Ex Parte 6,983,478 et al

Patent Trial and Appeal Board

Nov 18, 2013

95000601 (P.T.A.B. Nov. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,601 12/09/2010 6,983,478 X39680 5720
83619 7590 11/18/2013
AT & T LEGAL DEPARTMENT - GB
ATTN: PATENT DOCKETING
ROOM 2A- 207
ONE AT & T WAY
BEDMINSTER, NJ 07921
EXAMINER
SAGER, MARK ALAN
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/18/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TiVO INC.
Requester and Respondent

v.

AT&T INTELLECTUAL PROPERTY I, L.P.
Patent Owner and Appellant
____________

Appeal 2013-009175
Reexamination Control 95/000,601
Technology Center 3900
Patent No. 6,983,478
____________

Before RICHARD M. LEBOVITZ, DAVID M. KOHUT,
and ERIC B. CHEN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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Reexamination Control 95/000,601
Patent No. 6,983,478

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Patent Owner AT&T Intellectual Property I, L.P., appeals under 35
U.S.C. § 134(b) and 35 U.S.C. § 315(a) the Examiner’s final decision to
reject claims 1-11 and 13. The Examiner has confirmed the patentability of
claims 12 and 14-16. Third-Party Requester TiVo, Inc. did not file a
response to Patent Owner’s Appeal Brief.
We have jurisdiction under 35 U.S.C. §§ 134 and 315.
An oral hearing was held on October 30, 2013. The record includes a
written transcript of the oral hearing.
We reverse.

STATEMENT OF THE CASE
A request for inter partes reexamination of U.S. Patent No.
6,983,478 (the ’478 patent), assigned Reexamination Control
No. 95/000,601, was filed on December 9, 2010, by Third-Party Requester
TiVo, Inc.
The ’478 patent, entitled “Method and System for Tracking Network
Use,” issued January 3, 2006, to Edward Rowland Grauch, John Christopher
Batten, Fred Thomas Danner, III, Scott R. Swix, and John R. Stefanik, based
on Application No. 09/496,825, filed February 1, 2000, which is said to be a
continuation of Application No. 08/779,306, filed January 6, 1997, now
abandoned.
The ’478 patent is said to be assigned to AT&T Intellectual
Property I, L.P., said to be the real party in interest. (App. Br. 1.)

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The Invention
Patent Owner’s invention relates to an interactive media delivery
system that enables interactive media programming to a multimedia device
and tracks a subscriber’s use of the multimedia device (e.g., change in
programming, a change in channel selection, subscriber’s interaction with a
particular interactive services application). Each event may be stored as an
event record in a database, and one or more of the event records may be
merged with content data to form event timelines of programming or other
activity to the multimedia device over a selected time period. (Abstract.)
Claim 1 is drawn to a system for “for collecting and processing
information about subscribers’ selection and use of programming distributed
over a media delivery network.” The system has a merge processor and set
top boxes. The set top boxes collect event records based on commands for a
subscriber to the box, and transmit the event records to the merge processor.
The merge processor “forms an event time line describing a subscriber’s
selection” programming for a discrete time “by merging the event records
with programming data describing programming available via the media
delivery system.”

Related Litigation
The ’478 patent has been asserted in a patent infringement suit, AT&T
Intellectual Property I, L.P. v. TiVo Inc., No. 4:10-cv-01059 (N.D. Cal. Mar.
12, 2010), and dismissed with prejudice on January 26, 2012.

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Patent No. 6,983,478

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The Claims
Independent claim 1 is exemplary, with disputed limitations in italics:
1. A system for collecting and processing information about
subscribers’ selection and use of programming distributed over a
media delivery network, the system comprising:
a) merge processor coupled via means for communication to
b) a plurality of set top boxes, each comprising a processor for
(1) collecting a plurality of event records that describe
selected commands from a subscriber to a particular set top box
and
(2) transmitting event records to the merge processor;
c) wherein the merge processor forms an event timeline
describing a subscriber’s selection of distributed programming for a
discrete time period by merging the event records with programming
data describing programming available via the media delivery system.

The Rejections
Patent Owner appeals the Examiner’s decision to adopt the following
proposed rejections:
Claims 1-3, 6-8, and 13 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Hendricks (U.S. Patent No. 5,600,364; issued Feb. 4,
1997, filed Dec. 2, 1993);
Claims 1-11 and 13 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Hendricks and Mabey (U.S. Patent No. 4,885,632; issued
Dec. 5, 1989);
Claims 1-11 and 13 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Hendricks and Thomas (U.S. Patent No. 5,481,294; issued
Jan. 2, 1996).
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ANALYSIS
§ 102 Rejection – Hendricks
We are persuaded by the Patent Owner’s arguments that Hendricks
does not describe the limitation “an event timeline,” as recited in claim 1.
(App. Br. 8-12; see also Reb. Br. 2-5.)
The Examiner adopted the Requester’s proposed rejection based on
the teaching in Hendricks of a matrix for indicating the number of programs
watched according to program category and time slot, as illustrated in
Figure 16 of Hendricks, where the matrix was found by the Examiner to
correspond to the limitation of “an event timeline.” (RAN 8.) We do not
agree with the Examiner’s determination.
We first begin with the interpretation of the disputed limitation, “an
event timeline.” Claim terms are given their broadest reasonable
interpretation as they would be understood by one of ordinary skill in the art
when read in light of the specification. In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997); In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir.
2010).
The ’478 patent discloses that “[t]imelines showing particular events
over time may then be generated for each subscriber” and that “[r]ather than
just determining the channel viewed and time of day, the event timelines
describe the programming or interactive applications selected by or shown to
a subscriber over a selected period of time (e.g., 24 hours).” (Col. 2, ll. 55-
60.) The ’478 patent further defines “events” as “subscriber actions or
changes in programming—that are of interest.” (Col. 2, ll. 41-42.) Figure 7
of the ’478 patent illustrates the results of merging the Clickstream Data 80,
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the Prevue Guide Data 82, and the Broadcast Advertising Data 84 into the
Clickstream Timeline 92, a chronological listing of “events.” Figure 7 also
illustrates “event records” arranged chronologically by time, where each
record has a “Timestamp” and a specific event associated with the time.
Based on this evidence, we interpret “the expression ‘event timeline’ . . . as a
timeline of events that is characterized by a series of events differentiated
chronologically,” where the events represent user actions and selections.
(App. Br. 6.)
Hendricks relates to “a network controller that monitors, controls and
manages a television program delivery network from a cable headend.”
(Col. 1, ll. 35-37.) Figure 4 of Hendricks illustrates an expanded cable
television program delivery system 200 that includes a network
controller 214, as part of a digital cable headend 208, that monitors program
selections at subscribers’ homes via a set top terminal 220. (Col. 14, ll. 51-
58.) Hendricks explains that an Access History File stored on the set top
terminal 220 of Hendricks generates a Programs Watched Matrices,
illustrated in Figure 16. (Col. 31, ll. 12-18.) Hendricks further explains that:
For example, FIG. 16 shows an example of a 30-day programs
watched matrix, denoted 351, for one set top terminal 220 (not
shown in FIG. 16). The matrix 351 is divided into six rows,
corresponding to six four-hour time slots. The columns of the
matrix 351 are divided, as necessary, by the program categories
available for viewing. Each entry in the matrix 351 denotes the
number of programs watched in a particular program category
and time period.
(Col. 34, ll. 16-24.) Thus, because the matrix 351 of Hendricks sorts
programs watched for a 30-day period by six-hour time slots, rather
than chronologically based on user actions and selections, as required
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by claim 1, Hendricks does not describe the limitation “an event
timeline.” Accordingly, we are persuaded by Patent Owner’s
arguments that “Hendricks does not disclose an event timeline, i.e.,
events in chronological order, describing a subscriber’s selections of
distributed programming in the order those selections occurred for a
discrete time period” but “Hendricks’ Figure 16 discloses a matrix of
time slots, with each time slot merely showing a cumulative number
of programs watched, in no logical order within the time slot, without
any regard to the chronological order in which the programs
occurred.” (App. Br. 10; see also Reb. Br. 3-4.)
Therefore, we do not agree with the Examiner that Hendricks
describes the limitation “an event timeline.”
Accordingly, we do not sustain the rejection of independent claim 1
under 35 U.S.C. § 102(e). Claims 2, 3, and 6-8 depend from independent
claim 1. We do not sustain the rejection of claims 2, 3, and 6-8 under 35
U.S.C. § 102(e) for the same reasons discussed with respect to independent
claim 1.
Independent claim 13 recites limitations similar to those discussed
with respect to independent claim 1. We do not sustain the rejection of
claim 13 for the same reasons discussed with respect to claim 1.

§ 103 Rejection – Hendricks and Mabey
We do not sustain the rejection of claims 1-8 and 13 under 35 U.S.C.
§103(a) as being obvious over Hendricks and Mabey for the same reasons
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discussed previously with respect to the rejection of independent claims 1
and 13 under 35 U.S.C. § 102(e) as being anticipated by Hendricks.
Independent claim 9 recites limitations similar to those discussed with
respect to independent claim 1. We do not sustain the rejection of claim 9,
as well as dependent claims 10 and 11, for the same reasons discussed with
respect to claim 1.

§ 103 Rejection – Hendricks and Thomas
We do not sustain the rejection of claims 1-8 and 13 under 35 U.S.C.
§103(a) as being obvious over Hendricks and Thomas for the same reasons
discussed previously with respect to the rejection of independent claims 1
and 13 under 35 U.S.C. § 102(e) as being anticipated by Hendricks.
Independent claim 9 recites limitations similar to those discussed with
respect to independent claim 1. We do not sustain the rejection of claim 9,
as well as dependent claims 10 and 11, for the same reasons discussed with
respect to claim 1.

DECISION
The Examiner’s decision to reject claims 1-3, 6-8, and 13 under 35
U.S.C. § 102(e) is reversed.
The Examiner’s decision to reject claims 1-11 and 13 under 35 U.S.C.
§ 103(a) is reversed.

REVERSED

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Reexamination Control 95/000,601
Patent No. 6,983,478

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PATENT OWNER:

AT& T LEGAL DEPARTMENT – GB
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921

THIRD PARTY REQUESTER:

IRELL & MANELLA LLP
1800 Avenue of the Stars
Suite 900
Los Angeles, CA 90067