Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Entered: June 23, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`a
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HULU,LLC,
`Petitioner,
`
`V.
`
`INTERTAINER, INC.,
`Patent Owner.
`
`Case CBM2014-00052
`Patent 8,479,246
`
`Before MICHAEL W.KIM, BRIAN P. MURPHY,
`and JENNIFER M. MEYER,Administrative Patent Judges.
`
`MEYER,Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 CFR. § 42.208
`
`
`571-272-7822
`
`Paper 10
`Entered: June 23, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`a
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HULU,LLC,
`Petitioner,
`
`V.
`
`INTERTAINER, INC.,
`Patent Owner.
`
`Case CBM2014-00052
`Patent 8,479,246
`
`Before MICHAEL W.KIM, BRIAN P. MURPHY,
`and JENNIFER M. MEYER,Administrative Patent Judges.
`
`MEYER,Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 CFR. § 42.208
`
`
`
`CBM2014-00052
`‘Patent 8,479,246
`
`I.
`
`INTRODUCTION
`
`On December20, 2013, Hulu, LLC (‘Petitioner’) filed a Petition for a
`
`covered business method patent review of claims 1-30 of U.S. Patent No.
`8,479,246 (Ex. 1001, “the ’246 patent”). Paper 1. A corrected Petition was
`
`filed on January 14, 2014. Paper 8 (“Pet.”). The patent owner,Intertainer,
`
`Inc. (“Patent Owner’) did notfile a Preliminary Response.
`
`We havejurisdiction under 35 U.S.C. § 324. The standard for
`
`instituting a covered business method patent reviewis set forth in 35 U.S.C.
`
`§ 324(a), which provides as follows:
`
`THRESHOLD.—TheDirector may not authorize a post-
`grant review to be instituted unless the Director determines that
`the information presented in the petition filed under section
`321, if such information is not rebutted, would demonstrate that
`it is more likely than not that at least 1 of the claims challenged
`in the petition is unpatentable.
`_
`
`Petitioner challenges claims 1-30 of the ’246 patent as unpatentable
`
`under 35 U.S.C. §§ 102, 103, and 112. Upon consideration ofthe
`
`information presented in the Petition, we conclude that the Petitioner has
`
`demonstrated that it is more likely than not that certain challenged claims are
`
`unpatentable, as discussed below. Pursuant to 35 U.S.C. § 324 and § 18(a)
`
`of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`
`(2011) (‘AIA”), we hereby authorize a covered business method patent
`
`review to be instituted as to claims 1-3, 5, 8, 10, 11, 13-21, 23, 25, and 27-29
`
`of the ’246 patent. Institution of a covered business methodpatent review is
`not authorized as to challenged claims4, 6; 7, 9, 12, 22, 24, 26, and 30.
`
`
`
`CBM2014-00052
`Patent 8,479,246
`
`Related Proceedings
`A.
`Petitioner has been sued for infringement of the ’246 patent ina
`district court case titled, Intertainer, Inc. v. Hulu, LLC, No. 2:13-cv-05499
`(C.D. Cal.). Pet. 4. In addition to this proceeding, Petitioner has also
`
`petitioned for covered business method patent review of certain claims of
`
`Patent Owner’s U.S. Patent No. 8,468,099. See Hulu, LLC v. Intertainer,
`
`Inc., CBM2014-00053, Paper8.
`
`XN
`
`B.
`The ’246 Patent
`_ The ’246 patent, titled “System and MethodforInteractive Video
`Content Programming,” issued on July-2, 2013, based on application
`13/495,884 (“the ’884 application”), filed June 13, 2012. The ’884
`
`application is a continuation of application 13/228,181, filed September8,
`2011, which is a continuation of 12/930,456, filed January 7, 2011
`(abandoned), whichis a continuation of application 09/921,097,filed July
`31, 2001, which issued as U.S.Patent No. 7,870,592, which claims the
`
`benefit of provisional application 60/255,541, filed December 14, 2000.
`The ’246 patentrelates to a methodfor creating aninteractive video,
`
`whichincludes one or moreinterface links associated with video content
`
`being displayed. Ex. 1001, 1:59-60, 2:27-28. When a userinteracts with an
`
`interface link, the video content is paused, and the useris able to view
`
`ancillary content linked to the interface link over a network. Jd. at 2:27-48,
`6:59-7:22. Whenthe user. elects to continue viewing the video content, the
`video is un-paused. Id. at 7:22-26.
`
`
`
`CBM2014-00052
`Patent 8,479,246
`
`C.
`
`Illustrative Claim
`
`Ofthe challenged claims, claims 1 and 16 are independent. Claims
`2-15 depend from claim 1, and claims 17-30 depend from claim 16. Claim 1
`ofthe ’246 patent, reproduced below, is illustrative of the challenged claims:
`1. A method for creating an interactive video, the method
`comprising:
`
`encoding and storing the video onto a remote storage
`medium ata first site;
`
`creating a link program adapted to both:
`
`(a) interrupt streaming of the video at the remote
`storage medium to prevent streaming of the video over an
`Internet Protocol (IP)-based network to a second site; and .
`(b) access ancillary content accessible over the
`network with a universal resource locator (URL) to a
`remote site wherethe ancillary content is stored, the link
`program linking the ancillary content and the video to a
`point in time when the streaming of the video from the
`remote storage medium is interrupted;
`
`r
`
`associating the link program with the video;
`
`streaming the video over the network for display;
`
`providing the link program overthe network;
`
`receiving an indication of an interaction with the link
`program;-
`
`interrupting, at the first site, the streaming of the video in
`response to receiving the indication of the interaction with the
`link program; and
`
`continuing the streaming of the video over the network
`from the point in time when the streaming of the video was
`interrupted.
`
`Ex. 1001; 9:45-10:3.
`
`
`
`CBM2014-00052
`Patent 8,479,246
`
`D.
`
`The Applied References
`
`Petitioner relies upon the following references. Pet. 5.
`
`
`Te Ry
`on
`fIssuance/ |Exhit
`
`oO.
`
`=
`
`
`
`
`
`EP 0 840 241 Al (“Chen”)|May 6, 1998 Ex. 1003
`
`oe eg Pate
`
`““Wistendah!”
`
`“Wallenius”
`Felix Hartanto & Harsha
`Sirisena, Hybrid Error
`Control Mechanism for
`Video Transmission in the
`Wireless IP Networks,
`Proceedings of the IEEE
`Tenth Workshop on Local
`and Metropolitan Area
`Networks (Nov. 1999)
`
`November 1999
`
`Ex. 1010
`
`‘
`
`Realplayer G2 User
`Manual, Chapter 4
`
`Copyright: 1998-1999
`
`Ex. 1011
`‘
`
`Petitioner further relies on the Declaration of V. Michael Bove, Jr.
`
`(“Bove Declaration,” Ex. 1008).
`
`E.
`
`The Asserted Grounds
`
`Basis. Basis
`
`ae
`
`§ 102(b)!
`
`|Reference(s)
`
`' Petitioner indicates Chen is a reference under § 102(a). Pet. 15. Chen,
`however, is a reference under § 102(b), even if the challenged claims are
`entitled to the priority date of the provisional application (December14,
`2000), which is more than oneyearafter the publication date of Chen (May
`
`
`
`CBM2014-00052
`Patent 8,479,246
`
`jaimeiChallenged.so
`
`14, 16-21, 23, 25, 27,
`
`aS*
`
`SsDeieofPreeeres!
`
`a
`
`
`
`
`
`Domes
`Reference(s
`
`3
`Chen, Hartanto
`
`Wallenius, Realplayer
`Wistendahl
`
`Wistendahl, Hartanto
`Wistendahl, Realplayer
`
`
`
`Te
`o
`
`
`
`
`
`
`
`
`No \o
`15, 28
`1, 4-9, 12-16, 19-22,
`24-30
`2, 3, 17, 18
`
`
`1, 4-7, 10, 12-14, 16,
`
`
`19-22, 24, 26-28, 30
`
`
`
`
`15, 28
`
`2, 3, 17, 18
`
`
`
`
`__|written description
`
`
`
`
`indefiniteness
`Il.
`ANALYSIS
`
`§ 103
`
`§ 103
`§ 102(e)
`
`§ 103
`§ 103
`
`A. Claim Construction
`
`In a covered business methodpatent review,a “claim in an unexpired
`patent shall be given its broadest reasonable construction in light ofthe
`
`specification of the patent in which it appears.” 37 C.F.R. § 42.300(b).
`
`Underthis standard, we construe claim terms using “the broadest reasonable
`
`meaning of the wordsin their ordinary usage as they would be understood
`
`by one of ordinary skill in the art, taking into account whatever
`enlightenment by way ofdefinitions or otherwise that may be afforded by
`the written description contained in the applicant’s specification.” In re
`
`Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We presume that claim terms
`
`have their ordinary and customary meaning. See In re Translogic Tech.,
`
`6, 1998). We, thus, consider Chen to be asserted under § 102(b) for
`purposesof this decision.
`
`
`
`CBM2014-00052
`Patent 8,479,246
`
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary
`meaning is the meaningthat the term would have to a person of ordinary
`skill in the art in question.” (citation omitted) (internal quotation marks
`
`omitted)). This presumption, however, may be rebutted when the patentee
`
`acts as his own lexicographer, giving the term a particular meaning inthe |
`
`specification with “reasonable clarity, deliberateness, and precision.” Jn re
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`‘Petitioner provides proposed constructions for several claim terms,
`
`each of which we address below. In construing the claims, we have applied
`the broadest reasonable construction, taking into account the plain meaning
`ofthe terms and their usage in the specification.
`1.
`“link program”
`
`Independent claim 1, along with dependent claims 4-14, recites
`
`“creating a link program adapted to both: (a) interrupt streaming of the
`
`video ... and (b) access ancillary content.” Ex. 1001, 9:49-54. Petitioner.
`proposes that the term “link program” should be construed as “a set of
`instructions that allows the videoto be linked with ancillary content.”
`
`Pet. 14. Petitioner.notes this is the same construction proposed by Patent
`Ownerintherelatedlitigation. Id. (citing Ex. 1009,7).
`The ’246 patent does not explicitly define “link program.” The
`
`specification, however, describes how the “link program” operates when a
`link is selected—“to interrupt the delivery of video to a visual display and
`
`* Intertainer August 20, 2012 Supplemental Responses to Hulu
`Interrogatories.
`
`
`
`CBM2014-00052
`Patent 8,479,246
`
`provide accessto ancillary content accessible over a network.” Ex. 1001,
`
`2:44-48; see id. at 5:19-6:32; 6:59-26.
`
`The clear language of the claim indicates that the term “link”is
`merely an adjective modifying the term “program.” Merriam-Webster’s
`Online Dictionary defines “program”as “a set of instructionsthat tell a
`computer what to do.” MERRIAM-WEBSTER, http://www.merriam-
`webster.com/dictionary/program (last visited May 20, 2014).
`
`Wedetermine Petitioner’s proposed construction of “link program”is
`not the broadest reasonable interpretation. Petitioner’s proposed
`|
`construction includes a description of the functionality of the program. The
`
`claim language, however, explicitly defines the functionality of the “link
`
`program,”following the recitation thereof. We, thus, rely heavily on the
`ordinary and customary meaning of “program”set forth above, and construe
`the term “link program”as “a set of instructions that tells the computer what
`
`to do whena link is selected.” This definition is consistent with the
`
`specification of the ’246 patent.
`
`“providing”
`2.
`Independentclaims 1 and 16 each includethe term “providing.”
`
`Claim 1 recites “providing the link program overthe internet.” Ex. 1001,
`9:62. Claim 16 recites a “method for providing an interactive video.”
`
`Ex. 1001, 10:45. Petitioner proposes the term “providing” should be
`construed as “to make available”or “to supply,” citing to Merriam-Webster
`dictionary. Pet. 14; see MERRIAM-WEBSTER,http://www.merriam-
`
`webster.com/dictionary/provide(last visited June 4, 2014). We have
`
`considered Petitioner’s proposed construction, andit is consistent with the
`
`
`
`CBM2014-00052
`Patent 8,479,246
`
`specification of the ’246 patent. Thus, we adopt Petitioner’s claim
`
`construction as the proper broadest reasonable construction.
`
`3.
`
`“ancillary content”’
`
`.
`
`Independentclaims 1 and 16, along with dependent claims 14 and
`
`24-26, each include the term “ancillary content.” Petitioner proposes the
`
`term “ancillary content” should be construed, as described in the
`
`specification of the ’246 patent, as “any content or page of content linked to
`
`the primary content or content linked therefrom.” Pet. 14-15 (citing
`
`_ Ex. 1001, 2:16-18). We have considered Petitioner’s proposed construction,
`
`andit is consistent with the specification of the ’246 patent. Thus, we adopt
`
`Petitioner’s claim construction as the proper broadest reasonable
`
`construction.
`
`B.
`
`Covered Business Method Patent
`
`A “covered business method patent” is a patent that “claims a method
`
`or corresponding apparatus for performing data processing or other
`operations used in the practice, administration, or managementofafinancial
`product or service, except that the term doesnot include patents for
`
`technological inventions.” AJA § 18(d)(1); see 37.C.F.R. § 42.301(a). For
`
`purposes of determining whethera patentis eligible for a covered business .
`
`method patent review, the focus is on the claims. See Transitional Program
`for Covered Business Method Patents—Definitions of Covered Business
`
`Method Patent and Technological Invention; Final Rule, 77 Fed. Reg.
`
`48,734, 48,736 (Aug. 14, 2012). A patent need have only one claim directed
`
`to a covered business methodto be eligible for review. Jd.
`
`
`
`CBM2014-00052
`Patent 8,479,246
`
`1.
`
`Financial Product or Service
`
`In promulgating rules for covered business method patent reviews,the
`Office considered the legislative intent and history behind the AIA’s
`
`definition of “covered business methodpatent.” Jd. at 48,735-36. The
`“legislative history explains that the definition of covered business method
`
`- patent was drafted to encompasspatents ‘claiming activities that are
`
`financial in nature, incidental to a financial activity or complementary to a
`financial activity.”” Jd. at 48,735 (citing 157 Conca. REC. $5432 (daily ed.
`Sept. 8, 2011) (statement of Sen. Schumer)). The legislative history
`
`indicates that “‘financial productor service’ should be interpreted broadly.”.
`Id.
`.
`
`Petitioner contends that the ’246 patent is a covered business method
`
`patent becauseit claimsactivity thatis “financial in nature.” Pet.3. We
`
`agree with Petitioner that the ’246 patent claims subject matter that is
`
`“financial in nature, incidentalto a financial activity or complementary to a
`financial activity.” See 77 Fed. Reg. at 48,735. As noted by Petitioner, the
`_ specification and claimsofthe ’246 patentare directed to the “interrupting
`
`of a streaming video in order to view or interact with ancillary content,”
`which can include “advertisements and specialized e-commerce
`
`opportunities.” Pet. 3 (citing Ex. 1001, 3:2-3, claims 24, 26). Claim 24, for
`
`example, specifically recites “conducting a commercial transaction using the
`
`interface link.” Ex. 1001, 11:17-18. We, thus, conclude that claim 24
`
`satisfies the “financial product or service” componentofthe definitionset
`
`forth in § 18(d)(1) of the AIA.
`
`10
`
`
`
`CBM2014-00052
`Patent 8,479,246
`
`2.
`
`Exclusion for Technological Inventions
`
`The definition of “covered business method patent” in § 18(d)(1) of
`
`the AIA does not include patents for “technological inventions.” To
`
`determine whethera patent is for a technological invention, we consider
`“whether the claimed subject matter as a wholerecites a technological
`feature that is novel and unobviousoverthe prior art; and solves a technical
`problem using a technical solution.” 37 C.F.R. § 42.301(b). The following
`~ claim drafting techniques, for example, typically donot render a patent a
`“technological invention”:
`
`(a) Mere recitation of known technologies, such as
`computer hardware, communication or computer networks,
`software, memory,
`computer-readable
`storage medium,
`scanners, display devices or databases, or specialized machines,
`such as an ATMorpointofsale device.
`
`(b) Reciting the use of known prior art technology to
`accomplish a processor method, even if that process or method
`is novel and non-obvious.
`
`.
`
`(c) Combiningprior art structures to achieve the normal,
`expected, or predictable result of that combination.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763-64 (Aug.
`
`14, 2012).
`Petitioner contendsthat the ’246 patent does not claim a technological
`feature that is novel and unobviousoverthe priorart, nor doesit solve a |
`technical problem using a technical solution. Pet. 3-4. Specifically,
`
`Petitioner contendsthat the claims of the ’246 patent are “directed to
`providing streaming video to consumers with links to ancillary content,”
`bothof which were well known in the art.
`/d. at 3. We agree with Petitioner
`
`that the ’246 patent is not for a technological invention, because we are
`
`
`
`
`
`CBM2014-00052 |
`Patent 8,479,246 ©
`
`unableto identify any limitation of claim 24 that is a technological feature
`that is novel or unobviousoverthepriorart.
`
`Because both prongs mustbesatisfied for-a patent to be excluded
`
`from covered business methodpatent review for being a technological
`
`invention, we concludethat claim 24 does not define a “technological
`
`invention” within the meaning of 37 C.F.R. § 42.301(b), and that the
`
`*246 patentis eligible for a covered business method patent review.
`
`The Asserted Grounds of Unpatentability Based upon 35 U.S.C.
`-C.
`§ 102(e) Prior Art References
`Petitioner contendsthat claims 1, 4-9, 12-16, 19-22, and 24-30 of the
`. 246 patent are unpatentable under 35 U.S.C. § 102(e) as anticipated by
`Wallenius, claims 2, 3, 17, and 18 are unpatentable under 35 U.S.C. § 103 as
`
`obvious based on Wallenius and Realplayer, claims 1, 4-7, 10, 12-14, 16,
`
`19-22, 24, 26-28, and 30 are unpatentable under 35 U.S.C. § 102(e) as
`anticipated by Wistendahl, claims 15 and 28 are unpatentable under
`
`35 U.S.C. § 103 as obvious based on Wistendahl and Hartanto, and claims 2,
`
`3, 17, and 18 are unpatentable under 35 U.S.C. § 103 as obvious based on
`
`Wistendahl and Realplayer.’ Pet. 30-69.
`
`Petitioner’s groundsasserting anticipation or obviousnessofthe
`challenged claims on the basis of Wallenius or Wistendahlare defective
`because each of these references is asserted to be priorart to the challenged
`
`claims only under pre-AIA 35 U.S.C. § 102(e). Such § 102(e) references do
`not qualify as prior art on which a covered business method patent review
`may be based. See AIA § 18(a)(1)(C); Liberty Mut. Ins. Co. v. Progressive
`
`Cas. Ins. Co., CBM2012-00010,slip op. at 28 (PTAB Feb. 25, 2013) (Paper
`16) (recognizing that § 102(e) references do not qualify as prior art under
`
`12
`
`
`
`CBM2014-00052
`Patent 8,479,246
`
`AIA § 18(a)(1)(C)); MeridianLink, Inc. v. DH Holdings, LLC, CBM2013-
`
`00008; slip op. at 2 (PTAB Sept. 12, 2013) (Paper 24)(stating that, although
`a reference maybeprior art under § 102(e), it does not meetthe criteria to
`
`support a challenge under AJA § 18(a)(1)(C)).
`The ’246 patent was filed June 13, 2012, and claimspriority to
`application 09/921,097,filed July 31, 2001, and to provisional application
`
`_ 60/255,541, filed December 14, 2000. Ex. 1001.
`
`Wallenius issued in 2006 from an application filed in 1999, and was
`
`not published prior to issuance. Ex. 1005. Thus, Walleniusis priorart to the
`
`°246 patent only under pre-AIA 35 U.S.C. § 102(e), as Petitioner
`acknowledges. Pet. 30-31. Accordingly, Walleniusis not prior art upon
`which a covered business method patent review may beinstituted.
`Wistendahlissued in 2002 from anapplication filed in 1997, and was
`not published prior to issuance. Ex. 1004. Thus, Wistendahlis prior art to
`
`the °246 patent only under pre-AIA 35 U.S.C. §-102(e), as Petitioner
`
`acknowledges. Pet. 50-51. Accordingly, Wistendahlis not prior art upon
`which a covered business methodpatent review may beinstituted.
`BecauseeachofPetitioner’s anticipation or obviousness groundsthat
`is based, at least in part, upon either Wallenius or Wistendahlrelies upon at
`least one reference that is unavailableas prior art on which a covered
`business method patent review may beinstituted, we deny review on each of
`these grounds.
`D.
`Anticipation by Chen
`Petitioner contends that claims 1-3, 5, 8, 10, 11, 13, 14, 16-21, 23, 25,
`27, and 29 of the ’246 patent are unpatentable under 35 U.S.C. § 102(b) as
`anticipated by Chen. Pet. 15-28. In support ofthe asserted grounds of
`
`13
`
`
`
`CBM2014-00052
`Patent 8,479,246
`
`unpatentability, Petitioner sets forth teachings of Chen, provides detailed
`claim charts, and cites to the Bove Declaration, explaining how each claim
`limitation is disclosed in Chen.
`
`Chendiscloses a methodfor indicating a location of time dependent
`
`hot-link regions in a video. Ex. 1003, Abstract. The video can be streamed
`from a URL and displayed on a computer monitor. /d. at 3:30-41, 4:29-34.
`The streaming video is encoded with embeddedhot-links, which point to
`
`various URLs connected to a computer network. Jd. at 4:4-10. When a user
`
`clicks on a hot-link, the video is paused and the selected hot-link data is
`
`/d. at 4:20-35. The user may resume
`displayed on the computer monitor.
`the video by clicking on the play button. /d. at 38-40.
`
`Weare persuadedbyPetitioner’s contentions and supporting evidence
`that claims 1-3, 5, 8, 10, 11, 13, 14, 16-21, 23, 25, 27, and 29 of the ’246
`
`patent are, more likely than not, unpatentable under 35 U.S.C. § 102(b) as
`anticipated by Chen. Pet. 15-28. For example, with respect to independent
`claim 1, Chen discloses an MPEG encoded video, which includes embedded
`
`hot-links, is stored at a remote location, and is streamed over a networkto a
`
`computer. Ex. 1003, 3:36-41, 4:4-19, 4:28-34, 5:55-6:1, 6:48-7:2; see
`
`Ex. 1008 { 17, 18. In responseto selection of a hot-link, a signal is
`
`transmitted from the computer to an encoded URL requesting delivery of a
`
`linked htmlfile. Ex. 1003, 4:20-25; see Ex. 1008 4 9, 19. The linked html
`
`file is accessed over the network via the URL andis delivered to the
`computer. Ex. 1003, 4:20-25; see Ex. 1008 il 9, 19. The computer then
`executes the htmlfile and text or multimedia data is displayed on a monitor.
`Ex. 1003, 4:23-27; see Ex. 1008 § 16. While this data is displayed, the video
`
`is paused. Ex. 1003, 4:28-34; see id. at 7:30-33; Ex. 1008 § 16. The user
`
`14
`
`
`
`CBM2014-00052
`Patent 8,479,246
`
`may resumethe video by clicking a play button on the video. Ex. 1003,
`4:38-40; see Ex. 1008 § 20. Weare persuaded similarly by Petitioner’s
`
`contentions and supporting evidence concerning claims 2-3, 5, 8, 10, 11, 13,
`
`14, 16-21, 23, 25, 27, and 29.
`Weare persuaded that Petitioner has demonstrated that it is more
`likely than not that claims 1-3, 5, 8, 10, 11, 13, 14, 16-21, 23, 25, 27, and 29
`ofthe °246 patent are anticipated by Chen.
`
`E.
`
`Obviousness in view ofChen and Hartanto
`
`Petitioner contends that claims 15 and 28 of the ’246 patent are
`
`unpatentable under 35 U.S.C. § 103 as obvious based on Chen and
`Hartanto.’ Pet. 28-30. In support of the asserted groundsof unpatentability,
`
`Petitioner sets forth teachings of Chen and. Hartanto, provides detailed claim
`
`charts, and cites to the Bove Declaration, explaining how each claim
`
`limitation is disclosed in, or rendered obvious by, Chen and Hartanto.
`
`Claims 15 and 28 eachrecite that the network includes a wireless
`
`. network. Ex. 1001, 10:43-44, 12:10-11. Petitioner contends that use of
`wireless networks as a mechanism for the transmission of videos was well
`
`knownin the art prior to the filing date of the 246 patent, and provides
`declaration evidencethat oneofskill in the art would understand the
`
`network for data transfer could be a wireless network. Pet. 28-29; Ex. 1008
`
`> Petitioner indicates that Hartanto is from an IEEE conference, and was
`published in 1999. We note, however, that Hartanto doesnotinclude a
`publication.date on the face of the reference. Because the Bove Declaration
`relies on this document as evidence of what was knownto one of ordinary
`skill in the art at the time of the invention, we will credit the 1999 dateto the
`reference for purposesof this decision.
`
`15
`
`
`
`CBM2014-00052
`Patent 8,479,246
`
`4 24. Petitioner cites Hartanto as an example ofdisclosure of wireless
`
`networks used with video transmission. Jd. Petitioner further contendsthat
`
`the combination of using a wireless network connectionas the network of
`
`Chen would haveyielded a predictable result. Pet. 29-30; Ex. 1008 { 24.
`
`Weare persuadedthat Petitioner has demonstrated that it is more
`
`likely than not that claims 15 and 28 of the ’246 patent are obvious over
`
`Chen and Hartanto.
`
`Grounds Under 35 U.S.C. e124 1
`F.
`_
`Petitioner contendsthat claims 1 and 4-14 lack adequate written
`description under 35 U.S.C. § 112] 1.’ Pet. 70-71. We are not persuaded
`that Petitioner has demonstrated that it is more likelythan not that the claims
`
`lack written description.
`
`-
`
`The written description requirement of 35 U.S.C. § 112 4 1 requires
`that “the disclosure ofthe application relied upon reasonably convey[] to
`those skilled in the art that the inventor had possession of the claimed
`
`subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co.,
`
`598 F.3d 1336, 1351 (Fed. Cir. 2010). One shows“possession” by
`
`descriptive means such as words,structures, figures, diagrams, and formulas
`that set forth fully the claimed invention. Lockwoodv. American Airlines,
`
`Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). It is insufficient for purposes of
`the written description requirementthat “the disclosure, when combined
`with the. knowledge in the art, would lead one to speculate as to
`
`* Section 4(c) of the AIA re-designated 35 U.S.C. § 112 7 1, as 35 U.S.C.
`§ 112(a). Because the ’246 patent has a filing date before September 16,
`2012 (the effective date of the relevant section of the AIA), we will refer to
`the pre-AIA version of 35 U.S.C. § 112 in this decision.
`
`16
`
`
`
`CBM2014-00052
`Patent 8,479,246
`
`modifications that the inventor might have envisioned,but failed to
`disclose.” Id. “One showsthat oneis ‘in possession’ ofthe invention by
`describing the invention, with all its claimed limitations, not that which
`
`makesit obvious.” Jd. (emphasis original). “[T]he hallmark of written
`
`description is disclosure. .
`
`.
`
`. [T]he test requires an objective inquiry into the
`
`four corners of the specification from the perspective of a person of ordinary
`
`skill in the art.” Ariad, 598 F.3d at 1351. Also, the claimed invention does
`not have to be described in ipsis verbis in the specification to satisfy the
`written description requirement. Union Oil Co. of Cal. v. Atlantic Richfield
`
`Co., 208 F.3d 989, 1000 (Fed. Cir. 2000). Compliance with the written
`
`description requirementis a question of fact. Ralston Purina Co. v. Far-
`
`Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985).
`
`Petitioner asserts that the specification of the ’246 patent does not
`
`provide sufficient structure for the claimed “link program,” or describe how
`
`the “link program”performsthe functions of interrupting the delivery of
`
`video to a visual display, or providing accessto ancillary content accessible
`
`over a network. Pet. 71. Petitioner further asserts, for example, that the
`specification does not disclose any algorithm for performing these functions.
`
`Id.
`
`The specification of the ’246 patent, however, describes “creating a
`
`link program adaptedto interrupt the delivery of video to a visual display
`and provide accessto ancillary content accessible over a network.”
`Ex. 1001, 2:45-48. The specification further discusses, in more detail, the
`creation and operation of links. See id. at 5:19-6:32; see also Ex. 1008 4 9
`(declaration testimony that “any disclosure of a computer function
`
`_ associated with hyperlinks and video streaming would be disclosure of a
`
`17
`
`
`
`CBM2014-00052
`Patent 8,479,246
`
`999
`‘link program’”). In view this disclosure, and our construction of“link
`
`program”discussed above, weare not persuadedthat Petitioner has
`
`demonstrated that it is more likely than not that claims 1 and 4-14 lack
`
`written description under 35 U.S.C. § 112 41.
`G.
`Grounds Under 35 US.C. § 11292
`Petitioner contends that claim 1 and 4-14 are indefinite under
`
`35 U.S.C. § 112 9 2.° Pet. 71-73. Petitioner contends that the claim term
`
`“link program”renders indefinite independent claim 1 and dependent claims
`
`' 4-14. Id. at 72-73. Petitioner argues that no definition is given in the
`specification for this claim term. /d. at 72. We are not persuadedthat
`Petitioner has demonstrated that it is more likely than not that the claims are
`
`indefinite.
`
`The scope of the claims must be sufficiently definite to inform the
`
`public of the boundsofthe protected invention, i.e., what subject matter is
`coveredby the exclusiverights of the patent. Halliburton Energy Servs. Inc.
`v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008).
`Petitioner contendsthat the claim term “link program”is defined with
`purely functional language. Pet. 72-73. As discussed above, we have
`‘construedthe term “link program” as“a set ofinstructionsthattells the
`computer what to do whena link is selected.” Claim 1 further includes
`
`explicit recitation of the functional requirements of these “instructions.” We
`
`are not persuadedthatPetitioner has providedsufficient evidence as to why
`
`> Section 4(c) of the AIA re-designated 35 U.S.C. § 112 2, as 35 U.S.C.
`§ 112(b). Because the ’246 patent hasa filing date before September 16,
`2012 (the effective date of the relevant section of the AIA), we will refer to
`the pre-AIA version of 35 U.S.C. § 112 in this decision.
`.
`
`18
`
`
`
`CBM2014-00052
`Patent 8,479,246
`
`a person skilled in the art, in view ofthe specification, would not have
`
`understood the scope of claim 1. For the foregoing reasons, we determine
`thatPetitionerfails to demonstratethat it is more likely than not that claim 1,
`and claims 4-14 which dependtherefrom, are indefinite under 35 U.S.C.
`§ 11242.
`|
`
`II.
`
`CONCLUSION
`
`For the foregoing reasons, we conclude that the information presented
`
`in the Petition establishes that it is more likely than not that claims 1-3, 5, 8,
`10, 11, 13-21; 23, 25, and 27-29 ofthe ’246 patent are unpatentable. The
`Board, however, has not made a final determination under 35 U.S.C.
`
`§ 328(a) with respect to the patentability of the challenged claims.
`
`IV. ORDER
`
`Accordingly,it is
`ORDEREDthatpursuant to 35 U.S.C.§ 324(a) and § 18(a) of the
`AIA, a covered business methodpatent review is hereby instituted as to
`
`claims 1-3, 5, 8, 10, 11, 13-21, 23, 25, and 27-29 ofthe ’246 patent for the
`
`following grounds:
`
`A. claims 1-3, 5, 8, 10, 11, 13, 14, 16-21, 23, 25, 27, and 29 as
`unpatentable under 35 U.S.C. § 102(b) as anticipated by Chen; and
`
`B. claims 15 and 28 as unpatentable under 35 U.S.C. § 103 as obvious
`over Chen and Hartanto;
`|
`.
`FURTHER ORDEREDthatall other groundsraised in the Petition are
`
`denied for the reasons discussed above; and
`
`19
`
`
`
`~
`
` CBM2014-00052
`Patent 8,479,246
`
`FURTHER ORDEREDthat pursuant to 35 U.S.C. § 324(d) and 37
`CER. § 42.4, notice is hereby given ofthe institution ofatrial; the trial
`commencingonthe entry date ofthis Order.
`
`20
`
`
`
`CBM2014-00052
`Patent 8,479,246
`
`~ PETITIONER:
`
`Eliot Williams
`HarperBatts
`BAKER BOTTS LLP
`eliot.williams@bakerbotts.com
`harper.batts@bakerbotts.com
`
`PATENT OWNER:
`
`AmedeoF. Ferraro
`Thomas H. Martin
`MARTIN & FERRARO, LLP
`aferraro@martinferraro.com
`docketing@martinferraro.com
`
`21
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
