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
`____________
`
`NETFLIX, INC.,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2020-00041
`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)
`
`
`
`
`

`

`IPR2020-00041
`Patent 8,407,609 B2
`
`I. INTRODUCTION
`Netflix, Inc. (“Petitioner”) and Roku, Inc.1 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 1 (“Pet.”). Uniloc 2017 LLC
`(“Patent Owner”) filed a Preliminary Response. Paper 9. 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 10 (“Institution
`Decision” or “Inst. Dec.”).
`After institution, Patent Owner filed a Response (Paper 15, “PO
`Resp.”), Petitioner filed a Reply (Paper 18, “Pet. Reply”), and Patent Owner
`filed a Sur-Reply (Paper 22, “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. Netflix,
`Inc., 8:18-cv-02055 (C.D. Cal.); Uniloc 2017 LLC v. Sling TV, LLC, 1:19-
`
`
`1 Roku, Inc. was terminated from this proceeding following a settlement
`with Patent Owner. Paper 14 (Termination Order).
`
`2
`
`

`

`IPR2020-00041
`Patent 8,407,609 B2
`cv-00278 (D. Colo.); Uniloc 2017 LLC v. Vudu, Inc., 1:19-cv-00183 (D.
`Del.); Uniloc 2017 LLC v. Google LLC, 2:18-cv-00502 (E.D. Tex.). Pet. 2–
`3; PO Resp. 9.
`The ’609 patent is or was the subject of three other petitions for inter
`partes review. A petition filed by Sling TV L.L.C. was instituted by the
`Board. Sling TV L.L.C. v. Uniloc 2017 LLC, IPR2019-01367 (“the 1367
`IPR”), Paper 7 (PTAB Feb. 4, 2020) (Institution Decision in the 1367 IPR).
`In IPR2020-00677, Vudu filed a petition that is substantively identical to the
`petition filed in the 1367 IPR, and the Board instituted that review and
`joined Vudu to the 1367 IPR as a petitioner. IPR2019-01367, Paper 16
`(Joinder Order). A final written decision in the 1367 IPR is being issued
`concurrently with this Decision. Also, 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).
`
`The Petition’s Asserted Grounds
`B.
`Petitioner asserts the following grounds of unpatentability (Pet. 5):
`
`Claims Challenged
`
`35 U.S.C. §
`
`References/Basis
`
`1–3
`
`103(a)2
`
`Davis,3 Choi4
`
`
`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 US 5,796,952, issued Aug. 18, 1998 (Ex. 1003).
`4 US 2003/0236905 A1, published Dec. 25, 2003 (Ex. 1004).
`
`3
`
`

`

`IPR2020-00041
`Patent 8,407,609 B2
`
`Claims Challenged
`
`35 U.S.C. §
`
`References/Basis
`
`1–3
`
`103(a)
`
`Siler,5 Davis
`
`Petitioner also relies on the testimony of Dr. Michael Franz to support its
`contentions. Ex. 1002; Ex. 1009 (reply declaration).6
`
`Summary of the ’609 Patent
`C.
`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).
`
`
`5 US 2004/0133467 A1, published July 8, 2004 (Ex. 1005).
`6 According to Patent Owner, “the Reply and its accompanying Franz
`Supplement (Ex. 1009) belatedly introduce at least two new theories, both of
`which are improper,” and consequently, “[t]he Board should not consider the
`entire reply.” PO Sur-Reply 4–5; see id. at 6–8 (identifying alleged new
`theories). We are not persuaded that it is appropriate to wholly disregard
`either document, as we can easily separate the challenged portions from the
`remainder of the document. Moreover, for each portion of those documents
`that we rely upon in this Decision, we have determined that Petitioner’s
`argument and evidence fairly respond to arguments presented in Patent
`Owner’s Response. See Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372,
`1380–81 (Fed. Cir. 2018) (“[T]he petitioner . . . may introduce new evidence
`after the petition stage if the evidence is a legitimate reply to evidence
`introduced by the patent owner, or if it is used ‘to document the knowledge
`that skilled artisans would bring to bear in reading the prior art identified as
`producing obviousness.’” (quoting Genzyme Therapeutic Prods. L.P. v.
`Biomarin Pharm. Inc., 825 F.3d 1360, 1369 (Fed. Cir. 2016))); see also
`Consolidated Trial Practice Guide 73–75 (Nov. 2019) (“Consolidated
`TPG”), available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`4
`
`

`

`IPR2020-00041
`Patent 8,407,609 B2
`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:
`
`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
`
`
`
`5
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`IPR2020-00041
`Patent 8,407,609 B2
`“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,”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.”
`
`
`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
`
`

`

`IPR2020-00041
`Patent 8,407,609 B2
`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.
`
`D. Challenged Claims
`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;
`
`7
`
`

`

`IPR2020-00041
`Patent 8,407,609 B2
`[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.
`
`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
`
`
`8 The record does not include allegations or evidence of objective indicia of
`obviousness or nonobviousness.
`
`8
`
`

`

`IPR2020-00041
`Patent 8,407,609 B2
`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 “at least a B.S. degree in computer science, computer engineering, or
`electrical engineering (or equivalent experience) and . . . at least two years of
`experience with web development, including the then-current web
`technologies such as HTML, XML, Java, and JavaScript.” Pet. 14 (citing
`Ex. 1002 ¶¶ 21–25). Petitioner states that “[a]dditional educational
`experience in computer science could make up for less work experience and
`vice versa.” Id. Patent Owner “does not offer a competing definition” of a
`person of ordinary skill in the art. PO Resp. 10.
`Petitioner’s proposal (unopposed by Patent Owner) is supported by
`the testimony of Dr. Franz 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. 13–14 (adopting same position).9
`
`
`9 In the 1367 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
`
`

`

`IPR2020-00041
`Patent 8,407,609 B2
`
`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 “computer system” and
`“streamed.” Pet. 12–14 (emphasis omitted). In the Institution Decision, we
`determined that no claim terms required construction. Inst. Dec. 15.
`At trial, Patent Owner advances claim constructions for “streaming,”
`“identifier data,” “computer system,” and “each stored data is together
`indicative of a cumulative time the corresponding web page was displayed
`by the user’s computer.” PO Resp. 11–14. But, when alleging deficiencies
`in Petitioner’s Davis-Choi ground,10 Patent Owner only references the
`construction of “identifier data.” See id. at 20. And, although the parties
`dispute the meaning of this term (see Pet. Reply 10–12 (disputing Patent
`Owner’s construction)), resolution of their dispute would not affect this
`Decision, as we explain below in element 1[d]. See infra § II.D.3.e
`(addressing Patent Owner’s arguments regarding “identifier data”).
`In addition, Patent Owner submits two district court orders analyzing
`the construction of claim terms and phrases in the ’609 patent. PO Resp. 11
`(citing Ex. 2002 (Order in Uniloc 2017 LLC v. Google LLC, 2:18-cv-00502
`(E.D. Tex.)); Ex. 2003 (Order in Uniloc 2017 LLC v. Netflix, Inc., 8:18-cv-
`02055 (C.D. Cal.))); see Consolidated TPG 47 (“Parties should submit a
`prior claim construction determination by a federal court or the ITC in an
`
`
`10 Because we determine that claims 1–3 are unpatentable based on the
`combination of Davis and Choi, we do not address Petitioner’s additional
`arguments of unpatentability based on the combination of Siler and Davis.
`
`10
`
`

`

`IPR2020-00041
`Patent 8,407,609 B2
`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 Tr. 12:15–15:2, 36:12–19 (agreeing that no express claim construction is
`required); 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 Davis and Choi
`Petitioner contends that claims 1–3 are rendered obvious by the
`combination of Davis and Choi. See Pet. 14–42. Patent Owner argues that
`the references are incompatible and that the Petition fails to show that the
`combination teaches element 1[d] (see infra § II.D.3.e). PO Resp. 14–20.
`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 Davis and Choi.
`
`1. Davis (Ex. 1003)
`Davis is titled “Method and Apparatus for Tracking Client Interaction
`with a Network Resource and Creating Client Profiles and Resource
`
`11
`
`

`

`IPR2020-00041
`Patent 8,407,609 B2
`Database.” Ex. 1003, code (54). Davis discloses a tracking program with a
`software timer that “permits the accurate determination of the length of time
`users have displayed and/or interacted with [a particular] Web page,” which
`is “invaluable information to Internet advertisers, among others.” Id. at code
`(57), 11:24–33; see id. at 16:64–17:10 (“[U]sers who have access to a live
`news or entertainment feed may be charged according to the amount of
`[time] information [is] displayed,” and “[s]imilarly, a user could be charged
`and billed for time spent on a Web page.”).
`One of the embodiments of Davis is illustrated in Figure 4,
`reproduced below:
`
`As shown above, Figure 4 depicts a client and two servers (Server A and
`Server B), as well as various steps. Ex. 1003, 6:1–4.
`
`
`
`12
`
`

`

`IPR2020-00041
`Patent 8,407,609 B2
`In step S401, the client requests, from Server A, “[a] Web page (or
`HTML document)” that “contains text, as well as embedded URLs that point
`to graphical images (e.g. GIF format image files).” Ex. 1003, 11:35–40. In
`this embodiment of Davis, the embedded URLs point to images located on
`Server A (id. at 11:37–40), but Davis indicates that these URLs may point to
`other resources (including video) that may be located on different servers
`(see id. at 7:19–24, 11:40–41). As shown in Figure 4, the client fetches the
`images (S402) and renders them on the browser (S405). Id. at 11:45–47.
`The web page received from Server A also includes embedded URLs
`that point to two resources residing on Server B. Ex. 1003, 11:47–50. The
`client will fetch the first of these resources (S403), causing Server B to
`execute CGI Script 1, which registers the web page for tracking with
`Server B. Id. at 11:53–12:4. The client also fetches the other resource
`(S406) and receives “a JAVA applet, the tracking program.” Id. at 12:13–
`14, 12:19–21. The client initializes the tracking program (S407) and
`executes its START method, which makes a note of the current time (S408).
`Id. at 12:22–26. When the user leaves the Web page (S409), the client
`executes the applet’s STOP method, which “compute[s] the difference
`between the current time and the time noted during execution of the START
`method.” Id. at 12:26–30; see id. at 9:3–4 (“In its simplest form, the
`tracking program is a timer program . . . .”). “This difference, which is the
`time between execution of the STOP and execution of the START methods,
`is sent to the Server B for storage and analysis (S410)” via CGI Script 2. Id.
`at 12:30–36. CGI Script 2 “can then obtain any information tracked and
`transmitted by the applet as well as any available information in the HTTP
`request header” for storage in a database on Server B. Id. at 12:36–40. As a
`
`13
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`

`IPR2020-00041
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`result, the database may store “information about users who have visited the
`Web page, such as their network and client IDs, how often they visited the
`Web page, how long the Web page was displayed, and so on.” Id. at 12:51–
`55.
`
`2. Choi (Ex. 1004)
`Choi is titled “System and Method for Automatically Recovering
`from Failed Network Connections in Streaming Media Scenarios.”
`Ex. 1004, code (54). Choi describes a “method of streaming media content
`from a server” to a client that allows playback of the content to be re-
`synchronized after streaming is interrupted. Id. ¶ 5. Choi notes that its
`invention can be implemented using “real-time streaming protocol
`(RTSP).” Id. ¶ 6; see id. ¶ 29 (RTSP “is an application-level protocol for
`control of the delivery of data with real-time properties,” such as video.).
`In Choi, “[t]he client 110 periodically transmits state data (e.g.,
`logging statistics) to the server 108 for storage.” Ex. 1004 ¶ 47. This state
`data includes, inter alia, a “stream identifier” that identifies the particular
`stream being delivered to the client. Id. ¶¶ 44, 47. If the server-to-client
`session is interrupted, “the client 110 can resume playback at the location in
`the stream when the failure occurred using statistics saved prior to the
`failure.” Id. ¶ 28; see id. ¶ 34 (explaining that server uses the state to re-
`establish a lost connection). If the client successfully reconnects, it sends
`logging statistics to the server (id. ¶¶ 40, 49–50); otherwise, after the time
`for reconnecting expires, the server will log an error, which includes
`“generating a log on behalf of the client,” because the client “will not submit
`a log . . . for content rendered before the reconnect event” (id. ¶ 47).
`
`14
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`

`IPR2020-00041
`Patent 8,407,609 B2
`Choi’s Appendix C provides “an exemplary list and discussion of
`logging statistics.” Ex. 1004 ¶¶ 49, 88; see id. ¶¶ 49 (“Logging information
`is data that describes the characteristics of the client 110 and the rendering
`information associated with the streaming session.”), 88 (“Logging statistics
`are used by content distribution networks (CDNs) to bill customers. As a
`result, accurate logging statistics are critically important for the CDNs to
`maximize their revenue opportunities.”). Appendix C includes Table C1,
`which lists exemplary parameters, including some “static parameters” that
`are “sent once in the beginning or at the end of the session.” Id. ¶ 99.11
`“[O]ther dynamically changing parameters are sent regularly, [and] the
`frequency of reporting [is] set by the statistics reporting interval parameter
`sent in the initial request.” Id. ¶ 97.
`
`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 Davis discloses the preamble of claim 1
`(Pet. 18–22),12 and Patent Owner has not argued otherwise (see generally
`PO Resp.).
`
`
`11 Choi’s Appendices repeat paragraph numbers that were previously used
`in its specification. Compare Ex. 1004, 7 (using paragraph numbers 94–
`100), with id. at 10, 18, 22, 25 (repeating paragraph numbers 94–100).
`Unless otherwise indicated, this Decision refers to the second instance of
`paragraphs 96–99, which appear on page 22 of Choi (in Appendix C).
`12 Because Petitioner has shown sufficiently that the recitations in the
`preamble are satisfied by Davis, we need not determine whether the
`preamble is limiting. See Vivid Techs., 200 F.3d at 803.
`
`15
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`IPR2020-00041
`Patent 8,407,609 B2
`Petitioner’s assertions are supported by the cited evidence and are
`persuasive. In Davis, Server B (part of the claimed “first computer system”)
`provides a tracking program to a client (the claimed “user’s computer”) over
`a network. E.g., Ex. 1003, code (57), 4:3–8, Fig. 4. The tracking program
`monitors the amount of time a resource, such as a web page, is displayed.
`E.g., id. at 4:3–8, 9:33–35, 11:24–30, 12:22–33; see also id. at 16:63–17:10
`(stating that tracking program may also monitor the amount of time “a live
`news or entertainment feed” is displayed). Accordingly, we are persuaded
`that Davis 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 Davis discloses element 1[a] (Pet. 22–23), and
`Patent Owner has not argued otherwise (see generally PO Resp.).
`Petitioner’s assertions are supported by the cited evidence and are
`persuasive. In Davis, Server A provides a web page to the client. E.g.,
`Ex. 1003, 9:16–29, 11:35–41. This web page may contain an embedded
`URL that points to a resource located either on Server A or “on any HTTP
`server on the Internet.” Id. at 9:23–29, 11:37–47; see also id. at 7:19–24
`(noting that “embedded URLs point[] to resources (such as images, video or
`sound) that the client must fetch to fully render the Web Page in a browser”).
`Dr. Franz testifies that Davis embeds a resource (such as video) in a web
`page and, thus, teaches a corresponding web page for each digital media
`presentation. Ex. 1002 ¶¶ 118–120. We credit Dr. Franz’s testimony
`because it is logical and supported by the reference and because Patent
`Owner identifies (and we perceive) no evidence to the contrary. Finally, we
`
`16
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`IPR2020-00041
`Patent 8,407,609 B2
`are persuaded that Davis’s Server A and Server B collectively teach the
`claimed “first computer system.” See also Ex. 1003, 18:1–7 (same server
`can perform certain functions of both Server A and Server B). Accordingly,
`we are persuaded that Davis discloses element 1[a].
`
`c. 1[b]: “providing identifier data to the user’s computer using
`the first computer system”
`Petitioner asserts that Davis discloses element 1[b] (Pet. 24–26), and
`Patent Owner has not argued otherwise (see generally PO Resp.).
`Petitioner’s assertions are supported by the cited evidence and are
`persuasive. In Davis, Server B provides client ID to the client. Ex. 1003,
`11:65–12:4; see id. at 2:12–22 (describing “client ID,” also known as a
`“cookie”). Additionally, Server A provides embedded URLs that point to
`resources and the tracking program. Id. at 7:19–29, 9:18–27, 11:34–50.
`Accordingly, we are persuaded that Davis 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 Davis discloses element 1[c] (Pet. 26–27), and
`Patent Owner has not argued otherwise (see generally PO Resp.).
`Petitioner’s assertions are supported by the cited evidence and are
`persuasive. After receiving a web page, Davis’s client obtains a
`corresponding tracking program from Server B. E.g., Ex. 1003, 9:16–23,
`12:13–21. This tracking program may be “a JAVA applet” (e.g., id. at
`10:46–57, 12:13–14), and it operates as a timer (e.g., id. at 9:3–10, 9:33–38,
`
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`Patent 8,407,609 B2
`12:22–33). Accordingly, we are persuaded that Davis 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 Davis and Choi, in combination, render element
`1[d] obvious. Pet. 27–32; see Pet. Reply 1–13. Patent Owner presents
`arguments to the contrary. PO Resp. 14–20; see PO Sur-Reply 1–14.
`Having considered the parties’ arguments and the evidence presented,
`we are persuaded that the cited references render element 1[d] obvious for
`the reasons explained below.
`
`(1) Petitioner’s Contentions
`Petitioner contends that Davis discloses “receiving at least a portion of
`the identifier data from the user’s computer responsively to the timer
`applet . . . using the first computer system,” as required by claim 1. Pet. 27–
`29. According to Petitioner, when a web page is no longer displayed, the
`client provides to Server B the tracking information “as well as any available
`information in the HTTP request header,” which would include the client ID.
`Id. at 27–28 (emphasis omitted) (quoting Ex. 1003, 12:33–39) (citing
`Ex. 1003, Fig. 4 (S410A, S410B), 9:35–38, 11:59–12:4, 12:22–39; Ex. 1002
`¶¶ 132–134).
`Petitioner further contends that it would have been obvious, in light of
`Choi’s disclosure, to modify Davis to report tracking information (including
`the client ID as well as a stream identifier) “each time a predetermined
`temporal period elapses,” as required by claim 1, rather than only after
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`termination of the tracking program. Pet. 17, 27, 29–32; see id. at 25–26,
`30–31 (explaining that a person of ordinary skill in the art would have
`included a stream identifier when modifying Davis to include streaming).
`According to Petitioner, “Davis disclosed that its tracking program operated
`by running from the time the web page was first loaded until the user leaves
`the web page,” but a person of ordinary skill in the art would have
`recognized that this “was only one way of tracking the duration the web
`page was displayed.” Id. at 29 (citing Ex. 1003, 12:26–28; Ex. 1002 ¶¶ 103–
`109). Petitioner contends that a person of ordinary skill in the art “would
`have recognized from Choi’s disclosure that using a series of periodic
`reports from the client to the server while the web page was displayed was
`another possible approach.” Id. at 29 (citing Ex. 1004 ¶ 47; Ex. 1002
`¶¶ 103–109); see id. at 29–30 (“[T]he frequency of reporting [is] set by the
`statistics reporting interval parameter sent in the initial request.” (alteration
`in original) (quoting Ex. 1004 ¶ 97)).
`Finally, Petitioner contends that the ordinary artisan would have been
`motivated to modify Davis “to use a periodic timer . . . to trigger a report
`from the client to Server B” because: (1) it was “one among a limited
`number of solutions to triggering the report”; and (2) such periodic reports
`were “very well-known,” “frequently used for client-server
`communications,” and “preferred . . . in many networked environments.”
`Pet. 17, 30 (citing Ex. 1002 ¶¶ 103–109); see id. at 17 (also alleging a
`reasonable expectation of success). To support these assertions, Petitioner
`relies on the testimony of Dr. Franz, who states that Davis’s “event-driven”
`approach to reporting information was one approach, but a person of
`ordinary skill in the art would have recognized two other basic approaches:
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`“periodic reporting” (as described in Choi) and “batch processing.”
`Ex. 1002 ¶¶ 104–105, 108–109; see id. ¶ 108 (explaining that “the batch
`driven approach would not have been appealing to a person of ordinary skill
`in the field”). Dr. Franz further testifies that the ordinary artisan would have
`recognized “significant benefits” with using the periodic reporting approach:
`(1) “regular receipt of logging statistics at the server would make sure
`logging information was on hand in case any network disruptions occurred”;
`(2) “using a predetermined reporting interval would in some instances be
`easier to implement,” as implementation would require few lines of code;
`and (3) regular reporting (in the form of “‘heartbeat’ status reports”) was “a
`preferred manner for maintaining status information about a client at the
`server in a networked environment.” Id. ¶¶ 105–107, 109. Finally, Dr.
`Franz testifies that “a person of ordinary skill would have had no technical
`difficulty in implementing” the regular, periodic reporting interval described
`by Choi. Id. ¶¶ 105, 109.
`
`(2) Patent Owner’s Contentions
`Patent Owner argues that it is not “relevant” that Davis’s Server B
`receives the client ID when the applet terminates execution, as the claim
`requires receipt “responsively to the timer applet each time a predetermined
`temporal period elapses.” PO Resp. 15–16. Ac