UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NETFLIX, INC.,
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`Petitioner
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`v.
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`UNILOC 2017 LLC,
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`Patent Owner
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`IPR2020-00041
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`PATENT 8,407,609
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`PATENT OWNER SUR-REPLY TO PETITION
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`IPR2020-00041
`U.S. Patent No. 8,407,609
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`TABLE OF CONTENTS
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`Exhibits ..................................................................................................................... iv
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`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
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`NETFLIX FAILS TO PROVE UNPATENTABILITY FOR THE
`CHALLENGED CLAIMS .............................................................................. 1
`
`A.
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`Netflix fails to prove that its proposed Davis-Choi
`combination renders obvious limitations directed to the “timer
`applet,” such as those recited in the “receiving” step (Ground
`1) ............................................................................................................ 1
`
`Netflix concedes that Davis fails to disclose the “timer applet,”
`1.
`such as those in the “receiving step” ..................................................... 1
`
`Choi fails to disclose the “time applet,” such as those in the
`2.
`“receiving step” ..................................................................................... 2
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`Netflix’s belated new theories regarding the proposed Davis-
`3.
`Choi combination constitute an improper attempt to circumvent the
`Board’s rules and precedent .................................................................. 4
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`4.
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`5.
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`Netflix’s belated new theory is factually and legally defective .. 8
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`No motivation to combine Davis and Choi ..............................12
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`Petitioner fails at least to prove its proposed Siler-Davis
`combination renders obvious limitations directed to the “timer
`applet,” such as those recited in the “receiving” step (Ground
`2) .......................................................................................................... 14
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`The Petition fails at least to prove its proposed Siler-Davis
`combination renders obvious “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
`
`B.
`
`C.
`
`ii
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`U.S. Patent No. 8,407,609
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`independent of the first computer system” (Ground 2)....................... 17
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`III. CONCLUSION .............................................................................................. 21
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`CERTIFICATE OF COMPLIANCE .......................................................................... i
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`CERTIFICATE OF SERVICE ................................................................................. ii
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`iii
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`IPR2020-00041
`U.S. Patent No. 8,407,609
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`
`UNILOC’S EXHIBITS
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`EXHIBITS
`
`2001
`
`File History of ’609 Patent
`
`2002
`
`Claim Construction Memorandum and Order, Uniloc 2017
`
`LC v. Google LLC, Case 2:18-CV-00502-JRG-RSP (E.D.
`
`Tex.), Dkt. 149 (Jan. 20, 2020)
`
`2003
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`Claim Construction Ruling, Uniloc 2017 LLC v. Netflix, Inc.,
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`SACV 18-2055-GW-DFMx, Dkt. 138 (C.D. Cal. Mar. 9,
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`2020)
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`iv
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`I.
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`INTRODUCTION
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`Uniloc 2017 LLC (“Uniloc”) submits this Sur-Reply in further response to
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`Petition IPR2020-00041 for Inter Partes Review (“Petition”) of United States Patent
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`No. 8,407,609 (“the ’609 patent”) filed by Netflix, Inc. (“Netflix”).1 As discussed
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`below and in Uniloc’s Response, the Board should deny the Petition in its entirety,
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`as Netflix failed to carry its burden of proof that Claims 1-3 of the ’609 Patent are
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`unpatentable. 35 U.S.C. § 316(e).
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`II. NETFLIX FAILS TO PROVE UNPATENTABILITY FOR THE
`CHALLENGED CLAIMS
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`A. Netflix fails to prove that its proposed Davis-Choi combination
`renders obvious limitations directed to the “timer applet,” such as
`those recited in the “receiving” step (Ground 1)
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`1.
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`Netflix concedes that Davis fails to disclose the “timer applet,”
`such as those in the “receiving step”
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`Uniloc had noted that the claim language requires that the “timer applet” must
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`be “operative by the user’s computer as a timer,” such that “at least a portion of the
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`identifier data [is received] from the user’s computer responsively to the timer applet
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`each time a predetermined temporal period elapses using the first computer system.”
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`1 Roku, Inc. (“Roku”) was also an original Petitioner, but the Board has terminated
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`with respect to Roku due to settlement. Order (Paper 14) at 14.
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`1
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`POR at 14-15. In particular, Uniloc pointed out Netflix’s concession that Davis does
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`“not disclose that the timer applet used on the client machine repeatedly reported the
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`consumption of a content at the expiration of predetermined time intervals.” Id. at 15
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`(quoting Pet. 16); see also Pet. at 29 (“Davis did not disclose that this reception occurs
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`‘each time a predetermined temporal period elapses’”).
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`In its Reply,2 Netflix further confirms this concession by acknowledging that
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`Davis discloses a mere timer applet by acknowledging that it was relying solely on
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`“teachings of Choi that rendered the use of a predetermined time interval an obvious
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`modification of Davis.” Reply at 7. Accordingly, Netflix admits that Davis, by itself,
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`does not disclose a “timer applet” where “at least a portion of the identifier data [is
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`received] from the user’s computer responsively to the timer applet each time a
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`predetermined temporal period elapses using the first computer system.”
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`2.
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`Choi fails to disclose the “time applet,” such as those in the
`“receiving step”
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`Uniloc had noted that the language of claim 1 expressly requires that the
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`provided “timer applet” must itself operate as a timer, such that the first computer
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`2 Paper 18, which is entitled “Petitioner’s Reply to Patent Owner’s Preliminary
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`Response to Petition,” is understood by Uniloc to be Netflix’s Reply to Patent
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`Owner’s Response.
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`2
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`system receives “at least a portion of the identifier data . . . from the user’s computer
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`system responsively to the timer applet each time a predetermined temporal period
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`elapses.” POR at 16 (quoting Ex. 1001, 14:25-32). Choi does not disclose this
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`limitation. The Petition only relies on the following snippets of Choi for this
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`limitation:
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`[0047] The client 110 periodically transmits state data (e.g.,
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`logging statistics) to the server 108 for storage.
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`[0097] …the frequency of reporting set by the statistics reporting
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`* * *
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`interval parameter sent in the initial request.
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`Pet. at 29 (quoting Choi, ¶47, Appendix C, ¶97). 3
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`But as Uniloc noted, Choi discloses the timing of the periodic transmissions is
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`set by the “statistics reporting interval parameter sent in the initial request.” POR at
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`16 (citing Choi at ¶0097). Accordingly, in Choi the client’s initial request dictates
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`the timing interval of the periodic transmissions. Pet. 29‒30 (citing Choi at ¶0097;
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`Franz ¶¶103-109). But sending an “interval parameter” in an initial request of Choi
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`is distinguishable from the claimed “timer applet” acting as a timer “each time a
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`3 Both parties reference to “¶0097” is to ¶0097 of Appendix C, starting on page 22
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`of Choi. There is another Paragraph ¶0097 in the body of Choi ate page 7 that is
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`not the focus of this term.
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`3
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`predetermined temporal period elapses.” There is simply no disclosure in Choi of any
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`applet acting as a timer. See generally Choi. And there is no particular disclosure of
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`a timer that acts “each time a predetermined period elapses.”
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`In its Reply, Netflix completely misses the point by arguing “[c]laim 1 does
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`not specify how the predetermined temporal period is determined.” Reply at 7.
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`Netflix misapprehends Uniloc’s argument. The issue is not how the temporal period
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`is determined but that Choi’s mere transmission of an interval parameter (e.g., a
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`certain number of seconds) in the initial request is not a teaching of an applet acting
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`as a timer. And the claimed timer must act “each time a predetermined temporal
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`period elapses.” Just because the “interval parameter” is sent once, does not
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`necessarily infer that the “interval parameter” is used by a “timer applet.” And Netflix
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`fails to explain why the disclosure of an “interval parameter” would necessarily mean
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`that such a parameter will be used “each time a predetermined temporal period
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`elapses.”
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`3.
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`Netflix’s belated new theories regarding the proposed Davis-
`Choi combination constitute an
`improper attempt
`to
`circumvent the Board’s rules and precedent
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`With respect to the proposed Davis-Choi combination, Netflix submits
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`additional evidence that should have been presented in the Petition.
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`A petitioner may not submit new evidence or argument in reply that it could
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`have presented earlier. Patent Trial and Appeal Board Consolidated Trial Practice
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`4
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`Guide November 2019 (“Consolidated Trial Practice Guide”), at 73-74. Moreover,
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`the Board has warned:
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`The opportunity to submit additional evidence does not allow a
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`petitioner to completely reopen the record, by, for example,
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`changing theories after filing a petition. See Intelligent Bio-Sys.,
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`Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369–70 (Fed.
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`Cir. 2016) (affirming Board discretion to deny entry of
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`petitioner’s reply brief
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`that contained an
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`improper new
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`unpatentability theory and evidence, citing, among other things, §
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`312(a)(3)); see also CTPG at 74 (“‘Respond,’ in the context of 37
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`C.F.R. § 42.23(b), does not mean proceed in a new direction with
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`a new approach as compared to the positions taken in a prior
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`filing.”).
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`Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 20, at 15-
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`16 (Dec. 20, 2019) (Precedential).
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`The Board should not consider the entire reply (as opposed to the objectionable
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`portions of the reply) when it “raises a new issue or belated presents evidence.”
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`Consolidated Trial Practice Guide at 74. This is because the “Board is not required to
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`attempt to sort proper from improper portions of the reply.” Id.
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`Here, the Reply and its accompanying Franz Supplement (Ex. 1009) belatedly
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`introduce at least two new theories, both of which are improper as addressed below.
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`5
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`First, the Petition relies on just two short snippets of Choi (portions of ¶47 and
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`Appendix C, ¶97) for the disclosure of the “timer applet” term in context of the
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`receiving step. In its Reply, Netflix now improperly provides the supplemental
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`declaration of Dr. Franz (“Franz Supplement”) (Ex. 1009) in an effort to interject a
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`new inherency argument that “identifier information would naturally be required in
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`each message,” and therefore the identifier information could somehow be sent by
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`the client server with each periodic message. Franz Supplement, ¶8; see generally id.,
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`¶¶6-8; Reply at 8-10 (citing Franz Supplement, ¶¶8-11).
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`For the Board’s convenience, the full paragraph of Paragraph 97 of Appendix
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`C is reproduced in its entirety below:
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`
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`Pet. 30 (citing Choi, Appendix C at ¶97).
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`The plain language of Paragraph 97 mandates a bifurcated and non-
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`overlapping set of parameters. If a parameter is “constant,” it is “sent only once at the
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`beginning of the session.” POR at 17 (quoting Choi, ¶97). On the other hand, only
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`the non-constant, “dynamically changing parameters” in Choi “are sent regularly.”
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`Id. (quoting Choi, ¶97). Given this plain teaching of Choi, Netflix should have
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`6
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`presented its new inherency argument in its Petition. Indeed, the issue seems to be
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`compounded by Dr. Franz and Netflix cherry picking only a snippet of Paragraph 97
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`of Appendix C, and not reading Paragraph 97 in its entirety. Pet. at 30 (citing portion
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`Choi, ¶97); Franz Declaration, ¶¶ 103-109; accord POR at 16-17 (noting that Netflix
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`only “partially quotes paragraph 97”). And Netflix extensively discussed other
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`aspects of Choi in the Petition (Pet. at 16-18, 25-26, 29-42) and not once stated that
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`the identifier information would “naturally be required in each message.”
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`Second, Netflix and Dr. Franz attempt to interject what Dr. Franz opines as the
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`“long … standard practice” of using “cookies” to “keep[] track of state between
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`clients and servers on the web.” Franz Supplement, ¶10; Reply at 8-10 (citing Franz
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`Supplement, ¶¶6-11). Dr. Franz also refers to an unauthenticated archive.org web
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`page that purportedly shows that “this technology originated at Netscape and found
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`its way even into competing browsers by 1995.” Franz Supplement, ¶10. And Dr.
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`Franz points to a U.S. Patent issued to Netscape Communications Corp. for what he
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`describes—without providing any explanation whatsoever—as relating to “web
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`browser cookies.” Id. Neither the unauthenticated web page nor the Netscape patent
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`were mentioned in the Petition and have not been introduced as exhibits. See
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`generally Pet. Indeed, the phrase “cookies” appears only once in brief passing in the
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`Petition and the original Franz Declaration, respectively. Pet. at 24 (“Davis also
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`disclosed that Server B sent a client ID or “cookie” to the client.”);Franz Declaration,
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`7
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`¶84 (“Davis explains that this registration and setup can be performed using a cookie,
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`which the Server B can create and provide to the Client.). Netflix should have raised
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`the new arguments and references relating to “cookies” earlier. Netflix cited to
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`“cookies” (albeit only once) in its Petition, and accordingly should have understood
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`that the term and accompanying expanded opinions of Dr. Franz—under its theory—
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`were germane.
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`For both new theories, Netflix’s tactics are improper. See Consolidated Trial
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`Practice Guide at 74 (“It is also improper for a reply to present new evidence
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`(including new expert testimony) that could have been presented in a prior filing, for
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`example newly cited prior art references intended to ‘gap-fill’ by teaching a claim
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`element that was not present in the prior art presented with the petition.”). Netflix
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`should not be allowed to “gap-fill” deficiencies in its Petition when (as demonstrated
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`above) it could have done so at the time it filed its Petition. Accordingly, the Board
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`is respectfully requested not to consider Netflix’s Reply in its entirety.
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`4.
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`Netflix’s belated new theory is factually and legally defective
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`Even if the Board does consider Netflix’s effort to reopen the record to
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`introduce new theories, that effort is factually and legally defective.
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`First, the Franz Supplement conflicts with the plain teaching of Choi. As
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`noted, the plain language of Choi mandates that if a parameter is “constant,” it is “sent
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`only once at the beginning of the session.” POR at 17 (quoting Choi, ¶97). On the
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`8
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`U.S. Patent No. 8,407,609
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`other hand, only the “dynamically changing parameters” in Choi “are sent regularly.”
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`Id. (quoting Choi, ¶97). The Franz Supplement alleges that Choi teaches a “identifier
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`information would naturally be required in each reporting message so that the server
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`is able to determine which client it is communicating with.” Franz Supplement, ¶8.
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`But the Franz Supplement then fails to point to any statement in Choi that makes that
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`statement. See generally Franz Supplement. Dr. Franz’s testimony contradicts the
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`plain language of Choi and, accordingly, cannot constitute substantial evidence. See
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`Ericsson Inc. v. Intellectual Ventures I LLC, 890 F.3d 1336, 1346 (Fed. Cir. 2018)
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`(“To contradict a reference, an unsupported opinion is not substantial evidence.”);
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`Homeland Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372, 1378 (Fed. Cir.
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`2017) (“[W]e must disregard the testimony of an expert that is plainly inconsistent
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`with the record, or based on an incorrect understanding of the claim[s].” (citations
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`and internal quotation marks omitted)); accord MEHL/Biophile Intern. Corp. v.
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`Milgraum, 192 F.3d 1362, 1367 (Fed. Cir. 1999) (noting the analogous summary
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`judgment context that “expert testimony contradicting the plain language of the
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`reference does not create a genuine issue of fact”).
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`Second, Netflix contends that the “[o]ne of the main purposes of Choi is to
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`track media streams provided to clients.” Franz Supplement, ¶8 (citing Choi, ¶0006).
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`Even assuming arguendo that this is one of Choi’s “main purposes,” it does not mean
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`that “identifier information would naturally be required in each reporting message so
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`9
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`that the server is able to determine which client it is communicating with.” For
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`instance, identifier information could be sent in some but not “each” reporting
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`message, and still track media streams provided to clients. Dr. Franz fails to address
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`this possibility. This only highlights that Dr. Franz is merely speculating on Choi
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`might or might not teach. Netflix also overlooks that Choi expressly states that, under
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`its disclosed scheme, a client should not send its own identifier, as this would violate
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`privacy concerns. Rather, “due to privacy concerns the client sends up an empty value
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`(denoted as a dash character).” Choi, ¶99, Table C1 (entry for the “c-dns” Logging
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`Field). Moreover, as repeatedly emphasized above, to the extent a client ID is
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`considered constant, then under the express teachings in Choi, such a parameter
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`would be sent only once. Choi, Appendix C, ¶97
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`Third, the Franz Supplement is based on an improper inherency theory—i.e.,
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`that “identifier information would naturally be required in each reporting message
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`so that the server is able to determine which client it is communicating with.” While
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`Netflix does expressly invoke the inherency doctrine by name in its Petition, Netflix
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`attempts to interject an inherency theory by relying on the Franz Supplement. But
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`Netflix and the Franz Supplement fail to even articulate the legal standard for
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`inherency. And accordingly, they do not establish inherency under the requisite legal
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`standard. Toshiba Corp. v. Optical Devices, LLC, IPR2014-01446, Paper 31 (PTAB
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`Mar. 9, 2016) (giving expert’s testimony regarding inherency persuasive weight
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`10
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`when the expert’s testimony failed to establish inherency under the requisite legal
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`standard); I-Blason LLC v. Aevoe Corp., IPR2016-00231, Paper 6 (PTAB May 18,
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`2016) (finding no inherency when the evidence only showed that the claimed
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`functionality may be present); In order to demonstrate that a reference inherently
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`discloses a claim element, Netflix must show that the reference “‘necessarily
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`functions in accordance with, or includes, the claimed limitations.’” In re Cruciferous
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`Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citing MEHL/Biophile Int’l
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`Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999)). Netflix and Dr. Franz
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`failed to articulate and apply the requisite standard.
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`Fourth, the Franz Supplement is based on assumptions unsupported by
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`evidence. See Consolidated Trial Practice Guide at 40-41 (“Affidavits expressing an
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`opinion of an expert must disclose the underlying facts or data upon which the opinion
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`is based. . . . Opinions expressed without disclosing the underlying facts or data may
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`be given little to no weight.” (citations omitted)). For instance, the Franz Supplement
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`references an unauthenticated archive.org webpage and a Netscape patent, but Netflix
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`has not introduced them as exhibits into the record.4 Thus, the Board should not afford
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`Dr. Franz’s unsupported opinions persuasive weight. The Franz Supplement is also
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`4 To be clear, Uniloc would oppose any attempt by Netflix to file these documents
`
`as exhibits at this stage.
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`11
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`IPR2020-00041
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`filled with conclusory statements without providing any evidentiary support or
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`explanation. For instance, the Franz Supplement makes the following bald and
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`conclusory assertions without providing any supporting evidence:
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`• “That [tracking media streams to clients] would be impossible
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`if the clients anonymously sent reporting messages to the
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`server, i.e. without identifier data.”
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`• “There would be no ability, or reason, to perform the stream
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`tracking information described in Choi if the server cannot
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`determine which client provides each reporting message.”
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`• Referring to “widespread discussion of their [i.e., cookies]
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`privacy implications” without referring to evidence or
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`explaining what is meant by “wide spread discussion” or
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`providing any support.
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`Franz Supplement, ¶¶ 8, 10. In each of these instances, Dr. Franz makes no attempt
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`to “disclose the underlying facts or data upon which” he bases these opinions. He just
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`lobs unsupported statements. See Consolidated Trial Practice Guide at 40-41. The
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`Board should give no weight to the Franz Supplement.
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`5.
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`No motivation to combine Davis and Choi
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`Uniloc had noted the incompatibility of combing Davis and Choi, namely that
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`Choi expressly states that a client should not send its own identifier, as this would
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`violate privacy concerns. Rather, “due to privacy concerns the client sends up an
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`empty value (denoted as a dash character).” Choi, Appendix C at ¶99, Table C1 (entry
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`
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`12
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`IPR2020-00041
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`for the “c-dns” Logging Field). Moreover, as repeatedly emphasized above, to the
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`extent a client ID is considered constant, then under the express teachings in Choi,
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`such a parameter would be sent only once. Choi, Appendix C at ¶97.
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`In its Reply, Netflix makes two arguments, neither of which has merit.
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`First, Netflix argues that “Davis itself already disclosed sending the client ID
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`in each reporting message from the client to the Server B” and that “nothing in Choi’s
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`disclosure suggests that the Server B would somehow not need to keep track of the
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`association between the tracking data and the client in the subsequent periodic
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`reports.” Reply at 10. Netflix misses the mark. The concern is that Davis and Choi
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`teach distinct and incompatible approaches. By its own admission, Netflix reads
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`Davis as disclosing “sending the client ID in each reporting message.” Id. In contrast,
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`Choi should not send its own identifier “due to privacy concerns” and further to the
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`extent a client ID is considered a constant, it would be sent only once. Choi, Appendix
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`C at ¶97. This inherent incompatibility would block any POSITA from being
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`motivated to combine Davis and Choi.
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`Second, Netflix argues that it did not rely on the “c-dns” value, and instead
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`relied only on the “stream identifier” in its Petition. Reply at 10. In other words,
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`Netflix argues that it can carve out just the “stream identifier” from other identifiers,
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`including the “c-dns” value. Netflix, however, fails acknowledge the “privacy
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`concern” noted in Choi teach away from sending the client ID regularly. Nor should
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`13
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`Netflix be able to “stitch together an obviousness finding from discrete portions of
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`prior art references without considering the references as a whole.” See In re
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`Enhanced Sec. Research, LLC, 739 F.3d 1347, 1355 (Fed. Cir. 2014) (“Panduit
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`explains that § 103 does not permit a court to stitch together an obviousness finding
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`from discrete portions of prior art references without considering the references as a
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`whole.”); Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568 (Fed. Cir. 1987)
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`(citing W.L . Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1550
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`(Fed.Cir.1983), cert. denied, 469 U.S. 851 (1984)) (“[P]rior [art] patent must be
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`considered in its entirety, i.e., as a whole, including portions that would lead away
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`from the invention in suit.”). The prior art “references as whole” suggest that that
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`they would not be combined.
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`B.
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`Petitioner fails at least to prove its proposed Siler-Davis
`combination renders obvious limitations directed to the “timer
`applet,” such as those recited in the “receiving” step (Ground 2)
`Uniloc had noted Petitioner points only to a passing and unexplained reference
`
`in Siler that Player application 122 “may be implemented as a web page.” POR at 21-
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`22; Pet. 44 (citing Siler, ¶32). Uniloc also noted that neither the Petition nor its
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`attached declaration explain how Siler’s passing reference to a webpage
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`implementation expressly or even inherently relates to the provision of a “timer
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`applet” by a remote computer system. POR at 22. Clearly, it is not necessary that all
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`web pages contain applets, much less the particular “timer applet” claimed. Id.
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`14
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`IPR2020-00041
`U.S. Patent No. 8,407,609
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`In its Reply, Netflix points to the “extensive explanation” describing how the
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`disclosure of Siler would purportedly be modified. Reply at 17-18. The “extensive
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`explanation” in the Petition is as follows:
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`A POSA would have looked to and borrowed from the disclosure
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`of Davis to modify the system of Siler for at least one prominent
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`reason. Siler disclosed that streaming content could be displayed
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`at a client using a software application 122 installed on the client.
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`Siler at ¶¶0025, 0027. After describing the operation of such a
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`system, Siler explained various alterations that could be made to
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`the system, including that the software application could be
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`implemented as a web page instead of the installed software
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`application. Id. at ¶0032. Siler did not then repeat the preceding
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`disclosure to explain how this alternative implementation would
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`impact the system as disclosed. Id. But a POSA would have
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`recognized that a change from an installed application to a web
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`page would have motivated certain other changes. Franz ¶¶206-
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`218.
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`One such change that a POSA would have recognized as being
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`advantageous with the web page implementation in Siler would
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`be that certain application logic disclosed as being contained in
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`the software application 122 could actually be included as
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`downloadable logic embedded in the web page. Id. This was well
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`known in the art, of which Davis is used as one example. Davis at
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`12:13-50; see also id. at 9:20-23, 18:1-5; Franz ¶¶206-218. This
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`downloadable logic could be an applet or any other script that
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`would run in the context of the web page and web 15 browser.
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`Franz ¶¶206-218. A POSA would have been motivated to use an
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`applet for delivering the timer functionality for numerous reasons:
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`because it was one of only a finite number of ways to provide the
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`functionality, because it was a well known and preferable way to
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`implement custom functionality in a web page, and because the
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`applet implementation would allow the system to require less
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`software 20 to be stored permanently on the user client 101. Id.
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`Pet. at 43-44. The length and convoluted nature of Netflix’s “extensive
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`explanation” only demonstrates how Netflix and Dr. Franz improperly apply
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`hindsight reconstruction. Indeed, the number of modifications and steps explained
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`above could only be made with the benefit of the claim as a template. Such hindsight
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`reconstruction does not establish that it would be obvious for one of ordinary skill to
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`combine features of disparate references to obtain the claims at issue.
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`As the Court of Appeals for the Federal Circuit has warned:
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`Not only must the claimed invention as a whole be evaluated, but so also
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`must the references as a whole, so that their teachings are applied in the
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`context of their significance to a technician at the time — a technician
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`without our knowledge of the solution. The defendants propounded and
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`the district court appears to have followed an analytical method that well
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`illustrates the "mosaic" analogy discussed in W.L. Gore Assocs., 721
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`F.2d at 1552, 220 USPQ at 312, where this court said: [T]he claims were
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`used as a frame, and individual, naked parts of separate prior art
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`references were employed as a mosaic to recreate a facsimile of the
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`claimed invention.
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`Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143 (Fed. Cir. 1985).
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`In the instant case, Netflix and Dr. Franz adopt a convoluted, multi-step
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`modification theory that is untethered from what the references themselves teach to
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`an ordinary technician. Clearly, Netflix has failed to meet their burden of proof.
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`C. The Petition fails at least to prove its proposed Siler-Davis
`combination renders obvious “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” (Ground 2)
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`Uniloc has explained how the respective web servers and streaming server of
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`Siler are not “distinct” from one another, and do not operate the claimed streaming
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`“independent” of one another, as recited in claim 1. POR at 23. Uniloc specifically
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`pointed out that Siler’s streaming server 105, web server 113 and web server 117 are
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`each part of “distinct” computer systems, as opposed to being part of the same
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`computer system. POR at 23-24. As another example, Petitioner also fails to prove
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`that the streaming of content from streaming server 105 is “independent” of the web
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`servers 113 and 117. POR at 24. Tellingly, the Petition does not even mention the
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`claim term “independent” in its argument alleged addressing the claim language in
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`which this term appears. See generally Pet.
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`Uniloc explained various aspects of Siler in greater detail. POR at 24-25.
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`Uniloc noted that the Petition recognizes that, under the construction applied therein
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`for “computer system,” the obviousness theory depends on further establishing that
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`Siler’s streaming server and web servers are “under separate operation or control.”
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`Pet. at 62. In particular, if the “computer system” term recited in claim 1 means “one
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`or more computing devices having a common operator or under common control,” as
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`Petitioner argues, then it follows that “a second computer system” cannot be “distinct
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`from the first computer system” if both have a common operator or are under common
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`control. Otherwise, these distinct terms would be impermissibly conflated together.
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`To satisfy this the application of these constructions, the Petition and its
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`attached declaration by Dr. Franz merely speculate—without citing any
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`documentary evidence—that Siler’s streaming server and web servers “could be
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`under separate operation or control.” Pet. at 62. Dr. Franz speculates that a television
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`station or an owner of a television station may control the streaming server. Ex. 1002,
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`¶236. Dr. Franz further provides the unsupported speculation that each content
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`owner could operate their own streaming server 105. Id. No documentation is cited
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`as alleged support for such speculation that an individual source might control such
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`a streaming server. Netflix continues to advocate this position in its Reply. Reply at
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`19-26. The problem with this approach is that Netflix argues inherency (without
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`invoking the doctrine by name). Just as noted above in Section II.A.4., Netflix has
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`failed here to articulate and meet the requisite showing under the law of inherency.
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`See I-Blason LLC v. Aevoe Corp., IPR2016-00231, Paper 6, at (PTAB May 18,
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`2016) (ruling that Petitioner had not demonstrated that the claimed functional
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`limitation would be inherent when “the evidence, as presented by petitioner, only
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`indicates that, at best, the functionality may be present”).
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`In its Reply, Netflix submits additional evidence. Reply at 24-25 (citing Franz
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`Supplement, ¶¶12-13). In particular, Dr. Franz suggests that the Siler web and
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`streamer servers “are not ‘distinct’ from one another, and do not operate the claimed
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`streaming ‘independent[ly]’ of one another” by raising the following new
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`arguments:
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`12. …. However, the descrip