Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 29
`Date: January 19, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SLING TV L.L.C. and
`VUDU, INC.,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2019-013671
`Patent 8,407,609 B2
`____________
`
`
`Before CHARLES J. BOUDREAU, DANIEL J. GALLIGAN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`DIRBA, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`1 Vudu, Inc., which filed a petition in IPR2020-00677, has been joined as a
`petitioner in this proceeding.
`
`
`Tel: 571-272-7822
`
`
`Paper 29
`Date: January 19, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SLING TV L.L.C. and
`VUDU, INC.,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2019-013671
`Patent 8,407,609 B2
`____________
`
`
`Before CHARLES J. BOUDREAU, DANIEL J. GALLIGAN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`DIRBA, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`1 Vudu, Inc., which filed a petition in IPR2020-00677, has been joined as a
`petitioner in this proceeding.
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`
`I. INTRODUCTION
`Sling TV L.L.C. (“Sling”) filed a Petition seeking institution of inter
`partes review of claims 1–3 of U.S. Patent No. 8,407,609 B2 (Ex. 1001, “the
`’609 patent”). Paper 2 (“Pet.”). Uniloc 2017 LLC (“Patent Owner”) filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”). After reviewing those
`papers, we determined that Petitioner had demonstrated a reasonable
`likelihood that it would prevail in proving that claims 1–3 of the ’609 patent
`are unpatentable, and we instituted an inter partes review of all challenged
`claims on all grounds set forth in the Petition. Paper 7 (“Institution
`Decision” or “Inst. Dec.”).
`After institution, Patent Owner filed a Response (Paper 13, “PO
`Resp.”), and Sling filed a Reply (Paper 15, “Pet. Reply”). Vudu, Inc.
`(“Vudu”) was then joined as a petitioner (Paper 16), and Sling and Vudu are
`now collectively referred to as “Petitioner.” Patent Owner filed a Sur-Reply
`(Paper 18, “PO Sur-Reply”). An oral hearing in this proceeding was held on
`December 3, 2020, and a transcript of the hearing is included in the record.
`Paper 28 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons discussed
`below, Petitioner has shown by a preponderance of the evidence that claims
`1–3 of the ’609 patent are unpatentable under 35 U.S.C. § 103(a).
`
`Related Matters
`A.
`The parties identify various civil actions involving the ’609 patent that
`are or were pending in district court, including Uniloc 2017 LLC v. Sling TV,
`LLC, 1:19-cv-00278 (D. Colo.); Uniloc 2017 LLC v. Vudu, Inc., 1:19-cv-
`00183 (D. Del.); Uniloc 2017 LLC v. Netflix, Inc., 8:18-cv-02055 (C.D.
`
`2
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`Cal.); Uniloc 2017 LLC v. Google LLC, 2:18-cv-00502 (E.D. Tex.). Pet. v–
`vi; PO Resp. 9–10; see Paper 19 (Petitioner’s Updated Mandatory Notices).
`The ’609 patent is or was the subject of three other petitions for inter
`partes review. In IPR2020-00677, Vudu filed a petition that is substantively
`identical to the Petition, and the Board instituted that review and joined
`Vudu to this proceeding as Petitioner. Paper 16 (Joinder Order). Also, a
`petition filed by Netflix, Inc. and Roku, Inc. was instituted by the Board.
`Netflix, Inc. v. Uniloc 2017 LLC, IPR2020-00041 (“the 041 IPR”), Paper 10
`(PTAB Mar. 25, 2020) (Institution Decision in the 041 IPR). A final written
`decision in the 041 IPR is being issued concurrently with this Decision.
`Finally, the ’609 patent was previously the subject of another petition for
`inter partes review that was discretionarily denied under 35 U.S.C. § 314(a).
`Google LLC v. Uniloc 2017 LLC, IPR2020-00115, Paper 8 (PTAB Mar. 27,
`2020).
`
`Real Parties in Interest
`B.
`Sling states that it is owned (directly or indirectly) by Sling TV
`Holding L.L.C., DISH Network L.L.C., DISH Technologies L.L.C., and
`DISH Network Corporation. Pet. v. Vudu identifies each of the following
`companies as a direct or indirect owner (at some point in time): Walmart
`Inc., Fandango Media, LLC, NBCUniversal Media, LLC, Warner Bros.
`Entertainment Inc., Comcast Corporation, Warner Media, LLC, and AT&T
`Inc. Paper 16, 2 n.1 (citing IPR2020-00677, Papers 1, 8).
`Patent Owner identifies no other real parties in interest. Paper 3, 1
`(Mandatory Notice).
`
`3
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`
`The Petition’s Asserted Grounds
`C.
`Petitioner asserts the following grounds of unpatentability (Pet. 2):
`
`Claims Challenged 35 U.S.C. §
`
`References/Basis
`
`1–3
`
`1–3
`
`103(a)2
`
`103(a)
`
`Jacoby,3 Bland4
`
`McTernan,5 Robinson6
`
`Petitioner also relies on the testimony of Dr. James A. Storer to support its
`contentions. Ex. 1002.
`
`Summary of the ’609 Patent
`D.
`The ’609 patent is titled “System and Method for Providing and
`Tracking the Provision of Audio and Visual Presentations via a Computer
`Network.” Ex. 1001, code (54). The application that led to the ’609 patent
`was filed on August 21, 2009, and claimed the benefit of a U.S. provisional
`application filed August 21, 2008. Id. at codes (22), (60).
`The ’609 patent discloses tracking a user computer’s receipt of digital
`media presentations via a web page. Ex. 1001, code (57). An exemplary
`web page provided to a user’s computer is shown in Figure 9, which is
`reproduced below:
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`Because the challenged patent was filed before March 16, 2013, we refer to
`the pre-AIA version of § 103.
`3 Jacoby, US 2004/0254887 A1, published Dec. 16, 2004 (Ex. 1006).
`4 Bland et al., US 5,732,218, issued Mar. 24, 1998 (Ex. 1009).
`5 McTernan et al., WO 01/89195 A2, published Nov. 22, 2001 (Ex. 1007).
`6 Robinson et al., EP 0 939 516 A2, published Sept. 1, 1999 (Ex. 1008).
`
`4
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`
`
`
`Ex. 1001, Fig. 9. As shown above, Figure 9 depicts a web page (900) with
`portion 930 (including portion 920, where a presentation selected by the user
`may be displayed) and portions 910 and 940, which “may be used to display
`related information, such as advertisements.” Id. at 11:59–12:6, 12:12–14.
`In order to appropriately value the advertising space, the ’609 patent seeks to
`“identify how long the media was actually, or may typically be played.” Id.
`at 12:6–15.
`The presentation, which is displayed in portion 920, may be supplied
`by the system or may be linked by the system (with the content stored on a
`third party’s computer system). Ex. 1001, 12:64–66; see id. at 7:25–38
`
`5
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`(identifying challenge of tracking presentation “[w]here content is housed
`elsewhere and linked to by computers 30”). “Regardless, page 900 may
`include a timer applet,”7 which is “used to indicate when a pre-determined
`temporal period has elapsed.” Id. at 12:66–67, 13:5–6. For example, the
`temporal period may be ten, fifteen, or thirty seconds. Id. at 13:6–8.
`“[W]hen the applet determines the predetermined temporal period has
`elapsed, it signals its continued execution to system 20.” Id. at 13:10–12. In
`addition, “the applet may cause [a] cookie [received with web page 900], or
`associated data, to be transmitted from the user’s computer 20 to system 30.”
`Id. at 13:14–21; see id. at Fig. 1 (illustrating user computers 20 and server
`computers 30). The system logs receipt of the applet’s signal and logs the
`client’s cookie (or data associated with it). Id. at 13:12–13, 13:21–23. For
`example, “a table entry” may be made identifying the user, the page, and
`total time on that page. Id. at 13:24–30.
`According to the ’609 patent, this “provide[s] the capability to know
`that a viewer began viewing a particular show at a certain time, and to know
`when a user began viewing a different page, or show, thereby providing
`knowledge of how long a particular viewer spent on a particular page.”
`Ex. 1001, 13:43–48. The ’609 patent states that this knowledge allows the
`cost of “advertising displayed on a given page” to correspond to the length
`of time that page is viewed. Id. at 13:49–14:2; see also id. 7:42–52, 11:53–
`58.
`
`
`7 “‘Applet,’ as used [in the Specification], generally refers to a software
`component that runs in the context of another program . . . .” Ex. 1001,
`12:67–13:3.
`
`6
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`
`Challenged Claims
`E.
`The Petition challenges claims 1–3 of the ’609 patent. Claim 1 is
`independent, and claims 2 and 3 depend from claim 1. Independent claim 1
`is reproduced below with bracketed element letters added for reference:
`1.
`[pre] A method for tracking digital media
`presentations delivered from a first computer system to a user’s
`computer via a network comprising:
`[a] providing a corresponding web page to the user’s
`computer for each digital media presentation to be delivered
`using the first computer system;
`[b] providing identifier data to the user’s computer using
`the first computer system;
`[c] providing an applet to the user’s computer for each
`digital media presentation to be delivered using the first
`computer system, wherein the applet is operative by the user’s
`computer as a timer;
`[d] receiving at least a portion of the identifier data from
`the user’s computer responsively to the timer applet each time a
`predetermined temporal period elapses using the first computer
`system; and
`[e] storing data indicative of the received at least portion
`of the identifier data using the first computer system;
`[f] wherein each provided webpage causes corresponding
`digital media presentation data to be streamed from a second
`computer system distinct from the first computer system
`directly to the user’s computer independent of the first
`computer system;
`[g] wherein the stored data is indicative of an amount of
`time the digital media presentation data is streamed from the
`second computer system to the user’s computer; and
`[h] wherein each stored data is together indicative of a
`cumulative time the corresponding web page was displayed by
`the user’s computer.
`Ex. 1001, 14:17–45.
`
`7
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`
`II. ANALYSIS
`
`Principles of Law
`A.
`In an inter partes review, the petitioner has the burden of proving
`unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e).
`That burden never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`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 legal 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; (3) the level of ordinary skill in the art; and (4) when in evidence,
`objective evidence of obviousness or nonobviousness.8 Graham v. John
`Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966). One seeking to
`establish obviousness based on more than one reference also must articulate
`sufficient reasoning with rational underpinnings to combine teachings. See
`KSR, 550 U.S. at 418.
`
`The Level of Ordinary Skill in the Art
`B.
`Petitioner asserts that the level of ordinary skill in the art corresponds
`to “a bachelor’s degree in electrical engineering, computer science, or a
`
`
`8 The record does not include allegations or evidence of objective indicia of
`obviousness or nonobviousness.
`
`8
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`similar field with at least two years of experience in web page and Internet
`technology or a person with a master’s degree in electrical engineering,
`computer science, or a similar field with a specialization in web page and
`Internet technology.” Pet. 7 (citing Ex. 1002 ¶ 49). Patent Owner “does not
`offer a competing definition” of a person of ordinary skill in the art. PO
`Resp. 12.
`Petitioner’s proposal (unopposed by Patent Owner) is supported by
`the testimony of Dr. Storer and is consistent with the ’609 patent
`specification and the asserted prior art. See Ruiz v. A.B. Chance Co., 234
`F.3d 654, 666–67 (Fed. Cir. 2000) (identifying factors); see also Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (The “level of skill in the
`art is a prism or lens through which a judge, jury, or the Board views the
`prior art and the claimed invention.”). Accordingly, we adopt the level of
`ordinary skill as articulated by Petitioner, except that we remove the
`qualifier “at least” because it expands the range indefinitely without an
`upper bound. Accord Inst. Dec. 7 (adopting same position).9
`
`Claim Construction
`C.
`We interpret claim terms using “the same claim construction standard
`that would be used to construe the claim in a civil action under 35 U.S.C.
`282(b).” 37 C.F.R. § 42.100(b) (2019).
`The Petition proposes constructions for four claim terms and phrases:
`“applet,” “computer system,” “amount of time the digital media presentation
`
`
`9 In the 041 IPR, we adopt a slightly different definition of a person of
`ordinary skill in the art. Both definitions are substantially the same for
`purposes of these proceedings. In particular, our analysis and conclusions in
`this Decision would be the same regardless of which definition is adopted.
`
`9
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`data is streamed,” and “cumulative time the corresponding web page was
`displayed by the user’s computer.” Pet. 7–11 (emphasis omitted). Before
`institution, Patent Owner submitted that none of these claim terms or phrases
`required express construction. Prelim. Resp. 5; but see id. at 6–7 (disputing
`Petitioner’s proposed construction of “computer system”). In the Institution
`Decision, we agreed with Patent Owner that no claim terms or phrases
`required construction. Inst. Dec. 8.
`The parties’ post-institution briefs dispute whether Petitioner properly
`construed the term “computer system” (PO Resp. 14; Pet. Reply 3–5; PO
`Sur-Reply 1–3), but the parties agree that the Board need not construe this
`term in this proceeding (PO Resp. 13, 15; Pet. Reply 5; Tr. 16:25–17:18,
`31:16–26). We agree that it is not necessary for us to construe this term:
`although the parties do not agree on the term’s meaning, resolution of their
`dispute would not affect this Decision.10 Accordingly, we do not expressly
`construe the term “computer system,” and we apply the plain and ordinary
`meaning of that term. See Tr. 17:19–23, 32:1–6 (no objection to using the
`term’s plain and ordinary meaning).
`In addition, Patent Owner submits two district court orders analyzing
`the construction of claim terms and phrases in the ’609 patent. PO Resp. 10
`(citing Ex. 2001 (Order in Uniloc 2017 LLC v. Netflix, Inc., 8:18-cv-02055
`(C.D. Cal.)); Ex. 2002 (Order in Uniloc 2017 LLC v. Google LLC, 2:18-cv-
`
`
`10 For example, Patent Owner does not contend that the cited references fail
`to disclose a “computer system.” See generally PO Resp. Although Patent
`Owner argues that the Petition fails to show a second computer system
`distinct from the first computer system (id. at 31–33), resolution of that
`dispute is not affected by the meaning of the term “computer system,” as we
`explain in more detail in Section II.D.3.g, infra.
`
`10
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`00502 (E.D. Tex.))); see Consolidated Trial Practice Guide 47 (Nov. 2019)
`(“Consolidated TPG”)11 (“Parties should submit a prior claim construction
`determination by a federal court or the ITC in an AIA proceeding as soon as
`that determination becomes available.”). We have reviewed and considered
`the district courts’ orders. See Ex. 2001, 6, 14–18, 26–27; Ex. 2002, 57–78;
`37 C.F.R. § 42.100(b) (“Any prior claim construction determination
`concerning a term of the claim in a civil action . . . that is timely made of
`record in the inter partes review proceeding will be considered.”).
`However, given the issues presented in this proceeding, this Decision
`need not—and does not—expressly construe any claim terms or phrases.
`See PO Resp. 13 (stating that “the Board need not expressly construe any
`claim term”); Pet. Reply 23 (observing that Patent Owner “neither relies on
`nor asks the Board to adopt any of the constructions from the district court
`orders”); Tr. 17:24–18:15, 37:9–22; see also, e.g., Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(“[W]e need only construe terms ‘that are in controversy, and only 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))).
`
`D. Obviousness in view of McTernan and Robinson
`Petitioner contends that claims 1–3 are rendered obvious by the
`combination of McTernan and Robinson. Pet. 40–63, 69–73. Patent Owner
`argues the Petition fails to show that the combination teaches element 1[f]
`(see infra § II.D.3.g) and fails to show a sufficient motivation to combine the
`references in the manner proposed (see infra § II.D.3.i). PO Resp. 31–43.
`
`
`11 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`11
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`For the reasons explained below, we are persuaded by a
`preponderance of the evidence that Petitioner has shown that the subject
`matter of claims 1–3 would have been obvious over McTernan and
`Robinson.
`
`1. McTernan (Ex. 1007)
`McTernan is titled “System and Method for Secure Delivery of Rich
`Media.” Ex. 1007, code (54). McTernan delivers “rich media resources” to
`client devices and tracks “show viewership” using “heartbeat packets” sent
`by client devices during playback of the media resources. Id. at code (57).
`McTernan’s system is depicted in Figure 1, reproduced below.
`
`
`
`12
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`As shown above, Figure 1 includes producers 102, web servers 104, show
`servers 106, client device 108, security servers 110, and central server 112.
`Ex. 1007, 12:12–15.
`Producers 102 create rich media presentations and send the associated
`files to show servers 106. Id. at 12:22–23, 14:2–3. Show servers 106
`upload the files to security servers 110 for encryption and then store the
`encrypted files for future transmission to requesting clients 108. Id. at 11:4–
`6, 14:6–10, 15:2–3. Security servers 110 store the encryption keys. Id. at
`14:7–15:2.
`“Web server 104 serves HTML pages to Client devices 108
`containing links to one or more available shows hosted by Show
`Server 106.” Ex. 1007, 15:14–15. “When a client 108 requests the
`transmission of content by selecting a link presented on a Web page, an
`appropriate Show Server Guide 103c is transmitted” that lists show
`servers 106 capable of transmitting the requested content. Id. at 16:22–17:2.
`Client 108 connects with a listed show server 106 (id. at 17:2–4, 17:17–18),
`and the client’s media player (player 103b) receives the encrypted rich
`media resources from that show server 106 (id. at 18:3–9). Client 108
`requests the resources’ encryption keys from security server 110 (id. at
`18:10–11), and security server 110 provides the appropriate encryption keys
`and a unique session identifier (“session id”) to client 108 (id. at 18:13–17).
`During the show, media player 103b (running on client 108) sends
`“heartbeat packets” to security server 110 at regular intervals. Ex. 1007,
`18:22–19:1. The heartbeats “consist of the unique session id and a time
`stamp” and “are generated and transmitted a [sic—at] regular
`intervals . . . e.g., every 30 seconds, every minute, etc.” Id. at 19:1–4. “The
`
`13
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`time stamp is used to measure the elapsed time from the beginning of the
`viewing of a show to the generation of the heartbeat packet. In this manner,
`the system is capable of generating statistics regarding how long each show
`is viewed for by each client.” Id. at 19:4–6. According to McTernan, “[b]y
`having each Player 103b update the Security Server 110 with viewing
`statistics, a mechanism is provided whereby precise measurements of show
`viewership can be made.” Id. at 19:10–12; see also id. at 9:22–23 (“These
`heartbeat data packets are used to calculate the total time that a user is
`watching a show . . . .”). Security server 110 retains this data and provides it
`to central server 112, and the data can be used for billing purposes. Id.
`at 19:13–20.
`
`2. Robinson (Ex. 1008)
`Robinson is titled “User communication and monitoring system for
`computer networks.” Ex. 1008, code (54). Robinson describes a user
`communication and monitoring system (UCMS) that measures the duration
`of a visitor’s presence on a web page. Id. ¶¶ 4–7. “UCMS generates
`information and enables knowledge on arrival and departure time of visitors,
`and thus of duration of visit,” and Robinson states that “visit duration
`information is potentially more valuable and accurate in monitoring the
`‘success’ of WWW sites, and in redesigning layout and marketing strategy.”
`Id. ¶ 18.
`Robinson measures the visit duration using “heartbeats” sent by an
`applet on the client’s machine. Ex. 1008 ¶¶ 8–9. “When a user arrives on a
`web page,” the user’s computer receives the web page and “a small Java
`applet which is able to communicate with the server side UCMS program.”
`Id. ¶ 20. The client sends a message to indicate the starting time of the
`
`14
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`applet, and the server updates a log-file with the LOGIN-time and an
`“identifier and page-indicator.” Id. ¶¶ 20, 22. After the page is downloaded,
`“the applet regularly sends pulse message[s] [i.e., heartbeats] to the server,”
`which indicate that the user is online. Id. ¶ 23. “[T]he applet in the client
`updates its existence at intervals e.g. of 1 second (generally in the range
`0,001 – 5 min).” Id. ¶ 28. If the server fails to receive a heartbeat pulse, it
`assumes “the client is not on-line anymore,” and “updates the log-file.” Id.
`¶ 23. “The log-file consists minimally of information about the login and
`logout times of any web page (with identifier and page-indicator) to which
`the applet has been added,” and the log-file can be used for “real time
`monitoring of users or collecting long-term statistics or for security reasons.”
`Id. ¶ 21 (emphasis omitted); see id. ¶ 31 (“[T]he same Java applet can be
`used with all pages each page containing unique identification variables.”);
`see also id. ¶ 24 (deleting applet before new web page is downloaded).
`
`3. Independent Claim 1
`
`a. 1[pre]: “A method for tracking digital media
`presentations delivered from a first computer system
`to a user’s computer via a network comprising”
`Petitioner asserts that McTernan discloses the preamble of claim 1
`(Pet. 41–45),12 and Patent Owner has not argued otherwise (see generally
`PO Resp.).
`Petitioner’s assertions are supported by the cited evidence and are
`persuasive. McTernan’s web server 104, security servers 110, and central
`
`
`12 Because Petitioner has shown sufficiently that the recitations in the
`preamble are satisfied by McTernan, we need not determine whether the
`preamble is limiting. See Vivid Techs., 200 F.3d at 803.
`
`15
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`server 112 collectively teach a first computer system. E.g., Ex. 1007, 10:22–
`11:18, 12:12–15, Fig. 1; see Pet. 41–42 (mapping these servers to the
`claimed “first computer system”). These servers facilitate the delivery of
`rich media resources (the claimed “digital media presentations”) to client
`device 108 (the claimed “user’s computer”) via data network 100. E.g.,
`Ex. 1007, code (57), 9:12–20, 12:12–21, Fig. 1. McTernan’s security
`servers 110 and central server 112 track delivery of the media resources
`using heartbeat packets generated by the client during playback. E.g., id. at
`code (57), 18:22–19:6. Accordingly, we are persuaded that McTernan
`discloses the preamble.
`
`b. 1[a]: “providing a corresponding web page to the
`user’s computer for each digital media presentation
`to be delivered using the first computer system”
`Petitioner asserts that McTernan discloses element 1[a] (Pet. 45–47),
`and Patent Owner has not argued otherwise (see generally PO Resp.).
`Petitioner’s assertions are supported by the cited evidence and are
`persuasive. McTernan states that “Web Server 104 serves HTML pages to
`Client devices 108 containing links to one or more available shows.”
`Ex. 1007, 15:14–15; see id. at 22:6–12 (web pages may be encoded in
`Hypertext Markup Language (HTML)). McTernan discloses “providing a
`corresponding web page for each digital media presentation,” as claimed, for
`two reasons that are each independently sufficient. First, McTernan
`discloses that the HTML pages may contain a link to “one . . . available
`show[].” Id. at 15:14–15; see Ex. 1002 ¶ 190. Second, after client 108
`selects one of these links, McTernan’s web server 104 provides “Show
`Server Guide 103c . . . listing all Show Servers 106 connected to the
`
`16
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`network 100 that are capable of transmitting the content requested by the
`client 108.” Ex. 1007, 16:22–17:2; see id. at 23:15–17; Ex. 1002 ¶ 191
`(testifying that an ordinary artisan would have understood the show server
`guide to be provided on a web page). Accordingly, we are persuaded that
`McTernan discloses element 1[a].
`
`c. 1[b]: “providing identifier data to the user’s
`computer using the first computer system”
`Petitioner asserts that McTernan discloses element 1[b] (Pet. 47–48),
`and Patent Owner has not argued otherwise (see generally PO Resp.).
`Petitioner’s assertions are supported by the cited evidence and are
`persuasive. McTernan’s security server 110 sends a session identifier (the
`claimed “identifier data”) to client device 108. Ex. 1007, 18:15–16, Fig. 4
`(step 402). “The session id is a reference to the unique id of the Player 103b
`and the unique id of the show being viewed.” Id. at 18:16–17; see id.
`at 15:21–22 (“The player and plug-in 103b are encoded with an identifier to
`uniquely identify the player and plug-in and thereby associate it with the
`Client 108.”). Accordingly, we are persuaded that McTernan discloses
`element 1[b].
`
`d. 1[c]: “providing an applet to the user’s computer for
`each digital media presentation to be delivered using
`the first computer system, wherein the applet is
`operative by the user’s computer as a timer”
`Petitioner asserts that McTernan and the McTernan-Robinson
`combination each disclose element 1[c] (Pet. 48–53), and Patent Owner has
`not argued otherwise (see generally PO Resp.). Petitioner’s assertions are
`supported by the cited evidence and are persuasive.
`
`17
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`We are persuaded that a person of ordinary skill in the art would have
`understood McTernan’s media player 103b to disclose the claimed applet.
`See Pet. 49–50. McTernan describes media player 103b as a “plug-in or
`other software add-on” that can be “loaded into the client’s content viewer.”
`Ex. 1007, 22:14–18; see also id. at 15:13–19, 22:18–23:5; Ex. 1002 ¶ 196
`(testifying that an ordinary artisan “would have understood that a ‘plug-in’
`or ‘add-on’ runs in the context of another program, such as a browser”).
`Also, Dr. Storer testifies that an ordinary artisan would have understood
`McTernan to disclose providing a media player “for each presentation to be
`delivered,” as claimed, because “Mc[T]ernan does not require the client 108
`to possess a media player in advance.” Ex. 1002 ¶ 197 (citing Ex. 1007,
`15:16–19). We credit Dr. Storer’s testimony because it is logical and
`consistent with McTernan’s disclosure. Finally, media player 103b is
`“operative . . . as a timer,” as claimed, because it generates periodic
`heartbeat data packets that each include a time stamp “used to measure the
`elapsed time from the beginning of the viewing of a show to the generation
`of the heartbeat packet.” Ex. 1007, 18:22–19:5; see also id. at 9:21–10:2.
`Accordingly, we are persuaded that McTernan discloses element 1[c].
`Moreover, we are persuaded that Robinson discloses an applet, as
`claimed. See Pet. 50–51. After arriving on a web page, Robinson’s client
`downloads “a small Java applet” that periodically sends heartbeats to a
`server. Ex. 1008, code (57), ¶¶ 20, 22, 28. Robinson’s server uses these
`heartbeats “to make an accurate calculation of the client leaving time and of
`visit duration.” Id. ¶ 9; see id. ¶¶ 20–23 (server maintains a log-file with
`“identifier and page-indicator” and timing information). Robinson’s applet
`“can be used with all pages[,] each page containing unique identification
`
`18
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`variables.” Id. ¶ 31; see also id. ¶ 24 (stating that applet is deleted from the
`client before a new web page is downloaded).
`We are also persuaded that it would have been obvious to combine
`Robinson’s applet with McTernan’s system. See Pet. 69–70. McTernan and
`Robinson both disclose software that instructs a client to periodically
`provide heartbeats to a server for tracking purposes. Ex. 1007, code (57);
`Ex. 1008, code (57). McTernan’s client retrieves “rich media plug-in and
`stand-alone player 103b” from web server 104 (Ex. 1007, 15:17–19), and
`similarly, Robinson’s client receives an applet when downloading a web
`page’s HTML code (Ex. 1008 ¶ 22). Dr. Storer testifies that a person of
`ordinary skill would have been motivated to use an applet, as disclosed in
`Robinson, in place of McTernan’s software, because it would have been “a
`simple substitution of one known element . . . for another” and would
`“obtain predictable results.” Ex. 1002 ¶ 234. Dr. Storer also testifies that
`use of an applet would “simplify the method of providing a client with
`software for generating heartbeat packets” and a person of ordinary skill in
`the art would have known how to provide an applet using McTernan’s web
`server. Id. ¶¶ 235–236 (citing Ex. 1008 ¶¶ 19, 22, 31, 41). We credit this
`testimony because it is logical and consistent with and supported by the
`disclosure in Robinson. Accordingly, we are also persuaded that the
`McTernan-Robinson combination discloses element 1[c].
`
`e. 1[d]: “receiving at least a portion of the identifier
`data from the user’s computer responsively to the
`timer applet each time a predetermined temporal
`period elapses using the first computer system”
`Petitioner asserts that McTernan and the McTernan-Robinson
`combination each disclose element 1[d] (Pet. 53–54), and Patent Owner has
`
`19
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`not argued otherwise (see generally PO Resp.). Petitioner’s assertions are
`supported by the cited evidence and are persuasive.
`McTernan’s security server 110 receives heartbeat packets, which
`contain the unique session identifier, from media player 103b at regular
`intervals (“e.g., every 30 seconds, every minute, etc.”). Ex. 1007, 18:22–
`19:12, Fig. 4 (steps 408, 410); see also id. at 9:21–10:3. Accordingly, we
`are persuaded that McTernan discloses element 1[d].
`In addition, Robinson’s server receives heartbeats from the client’s
`applet at regular intervals. Ex. 1008 ¶¶ 20, 23; see id. ¶ 28 (noting that “the
`applet in the client updates its existence at intervals e.g. of 1 second”).
`Robinson’s server maintains a log-file to determine whether a client has
`stopped sending heartbeat pulses, which indicates that Robinson’s heartbeats
`include information that uniquely identifies the client and the web page. See
`id. ¶¶ 21 (“The log-file consists minimally of information about the login
`and logout times of any web page (with identifier and page-indicator) to
`which the applet has been added.”), 22 (“Minimally, with the time
`information, the server saves some kind of identifier and page-indicator.”),
`23 (“The server reacts to cessation of heartbeat pulses by . . . updat[ing] the
`log-file and refus[ing] all connection attempts to that client.”), 31 (noting
`pages can each contain “unique identification variables”). Dr. Storer
`testifies that, based
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
