Trials@uspto.gov
`571-272-7822
`
`Paper 8
`Entered: March 6, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HULU, LLC,
`Petitioner,
`
`Vv.
`
`INTERTAINER,INC.,
`Patent Owner.
`
`Case IPR2014-01456
`Patent 8,479,246
`
`Before MICHAEL W. KIM, BRIAN P. MURPHY,and
`JENNIFER M. MEYER,Administrative Patent Judges.
`
`MEYER,Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`Paper 8
`Entered: March 6, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HULU, LLC,
`Petitioner,
`
`Vv.
`
`INTERTAINER,INC.,
`Patent Owner.
`
`Case IPR2014-01456
`Patent 8,479,246
`
`Before MICHAEL W. KIM, BRIAN P. MURPHY,and
`JENNIFER M. MEYER,Administrative Patent Judges.
`
`MEYER,Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2014-01456
`Patent 8,479,246
`
`I
`
`INTRODUCTION
`
`Hulu, LLC (“Petitioner”) filed a Corrected Petition for inter partes
`
`review of claims 1—22 and 24-30 (“the challenged claims”) of U.S. Patent
`
`No.8,479,246 (Ex. 1001, “the ’246 patent”). Paper | (“Pet.”). Intertainer,
`
`Inc. (“Patent Owner’) timely filed a Preliminary Response. Paper 7
`
`(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314. The
`standardfor instituting inter partes reviewis set forth in 35 U.S.C. § 314(a),
`
`which providesthat inter partes review may notbeinstituted unless “there is
`
`a reasonable likelihood that the petitioner would prevail with respect to at
`
`least 1 of the claims challengedin the petition.”
`
`Patent Ownerindicates that claims 16-21, 23, 25, and 27—29 ofthe
`
`’246 patent were disclaimed via a “Disclaimer in Patent Under 37 C.F.R.
`
`§ 1.321(a)”filed September 16, 2014. See Prelim. Resp. 5; Ex. 2002.
`Accordingly, because Patent Ownerhas disclaimed claims 16-21, 23, 25,
`
`and 27—29, inter partes review maynotbeinstituted based on those claims.
`
`See 35 U.S.C. § 253(a); 37 C.F.R. § 42.107(e).
`For the reasons discussed below, we do not authorizeinstitution of.
`inter partes review as to any of the challenged claims.
`
`A.
`
`Related Proceedings
`
`Petitioner has been sued for infringement of the ’246 patentin a
`
`district court casetitled, Jntertainer, Inc. v. Hulu, LLC, No. 2:13-cv-05499
`
`(C.D. Cal.). Pet. 2. A covered business method patent review of the 246
`
`patentis currently pending before the Board. Id.; see Hulu, LLCv.
`
`Intertainer, Inc., Case CBM2014-00052 (PTAB). In addition, Petitioner has
`
`filed a petition for inter partes review ofcertain claims of Patent Owner’s
`
`
`
`IPR2014-01456
`Patent 8,479,246
`
`U.S. Patent No. 8,468,099 B2. See Paper 6, 3; Hulu, LLC v. Intertainer,
`
`Inc., Case IPR2014-01455 (PTAB).
`
`B.
`
`The ’246 Patent
`
`The ’246 patent, titled “System and Methodfor Interactive Video
`
`Content Programming,” issued on July 2, 2013. Ex. 1001, at [45], [54]. The
`
`’246 patent relates to a method for creating an interactive video, which
`
`includes one or moreinterface links associated with video content being
`
`displayed. Jd. at 1:59-60, 2:27-28. Whena userinteracts with an interface
`link, the video content is paused, andthe useris able to view ancillary
`
`content linked to the interface link over a network. Id. at 2:27-48, 6:59-
`
`7:22. Whenthe userelects to continue viewing the video content, the video
`
`is un-paused. Jd. at 7:22—26.
`
`‘C.—Hlustrative Claim
`
`Ofthe challenged claims, claim 1 is independent. Claims 2—15
`
`depend from claim 1. Claims 22, 24, 26, and 30 depend from independent
`claim 16.' Claim 1 of the ’246 patent, reproduced below,isillustrative 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;
`
`' Claim 16 hasbeenstatutorily disclaimed by Patent Owner,as discussed
`above.
`
`
`
`IPR2014-01456
`Patent 8,479,246
`
`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 secondsite; and
`
`(b) access ancillary content accessible over the
`network with a universal resource locator (URL) to a
`remote site where the 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;
`
`associating the link program with the video;
`streaming the video overthe 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.
`
`D.
`
`Applied References
`
`Petitioner relies upon the following references. Pet.4.
`
`
`
`
`
`
`Realplayer G2 User Manual, Chapter 4
`“Realplayer”
`U.S. Patent No. 6,496,981 B1
`“Wistendahl”
`U.S. Patent No. 7,139,813 Bl
`
`(“Wallenius”)
`
`Publication
`
`
`
`
`
`
`
`
`
`IPR2014-01456
`Patent 8,479,246
`
`
`Patent No./Publication Information|Date of Issuance/|Exhibit No.
`Publication
`
`
`Nov. 1999
`Ex. 1010
`
`
`
`
`
`
`
`
`
`Felix Hartanto & Harsha Sirisena,
`Hybrid Error Control Mechanismfor
`Video Transmission in the Wireless IP
`Networks, Proceedings of the IEEE
`Tenth Workshop on Local and
`
`Metropolitan Area Networks (Nov.
`1999)
`(‘“Hartanto”
`(“Chen”
`EP 0 840 241 Al
`U.S. Patent No. 5,796,952 (“Davis”)
`
`
`May 6, 1998
`Aug. 18, 1998
`
`
`
`Ex. 1014
`Ex. 1015
`
`Petitioner further relies on the Declaration of V. Michael Bove,Jr.
`
`(“Bove Declaration,” Ex. 1008).
`
`E.
`
`Asserted Grounds
`
`Petitioner challenges claims 1-15, 22, 24, 26, and 30 on the following
`
`grounds. Pet. 4, 12-59.
`[Reference(s)__—*|Basis__—'[Claim(s)Challenged
`
`, 4-9, 12-15, 22, 24, 26, 30
`—
`aa
`NY WwW
`
`
`
`
`
`
`
`
`
`
`
`
`—7, 10, 12-14, 22, 24, 26, 30
`
`met]pet we a
`
`3
`
`—
`
`
`
`Il.
`
`ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, a “claim in an unexpired patentshall be
`
`given its broadest reasonable construction in light of the specification of the
`
`patent in whichit appears.” 37 C.F.R. § 42.100(b); In re Cuozzo Speed
`
`Tech., LLC, No. 2014-1301, 2015 WL 448667, at *5—*8 (Fed. Cir. Feb. 4,
`
`2015). No issue in this Decision, however, requires explicit claim
`
`5
`
`
`
`IPR2014-01456
`Patent 8,479,246
`
`construction of any term. See, e.g., Wellman, Inc. v. Eastman Chem. Co.,
`
`642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be
`29>
`
`construed ‘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))).
`
`Asserted Grounds Based on Wallenius, Alone or in
`B.
`Combination with Realplayer
`
`Petitioner asserts that claims 1, 4-9, 12-15, 22, 24, 26, and 30 are
`
`unpatentable under 35 U.S.C. § 102(e) as anticipated by Wallenius, and that
`claims 2 and 3 are unpatentable under 35 U.S.C. § 103(a) as obvious in view
`
`of Wallenius and Realplayer. Pet. 12-30. Patent Ownerassertsthat
`
`Walleniusis not a valid prior art reference as to the ’246 patent. Prelim.
`
`Resp. 19.
`
`The ’246 patent issued from U.S. Patent Application No. 13/495,884
`
`(“the ’884 application”). Ex. 1001, at [21]. With the ’884 application,
`
`Applicants filed four Declarations under 37 C.F.R. § 1.131, one from each
`
`inventor of the ’246 patent, in order to show the claimed invention was
`reduced to practice prior to September 16, 1999.” Ex. 1002, 330-462, 475—
`519. Ina first Office Action, the Examinerrejected all of the claims under
`
`35 U.S.C. § 112, J 1, and under 35 U.S.C. §§ 102(e), 103 as being
`
`anticipated by Wallenius or obvious in view of Wallenius and additional
`
`references. Id. at 249-264. Applicants amended claim | and presented
`
`arguments addressing the 35 U.S.C. § 112, 41 rejection. Jd. at 159-166. In
`
`responsetotheart rejections, Applicants pointed the Examiner’s attention to
`
`? The filing date of Wallenius is November 1, 1999. Ex. 1005, at [22].
`
`
`
`IPR2014-01456
`Patent 8,479,246
`
`the Declarations under 37 C.F.R. § 1.131 filed with the application, arguing
`
`that “the rejection in view of Wallenius are mootin view of the Declarations
`
`under 37 C.F.R. § 1.131.” Jd. at 166. In response to a subsequent Final
`
`Rejection maintaining each of the rejections (id. at 127-143), Applicants
`
`submitted a Declaration under 37 C.F.R. § 1.132 providing additional
`
`evidence with respect to the Examiner’s claim construction, and that one of
`
`skill in the art would have understood the claimed invention to have been
`
`reduced to practice prior to the filing date of Wallenius. Jd. at 79-85. Based
`
`on the evidence submitted by Applicants, the Examinerissued a Notice of
`
`Allowance(id. at 23-28), indicating that the “affidavit[s] filed on 6/13/12
`
`under 37 CFR 1.131 [are] sufficient to overcome [Wallentus].” Jd. at 26.
`
`Petitioner asserts that the inventor’s 37 C.F.R. § 1.131 Declarations
`
`submitted during prosecution of the ’884 application are deficient, and that
`
`Walleniusis, in fact, valid prior art as to the ’246 patent. Pet. 14-16. In
`
`particular, Petitioner argues that the inventor Declarations submitted during
`
`prosecution of the ’884 application do not support a finding of reduction to
`
`practice of the subject matter recited in the challenged claims. Jd. Petitioner
`
`further argues that the Examiner in a reexamination proceeding of related
`
`U.S. Patent No. 7,870,592 (“the ’592 patent”) determined that similar
`
`37 C.F.R. § 1.131 Declarationsfiled in that proceeding failed to show
`
`reduction to practice. Id.
`
`Under 35 U.S.C. § 325(d), “[i]n determining whetherto institute or
`
`order a proceeding under this chapter, chapter 30, or chapter 31, the Director
`
`may take into account whether, andreject the petition or request because,the
`
`same or substantially the same prior art or arguments previously were
`
`presented to the Office.” As discussed, the samepriorart (i.e., Wallenius)
`
`
`
`IPR2014-01456
`Patent 8,479,246
`
`and arguments(i.e., Walleniusis a valid prior art reference that anticipates
`the challenged claims) were presented previously to the Office. Further, the
`Examinerof the ’884 application was aware ofthe related reexamination
`
`proceeding ofthe 592 patent (“the "592 reexamination”). See, e.g.,
`Ex. 1002, 168-170. The Examiner, however, determined that the inventor’s
`
`37 C.F.R. § 1.131 Declarations submitted in the ’884 application were
`
`sufficient to show reduction to practice of the subject matter recited in the
`
`claims ultimately issued in the ’246 patent, and the Examiner withdrew
`
`Walleniusas prior art thereto. Jd. at 26. We have reviewed independently
`
`the 37 C.F.R. § 1.131 Declarations submitted in the ’884 application, and
`
`determine that the Examiner’s reliance on the contents of the Declarations to
`
`support a showingofreductionto practice was reasonable. Further,
`Petitioner’s arguments with respect to the Examiner’s findings in the *592
`
`reexamination proceeding are inapposite, because the claimsat issue in the
`
`°592 reexamination proceeding werenotidentical to the claims of the ’246
`
`patent.
`For the foregoing reasons, we exercise our discretion and deny the
`
`asserted grounds based on Wallenius, alone and in combination with
`
`Realplayer, under 35 U.S.C. § 325(d).
`
`Asserted Grounds Based on Wistendahl, Alone or in
`C.
`Combination with Hartanto or Realplayer
`
`Petitioner asserts that claims 1, 4-7, 10, 12-14, 22, 24, 26, and 30 are
`
`unpatentable under 35 U.S.C. § 102(e) as anticipated by Wistendahl(Pet.
`
`32-45), that claim 15 is unpatentable under 35 U.S.C. § 103(a) as obvious in
`
`view of Wistendahl and Hartanto (Pet. 45—47), and that claims 2 and 3 are
`
`unpatentable under 35 U.S.C. § 103(a) as obvious in view of Wistendahl and
`
`
`
`IPR2014-01456
`Patent 8,479,246
`
`Realplayer (Pet. 47-49). As support, Petitioner provides detailed
`
`explanations as to how eachclaim limitation is disclosed in, or taught or
`
`suggested by,the cited references, as well as the Bove Declaration
`
`(Ex. 1008). Jd. at 32-49. Patent Owner responds that Wistendahl does not
`
`disclose every claim limitation of independent claims 1 and 16. Prelim.
`
`Resp. 23-32.
`
`We have reviewedthe parties’ contentions and supporting evidence.
`
`Forthe reasons discussed below, we are not persuadedthat Petitioner has
`
`shown a reasonablelikelihood of prevailing on its assertion that claims 1, 4—
`
`7, 10, 12-14, 22, 24, 26, and 30 are anticipated by Wistendahl, or that claims
`
`2 and 3, and 15 would have been obvious in view of Wistendahl in
`
`combination with Realplayer or Hartanto, respectively.
`
`1.
`
`Overview of Wistendahl
`
`Wistendahlrelates to a system for converting media content to be
`
`used as an interactive media program. Ex. 1004, Abstract. Media content
`
`(e.g., movies, TV programs, etc.) may be mapped with “hot spots” that link
`
`the TV content to Internet addresses. Jd. at 3:32-45, 5:27-50. “The
`
`coordinate/address data of the ‘hot spots’ are preferably in a standard format
`
`that can be accessedby any interactive digital media (IDM) program written
`
`to run with that media presentation.” Jd. at 5:38-41. The IDM program can
`
`be stored, for example, in a user’s TV set-top box, and operatesto allow the
`
`user to interact with an interactive media program. Jd. at 8:9-9:56,
`
`Figs. 3, 4.
`
`2. Analysis
`
`Independentclaim | recites “interrupting,at thefirst site, the
`
`streaming of the video in response to receiving the indication ofthe
`
`
`
`IPR2014-01456
`Patent 8,479,246
`
`interaction with the link program.” Ex. 1001, 9:65—67 (emphases added).
`
`Claim 16, from which challenged claims 22, 24, 26, and 28 depend,recites a
`
`similar limitation, “in response to receiving the indication [ofan interaction
`
`with the interface link] .
`
`.
`
`. interrupting, at the remote location, the streaming
`
`of the video at a point in timeso asto interrupt the streaming of the video
`
`over the network.” Jd. at 10:56—-59 (emphases added). We are not
`
`persuadedPetitioner has shown sufficiently that Wistendahl discloses either
`
`of these limitations.
`
`Noneofthe portions of Wistendahl cited by Petitioner discloses an
`
`interrupting of the video stream at the remote site and in response to
`
`receiving the indication of the interaction with the link program,as claimed.
`
`For example, Petitioner relies on the following passages of Wistendahlas
`
`disclosing the interrupting limitation of claim 1 (see Pet. 34, 36-37):
`
`To illustrate, upon the user clicking on the Maltese falcon, the
`hyperlink established in the “Movie Trivia Info” program can
`initiate a linked display of text or graphics explaining the
`Maltese origins of the falcon in a pop-up window on the
`television screen, or may execute another program function
`such asinitiating an Internet connection to a World Wide Web
`service which offers a replica of the falcon for purchase. .. .
`
`the IDM
`[U]pon selection by a user clicking on an object,
`program can issue an instruction via the console processor 40 to
`the video processor 48 to slow downor pausethe running ofthe
`movie to allow time for the user to absorb the IDM program
`response.
`
`Ex. 1004, 9:33-48.
`
`in video-on-demand or media-on-demand
`example,
`For
`systems, “streaming” content supplied in segments of digital
`data packets can be controlled with VCR-like controls by
`interrupting the content stream upon sending a command from
`
`10
`
`
`
`IPR2014-01456
`Patent 8,479,246
`
`subscriber and rescheduling the sending of content
`the
`segments as requested by the subscriber.
`
`Id. at 17:7-13.
`
`In thefirst passage, although the IDM program issues an instruction to
`
`pause the movie upona userclicking on an object, this pausing occursat
`
`video processor 48, whichis located in TV set-top box 32(e.g., at the
`
`claimed secondsite), and not at network server 30 (e.g., the claimed remote
`
`storage medium at the first site). See id. at 9:33-48, Figs. 3, 4. In the
`
`second passage, discussing other applications/embodiments of Wistendahl,
`
`the pause command(e.g., the claimed interrupting)is not initiated in
`
`responseto the user clicking on any hot-spot in the video; instead, the pause
`
`command comesfrom the user operating the “VCR-like controls” which
`
`allow the user to “stop, pause, rewind, or otherwise control the playback .. .
`
`to allow the user time to interact with the program.” Jd. at 16:66—17:6.
`
`A claim is unpatentable under 35 U.S.C. § 102 only if a single prior
`art reference expressly or inherently describes each and every limitation set
`
`forth in the claim. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368,
`1375 (Fed. Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628,
`631 (Fed. Cir. 1987). Further, a reference cannotanticipate “unless[it]
`
`discloses within the four corners of the documentnotonlyall of the
`
`limitations claimed|[,] but also all of the limitations arranged or combined in
`the same wayasrecited in the claim.” Net Moneyln, Inc. v. VeriSign, Inc.,
`
`545 F.3d 1359, 1371 (Fed. Cir. 2008). “[I]t is not enough that the priorart
`
`reference discloses part of the claimed invention, which an ordinary artisan
`
`might supplement to make the whole,or thatit includes multiple, distinct
`
`teachingsthat the artisan might somehow combineto achieve the claimed
`
`invention.” Jd. (citations omitted).
`
`11
`
`
`
`IPR2014-01456
`Patent 8,479,246
`
`Petitioner does not point us to persuasive evidence that Wistendahl
`
`discloses an embodiment in which theinterrupting of the video stream
`
`occurs both at the remote site and in response to receiving the indication of
`the interaction with the link program. Accordingly, we are not persuaded
`
`that Petitioner has demonstrated a reasonable likelihood of prevailing on its
`assertion that independentclaims 1 and 16, or claims 4—7, 10, 12-14, 24,26,
`and 30 which dependtherefrom,are anticipated by Wistendahl. Petitioner
`
`doesnotassert that claims | and 16 would have been obvious over
`
`Wistendahl, or that Hartanto or Realplayer remedies the deficiencies
`
`discussed above. Therefore, we are not persuadedthat Petitioner has
`
`demonstrated a reasonable likelihood of prevailing on its assertion that
`
`claims 2, 3, and 15 would have been obvious over the combination of
`
`Wistendahl with Realplayer or Hartanto, respectively.
`
`D.—Asserted Ground Based on Chen and Davis
`~
`In Hulu, LLCv. Intertainer, Inc., Case CBM2014-00052 (PTAB June
`23, 2014) (Paper 10), we instituted a covered business method patent review
`of, inter alia, each of claims 1-3, 5, 8, 10, 11, 13, and 14 under 35 U.S.C.
`
`§ 102(b) as anticipated by. Chen. CBM2014-00052 is currently pending
`
`before the Board; an oral hearing washeld on February 3, 2015. See Hulu,
`
`LLC v. Intertainer, Inc., Case CBM2014-00052 (PTAB Jan. 13, 2015)
`
`(Paper 28).
`
`In the instant proceeding, Petitioner asserts that claims 1-3, 5, 8, 10,
`
`11, 13, and 14 are unpatentable under 35 U.S.C. § 103(a) as obvious in view
`
`of Chen and Davis. Pet. 51-59. As pointed out by Patent Owner(Prelim.
`
`Resp. 3), Petitioner does not contend that the newly cited reference Davis
`
`was not knownoravailableto it at the time it filed its petition in CBM2014-
`
`12
`
`
`
`IPR2014-01456
`Patent 8,479,246
`
`00052. The asserted ground of unpatentability is nearly identical to the
`ground ofunpatentability pending decision in CBM2014-00052.> Compare
`Pet. 53-59, with CMB2014-00052 (Paper 1), 16-24. We, therefore, exercise
`
`our discretion and decline to institute inter partes review on this ground.
`
`See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(a).
`
`WI.
`
`CONCLUSION
`
`For the foregoing reasons, we concludethat the information presented
`
`in the Petition does not establish a reasonable likelihood that claims 1, 4—7,
`
`10, 12-14, 22, 24, 26, and 30 of the ’246 patentare anticipated by
`
`Wistendahl, or that claims 2 and 3, and 15 of the ’246 patent would have
`
`been obvious in view of Wistendahl in combination with Realplayer or
`
`Hartanto, respectively. Further, taking into accounttheparticular facts of
`
`this case, we exercise our discretion and decline to institute inter partes
`
`review on the asserted grounds based on Wallenius, alone and in
`
`combination with Realplayer, and on the asserted ground based on Chen and
`
`Davis.
`
`IV. ORDER
`
`Accordingly,it is
`
`ORDEREDthatthe Petition is denied, and notrial is instituted.
`
`3 Davis is relied upon only to “disclose and render obvious sending the
`decoder over the network to the user’s computer.” Prelim. Resp. 32—33
`(quoting Pet. 55-56).
`
`
`
`IPR2014-01456
`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
`tmartin@martinferraro.com
`docketing@martinferraro.com
`
`14
`
`
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