Trials@uspto.gov
`571-272-7822
`
`Paper 35
`_
`Entered: June 12, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HULU, LLC,
`Petitioner,
`
`Vv.
`
`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.
`
`FINAL WRITTEN DECISION
`35 USC. § 328(a) and 37 CFR. § 42.73
`
`
`571-272-7822
`
`Paper 35
`_
`Entered: June 12, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HULU, LLC,
`Petitioner,
`
`Vv.
`
`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.
`
`FINAL WRITTEN DECISION
`35 USC. § 328(a) and 37 CFR. § 42.73
`
`
`
`CBM2014-00052
`Patent 8,479,246
`
`I.
`
`INTRODUCTION
`
`Wehavejurisdiction to hear this covered business method patent
`
`review under 35 U.S.C. § 6(c). This Final Written Decision is issued
`pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73. For the reasons
`discussed herein, we determine that Petitioner has shown, by a
`
`.
`
`preponderanceofthe evidence, that claims 1-3, 5, 8, 10, 11, and 13-15 of
`
`U.S. Patent No. 8,479,246 (Ex. 1001, “the ’246 patent”) are unpatentable.
`
`A. Procedural History
`
`Hulu, LLC (‘Petitioner’) filed a Petition (Paper8, “Pet.”) seeking a
`
`covered business methodpatent review of claims 1-30 (‘the challenged
`
`claims’’) of the ’246 patent pursuant to § 18(a) of the Leahy-Smith America
`Invents Act (“AIA”).' Petitioner included a Declaration of V. Michael
`
`Bove, Jr. (Ex. 1008, “Bove Declaration”) to support its positions.
`
`On June 23, 2014, weinstituted a covered business methodpatent
`
`review of someofthe challenged claims on the following grounds of
`
`unpatentability: 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
`claims 15 and 28 as unpatentable under 35 U.S.C. § 103 as obvious over
`Chen and Hartanto.’ Paper 10 (“Inst. Dec.”).
`
`' Pub. L. 112-29, 125 Stat. 284, 329 (2011).
`> EP 0 840 241 AI, published May 6, 1998 (Ex. 1003).
`3 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) (Ex. 1010).
`
`
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`CBM2014-00052
`Patent 8,479,246
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`Subsequentto institution, Intertainer, Inc. (“Patent Owner”) filed a
`
`Patent Owner Response (Paper 19, “PO Resp.”), and Petitioner filed a Reply
`
`(Paper 22, “Pet. Reply’) thereto.
`
`Patent Owneralso hasfiled with the Office a statutory disclaimer
`
`under 37 U.S.C. § 1.321(a) with respect to claims 16-21, 23, 25, and 27-29.
`
`PO Resp. 3; Ex. 2003. Asaresult, only claims 1-3, 5, 8, 10, 11, and 13-15
`
`(“the reviewed claims”) remain under review in this proceeding. See
`
`37 C.F.R. § 42.207(e).
`
`Also before us is Petitioner’s Motion to Exclude (Paper 25, “Mot. to
`
`Excl.”’), Patent Owner’s Opposition to the Motion (Paper 29), and
`
`Petitioner’s Reply (Paper 30).
`
`Anoral hearing was held on February 3, 2015. A transcript of the
`
`hearing is included in the record. Paper 34 (“Tr.”).
`
`B. Related Proceeding
`
`Patent Ownerhasasserted the ’246 patent against Petitioner in
`
`Intertainer, Inc. v. Hulu, LLC, No. 2:13-cv-05499 (C.D. Cal.). Pet. 4.
`
`C. The '246 Patent
`
`The ’246 patent,titled “System and Methodfor Interactive Video
`
`Content Programming,” issued on July 2, 2013. The ’246 patent relates to a
`
`method for creating an interactive video, which includes one or more
`
`interface links associated with video content being displayed. Ex. 1001,
`
`1:59-60, 2:27-28. Whenauser interacts with an interface link, the video
`content is paused, andthe user is able to view ancillary content linked to the
`
`interface link over a network.
`
`/d. at 2:27-48, 6:59-7:22. Whenthe user
`
`elects to continue viewing the video content, the video is un-paused. Jd. at
`
`7:22-26.
`
`
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`CBM2014-00052
`Patent 8,479,246
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`D. Illustrative Claim
`
`Of the reviewed claims, claim 1 is independent, and each of claims
`
`2, 3, 5, 8, 10, 11, and 13-15 dependsdirectly from claim 1. Claim 1 of
`
`the ’246 patent, reproduced below,is illustrative of the reviewed claims:
`
`1. A methodfor creating an interactive video, the method
`comprising:
`encoding and storing the video onto a remote storage
`mediumatafirstsite;
`
`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 over the network for display;
`providing the link program over the 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.
`
`
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`Patent 8,479,246
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`Il.
`
`ANALYSIS
`
`A. Covered Business Method Patent
`
`In order to be eligible for a covered business method patent review,a
`
`patent must “claim[] a method or corresponding apparatus for performing
`
`data processing or other operations used in the practice, administration, or
`
`managementof a financial product or service, except that the term does not
`
`include patents for technological inventions.” AIA § 18(d)(1); see 37 C.F.R.
`
`§ 42.301(a). In the Decision on Institution, we determined that the ’246
`
`patent includesat least one claim directed to a covered business methodand,
`
`thus, is eligible for a covered business method patent review. See Inst.
`
`Dec. 9-12. Patent Ownerdid not contest this determination in its Patent
`
`OwnerResponse. Further, we discern no reason based on the complete
`
`record developed duringtrial to alter this determination.
`
`B. Claim Construction
`
`In a covered business method patent review, a “claim in an unexpired
`
`patent shall be given its broadest reasonable construction in light of the
`
`specification of the patent in which it appears.” 37 C.F.R. § 42.300(b); see
`In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1278-82 (Fed. Cir. 2015).
`
`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 wayofdefinitions or otherwise that may be afforded by
`
`the written description contained in the applicant’s specification.” Jn re
`
`Morris, 127 ¥.3d 1048, 1054 (Fed. Cir. 1997).
`
`Wepresumethat claim terms have their ordinary and customary
`
`meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.Cir.
`
`
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`Patent 8,479,246
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`2007). This presumption, however, may be rebutted when the patentee acts
`
`as his own lexicographer, giving the term a particular meaning in the
`specification with “reasonable clarity, deliberateness, and precision.” Jn re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`Weconstrued the following claim terms as part of our Decision on
`
`Institution. Inst. Dec. 6-9.
`
`Claim Term
`
`
`
`link program
`
`
`Construction in Decision on Institution
`
`a set of instructionsthat tells the computer
`what to do whena link is selected
`
`
`
`
`
`providing
`ancillary content
`
`to make available; to supply
`any content or page of content linked to the
`primary content or content linked therefrom
`
`Based on the complete record before us as developed duringtrial, we
`
`see no reason to changethe interpretations of “providing”or “ancillary
`
`content,” set forth above. Based on the dispute, however, as to whether the
`| correct interpretation of “link program” has been applied in this proceeding,
`weanalyze that claim limitation below. Wealso construe “providing the
`
`link program over the network”and “associating the link program with the
`video.”
`|
`.
`1. “link program”
`
`Independent claim 1 recites “creating a link program adaptedto both:
`
`(a) interrupt streaming of the video... and (b) access ancillary content.”
`Ex. 1001, 9:49-54. The Specificationof the ’246 patent does not explicitly
`define “link program.” The Specification, however, describes how the “link
`
`program”operates whena link is selected, namely “to interrupt the delivery
`
`of video to a visual display and provide accessto ancillary content
`
`6
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`Patent 8,479,246
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`accessible over a network.” Ex. 1001, 2:44-48; see id. at 5:19-6:32; 6:59—
`7:26. These functions, however, are explicitly recited in claim 1 and, thus,
`need not be included in our construction of “link program.” Jd. at 9:49-59.
`
`Werely on a Merriam-Webster’s Online Dictionary definition of “program”
`»4 and the clear
`
`as “a set of instructionsthat tell a computer what to do,
`
`language of the claims(e.g., the term “link” is merely an adjective
`
`modifying the term “program”), to conclude the broadest reasonable
`
`interpretation is “a set of instructions that tells the computer what to do when
`
`a link is selected.”
`
`Patent Owner disagrees with our construction, and contendsthat this
`
`claim language requires a “single ‘link program’ that is adapted to perform
`
`two functions: (a) interrupt streaming of the video and (b) accessancillary
`
`content.” PO Resp. 9 (emphasis added); see alsoid. at 11 (arguing that
`
`“(while it may be true that computers do not perform tasks without a
`
`program providing instructions, it does not meanthat all of the tasks
`
`performed by the computer. .
`
`. are accomplished by the same program’)
`
`(emphasis added).
`
`Wedisagree with Patent Ownerthat the plain language ofthe claims,
`
`in view of the Specification of the ’246 patent, requires the link program be
`
`limited to a single program. The claim language itself does not indicate a
`
`single program is required. Further, we see no language in the Specification,
`
`and Patent Ownerhasnot pointed us to any such language,that indicates
`
`clearly or persuadesusthat the claims should be limited as such. The only
`
`* MERRIAM-WEBSTER’S ONLINE DICTIONARY,http://www.merriam-
`webster.com/dictionary/program (last visited May 20, 2014).
`
`
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`Patent 8,479,246
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`portion of the Specification to which Patent Ownerspecifically points
`
`merely “mimics the claim language.” Tr. 25:16 (citing Ex. 1001, 2:45—-48).
`
`Furtherstill, our construction is supported by arguments made by
`
`Patent Ownerduring prosecution of the application that matured into
`the 246 patent.° “[T]he prosecution history, while not literally within the
`patent document, serves asintrinsic evidence for purposes of claim
`
`construction. This remains true in construing patent claims before the PTO.”
`
`Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 977-78 (Fed. Cir. 2014)
`
`(citing In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997)); see also Laitram
`
`Corp. v. Morehouse Indus., Inc., 143 F.3d 1456, 1462 (Fed. Cir. 1998)
`
`(“[A]rguments made during prosecution shed light on what the applicant
`
`meantby its various terms... .”).
`
`Asnoted by Petitioner in its Reply, during prosecution, in response to
`
`a rejection of claim 1 (amongothers) under 35 U.S.C. § 112, first paragraph,
`
`“Patent Ownerargued ‘link program’ include[s] any collection of computer
`instructions.” Pet. Reply 3 (citing Ex. 1002, 59° (brackets added)). In
`arguing the claims had written description support in the Specification,
`
`“Patent Owner summarized the meaning oflink program as follows: ‘the
`
`fact that [a] computer performsthe disclosed functions whena userinteracts
`»
`
`with an interface link necessarily requires that there is a link program....’
`
`> U.S. Appl. No. 13/495,884 (“the ’884 application”). Patent Owner was the
`assignee of the ’884 application during prosecution of the application.
`See Ex. 1002, 292 (Terminal Disclaimer); id. at 6 (Issue Fee Transmittal).
`° Exhibit 1002 includes the entire prosecutionhistory of the ’884
`application. Unless otherwise noted, citations to Exhibit 1002 herein are to
`the Responseto Final Office Action, dated March 22, 2013, and the included
`Declaration under 37 C.F.R. § 1.132 of Dr. Gareth Loy.
`
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`Patent 8,479,246
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`Id. at 3-4 (citing Ex. 1002, 60, 83 (emphasis and brackets added by
`
`Petitioner)). Patent Ownerfurther argued that
`
`The plain meaningof the term “program”is an organized list of
`instructions that, when executed, causes a computer to behave
`in a predetermined manner. ...
`[A]nytime a computer does
`anything meaningful,
`it
`is
`pursuant
`to
`an_
`instruction
`commanding it
`to perform the meaningful
`function.
`The
`compilation of those instructions constitutes a program.
`Ex. 1002, 59, 82-83. These arguments made by Patent Ownerduring
`
`prosecution of the ’884 application further support our conclusion that there
`
`wasno intention to limit the claimed “link program”to a single program.
`
`Instead, as argued by Patent Owner during prosecution of the ’884
`
`application, the claims merely require the computerto function in a
`
`particular manner whena link is selected (due to the presence ofthe “link
`
`program”).
`
`As discussed, Patent Ownerdoesnot point us to persuasive evidence
`
`that the term “link program” should be limited to a single program, as
`argued. Accordingly, we maintain our previous construction for the term
`“link program”—“aset of instructions that tells the computer what to do
`
`whena link is selected.”
`
`2. “providing the linkprogram over the network”/
`“associating the link program with the video”
`
`In response to Patent Owner’s arguments regarding the application of
`Chento the claims, Petitioner argues that the claim limitations “providing
`
`the link program over the network”and “associating the link program with
`
`the video” do not require that the entire link program be provided overthe
`
`network,or that the entire link program be associated with the video. Pet.
`
`Reply 9~11 (citing DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`
`
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`Patent 8,479,246
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`469 F.3d 1005, 1014—15 (Fed. Cir. 2006) (construing the claim term “screw
`
`head is ‘pressed against’ the ‘hollow spherically-shaped portion’” to include
`the case where “[the screw head] presses against all or anypart ofthat
`portion,” because “the claim language doesnot indicate .
`.
`. how muchofthe
`
`hollow spherically-shaped portion must be ‘pressed against’ the screw
`
`head”) (emphasis added)). The claim languageitself does not indicate that
`
`the entire link program be provided over the network,or that the entire link
`
`program beassociated with the video. Further, we see no languagein the
`
`Specification that indicates clearly or persuades us that the claims should be
`
`limited as such.
`
`This construction is supported also by arguments made by Patent
`
`Ownerduring prosecution of the ’884 application. See Ex. 1002, 164-65
`
`(Response to Office Action, dated August 22, 2012) (citing Ex. 1001, 6:2-4,
`
`9-11) (relying on disclosure of providing and associating interface links as
`specification support for the “providing the linkprogram overthe network”
`and “associating the linkprogram with the video”limitations, respectively,
`
`in responseto a rejection under 35 U.S.C. § 112, first paragraph); see also
`
`Ex. 1002, 60, 82 (“[I]t would be clear to a person of ordinary skill in the art
`
`that interface links are elements of the interface link program.”) (emphases
`
`added).
`
`Based on the foregoing, we agree with Petitioner, and determinethat
`
`the claim limitations “providing the link program over the network” and
`“associating the link program with the video” do not require that the entire
`link program be provided over the network,or that the entire link program
`
`be associated with the video.
`
`10
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`Patent 8,479,246
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`C. Anticipation by Chen
`
`Petitioner contends that claims 1-3, 5, 8, 10, 11, 13, and 14 of the
`
`’246 patent are unpatentable under 35 U.S.C. § 102(b) as anticipated by
`
`Chen. Pet. 15-23. In support of the asserted grounds of unpatentability,
`Petitioner sets forth teachings of Chen, and provides detailed claim charts
`
`explaining how each claim limitation is disclosed in the cited reference.
`
`1. Chen
`
`Chen discloses a methodforindicating a location of time dependent
`
`hot-link regions in a video. Ex. 1003, Abstract. The video can be streamed
`
`from a URL anddisplayed on a computer monitor. Jd. at 3:30-41, 4:29-34.
`
`The streaming video is encoded with embedded hot-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 andthe selected hot-link datais
`
`displayed on the computer monitor.
`
`/d. at 4:20-35. The user may resume
`
`the video by clicking on the play button. Jd. at 4:38-40.
`
`2. Petitioner’s Arguments and Evidence
`
`After considering the entire record, we are persuaded by Petitioner’s
`
`analysis of how each of the elements of claims 1-3, 5, 8, 10, 11, 13, and 14
`
`of the ’246 patent, arranged as in the claims, is disclosed in Chen. Pet. 15-
`
`23,
`
`For example, with respect to independent claim 1, we are persuaded
`
`that Chen discloses convertingvideo to “hot” video, containing “hot-links,”
`
`correspondingto the claimed “methodfor creating an interactive video.”
`
`Pet. 16 (citing Ex. 1003, 6:16—-21; Ex. 1008 { 17).
`
`Weare persuaded further that Chen’s disclosure of an MPEG encoded
`
`video, streamed from a URL for display on a computer connected to a
`
`11
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`Patent 8,479,246
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`network, correspondsto the claimedsteps of “encoding andstoring the
`video onto a remote storage medium at a first site” and “streaming the video
`over the networkfor display.” Pet. 16, 18 (citing Ex. 1003, 3:36—-41, 4:5-19,
`4:28-34, 5:55-6:1; Ex. 1008 9 17). Petitioner provides testimony that “[o]ne
`of ordinary skill in the art would understand that streaming video to onesite
`would inherently disclose that the video is stored in a storage medium at a
`
`remote site and is streamed to the viewing device.” Ex. 1008 (17. Patent
`
`Ownerhasnotpointed us to any evidence contesting this testimony.
`_ Weare persuaded also that Chen’s disclosure of pausing the video and
`displaying the linked page on the computer, in responseto clicking a hot-
`link, discloses the claimed “creating a link program adapted to both:
`
`(a) interrupt streaming of the video at the remote storage medium .. . and
`
`(b) access ancillary content....” Pet. 16-17 (citing Ex. 1003, 4:5-10,
`
`4:21-25, 4:28-40, 7:30-33; Ex. 1008 { 16); see also Ex. 1003, 2:11-17
`
`(“The [HyperVideo Authoring] tool allows one to prepare video clips with
`the hot-link information and thento link them with other types of media.”);
`
`id. at 5:55-6:26 (discussing “[c]reation of hot video content”). As discussed
`above, Patent Owner admitted, during prosecution of the °884 application,
`
`“the fact that [a] computer performsthe disclosed functions whena user
`
`interacts with an interface link necessarily requires that there is a link
`program.” Ex. 1002, 60, 83 (emphases added).
`Weare persuaded additionally that Chen’s disclosure of encoding the
`embedded hyperlinksin the video(e.g., inserting the hot-link information
`
`into frames in the video), and identifying incoming data as a “hot” video
`
`such that a hot video decoder may display the “hot” video, including the
`
`video, audio, and hot-link information, correspondsto the claimed steps of
`
`12
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`“associating the link program with the video” and “providing the link
`
`program overthe network.” Pet. 17-19 (citing Ex. 1003, 4:4-10, 5:56-6:39,
`
`6:48-7:2; Ex. 1008 ¢ 18).
`
`Weare persuaded further that Chen’s disclosure of transmitting a
`
`signal to the URL, from whichthe videois being streamed, to request
`
`delivery of a linked htmlfile (containing instructions to display text or
`
`multimedia content), in response to a userclicking on a hot-link,
`
`correspondstothe claimedstep of “receiving an indication of an interaction
`with the link program.” Pet. 19 (citing Ex. 1003, 4:20—25; Ex. 1008
`19).
`
`Weare persuadedalso that Chen’s disclosure of having theURL, from
`
`whichthe video is being streamed, pause the video, in responseto a user
`
`clicking on a hot-link, while the text or multimedia contentis being
`
`displayed, corresponds to the claimedstep of“interrupting,at thefirstsite,
`
`the streaming of the video in response to receiving the indication of the
`
`interaction with the link program.” Pet. 19 (citing Ex. 1003, 4:28-34;
`
`Ex. 1008 ¥ 16). We are persuaded additionally that Chen’s disclosure of
`
`allowing the user to resumethe video correspondsto the claimed step of
`
`“continuing the streaming of the video over the network from the pointin
`
`time whenthe streaming of the video wasinterrupted.” Pet. 19 (citing
`
`Ex. 1003, 4:38-40; Ex. 1008 § 20).
`Weare persuadedsimilarly by Petitioner’s contentions and supporting
`evidence concerning claims 2-3, 5, 8, 10, 11, 13, and 14. Pet. 19-23.
`3. Patent Owner's Arguments and Evidence
`Patent Ownerargues that Chen doesnot disclose several features of
`
`claim 1, as well as of dependent claims 8 and 11. PO Resp. 8-33. Patent
`
`Owneralso presents arguments regarding thereliability of Dr. Bove’s
`
`13
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`Patent 8,479,246
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`testimony. PO Resp. 12-23. We address each of Patent Owner’s arguments
`
`in turn.
`
`“link program adapted to both: (a) interrupt streaming of the
`video... and (b) access ancillary content”’
`
`Patent Owner contends that Chen doesnot disclose a “link program
`
`adapted to both:(a) interrupt streaming of the video .
`
`.
`
`. and (b) access
`
`ancillary content” as recited in claim 1. PO Resp. 8-27. The majority of
`
`Patent Owner’s arguments in this regard are premised on its proposed
`
`construction that a single link program that performs both functions is
`
`required. For the reasons discussed above, weare not persuadedthat the
`
`claimsare limited in this manner. See supra, Section II.B.1.
`
`Patent Ownerfurther argues that Chen does not disclose the claimed
`
`“dink program,” because Chen “is ambiguous regarding how pausingis
`
`accomplished,” indicating that it is unclear “what program (e.g., list of
`
`instructions that the computer performs) does the pausing of the video” and
`
`“given the limited and ambiguousdisclosure of Chen [ ] with regard to
`
`pausing, the pausing discussed could be accomplished bythe ‘instructions
`
`which the computer executes’ contained in the linked htmlfile, i.e., the
`
`ancillary content.” PO Resp. 24-26. Petitioner argues in its Reply that
`
`“(t]he ‘link program’ need not‘control the pausing’ as Patent Owner
`
`contends,” and that “[t]he claim languageestablishes that the ‘link program’
`
`need not ‘control’ the stream interruption.” Pet. Reply 4-5. We are
`
`persuadedby Petitioner’s assertion and analysis that “[n]othing in the claim
`
`requires that the link program created in the ‘creating’ step performs the
`
`[later recited] ‘interrupting’ step.” Jd. at 5; see id. at 4—7.
`
`14
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`Accordingly, Patent Owner’s arguments regarding Chen’s lack of a
`
`“link program”are not persuasive.
`“providing the link program over the network” / “associating the link
`program with the video”
`
`Patent Ownercontends that Chen doesnot disclose the claimedsteps
`
`of “providing the link program over the network”or “associating the link
`_ program with the video.” PO Resp. 27-31. For eachofthese claim terms,
`Patent Owner’s arguments are premised on the presumption that Chen’s
`
`video encoder, which Patent Ownerarguesis not necessarily provided over
`
`the network or associated with the video, controls the pausing of the video,
`
`and, thus, mustbe part of the claimed “link program.” See id. As noted in
`Petitioner’s Reply, this argument ignores Petitioner’s position that Chen’s
`hot-link stream in the video, byitself, may constitute the claimed “link
`
`program.” Pet. Reply 7-9. Petitioner also argues that these claim
`limitations do not require that the entire link program be provided overthe
`network,or that the entire link program be associated with the video. Pet.
`
`Reply 9-11.
`
`Based on our construction of these claim limitations (see supra,
`
`Section II.B.2.), and for purposes of this Decision, we need not determine
`whetherthe hot-link stream in the video of Chen, by itself, or the hot-link
`
`stream and the video encoder, constitutes the claimed link program. As
`
`Patent Owner’s above arguments are directed to the decoder, Patent Owner
`
`does not contest that Chen’s hot-link stream is both associated with the
`
`video and provided over the network, See, e.g., Tr. 27:13-15 (“[I]f the
`position is that the claim can include multiple programs, then Chenfails to
`anticipate because the decoderis neither associated with the video nor
`
`15
`
`
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`CBM2014-00052
`Patent 8,479,246
`
`provided over the network.”) (emphasis added); id. at 28:21—24. Thehot-
`
`link stream is sufficient, under our construction, to meet the claim
`
`limitationsthat the link program is provided over the network andis
`associated with the video.
`|
`
`We,thus, find the disclosure of Chen to be sufficient undereither
`
`application of Chen to correspondproperly to the claimed “link program”
`
`being both provided over the network, and associated with the video.
`
`Accordingly, Patent Owner’s arguments that Chen doesnot disclose the
`
`claimed steps of “providing the link program over the network”or
`
`“associating the link program with the video” are not persuasive.
`
`Dependent Claims 8 and 1]
`
`Patent Ownerprovides additional arguments with respect to
`dependentclaims 8 and 11. PO Resp. 31-32. Claim8recites that “the link
`program is provided simultaneously with the streaming of the video overthe
`internet.” Ex. 1001, 10:21-23. Claim 11 recites that “the associating of the
`
`link program includes encoding the link program with the video onto the
`storage medium.” Jd. at 10:29-31. Patent Owner’s argumentsin this regard
`are similar to the arguments discussed above, that Chen’s video encoderis
`
`not necessarily provided over the network or associated with the video,and,
`
`thus, cannot disclose the recited features. See PO Resp. 31-32. Forthe
`
`same reasons discussed above with respect to claim 1, Patent Owner’s
`
`arguments are not persuasive.
`
`Dependent Claims 2-3, 5, 10, 13, and 14
`
`Patent Ownerdoesnot argue specifically the patentability of claims
`
`2-3, 5, 10, 13, and 14 based on any limitations other than those discussed
`
`above with respect to independent claim 1. See PO Resp. 33. Asindicated
`
`16
`
`
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`CBM2014-00052
`Patent 8,479,246
`
`above, after reviewing the entire record, we are persuaded by Petitioner’s
`
`arguments and evidence in connection with the limitations introduced in
`each ofthese dependentclaims.
`
`- Reliability of Dr. Bove’s Testimony
`Patent Ownerargues that Dr. Bove’s testimony regarding how Chen
`discloses a “link program” should be disregarded, particularly because Dr.
`Bove’s testimonyallegedly is inconsistent with previous testimony in an
`Inter Partes Reexamination of Patent Owner’s U.S. Patent No. 7,870,592
`
`(“the ’592 reexamination’), and that his “inconsistent testimonyis likely
`
`caused by pecuniary interests.” PO Resp. 12—24.
`
`Wenote, as a general matter, that although the claimsin the 592
`
`reexamination maybesimilar, they are not identical to the claims of the ’246
`
`patent. Further, Patent Ownerhas not filed a Motion to Exclude Dr. Bove’s
`testimony. In any case, the Board,sitting as a non-jury tribunal with
`
`administrative expertise, is well-positioned to determine and assign
`appropriate weight to evidence presented. See Gnosis S.p.A. v. S. Alabama
`
`Med. Sci. Found., Case IPR2013-00118, slip op. at 43 (PTAB June 20,
`
`2014) (Paper 64); see also Donnelly Garment Co. v. NLRB, 123 F.2d 215,
`224 (8th Cir. 1941) (“One whois capable ofruling accurately upon the
`admissibility of evidence is equally capable ofsifting it accurately afterit
`has been received.”). In rendering our decision, we have assigned weightto
`
`the evidence as appropriate in view ofthe entire record beforeus.
`
`4. Conclusion
`
`For the reasons discussed, Petitioner has demonstrated, by a
`
`preponderanceof the evidence, that claims 1-3, 5, 8, 10, 11, 13, and 14 of
`the ’246 patent are unpatentable as anticipated by Chen.
`
`17
`
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`CBM2014-00052
`Patent 8,479,246
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`D. Obviousness in View of Chen and Hartanto
`
`Petitioner contends that claim 15 of the ’246 patent is unpatentable
`
`under 35 U.S.C. § 103 as obvious based on Chen and Hartanto. Pet. 28-30.
`
`Claim 15 recites that the network includes a wireless network. Ex. 1001,
`
`10:43-44. 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 evidence that one of skill in
`
`the art would have understood the network for data transfer could be a
`
`wireless network. Pet. 28-29; Ex. 1008 4 24. Petitioner cites Hartanto as an
`
`example of disclosure of wireless networks used with video transmission.
`
`Id. Petitioner further contends that the combination of using a wireless
`
`network connection as the network in Chen would have yielded a predictable
`
`result. Pet. 29-30; Ex. 1008 § 24. We determinethat Petitioner’s analysis
`
`and evidence is persuasive.
`
`Patent Ownerdoes not argue specifically the patentability of claim 15
`
`based on any limitations other than those discussed above with respect to
`
`independent claim 1. See PO Resp. 33. After reviewing the entire record,
`
`we are persuadedthat Petitioner has demonstrated by a preponderanceofthe
`
`evidence that claim 15 of the ’246 patent would have been obviousto a
`personofordinary skill inthe art’ over Chen and Hartanto.
`
`7 According to Petitioner, a person of ordinary skill in the art would have a
`“Bachelor of Science (B.S.) degree in computer science, or a similar amount
`of computer science coursework”and “at least two years of experience in
`working with interactive media, including storing and streaming media on a
`network.” Pet. 12-13 (citing Ex. 1008 { 4).
`
`18
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`
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`CBM2014-00052
`Patent 8,479,246
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`E. Motion to Exclude
`
`Petitioner’s Motion to Exclude seeks to exclude Exhibit 2007.° Mot.
`
`to Excl. 1. Patent Ownerrelies on J 15 of Exhibit 2007 as evidencethat
`
`“the embeddedhotlinks’ of the Chen reference ‘do not perform the pause
`
`operation.’” Jd. at 2; PO Resp. 15. As discussed above, we have determined
`
`that the claims do not require the claimed link program to perform the
`
`claimed interrupting step. See supra Section II.C.3. We, thus, have no need
`
`to consideror rely on the cited portions of Exhibit 2007 in rendering our
`
`decision. Accordingly, Petitioner’s Motion to Exclude is dismissed as moot.
`
`I.
`
`CONCLUSION
`
`Based on the evidence and arguments, Petitioner has demonstrated, by
`
`a preponderanceofthe evidence,that claims 1-3, 5, 8, 10, 11, and 13-15 of
`
`the ’246 patent are unpatentable.
`
`IV. ORDER
`
`Accordingly,it is
`
`ORDEREDthat claims 1-3, 5, 8, 10, 11, and 13-15 of U.S. Patent
`
`No. 8,479,246 are unpatentable; and
`
`FURTHER ORDEREDthatPetitioner’s Motion to Excludeis
`
`dismissed.
`
`This is a final written decision. Parties to the proceeding seeking
`
`judicial review of the decision must comply with the notice and service
`
`requirements of 37 C.F.R. § 90.2.
`
`8 Exhibit 2007 is a Declaration of Dr. Gareth Loy Under 37 C.F.R. § 1.132,
`submitted in.the ’592 reexamination.
`
`19
`
`
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`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
`Wesley C. Meinerding
`Brent D. Martin
`MARTIN & FERRARO, LLP
`aferraro@martinferraro.com
`tmartin@martinferraro.com
`wmeinerding@martinferraro.com
`bmartin@martinferraro.com
`docketing@martinferraro.com
`
`20
`
`
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