Paper No. 7
`Trials@uspto.gov
`571-272-7822 Entered: March 19, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NFL ENTERPRISES LLC,
`Petitioner,
`
`v.
`
`OPENTV, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-02092
`Patent 6,233,736 B1
`____________
`
`
`
`
`
`Before JAMESON LEE, SALLY C. MEDLEY, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`Trials@uspto.gov
`571-272-7822 Entered: March 19, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NFL ENTERPRISES LLC,
`Petitioner,
`
`v.
`
`OPENTV, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-02092
`Patent 6,233,736 B1
`____________
`
`
`
`
`
`Before JAMESON LEE, SALLY C. MEDLEY, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`IPR2017-02092
`Patent 6,233,736 B1
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`I. INTRODUCTION
`NFL Enterprises LLC (“Petitioner”)1 filed a Petition for inter partes
`review of claims 1–3 and 8 of U.S. Patent No. 6,233,736 B1 (Ex. 1001, “the
`’736 patent”). Paper 1 (“Pet.”). OpenTV, Inc. (“Patent Owner”)2 filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”). Institution of an inter
`partes review is authorized by statute when “the information presented in the
`petition . . . and any response . . . shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108.
`Upon consideration of the Petition and Preliminary Response, we conclude
`the information presented shows that there is a reasonable likelihood that
`Petitioner would prevail in establishing the unpatentability of claims 1–3 and
`8 of the ’736 patent under 35 U.S.C. § 103(a).
`
`A. Related Matters
`The parties indicate that the ’736 patent is the subject of several court
`proceedings. Pet. 2; Paper 4, 2–3. The ’736 patent also was the subject of
`Board proceeding IPR2014-00269 (“the 269 IPR”), terminated after
`institution, and IPR2016-00992 (“the 992 IPR”), terminated prior to
`institution.
`
`B. The ’736 Patent
`The specification of the ’736 patent describes a method and system
`“for providing direct automated access to an online information services
`
`1 Petitioner, NFL Enterprises LLC, identifies NFL Ventures, L.P. as a real
`party-in-interest. Pet. 2.
`2 Patent Owner, OpenTV, Inc., identifies Nagra USA, Inc. and Kudelski S.A.
`as real parties-in-interest. Paper 4, 2.
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`provider” by extracting an address that is embedded in a signal containing an
`audio or video program. Ex. 1001, [57]. 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 some other portion of a signal
`that is not displayed so that the encoded address does not interfere with the
`program. Id. The system and method disclosed by the ’736 patent can
`detect and decode an encoded address and alert the user that additional
`information is available. Id. In response to the indication that additional
`information is 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.” Id. “The system then automatically establishes a direct
`digital communication link to the online information provider through the
`address.” Id.
`
`C. Illustrative Claims
`Petitioner challenges claims 1–3 and 8 of the ’736 patent. Claims 1
`and 8 are independent claims and claims 2 and 3 depend directly from claim
`1. Claims 1 and 8 are reproduced below.
`1. A method of providing to a user of online
`information 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 response to a user initiated 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.
`Id. at 9:48–58.
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`8. A method of providing to a user of online
`information services automatic and direct access to online
`information through a link provided in a video program,
`comprising:
`indicating to the user that a link to online information
`services is available for receiving the online information; and
`automatically and directly electronically accessing said
`online information associated with said link in response to a user
`initiated command so that the user has direct access to the online
`information.
`Id. at 10:43–52.
`
`Basis
`
`Challenged Claims
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–3 and 8 are unpatentable based on the
`following grounds (Pet. 4):
`Reference(s)
`Throckmorton3 with or
`without Rhoads4
`Eisen5 and Rhoads
`
`§ 103(a)
`§ 103(a)
`
`1–3 and 8
`1–3 and 8
`
`II. DISCUSSION
`
`A. Claim Construction
`The ’736 patent is expired. Ex. 1001; Pet. 13. For claims of an
`expired patent, our claim interpretation is similar to that of a district court.
`See In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). “In determining
`the meaning of the disputed claim limitation, we look principally to the
`intrinsic evidence of record, examining the claim language itself, the written
`
`
`3 U.S. Patent No. 5,818,441, issued Oct. 6, 1998 (Ex. 1003,
`“Throckmorton”).
`4 U.S. Patent No. 5,841,978, issued Nov. 24, 1998 (Ex. 1004, “Rhoads”).
`5 U.S. Patent No. 5,440,678, issued Aug. 8, 1995 (Ex. 1005, “Eisen”).
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`description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
`v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
`(citing Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en
`banc)). There is, however, a presumption that a claim term carries its
`ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359, 1366 (Fed. Cir. 2002).
`
`Petitioner proposes constructions for the following claim terms found
`in the challenged claims: “automatically establishing, in response to a user
`initiated command, a direct communication link with the online information
`source” (claim 1) and “so that the user has direct access to the online
`information” (claims 1 and 8). Pet. 13–15. Petitioner argues that the Board
`construed these two phrases in the 269 IPR Decision on Institution, and,
`although such constructions were made prior to the expiration of the patent,
`proposes the same constructions here. Id. Patent Owner does not oppose
`Petitioner’s proposed constructions. See generally Prelim. Resp.
`In the 269 IPR Decision to Institute, the phrase “automatically
`establishing, in response to a user initiated command, a direct
`communication link with the online information source” was construed to
`mean “in response to a command from a user, establishing, without further
`input from the user, a communication link directly between the user and the
`online information source.” IPR2014-00269, Paper 13, 7–8. At the time of
`the construction, the ’736 patent was unexpired. Nonetheless, Petitioner
`proposes the previous construction from the 269 IPR Decision on Institution
`applies here, because it is based on the ordinary and customary meaning, as
`would be understood by one of ordinary skill in the art in the context of the
`entire disclosure. Pet. 14. We have reviewed Petitioner’s proposed
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`construction for this phrase and determine that it is based on the ordinary
`and customary meaning, as would be understood by one of ordinary skill in
`the art in the context of the entire disclosure of the ’736 patent. For
`purposes of this Decision, we adopt the proposed claim construction for the
`phrase “automatically establishing, in response to a user initiated command,
`a direct communication link with the online information source” (claim 1) to
`mean “in response to a command from a user, establishing, without further
`input from the user, a communication link directly between the user and the
`online information source.”
`In the 269 IPR Decision to Institute, the phrase “so that the user has
`direct access to the online information” was construed to mean “the system
`establishes a communication link directly between the user and the online
`information source, without any intervening intermediary that is not inherent
`to Internet traffic routing.” IPR2014-00269, Paper 13, 9–10. At the time of
`the construction, the ’736 patent was unexpired. Nonetheless, Petitioner
`proposes the previous construction from the 269 IPR Decision on Institution
`applies here, because it is based on the ordinary and customary meaning, as
`would be understood by one of ordinary skill in the art in the context of the
`entire disclosure. Pet. 14. We have reviewed Petitioner’s proposed
`construction for this phrase and determine to adopt the construction in part.
`We do not adopt “that is not inherent to Internet traffic routing” portion of
`the construction because we find those words unnecessary, and do not add
`clarity, to the construction. Otherwise, we have reviewed Petitioner’s
`proposed construction for this phrase and determine that the remainder
`construction is based on the ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
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`disclosure of the ’736 patent. For purposes of this Decision, we construe “so
`that the user has direct access to the online information” (claims 1 and 8) to
`mean “the system establishes a communication link directly between the
`user and the online information source, without any intervening
`intermediary.”
`For purposes of this decision, we need not expressly construe any
`other claim term at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need
`be construed that are in controversy, and only to the extent necessary to
`resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid
`Techs. in the context of an inter partes review).
`
`B. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of ordinary skill in the art;6 and (4) when in evidence, objective
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`C. Asserted Obviousness of Claims 1–3 and 8 over Throckmorton
`with or without Rhoads
`Petitioner contends claims 1–3 and 8 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Throckmorton with or without Rhoads.
`Pet. 16–37. In support of its showing, Petitioner relies upon the declaration
`of Mr. Scott Bradner. Id. (citing Ex. 1006).
`
`1. Throckmorton
`Throckmorton describes systems and methods for providing apparent
`or actual two-way interactive access to information related to a one-way data
`stream, such as a television program broadcast. Ex. 1003, [57].
`Throckmorton provides a consumer of a broadcast programming with access
`to data relevant to the programming in real time (i.e., “during the process of
`program reception”). Id. 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 consumer and the associated data may be accessed. Id. at 3:6–14. If the
`
`
`6 Relying on the testimony of Mr. Scott Bradner, Petitioner offers an
`assessment as to the level of skill in the art as of the earliest effective filing
`date on the face of the ’736 patent. Pet. 13 (citing Ex. 1006 ¶ 24). At this
`time, Patent Owner does not propose an alternative assessment. To the
`extent necessary, and for purposes of this Decision, we accept the
`assessment offered by Petitioner as it is consistent with the ’736 patent and
`the asserted prior art.
`
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`primary data stream is a television broadcast, the associated data may be
`encoded in the vertical blanking interval (VBI). Id. at [57], 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. Id. at 7:53–67. The
`consumer then has access to the online information, and it appears to the
`consumer that the locally stored data is coming from an online service. Id.
`at 8:1–15. The second preferred embodiment provides the consumer with
`actual two-way interactive access and is described as adding a two-way
`communication channel connected to the microprocessor that provides
`access to online information. Id. 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 may deliver 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. Id. at 9:16–26.
`The primary difference between the first and second preferred
`embodiments is that the second preferred embodiment includes 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.
`
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`2. Rhoads
`Rhoads describes a method for automatically linking from one
`computer site to another. Ex. 1004, 1:22–24. In particular, Rhoads
`describes that a given data object can contain both a graphical representation
`to a network user and embedded information, such as the URL of another
`node, thereby permitting the object itself to function as an automated hot
`link. Id. at [57].
`Rhoads describes “embedding URL or other address-type information
`directly into images, videos, audio, and other forms of data objects.” Id. at
`58:1–4. Rhoads describes that a user “needs merely to point and click at the
`displayed object 1006,” and “browser 1010 identifies the object as a hot link
`object,” “reads the URL address that is embedded within the object and
`routes the user to the linked web site 1002, just as if the user had used a
`conventional web link.” Id. at 58:34–39, Fig. 27. Rhoads describes that
`object 1006 may include visible icon 1012 and that the icon or other subtle
`indicia would apprise the user that the object is a hot object. Id. at 58:53–57,
`Fig. 27. Rhoads describes that any human-perceptible indicium, such as a
`short musical tone, can serve the purpose of apprising the user of the hot
`object. Id. at 58:59–61.
`
`3. Discussion
`We begin our analysis with claim 1. Petitioner asserts that the
`combination of Throckmorton’s two described embodiments meet all of the
`elements of claim 1, and provides a reason to combine the two
`embodiments. Pet. 21, 23–37. Alternatively, Petitioner relies on
`Throckmorton to meet certain limitations of claim 1, but relies on Rhoads’
`description of providing a visible icon “indicating to the user that an address
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`has been provided with said video program” (e.g., id. at 27) and for its
`description of “extracting” an address and “automatically establishing … a
`direct communication link” (e.g., id. at 31) to teach the remaining
`limitations. Petitioner further provides reasons to combine Rhoads with
`Throckmorton. Id. at 21–23, 27–28, 31–32.
`Claim 1 recites a “method of providing to a user of online information
`services automatic and direct access to online information through an
`address associated with an online information source provided with a video
`program.” The present record supports the contention that Throckmorton
`describes a primary data stream, such as a video program (television signal)
`and an associated data stream such as a URL that is encoded in the VBI of
`the television signal, whereby an end user may access information associated
`with the URL during the process of program reception. Pet. 24–25 (citing
`Ex. 1003, [57], 1:63–67, 3:37–40, 4:28–33, 7:57–65, 8:53–67, 9:1–5; Ex.
`1006 ¶¶ 131–152).
`Claim 1 further recites “indicating to the user that an address has been
`provided with said video program.” The present record supports the
`contention that Throckmorton presents to a user a “clickable indicator”
`because Throckmorton describes that a reference may be clicked on. Pet. 26
`(citing Ex. 1003, 9:13–15; Ex. 1006 ¶¶ 153–158). Petitioner contends that a
`person having ordinary skill in the art at the time of the invention would
`have understood that the clickable indicator could be displayed on the same
`screen as a corresponding video program, or on a different screen. Pet. 26
`(citing Ex. 1006 ¶¶ 159–164). The present record further supports the
`contention that Throckmorton describes a script for the delivery and display
`of associated data at specific points in time, which may result in, for
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`example, associated data being displayed on a computer display when a
`certain television advertisement starts. Pet. 27 (citing Ex. 1003, 4:55–60,
`5:10–15, 7:13–29). Petitioner contends that, based on the teachings of
`Throckmorton, a person having ordinary skill in the art would have
`understood that associated data may be a pointer such as a clickable URL,
`which would be visible to a user at a specific time point in a video. Pet. 27
`(citing Ex. 1006 ¶¶ 165–166). Petitioner alternatively relies on Rhoads for
`its teaching of a “visible icon” to indicate to a user that an address or link
`reference is clickable. Pet. 27–28 (citing Ex. 1004, 58:53–61, Fig. 27;
`Ex. 1006 ¶¶ 167–182).
`Claim 1 recites “electronically extracting said address and
`automatically establishing, in response to a user initiated 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.”
`Petitioner contends that the ’736 patent itself recognizes, that at the time of
`the invention, extracting an address was well known in the art. Pet. 28–29
`(citing Ex. 1001, 6:5–7). Petitioner further contends that Throckmorton
`describes that hardware for insertion and extraction of data into and from
`standard television signals was available commercially. Pet. 29 (citing Ex.
`1003, 5:60–64). The present record supports the contention that
`Throckmorton describes a receiver that decodes a combined signal, separates
`the primary data from associated data, and passes the associated data on to
`processor 4, which may further decode the associated data. Pet. 29 (citing
`Ex. 1003, 4:21–27, Fig. 1). Petitioner further contends that Throckmorton’s
`two-way embodiment describes automatically establishing a direct
`communication link with the online information source (such as a worldwide
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`web page, etc.) associated with the extracted address. Pet. 30 (citing Ex.
`1003, 8:35–67, 9:2–12, Fig. 5; Ex. 1006 ¶ 198).
`In particular, Petitioner contends that Throckmorton describes that
`remote data manager 92 receives commands from human interface 88 to
`retrieve data from remote computers through two-way communications
`channel 74 and sends that data to human interface 88 for presentation to the
`consumer, and that when the associated data is a clickable link such as a
`URL, by clicking on a reference, the system connects to and retrieves the
`referenced information from the appropriate source. Pet. 30–31 (citing
`Ex. 1003, 4:28–33, 8:30–34, 9:13–15; Ex. 1006 ¶¶ 207–214). Petitioner
`contends that from the teachings of Throckmorton, a person having ordinary
`skill in the art would have understood that the described direct
`communication link is established automatically, without requiring further
`input from the user and without any additional steps. Pet. 31 (citing Ex.
`1006 ¶¶ 212–219). Petitioner alternatively relies on Rhoads for its teaching
`of a more detailed disclosure of extracting an address and automatically
`establishing a direct communications link. Pet. 31 (citing Ex. 1006 ¶¶ 200–
`206). Petitioner explains how Rhoads describes “embedding URL or other
`address-type information directly into images, videos, audio, and other
`forms of data objects,” such that a user “needs merely to point and click at
`the displayed object 1006,” and “browser 1010 identifies the object as a hot
`link object,” “reads the URL address that is embedded within the object and
`routes the user to the linked web site 1002, just as if the user had used a
`conventional web link.” Pet. 31–32 (quoting from Ex. 1004, 58:1–9, 58:34–
`59, 59:7–44, Fig. 27).
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`Petitioner provides reasons for combining Throckmorton and Rhoads.
`Pet. 21–23, 27–28, 32. For example, Petitioner contends, with supporting
`evidence, that a person having ordinary skill in the art would have been
`motivated to substitute Throckmorton’s menu or URL with Rhoads’ visible
`icon to conserve screen space and reduce video disruption or distraction (as
`compared to a menu or entire URL text). Pet. 27–28 (citing Ex. 1006
`¶¶ 178–182). Petitioner further explains, with supporting evidence, that at
`the time of the invention of the ’736 patent the use of visible icons was well-
`known, and that a person having ordinary skill in the art would have had a
`reasonable expectation of success in combining Throckmorton with Rhoads’
`visible icons to yield predictable results. Id.
`Claim 2 depends from claim 1, and recites “using said communication
`link to provide interactive exchange of information between said online
`information source and the user.” The present record supports the
`contention that Throckmorton meets the claim 2 limitations because
`Throckmorton describes that interactivity may be achieved by adding the
`two-way communication channel to the personal computer so that online
`services or the Internet may be accessed. Pet. 32–33 (citing Ex. 1003, [57],
`1:59–63, 8:16–9:15, Figs. 4–5; Ex. 1006 ¶¶ 220–227).
`Claim 3 depends from claim 1, and recites “wherein said step of
`indicating includes producing a visual indication to be displayed on the
`system wherein said program is displayed.” Petitioner contends, with
`supporting evidence, that Throckmorton describes a user interface on which
`a menu or text-based URL may be displayed on the same screen as the
`primary data, from which a consumer may access associated data, and that a
`person having ordinary skill in the art would have known that such a
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`clickable reference would be displayed as text, icon, logo, or image. Pet.
`33–34 (citing Ex. 1003, 6:4–20, 7:15–25, 9:1–14; Ex. 1006 ¶¶ 62, 74, 232–
`234; Ex. 1012, 10–15; Ex. 1001, 6:13–26). Petitioner alternatively relies on
`Rhoads for its teachings of visible icons (displayed on the same screen as a
`video) to indicate that a video is a “hot object” that, when clicked, provides
`access to online information. Pet. 34 (citing Ex. 1004, 58:1–3, 58:45–58,
`Fig. 27). Petitioner provides additional reasons for combining the teachings
`of Throckmorton with those of Rhoads. Pet. 34 (citing Ex. 1003, 1:59–65;
`Ex. 1006 ¶ 234).
`Independent claim 8 is similar to claim 1. Differences include that
`claim 8 recites a “link” instead of an “address” and claim 8 does not recite
`“extracting said address.” Petitioner’s showing is nearly the same for claim
`8 as that for claim 1, while sufficiently accounting for differences between
`claim 8 and claim 1. See Pet. 34–37. The present record supports
`Petitioner’s contentions with respect to claim 8.
`Patent Owner argues that we should exercise discretion under 35
`U.S.C. § 325(d) to not institute review based on the ground asserting
`Throckmorton alone because Throckmorton was considered by an Examiner
`during prosecution of the application that matured into the ’736 patent.
`Prelim. Resp. 12. Patent Owner also argues allowing Petitioner to move
`forward with this third petition on the ground asserting Throckmorton alone
`“where it seeks to take advantage of how OpenTV, the examiner, and the
`Board previously handled the reference would be highly prejudicial to
`OpenTV.” Id. at 17 (citing Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki
`Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential)).
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`The statutory language of 35 U.S.C. § 325(d) does not require
`rejection of a petition because certain art was considered previously by the
`Office. See 35 U.S.C. § 325(d) (“[T]he Director may take into account
`whether . . . the same or substantially the same prior art or arguments were
`previously presented to the Office.”) (emphasis added). Here, Petitioner
`presents different arguments and evidence that were not before the Examiner
`during ex parte prosecution of the application that issued as the ’736 patent.
`See, e.g., Pet. 10–11. For example, Petitioner explains that the Examiner
`misinterpreted the disclosure of Throckmorton by focusing on only one
`embodiment, while overlooking the second Throckmorton embodiment in
`which a user may access additional information from a video program
`directly. Id. at 10. Petitioner further explains that a different Examiner
`rejected similar claims with similar language in a related application based
`on Throckmorton’s second embodiment and that that application ultimately
`was abandoned. Id. at 10–11. In the situation where the Office has reached
`different conclusions on the same evidence, it is appropriate for the Board to
`re-evaluate that evidence in order to permit the Board to rectify any error
`that may have occurred during prosecution. Where new arguments and
`evidence are presented, such as here, that were not presented to the
`Examiner that prosecuted the application that issued as the ’736 patent,
`shedding a different or new light on the Throckmorton ground of
`obviousness, we decline to deny the petition under 35 U.S.C. § 325(d).
`We also have considered Patent Owner’s arguments in light of
`General Plastic regarding this being the third Petition raising Throckmorton
`as a basis for challenging the claims of the ’736 patent. Prelim. Resp. 17. In
`General Plastic, the panel there explained factors that should be considered
`
`16
`
`
`
`IPR2017-02092
`Patent 6,233,736 B1
`
`in exercising discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a)
`to deny institution. Those factors are directed to “the filing of follow-on
`petitions after the Board’s denial of one or more first-filed petitions on the
`same patent.” General Plastic at 15. Patent Owner has not explained how
`such factors would apply to the facts of this case. As explained by
`Petitioner, the instant Petition does not come after a denial of a previous
`petition. Pet. 12. Indeed, in the 269 IPR, the panel granted the Petition
`based on a determination that claims 1–3 and 6–12 would have been obvious
`based on Throckmorton alone. Id. No final written decision was rendered in
`the 269 IPR because the parties settled the dispute and filed a motion to
`terminate the proceeding, which was granted. IPR2014-00269, Papers 32–
`34. In the 992 IPR, the parties settled the dispute prior to the institution
`deadline and filed a motion to terminate the proceeding, which was granted.
`IPR2016-00992, Papers 8, 13, 15. Thus, Patent Owner has not shown how
`General Plastic is particularly relevant to the facts of this case, where no
`previous Petition was denied. Indeed, Patent Owner makes no arguments at
`all regarding General Plastic, other than to cite to the case. Having
`considered Patent Owner’s arguments, the Petition, and General Plastic, we
`exercise discretion to institute trial for the ground asserting Throckmorton
`alone.
`With respect to the challenge based on Throckmorton alone, Patent
`Owner argues that Throckmorton does not disclose (1) a user accessing
`additional information directly from the video program or (2) displaying a
`clickable object in video playback that provides an automatic and direct link
`to online information. Prelim. Resp. 11, 15. Patent Owner further argues
`
`17
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`
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`IPR2017-02092
`Patent 6,233,736 B1
`
`that Throckmorton discloses displaying supplemental content in a separate
`interface from the video. Id. at 16.
`On the present record, Patent Owner’s arguments are not persuasive
`because they are not commensurate in scope with the challenged claims.
`None of the claims recite “a user accessing additional information directly
`from the video program” or “displaying a clickable object in video playback
`that provides an automatic and direct link to online information,” or preclude
`“displaying supplemental content in a separate interface from the video.” In
`any event, and as stated above, the present record supports the contention
`that Throckmorton describes a primary data stream, such as a video program
`(television signal) and an associated data stream such as a URL that is
`encoded in the VBI of the television signal, whereby an end user may access
`information associated with the URL during the process of program
`reception. Pet. 24–25 (citing Ex. 1003, [57], 1:63–67, 3:37–40, 4:28–33,
`7:57–65, 8:53–67, 9:1–5; Ex. 1006 ¶¶ 131–152). There is no requirement in
`the claims that the link or address be displayed in the video itself, as Patent
`Owner argues.
`Patent Owner further argues that the Petition “arrives at the claims by
`using the ’736 patent as a roadmap” (Prelim. Resp. 17), and impermissibly
`relies upon certain assertions about what “could have been done for
`motivations that are disclosed in the ’736 patent but not in Throckmorton.”
`Id. at 13 (citing Pet. 26–27; Ex. 1006 ¶¶ 159–166). At this juncture of the
`proceeding, we are not persuaded by Patent Owner’s hindsight arguments.
`We have reviewed the passages in the Petition and Mr. Bradner’s declaration
`to which Patent Owner directs our attention, but do not find that such
`passages support Patent Owner’s assertions of hindsight. Rather, it is clear
`
`18
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`
`
`IPR2017-02092
`Patent 6,233,736 B1
`
`from Mr. Bradner’s testimony that he is testifying as to what a person having
`ordinary skill in the art would have understood from the disclosure of
`Throckmorton itself. Ex. 1006 ¶¶ 159–166. For example, Throckmorton
`describes a computer that includes a receiver for watching video (Ex. 1003,
`6:11–13) and that “a detailed data sheet will be delivered to the consumer
`prior to a specific television product advertisement, and that the data sheet
`will be displayed on the consumer’s personal computer display when a
`certain television advertisement starts.” Id. at 4:61–65 (emphasis added).
`Throckmorton also describes “a broadcaster may want viewers to see a
`certain page of information as part of a program that is being viewed. Real
`time trigger allows data to be displayed using the same data protocols as
`consumer requested information.” Id. at 7:25–29. And Throckmorton also
`describes displaying associated data in the form of a clickable reference such
`as a URL. Id. at 9:1–14. Mr. Bradner explains that, based on the teachings
`of Throckmorton, a person having ordinary skil
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