Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 10
`Date: March 25, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETFLIX, INC. and ROKU, 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.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 10
`Date: March 25, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETFLIX, INC. and ROKU, 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.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`IPR2020-00041
`Patent 8,407,609 B2
`
`I. INTRODUCTION
`On October 18, 2019, Netflix, Inc. and Roku, Inc. (collectively
`“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 1 (“Pet.”). Uniloc 2017 LLC (“Patent Owner”) filed a Preliminary
`Response on January 24, 2020. Paper 9 (“Prelim. Resp.”).1
`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 the
`grounds asserted in the Petition. Accordingly, we institute an inter partes
`review of the challenged claims.
`
`Related Matters
`A.
`The parties identify several district court proceedings involving the
`’609 patent, including Uniloc 2017 LLC v. Netflix, Inc., 8:18-cv-02055 (C.D.
`Cal.); Uniloc 2017 LLC v. Roku, Inc., 8:19-cv-00295 (C.D. Cal.); Uniloc
`2017 LLC v. Google LLC, 2:18-cv-00502 (E.D. Tex.); Uniloc 2017 LLC v.
`American Broadcasting Companies, Inc., 8:18-cv-02056 (C.D. Cal.); Uniloc
`
`
`1 In the Preliminary Response, some page numbers are repeated, causing
`different pages to have identical page numbers. This Decision cites to this
`Paper using the number appearing at the bottom of a page and, unless
`otherwise indicated, refers to pages occurring after the first set of pages 1–9.
`
`2
`
`
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`IPR2020-00041
`Patent 8,407,609 B2
`2017 LLC v. Vudu, Inc., 1:19-cv-00183 (D. Del.); and Uniloc 2017, LLC v.
`Sling TV, LLC, 1:19-cv-00278 (D. Colo.). Pet. 2–3; Prelim. Resp. 1.
`The ’609 patent is also the subject of two other petitions for inter
`partes review: IPR2019-01367 (filed by Sling TV, L.L.C. on July 22, 2019)
`and IPR2020-00115 (filed by Google LLC on October 31, 2019). Pet. 3;
`Prelim. Resp. 1. The Board instituted an inter partes review in IPR2019-
`01367. Sling TV, L.L.C. v. Uniloc 2017 LLC, IPR2019-01367, Paper 7
`(PTAB Feb. 4, 2020) (Institution Decision). A decision whether to institute
`has not yet been entered in IPR2020-00115.
`
`The Petition’s Asserted Grounds
`B.
`Petitioner asserts the following grounds of unpatentability (Pet. 5):
`
`Claim(s) Challenged 35 U.S.C. §
`
`Reference(s)/Basis
`
`1–3
`
`1–3
`
`103(a)2
`
`103(a)
`
`Davis3 and Choi4
`
`Siler5 and Davis
`
`Petitioner also relies on the testimony of Dr. Michael Franz to support
`its contentions. Ex. 1002.
`
`
`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).
`5 US 2004/0133467 A1, published Jul. 8, 2004 (Ex. 1005).
`
`3
`
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`IPR2020-00041
`Patent 8,407,609 B2
`
`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 code (22), (60).
`The ’609 patent discloses tracking a user computer’s receipt of digital
`media presentations via a web page. Ex. 1001, Abstr. 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.
`
`4
`
`
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`IPR2020-00041
`Patent 8,407,609 B2
`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 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 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
`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.
`
`
`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
`
`
`
`IPR2020-00041
`Patent 8,407,609 B2
`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.
`
`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:
`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
`
`
`
`IPR2020-00041
`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. DISCRETIONARY DENIAL
`Patent Owner argues that we should exercise our discretion to deny
`institution. Prelim. Resp. 1–11; see 35 U.S.C. §§ 314(a), 325(d) (2018). For
`the reasons explained below, we decline to do so.
`
`A. Horizontal Redundancy
`Patent Owner argues that “[t]he Petition presents grounds that are
`horizontally redundant with respect to each other.” Prelim. Resp. 2 (citing
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00003,
`Paper 7 (PTAB Oct. 25, 2012)). According to Patent Owner, Petitioner is
`required to “explain[] the relative strength and relative weakness” of its two
`grounds. Id. at 3. Because Petitioner failed to do so, Patent Owner asserts
`that “the Board should consider, at most, only one of the two redundant
`asserted grounds, and if that one considered ground is found not to merit
`institution,” the Board should exercise discretion to deny without
`considering the second ground. Id. at 4.
`We are not persuaded. We perceive no support for Patent Owner’s
`contention that Petitioner was obligated to explain the relative strength and
`weakness of the two grounds of unpatentability that were presented in a
`
`7
`
`
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`IPR2020-00041
`Patent 8,407,609 B2
`single Petition.7 Patent Owner relies on Liberty Mutual (see Prelim. Resp.
`1–3), but we find no analogy between this Petition, which alleges two
`grounds of unpatentability, and the petition in Liberty Mutual, which alleged
`four hundred and twenty-two grounds of unpatentability. See Liberty Mut.,
`CBM2012-00003, Paper 7 at 2.8
`Accordingly, we do not deny institution on this basis.
`
`B. Becton-Dickinson Factors
`Patent Owner asserts that “[i]t is clear under the applicable standards
`of Becton, Dickinson . . . that the Board should decline to exercise its
`discretion to institute” review because Petitioner fails to analyze “why the
`present prior art is not cumulative” of the references cited during
`prosecution. Prelim. Resp. 4–5 (citing Becton, Dickinson & Co. v. B. Braun
`Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017)
`(precedential in relevant part)). In addition, Patent Owner submits that the
`Examiner found that a prior art reference (Cobley) taught a “timing applet
`that sends a message to a server indicative of a time that a web page remains
`
`
`7 The requirements are different, however, when a petitioner files multiple
`petitions. See Patent Trial and Appeal Board Consolidated Trial Practice
`Guide (Nov. 2019), available at https://www.uspto.gov/sites/default/files/
`documents/tpgnov.pdf, at 59–60.
`8 Patent Owner also quotes from Eizo Corp. v. Barco N.V., IPR2014-00358,
`Paper 11 at 28–31 (PTAB July 23, 2014) (Prelim. Resp. 3–4), but this case is
`inapposite. There, the petitioner failed to demonstrate a reasonable
`likelihood of prevailing on a dependent claim because the petitioner failed to
`explain how the limitations of the claim were allegedly taught by the
`asserted references. Eizo, IPR2014-00358, Paper 11 at 28–31. We perceive
`(and Patent Owner identifies) no such deficiency in the instant Petition.
`
`
`8
`
`
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`IPR2020-00041
`Patent 8,407,609 B2
`loaded” and another (Shuster) taught “an applet . . . [that] count[s] down for
`a predetermined time period.” Id. at 6–7 (citing Ex. 2001, 66, 68). Because
`Cobley and Shuster each have a timing applet, Patent Owner asserts that
`Davis is cumulative of these references. Id.
`Section 325(d) provides that in determining whether to institute an
`inter partes review, “the Director may take into account whether, and reject
`the petition or request because, the same or substantially the same prior art
`or arguments previously were presented to the Office.” We consider several
`non-exclusive factors when determining whether to deny institution under
`Section 325(d), including: (a) the similarities and material differences
`between the asserted art and the prior art involved during examination;
`(b) the cumulative nature of the asserted art and the prior art evaluated
`during examination; (c) the extent to which the asserted art was evaluated
`during examination, including whether the prior art was the basis for
`rejection; (d) the extent of the overlap between the arguments made during
`examination and the manner in which Petitioner relies on the prior art or
`Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed
`out sufficiently how the Examiner erred in its evaluation of the asserted prior
`art; and (f) the extent to which additional evidence and facts presented in the
`Petition warrant reconsideration of the prior art or arguments. Becton,
`Dickinson, Paper 8 at 17–18. “If, after review of factors (a), (b), and (d), it
`is determined that the same or substantially the same art or arguments
`previously were presented to the Office, then factors (c), (e), and (f) relate to
`whether the petitioner has demonstrated a material error by the Office.”
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 at 10 (PTAB Feb. 13, 2020) (precedential).
`
`9
`
`
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`IPR2020-00041
`Patent 8,407,609 B2
`We are not persuaded that the Petition includes the same or
`substantially the same prior art or arguments as were previously presented to
`the Office. The Petition does not rely on any prior art that was cited during
`prosecution of the ’609 patent. Pet. 5; see Prelim. Resp. 4–8; see also Ex.
`2001. And we do not agree with Patent Owner’s contention that Davis
`(relied upon by Petitioner) is cumulative of Cobley or Shuster (from the
`prosecution history) merely because each reference allegedly discloses a
`timer applet (a single claim term). See Prelim. Resp. 6–7. Indeed, Petitioner
`relies on Davis for most of the limitations of claim 1 (see Pet. 14–40),
`including the recited “timer applet” (see id. 26–27), and Patent Owner does
`not contend that any of these other aspects of Davis are cumulative of a
`reference cited during prosecution. Moreover, while Petitioner relies on
`Davis to teach only one other limitation in the proposed Siler-Davis
`combination (see id. 43–66), Patent Owner does not allege that Siler was
`previously considered during prosecution or is cumulative of prior art that
`was considered.
`Accordingly, we do not deny institution under 35 U.S.C. § 325(d).
`
`C. General Plastic Factors
`Finally, Patent Owner contends that the Petition should be denied
`because an earlier-filed petition for inter partes review also challenges
`claim 1 of the ’609 patent. Prelim. Resp. 8–11 (citing Sling TV, L.L.C. v.
`Uniloc 2017 LLC, IPR2019-01367 (the “Sling IPR”); Gen. Plastic Indus.
`Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6,
`2017) (precedential)). For the reasons explained below, we are not
`persuaded to exercise our discretion under 35 U.S.C. § 314(a) to deny
`institution.
`
`10
`
`
`
`IPR2020-00041
`Patent 8,407,609 B2
`Petitioner contends that this Petition “is based on entirely separate
`references and grounds from the Sling IPR Petition.” Pet. 5. According to
`Petitioner, this is the only petition filed by Petitioner against the ’609 patent,
`and “there is no relationship between Sling and Petitioners with respect to
`the ’609 Patent.” Id. at 6. Petitioner also asserts that the Petition was filed
`before Patent Owner filed a preliminary response in the Sling IPR and
`before the Board decided whether to institute the Sling IPR. Id. Petitioner
`further argues that “Patent Owner’s cases against Petitioners are not
`sufficiently advanced to warrant non-institution,” as no trial date has been
`set. Id.
`Patent Owner asserts that Petitioner delayed in filing the Petition.
`Prelim. Resp. 9–10. Specifically, Patent Owner contends that the Petition
`was filed “only seven days before the one-year time bar, and less than three
`weeks before the due date for the Patent Owner’s preliminary response in
`[the Sling IPR].” Id. at 10 (emphasis omitted). Patent Owner also argues
`that Petitioner does not identify when it became aware of the asserted
`references (citing the fourth and fifth General Plastic factors) and does not
`explain how its asserted references differ from the references asserted in the
`Sling IPR (citing the sixth General Plastic factor). Id. at 10–11.
`The General Plastic factors are a non-exclusive list of factors
`considered by the Board to evaluate whether it is equitable to permit a
`follow-on petition. Gen. Plastic Indus., IPR2016-01357, Paper 19 at 15–16.
`The first factor considers “whether the same petitioner previously filed a
`petition directed to the same claims of the same patent.” Id. at 16; see also
`Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 at 9–
`10 (PTAB April 2, 2019) (precedential) (considering relationship between
`
`11
`
`
`
`IPR2020-00041
`Patent 8,407,609 B2
`parties when applying this factor). Here, Petitioner asserts that it has no
`relevant relationship with Sling TV, the petitioner in the Sling IPR (Pet. 6),
`and Patent Owner does not allege any relationship between these petitioners
`(see Prelim. Resp. 8–11). As a result, this factor weighs against exercising
`discretion to deny.
`The third factor evaluates whether Petitioner “already received the
`patent owner’s preliminary response to the first petition or received the
`Board’s decision on whether to institute review in the first petition.” Gen.
`Plastic Indus., IPR2016-01357, Paper 19 at 16. This Petition was filed
`before any substantive filings in the Sling IPR, including both Patent
`Owner’s preliminary response and the Board’s decision on whether to
`institute review. See Pet. 6; Prelim. Resp. 10. Thus, this factor also weighs
`against exercising discretion to deny.
`Three of the factors (i.e., factors 2, 4, and 5) “allow[] us to assess and
`weigh whether a petitioner should have or could have raised the new
`challenges earlier.” Gen. Plastic Indus., IPR2016-01357, Paper 19 at 18.
`To that end, Patent Owner contends that Petitioner waited until the eleventh
`hour to file its Petition and, relatedly, that Petitioner does not identify when
`it became aware of its asserted references. See Prelim. Resp. 10. But, even
`if Petitioner could have filed the Petition earlier, we are not persuaded on
`this record that Petitioner should be faulted for not having done so, given
`that this is Petitioner’s first petition challenging this patent and we perceive
`no improper gamesmanship in the timing of the Petition. Accordingly, these
`factors do not weigh in favor of denying institution. We have also
`considered the remaining two factors (i.e., the Board’s finite resources and
`statutory deadlines), and we determine these do not favor denial on this
`
`12
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`IPR2020-00041
`Patent 8,407,609 B2
`record. For example, the Board will be able to consider both the Petition
`and the petition in the Sling IPR contemporaneously, and the oral hearing in
`these proceedings, if requested, will occur on the same date.9
`Accordingly, we are not persuaded to exercise our discretion under
`35 U.S.C. § 314(a) to deny institution.
`
`III. ANALYSIS
`
`A. The Level of Ordinary Skill in the Art
`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 contends that Petitioner’s definition “is
`improper as lacking an upper bound on the . . . level of educational
`attainment and the time of work experience,” but Patent Owner “does not
`offer a competing definition” at this stage. Prelim. Resp. 12.
`We agree with Patent Owner that Petitioner’s inclusion of the qualifier
`“at least” is vague because it expands the range indefinitely without an upper
`
`
`9 Cf. Google LLC v. Uniloc 2017 LLC, IPR2019-01584, Paper 7 at 12–16
`(PTAB March 24, 2020) (discretionarily denying third petition where prior
`two petitions were filed four and three months earlier, the petitions rely on
`references having overlapping authorship/inventorship, and the third
`petitioner did not explain why a third IPR was an efficient use of Board
`resources).
`
`13
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`bound, precluding a meaningful indication of the level of ordinary skill in
`the art. However, on this record, the remainder of Petitioner’s proposal is
`both reasonable and supported by the testimony of Dr. Franz. Accordingly,
`for purposes of this Decision, we adopt the level of ordinary skill as
`articulated by Petitioner, except that we remove all instances of the qualifier
`“at least.” We adopted a slightly different articulation of the level of
`ordinary skill in our decision instituting inter partes review in a related
`proceeding. Sling TV, L.L.C. v. Uniloc 2017 LLC, IPR2019-01367, Paper 7
`at 7 (PTAB Feb. 4, 2020). 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 opportunity during trial to brief their respective positions in
`this regard.
`
`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).10
`Petitioner proposes constructions for the terms “computer system” and
`“streamed.” Pet. 12–14 (emphasis omitted). Patent Owner advocates that
`all claim terms have their “ordinary and customary meaning” (Prelim. Resp.
`
`
`10 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.
`
`14
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`IPR2020-00041
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`12–13) and disputes Petitioner’s proposed constructions (id. at 13–18). But,
`when identifying the alleged deficiencies in the grounds asserted by
`Petitioner, Patent Owner does not rely on any particular claim constructions.
`See generally id. at 18–34. Patent Owner also submits, as an exhibit, a
`district court order construing various terms of the ’609 patent. Id. at 1
`(citing Ex. 2002 (Claim Construction Memorandum and Order)).
`We have reviewed and considered the district court’s constructions in
`Uniloc 2017 LLC v. Google LLC, 2:18-cv-00502 (E.D. Tex.). See 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.”).
`As explained below, our determination whether to institute does not
`depend on a construction of any claim terms or phrases (including those
`identified by Petitioner and those construed by the district court), and thus
`we do not expressly construe 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 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,
`
`15
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`objective evidence of nonobviousness.11 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. Overview of the Asserted Prior Art
`
`1. Davis (Ex. 1003)
`Davis is titled “Method and Apparatus for Tracking Client Interaction
`with a Network Resource and Creating Client Profiles and Resource
`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
`Abstr., 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:
`
`
`11 The current record does not include allegations or evidence of objective
`indicia of nonobviousness.
`
`16
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`Patent 8,407,609 B2
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`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.
`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 (e.g., video) that may be located on different servers (see id.
`at 7:19–24 (“A typical Web page is an HTML document with text, ‘links’
`that a user may activate (e.g. ‘click on’), as well as embedded URLs
`pointing to resources (such as images, video or sound) that the client must
`fetch to fully render the Web Page in a browser. These resources may not be
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`IPR2020-00041
`Patent 8,407,609 B2
`located on the same server that the HTML document was sent from.”),
`11:40–41 (“The images, in general, may be located on any HTTP server on
`the Internet.”)). 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 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.
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`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 [] periodically transmits state data (e.g., logging
`statistics) to the server [] 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 [] 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).
`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 [] and the rendering
`information associated with the streaming session.”), 88 (“Logging statistics
`are used by content distribution networks (CDNs) to bill customers. As a
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`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. ¶ 99.12
`“[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. Siler (Ex. 1005)
`Siler is titled “Method and Apparatus for Selecting Streaming Media
`in Real-Time.” Ex. 1005, code (54). Siler discloses a process for “tracking
`which users are receiving a particular media stream and how long each of
`the users receives” the stream so that advertising can be inserted into the
`stream and appropriately priced. Id. at Abstr., ¶¶ 4–6.
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`12 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).
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`Figure 1 of Siler, as annotated by Petitioner, is reproduced below:
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`Pet. 47 (annotating and combining Ex. 1005, Figs. 1A, 1B). As shown
`above, Figure 1 is a block diagram of Siler’s system that includes
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