Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 7
`Entered: February 4, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SLING TV L.L.C.,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2019-01367
`Patent 8,407,609 B2
`____________
`
`
`Before CHARLES J. BOUDREAU, DANIEL J. GALLIGAN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`DIRBA, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 7
`Entered: February 4, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SLING TV L.L.C.,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2019-01367
`Patent 8,407,609 B2
`____________
`
`
`Before CHARLES J. BOUDREAU, DANIEL J. GALLIGAN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`DIRBA, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`
`I. INTRODUCTION
`On July 22, 2019, Sling TV L.L.C. (“Petitioner”) 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 Patent Owner Preliminary Response on
`November 6, 2019. Paper 6 (“Prelim. Resp.”).
`To institute an inter partes review, we must determine that the
`information presented in the Petition, viewed in light of the Preliminary
`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).
`Having considered the parties’ submissions, we determine that
`Petitioner has demonstrated a reasonable likelihood that it would prevail in
`establishing the unpatentability of claims 1–3 on one of the grounds asserted
`in the Petition. Accordingly, we institute an inter partes review of the
`challenged claims.
`
`Related Matters
`A.
`The parties identify the following related proceedings currently or
`previously pending in district courts: Uniloc 2017, LLC v. Sling TV, LLC,
`1:19-cv-00278 (D. Colo.); Uniloc 2017 LLC v. Netflix, Inc., 8:18-cv-01899
`(C.D. Cal.); Uniloc 2017 LLC v. American Broadcasting Companies, Inc.,
`8:18-cv-01930 (C.D. Cal.); Uniloc 2017 LLC v. Google LLC, 2:18-cv-00456
`(E.D. Tex.); Uniloc 2017 LLC v. Google LLC, 2:18-cv-00502 (E.D. Tex.);
`Uniloc 2017 LLC v. Netflix, Inc., 8:18-cv-02055 (C.D. Cal.); Uniloc 2017
`LLC v. American Broadcasting Companies, Inc., 8:18-cv-02056 (C.D. Cal.);
`Uniloc 2017 LLC v. Roku, Inc., 1:18-cv-01126 (W.D. Tex.); Uniloc 2017
`
`2
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`LLC v. Vudu, Inc., 1:19-cv-00183 (D. Del.); Uniloc 2017 LLC v. Roku, Inc.,
`8:19-cv-00295 (C.D. Cal.). Pet. v–vi; Prelim. Resp. 2–3.
`The ’609 patent is also the subject of two other petitions for inter
`partes review: IPR2020-00041 (filed by Netflix, Inc. and Roku, Inc. on
`October 18, 2019) and IPR2020-00115 (filed by Google LLC on October 31,
`2019). Prelim. Resp. 3. A decision whether to institute has not been entered
`in either proceeding.
`
`Real Parties in Interest
`B.
`Petitioner 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. Patent Owner identifies no other real
`parties in interest. Paper 3, 1 (Mandatory Notice).
`
`The Petition’s Asserted Grounds
`C.
`Petitioner asserts the following grounds of unpatentability:
`
`Claims Challenged 35 U.S.C. §
`1–3
`103(a)1
`
`References
`Jacoby,2 Bland3
`
`1–3
`
`103(a)
`
`McTernan,4 Robinson5
`
`
`1 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.
`2 Jacoby, US 2004/0254887 A1, published Dec. 16, 2004 (Ex. 1006).
`3 Bland et al., US 5,732,218, issued Mar. 24, 1998 (Ex. 1009).
`4 McTernan et al., WO 01/89195 A2, published Nov. 22, 2001 (Ex. 1007).
`5 Robinson et al., EP 0 939 516 A2, published Sept. 1, 1999. (Ex. 1008).
`
`3
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`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, Abstract. An exemplary web
`page provided to a user’s computer is shown in Figure 9, which is
`reproduced below:
`
`
`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
`
`4
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`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
`(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,”6 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 10, 15, or 30 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 the
`client’s cookie data (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
`
`
`6 “‘Applet,’ as used herein, generally refers to a software component that
`runs in the context of another program . . . .” Ex. 1001, 12:67–13:3.
`
`5
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`when a user began viewing a different page, or show, thereby providing
`knowledge of how long a particular viewer spent on a particular page.” Id.
`at 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.
`
`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:
`1.
`A method for tracking digital media presentations
`delivered from a first computer system to a user’s computer via
`a network comprising:
`providing a corresponding web page to the user’s
`computer for each digital media presentation to be delivered
`using the first computer system;
`providing identifier data to the user’s computer using the
`first computer system;
`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;
`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
`storing data indicative of the received at least portion of
`the identifier data using the first computer system;
`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;
`
`6
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`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
`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.
`
`II. ANALYSIS
`
`The Level of Ordinary Skill in the Art
`A.
`Petitioner asserts that the level of ordinary skill in the art corresponds
`to “a bachelor’s degree in electrical engineering, computer science, or a
`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 for POSITA at this preliminary stage.” Prelim.
`Resp. 4.
`For purposes of this Decision, we adopt the level of ordinary skill as
`articulated by Petitioner, except that we remove the qualifier “at least” to
`clarify the articulated level of experience and education. The qualifier is
`vague because it expands the range indefinitely without an upper bound,
`precluding a meaningful indication of the level of ordinary skill in the art.
`We adopt Petitioner’s proposal because, based on the current record, this
`proposal is both reasonable and supported by the testimony of Dr. Storer.
`To the extent the level of ordinary skill in the art is in dispute or makes a
`material difference in the obviousness analysis, the parties will have the
`opportunity during trial to brief their respective positions in this regard.
`
`7
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`Claim Construction
`B.
`Because the Petition was filed after November 13, 2018, 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).7
`Petitioner proposes constructions for the terms “applet” and
`“computer system” and the phrases “an amount of time the digital media
`presentation data is streamed” and “a cumulative time the corresponding
`web page was displayed by the user’s computer.” Pet. 7–11 (emphasis
`omitted). Patent Owner contends that no claim terms or phrases require
`express construction at this stage. Prelim. Resp. 5. Patent Owner also
`argues that Petitioner’s proposed construction of “computer system” is in
`error. Id. at 6–7.
`We agree with Patent Owner that no express construction is required
`at this time. Our determination whether to institute does not depend on a
`construction of any claim terms or phrases (including those identified by
`Petitioner), and thus we do not construe expressly any terms at this
`preliminary stage. See, 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
`
`
`7 On October 11, 2018, the USPTO revised its rules to harmonize the
`Board’s claim construction standard with that used in federal district court.
`Changes to the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340
`(Oct. 11, 2018). This rule change applies to petitions filed on or after
`November 13, 2018. Id.
`
`8
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999))).
`
`Law on Obviousness
`C.
`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 nonobviousness.8 Graham v. John Deere Co. of Kan.
`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 Int’l Co. v. Teleflex
`Inc., 550 U.S. 398, 418 (2007).
`
`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 the references would have been
`combined as proposed (see infra § II.D.3.i). Having considered the
`arguments and evidence presented in the Petition in light of Patent Owner’s
`Preliminary Response, we are persuaded at this stage of the proceeding, for
`the reasons that follow, that Petitioner has demonstrated a reasonable
`
`
`8 The current record does not include allegations or evidence of objective
`indicia of nonobviousness.
`
`9
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`likelihood of prevailing in showing that claims 1–3 would have been
`obvious over the combined teachings of McTernan and Robinson.
`
`1. McTernan (Ex. 1007)
`McTernan is titled “System and Method for Secure Delivery of Rich
`Media.” Ex. 1007, code (54). McTernan’s client generates heartbeat
`packets when rich media resources (or “show[s]”) are being played by the
`client so that the server can measure show viewership. Id. at Abstract.
`McTernan’s system is depicted in Figure 1, reproduced below.
`
`
`
`10
`
`
`
`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,
`along with various other components. Ex. 1007, 12:12–16. Producers 102
`create rich media presentations and send the associated files “to a Show
`Server 106 for distribution to requesting clients 108.” Id. at 12:22–23, 14:2–
`3. The show server 106 uploads the files to a security server 110, which
`encrypts the files, returns the result to the show server 106, and stores the
`encryption key. Id. at 14:6–15:3.
`“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, 15:13–15. “If the Client 108 does not possess the required
`rich media plug-in and stand-alone player 103b, the client retrieves it from
`the Web Server 104.” Id. at 15:17–19. “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.” Id. at 15:21–22. “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
`all show servers 106 that are capable of transmitting the requested content.
`Id. at 16:22–17:2. Client 108 connects with a show server 106 listed in the
`show server guide 103. Id. at 17:2–4, 17:17–18. The client’s media player
`(player 103b) receives the encrypted rich media resources from show server
`106 and requests an encryption key for each resource from security server
`110. Id. at 18:3–5, 18:10–11. Security server 110 provides the appropriate
`keys and a session identifier, which “is a reference to the unique id of the
`Player 103b and the unique id of the show being viewed.” Id. at 18:13–17.
`
`11
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`During the show, media player 103b 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,” such as every 30
`seconds or every minute. Id. at 19:1–3. “The 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. 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
`
`12
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`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
`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 [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.”);
`cf. 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 1.9
`Pet. 41–45. According to Petitioner, McTernan’s web servers 104, security
`
`
`9 Petitioner treats the preamble of claim 1 as a limitation. Pet. 41–45; see
`also id. at 12–16. For purposes of this Decision, we assume, without
`deciding, that the preamble is limiting.
`
`13
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`servers 110, and central servers 112 teach the claimed “first computer
`system,” and McTernan’s client device 108 teaches the claimed “user’s
`computer.” Id. at 41–44 (citing Ex. 1007, 9:12–20, 11:10–18; 12:15–18,
`Fig. 1). Petitioner contends that McTernan delivers rich media resources
`(which Petitioner maps to the claimed “digital media presentations”) to
`client device 108 via data network 100. Id. at 44 (citing Ex. 1007, 5:1–17,
`9:12–20, 12:12–23, 26:1–2, 29:1–3, Fig. 1). Petitioner submits that
`McTernan tracks delivery of these rich media resources using heartbeat
`packets, which are generated by the client during playback of the media. Id.
`at 44–45 (citing Ex. 1007, Abstract, 9:10–11).
`Patent Owner does not respond to Petitioner’s arguments, analysis, or
`evidence for the preamble. See generally Prelim. Resp.
`Petitioner’s assertions and explanations are consistent with and
`supported by the evidence cited by Petitioner. Accordingly, we are
`persuaded that Petitioner sufficiently has shown 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.
`Petitioner contends that McTernan’s web server 104 serves HTML pages to
`browser software on client device 108. Id. at 45 (citing Ex. 1007, 15:13–16,
`22:6–10). According to Petitioner, McTernan discloses providing a
`“corresponding” web page for each show because the HTML page provided
`to the client may contain a link to a single show. Id. at 46 (citing Ex. 1007,
`15:14–16; Ex. 1002 ¶ 190). In addition, Petitioner submits that a person of
`
`14
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`ordinary skill would have understood McTernan’s “show server guide,”
`which is also provided to the client, to be a corresponding web page for a
`particular show. Id. at 46–47 (citing Ex. 1007, 16:22–17:2, 22:5–10, 23:15–
`17, 23:20–21; Ex. 1002 ¶ 191).
`Patent Owner does not respond to Petitioner’s arguments, analysis, or
`evidence for this limitation. See generally Prelim. Resp.
`Petitioner’s assertions and explanations are consistent with and
`supported by the evidence cited by Petitioner. Accordingly, we are
`persuaded that Petitioner sufficiently has shown that McTernan discloses
`this limitation.
`
`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.
`Petitioner submits that McTernan’s security server 110 sends a session
`identifier (which maps to the claimed “identifier data”) to client device 108.
`Id. (citing Ex. 1007, 18:15–17, 24:18–25:4, Fig. 4 (step 402)). According to
`Petitioner, the session identifier includes the “unique id of the Player 103b,”
`which associates a client and its media player, and “the unique id of the
`show being viewed.” Id. at 47 (quoting Ex. 1007, 18:16–17; citing
`Ex. 1007, Abstract, 15:16–22, 22:14–23:5).
`Patent Owner does not respond to Petitioner’s arguments, analysis, or
`evidence for this limitation. See generally Prelim. Resp.
`Petitioner’s assertions and explanations are consistent with and
`supported by the evidence cited by Petitioner. Accordingly, we are
`persuaded that Petitioner sufficiently has shown that McTernan discloses
`this limitation.
`
`15
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`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.
`First, according to Petitioner, a person of ordinary skill in the art
`would have understood McTernan’s media player 103b to be an applet based
`on McTernan’s description of media player 103b. Pet. 49 (citing Ex. 1007,
`15:13–22, 22:15–16; Ex. 1002 ¶¶ 196–197). Petitioner also submits that,
`because McTernan does not require client 108 to have media player 103 in
`advance, a person of ordinary skill would have understood that web server
`104 can provide a media player to the client “for each digital media
`presentation to be delivered.” Id. (citing Ex. 1007, 15:16–19; Ex. 1002
`¶¶ 196–197). Petitioner contends that McTernan discloses that the media
`player is operative by the client as a timer because the media player
`periodically generates heartbeat data packets that include a time stamp. Id.
`at 50 (citing Ex. 1007, 9:21–10:1, 11:14–18, 18:22–19:8).
`Second, Petitioner contends that Robinson discloses the claimed
`applet that is operative by the user’s computer as a timer. Pet. 50. Petitioner
`submits that Robinson’s “applet program,” which is downloaded by a client,
`periodically sends heartbeats to a host computer. Id. (quoting Ex. 1008,
`Abstract; citing Ex. 1008 ¶¶ 20, 23, 28). Petitioner contends that Robinson
`measures the duration of a client’s visit to a page by updating a log-file with
`timing information and an “identifier and page-indicator” when the host fails
`to receive a heartbeat. Id. at 51 (citing Ex. 1008 ¶¶ 5, 8, 20–22).
`
`16
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`According to Petitioner, using an applet in McTernan would have
`been obvious in view of Robinson. Pet. 52 (citing Ex. 1008, Abstract, ¶ 20;
`Ex. 1002 ¶¶ 203, 233–236); see id. at 69–70 (alleging motivation to combine
`references). Petitioner argues that it would have been obvious to combine
`McTernan and Robinson because both references “disclose a server
`providing a client with software that instructs the client to periodically
`provide heartbeats for tracking purposes.” Id. at 69 (citing Ex. 1007,
`Abstract; Ex. 1008, Abstract). In addition, Petitioner contends that a person
`of ordinary skill would have been motivated to substitute McTernan’s
`software for Robinson’s applet, as this would be a simple substitution of one
`known element for another to obtain predictable results (i.e., “the client
`would generate heartbeats according to the software in the applet”). Id.
`Petitioner also asserts that a person of ordinary skill “would have been
`motivated to incorporate Robinson’s applet into the system of Mc[T]ernan to
`simplify the method of providing a client with software for generating
`heartbeat packets” because “Robinson’s applet ‘does not require installation
`on the client machine (e.g. plug-ins).’” Id. at 69–70 (quoting Ex. 1008 ¶ 19;
`citing Ex. 1008 ¶¶ 22, 31, 41; Ex. 1002 ¶¶ 233–236).
`Patent Owner does not respond to Petitioner’s arguments, analysis, or
`evidence for this limitation. See generally Prelim. Resp.
`Petitioner’s assertions and explanations are consistent with and
`supported by the evidence cited by Petitioner. Accordingly, we are
`persuaded that Petitioner sufficiently has shown that McTernan discloses
`this limitation. Moreover, we are persuaded that Petitioner sufficiently has
`shown that the McTernan-Robinson combination discloses this limitation.
`
`17
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`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.
`First, according to Petitioner, McTernan discloses this limitation
`because McTernan’s security server 110 receives heartbeats tagged with the
`session identifier from media player 103b at regular intervals. Pet. 53–54
`(citing Ex. 1007, 9:21–10:8, 18:22–19:12, Fig. 4 (steps 402, 410)).
`Second, Petitioner contends that Robinson discloses this limitation.
`According to Petitioner, Robinson’s server receives regular heartbeats from
`the client’s applet, and a person of ordinary skill “would understand that the
`client provides the page-indicator with the heartbeats to allow the UCMS
`server to save the timing information with the page-indicator.” Id. at 54
`(citing Ex. 1008 ¶¶ 5, 8, 20–23, 28; Ex. 1002 ¶ 207). Petitioner argues that a
`person of ordinary skill in the art would have been motivated to combine
`these teachings with McTernan.10 Id. (citing Ex. 1002 ¶ 208).
`Patent Owner does not respond to Petitioner’s arguments, analysis, or
`evidence for this limitation. See generally Prelim. Resp.
`Petitioner’s assertions and explanations regarding McTernan’s
`disclosure are consistent with and supported by the evidence cited by
`Petitioner. Accordingly, we are persuaded that Petitioner sufficiently has
`
`
`10 In particular, Petitioner contends that it would have been obvious to add
`Robinson’s heartbeats (which track time on a page) to McTernan’s system
`(which tracks time a show is viewed). See Pet. 52, 54, 56, 61. We address
`this contention with Patent Owner’s challenge to it. See infra § II.D.3.i.
`
`18
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`shown that McTernan discloses this limitation. Moreover, we are persuaded
`that Petitioner sufficiently has shown that the McTernan-Robinson
`combination discloses this limitation.
`
`f. 1[e]: “storing data indicative of the received at least
`portion of the identifier data using the first computer
`system”
`Petitioner asserts that McTernan discloses element 1[e]. Pet. 55–56.
`Petitioner contends that McTernan’s security server 110 “store[s] heartbeat
`packets indexed according to/indicative of the received session ID.” Id. at
`55 (citing Ex. 1007, 25:16–20, Fig. 4 (step 410)).
`Patent Owner does not respond to Petitioner’s arguments, analysis, or
`evidence for this limitation. See generally Prelim. Resp.
`Petitioner’s assertions and explanations are consistent with and
`supported by the evidence cited by Petitioner. Accordingly, we are
`persuaded that Petitioner sufficiently has shown that McTernan discloses
`this limitation.
`
`g. 1[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”
`Petitioner asserts that McTernan discloses element 1[f]. Pet. 56–59;
`see also id. at 42–43 (arguing first and second computer systems are
`“distinct” from each other). Petitioner contends that McTernan’s show
`servers 106 (which map to the claimed “second computer system”) are
`distinct from the “first computer system” (which includes web server 104,
`security servers 110, and central server 112) because they are “separate
`
`19
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`servers with separate functionality.” Id. at 43 (citing Ex. 1007, 2:13–17,
`12:11–19:21)). Petitioner also alleges that show servers 106 provide a show
`to client device 108 independent of the first computer system. Id. at 56–58
`(citing Ex. 1007, 16:9–21, 17:7–16, Fig. 1). In particular, Petitioner submits
`that McTernan’s client 108 “negotiate[s] and maintain[s] a connection with
`Show Servers 106, which provide content used in delivering a presentation
`or show.” Id. at 57–58 (quoting Ex. 1007, 16:9–21) (alterations in original;
`emphasis omitted).
`In addition, Petitioner submits that the web page provided by web
`server 104 causes the corresponding digital media presentation to be
`streamed. Pet. 56–57, 59 (citing Ex. 1007, 15:14–15; Pet. 45–47 (element
`1[b])). According to Petitioner, a person of ordinary skill in the art “would
`have understood the ‘digital media presentation data to be streamed’ by
`Mc[T]ernan’s show servers 106 based on Mc[T]ernan’s disclosure of a [sic]
`providing content from show server 106 to client 108 via a UDP
`connection.” Id. at 58 (citing Ex. 1007, 5:1–10; Ex. 1002 ¶¶ 215–216).
`Patent Owner argues that show servers 106 (the identified second
`computer system) “have a common operator or are under common control of
`the servers identified as the ‘first computer system,’” which includes web
`server 104 and security server 110. Prelim. Resp. 16–17. From this, Patent
`Owner contends that the first and second computer systems identified by
`Petitioner “are not distinct computer systems.” Id. at 17.
`On this record, we are persuaded that McTernan discloses this claim
`limitation. Petitioner’s assertions and explanations are consistent with and
`supported by the evidence cited by Petitioner. McTernan’s show servers
`106 are distinct from and operate independently of McTernan’s web server
`
`20
`
`
`
`IPR2019-01367
`Patent 8,407,609 B2
`104, security servers 110, and central server 112. E.g., Ex. 1007, 14:6–15,
`17:7–18:9 (describing function and operation of show servers 106); see id. at
`Fig. 1 (il
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
