`We agree with Petitioner that the receiving means should be construed
`in accordance with 35 U.S.C.§ 112, ] 6. Petitioner asserts the ordinary and
`customary meaning of the function of the indicating meansis “receiving an
`
`information signal from said online information source.” Pet. 8: For the
`
`samereasonsas discussed above,the function of the receiving meansis
`
`stated clearly in the claim. Wesee nothing in the specification of the ’736
`
`patentto alter the proposed construction of the function of the receiving
`
`meansnora need for further explanation. We also agree with Petitioner’s
`
`assertion that the structure of the receiving meansis “a modem, or
`
`equivalents.” Jd.
`
`The function of the modem andthe fact that it may be implemented in
`
`hardware and/or software generally is described above with respect to the
`
`extracting and connection means. Moreover, the ’736 patent further
`
`indicates the modem is used “for transmitting and receiving digital
`
`information signals between access controller 10 and public switching
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`c
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`network 30 through an information signalcarrier line 32.” Ex. 1001, 6:59-
`62. Therefore, we conclude the receiving means is a modem implementedin
`
`hardware, software, or some combination thereof programmedor configured
`
`to receive information signals and its equivalents.
`As discussed above, we have considered Patent Owner’s argument
`
`regardingthe failure of the Petition to cite to the specification of the ’736
`
`patent but decline to deny institution on that basis in this case.
`
`6.
`
`“meansfordisplaying an image signal detectedfrom said
`received information signal” (display means)
`Weagree with Petitioner that the display means should be construed
`in accordance with 35 U.S.C. § 112, 4 6. Petitioner asserts the ordinary and
`
`customary meaningofthe function of the indicating meansis “displaying an
`
`image signal detected from said received information signal.” Pet. 8. For
`
`the same reasonsas discussed above,the function of the display meansis
`stated clearly in the claim. We see nothingin the specification of the ’736
`patentto alter the proposed construction ofthe function of the receiving
`means nor a need for further explanation. Petitioner asserts that the structure
`of the display means includes a “computer monitor or other display device,
`or equivalents.” Id.
`|
`|
`The ’736 patent explains “[r]eceived information signals are operated
`
`upon by processor58 for displaying upon conventional TV reproducing
`system 22 or high resolution reproducing system 40, e.g., a computer
`
`monitoror other display device.” Ex. 1001, 7:57-61. Therefore, we
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`conclude the display meansis a television, computer monitor, and
`
`equivalents.
`
`Asdiscussed above, we have considered Patent Owner’s argument
`
`regarding the failure of the Petition to cite to the specification of the ’736
`patent but decline to deny institution on that basis in this case.
`B.
`Asserted Obviousness Grounds Based on Throckmorton,
`Throckmorton and Williams, and Throckmorton and Kerman
`
`1. Overview of Throckmorton (Ex. 1004)
`Throckmorton describes systems and methods for providing apparent
`
`or actual two-wayinteractive access to information related to a one-way data
`
`stream, such as a television program broadcast. Ex. 1004, Abstract.
`
`Throckmorton provides a consumerof broadcast programming with access
`to data relevant to the programminginrealtime(.e., “during the process of
`program reception”). Jd. at 1:59-64. Throckmorton describes supplying a
`one-way data stream, including the primary data stream and associated data,
`to a consumer, at which point the primary data stream may be rendered to
`the consumerandthe associated data may beaccessed. Id. at 3:6-14. If the
`primary data stream is a television broadcast, the associated data may be
`encoded in the vertical blanking interval (VBI). Jd. at Abstract, 7:63-65.
`Throckmorton describes two preferred embodiments for interacting
`
`|
`
`with the associated information. The first preferred embodiment provides
`
`the consumer with apparent two-way interactive access and is described as
`
`providing additional online information relevant to the primary data stream
`
`that can be stored locally at the consumer’s receiver. Jd. at 7:53-67. The
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`consumerthen hasaccessto the online information, and it appears to the
`
`consumerthat the locally stored data is coming from an online service. Jd.at
`
`8:1-15. The second preferred embodiment provides the consumer with
`actual two-way interactive access andis described as adding a two-way
`communication channel connected to the microprocessor that provides.
`
`access to online information. Jd. at 8:16-24. Throckmorton explains that the
`two-way communication channel allows access to information for which
`
`only references (such as URLs),rather than actual data (such as web pages),
`have been received. Id. at 8:63-9:15. Throckmorton also discloses that the
`
`second embodiment maydeliver actual data, rather than just references, so
`
`that the consumer experiences apparent interactivity even if the consumer
`
`does not have a two-way communication channel. Jd. at 9:16-26.
`
`The primary difference betweenthe first and second preferred
`embodimentsis that the second preferred embodimentincludes a two-way
`
`communication channel (and an associated network protocol manager)
`
`connected to the processor and a remote data manager. See id. at 8:18-19,
`
`8:26-27, Figs. 3-5.
`
`2. Overview of Williams (Ex. 1005)
`
`Williams describes a system and methodfor providing real time data
`(including emergency broadcast messages) on the same screen on which a
`user is viewing broadcast programming. Ex. 1005, Abstract. Williams
`allows for the real time data to be extracted and displayed, superimposed
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`over any video signal being viewed, including broadcast programming and
`
`VCRplayback. Jd.
`
`3. Overview ofKerman (Ex. 1006)
`Kerman describes a system for providing a visible and/or audible
`alarm upon the occurrenceof certain events. Ex. 1006, Abstract. Kerman
`
`discloses extracting an information signal from a received television signal
`
`and, upon determination that a certain event has occurred, activating the
`visible and/or audible alarm. Jd. Kerman discusses that the event triggering
`the alarm mayincludereceipt of a certain message, program,or details about
`a program. Id.
`
`4. Analysis ofAsserted Obviousness Ground Based on
`Throckmorton (Claims 1-3 and 6-12), Throckmorton and
`Williams (Claim 4), and Throckmorton and Kerman (Claim 5)
`| Petitioner contends that claims 1-3 and 6-12 would have been obvious
`
`in view of Throckmorton (Pet. 9-39), claim 4 would have been obviousin
`view ofThrockmorton and Williams(id. at 39-42), and claim 5 would have
`been obvious in view of Throckmorton and Kerman(id. at 42-47).
`Regarding the obviousness challenge to claims 1-3 and 6-12, Petitioner
`discusses the two embodiments of Throckmorton and provides a motivation
`
`for combination of the two embodiments, including that a combination of
`the two disclosed embodimentsis the combination of elements in the manner
`
`described in the reference, resulting in two-way communication while
`
`viewing a program.
`
`/d. at 13. Petitioner further argues that Throckmorton
`
`teaches the proposed combination and “specifically teaches sucharesult.”
`17
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`IPR2014-00269
`Patent 6,233,736
`
`Id. Petitioner maps portions of Throckmortonto each of the limitationsin
`claims 1-3 and 6-12. Jd. at 14-39.
`
`Petitioner provides a description of Williams’s teachings, a reason to
`
`combine Williams with Throckmorton, and a mapping of Williams to the
`
`additional limitation recited in claim 4. Jd. at 39-42. Petitioner also
`
`describes Kerman’s teachings, a reason to combine Kermanwith
`
`Throckmorton, and a mapping of Kermanto the additional limitation recited
`in claim 5. Id. at 42-47.
`
`Patent Ownerarguesthe Petition does not mapthecited art to the
`
`claim language as construed by Petitioner, specifically the proposed
`construction of “so that the user has direct access to the online information.”
`Id. at 10-12. As discussed above, our construction is different from that
`|
`
`proposedbyPetitioner. Therefore, we look to Petitioner’s application of the
`
`cited art to the claim limitations as we have construed them. We have
`
`analyzed Petitioner’s challenges to claims 1-12 and are persuaded that
`
`Petitioner has shownsufficiently that Throckmorton teachesthe recited “so
`
`that the user has direct access to the online information,” as construed.
`
`Specifically, the cited portions of Throckmorton discussestablishing a
`
`connection between the consumerand the online information source,
`withoutthe program provider,or anyotherentity, acting as an intermediary.
`Id. at 16-18 (citing Ex. 1004, 9:1-12).
`Patent Owner’s primary contention regarding the teachings of the
`cited references is that Petitioner has not shown where the recited
`
`18
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`IPR2014-00269
`Patent 6,233,736
`
`“automatic”or “automatically,” in regards to establishing a connection,is
`found in Throckmorton. Prelim. Resp. 12-15. However, each ofPetitioner’s
`
`mappingsidentified by Patent Ownerstates that the connection is
`
`established automatically because the system performs the connection and
`
`retrieving. Jd. at 13-14. As discussed above, in each of the automatically
`
`establishing limitations, the connection is established in response to some
`
`user initiated command. Thus,in this case, as discussed in our construction
`of the automatically establishing limitations, the “automatic” or
`
`“automatically” means that the connection is established without further
`
`input from the user after receipt of the user initiated command. Therefore,
`
`weare persuadedPetitioner has shown sufficiently that Throckmorton
`
`teaches the automatically establishing limitations.
`
`Patent Owneralso arguesthat the Petition does not provide acomplete
`obviousness analysis. Id. at 15-17. In particular, Patent Owner argues that
`the Petition cites to disparate sections of Throckmorton(i.e., both of
`
`Throckmorton’s preferred embodiments) without explaining which of the
`
`embodimentsis being relied on for the proposed ground or how the two
`
`embodiments would be combinedto render the claims obvious. Jd. at 16-17.
`
`Patent Owneralso asserts the obviousness analysis is incomplete because
`
`the proposed motivation is conclusory and insufficient. Jd. at 17-19.
`We agree with the parties that Throckmorton teaches both a one-way
`communications embodiment and a two-way communications embodiment.
`Throckmorton’s disclosure indicates that both embodiments provide a
`
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`IPR2014-00269
`Patent 6,233,736
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`consumerwith access to online information during the process of program
`
`reception. As discussed above, Throckmorton’s description of the two-way
`
`communications embodimentexplains that the two-way communications
`embodimentadds a two-way communication channel to the system
`|
`described by the one-communications way embodiment. Ex. 1004, Abstract,
`8:16-9:25; See Pet. 9. Therefore, for purposes ofthis decision, we are
`
`persuaded by Petitioner’s argument that combining the two embodiments,
`for establishing a connection in response to a userinitiated command,is
`
`“simply combining elements contained in the same reference in precisely the
`
`mannerdescribedin the reference.” Pet. 13.
`
`I.
`
`CONCLUSION
`
`For the foregoing reasons, we determinethat Petitioner has shown a
`reasonablelikelihood that it would prevail in demonstrating that: (1) claims
`1-3 and 6-12 of the ’736 patent are unpatentable as obviousin view of
`Throckmorton; (2) claim 4 is unpatentable as obviousin view ofthe
`combination of Throckmorton and Williams; and (3) claim 5 is unpatentable
`as obviousin view of the combination of Throckmorton and Kerman. The
`
`Board has.not madea final determination on the patentability of any
`challenged claim.
`
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`IPR2014-00269
`Patent 6,233,736
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`IV. ORDER
`
`Forthe reasonsgiven,it is:
`
`ORDEREDthat pursuant to 35 U.S.C. § 314(a), an inter partes review
`is hereby instituted as to claims 1-12 of the ’736 patent;
`FURTHER ORDEREDthatthetrial is limited to the stated grounds
`and no other groundsare authorized; and
`FURTHER ORDEREDthat pursuant to 35 U.S.C. § 314(c) and 37
`C.F.R. § 42.4, the trial commences on the entry date ofthis decision, and
`notice is hereby given ofthe institution ofa trial.
`
`|
`
`21
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`IPR2014-00269
`Patent 6,233,736
`
`PETITIONER:
`
`Andrew S. Ehmke
`andy.ehmke.ipr@haynesboone.com
`
`Scott Jarratt
`scottjarratt.ipr@haynesboone.com
`
`PATENT OWNER:
`
`Erika H. Arner
`erika.arner@finnegan.com
`
`Joshua L. Goldberg
`joshua.goldberg@finnegan.com
`
`Russell Levine
`russell.levine@kirkland.com
`
`Eugene Goryunov
`eugene.goryunov@kirkland.com
`
`,
`
`22
`
`
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