Huluv.Intertainer, Inc.

Patent Trial and Appeal Board

Mar 6, 2015

13495884 (P.T.A.B. Mar. 6, 2015)

Trials@uspto.gov Paper 8
571-272-7822 Entered: March 6, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

HULU, LLC,
Petitioner,

v.

INTERTAINER, INC.,
Patent Owner.

Case IPR2014-01456
Patent 8,479,246

Before MICHAEL W. KIM, BRIAN P. MURPHY, and
JENNIFER M. MEYER, Administrative Patent Judges.

MEYER, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
IPR2014-01456
Patent 8,479,246

2
I. INTRODUCTION
Hulu, LLC (“Petitioner”) filed a Corrected Petition for inter partes
review of claims 1–22 and 24–30 (“the challenged claims”) of U.S. Patent
No. 8,479,246 (Ex. 1001, “the ’246 patent”). Paper 1 (“Pet.”). Intertainer,
Inc. (“Patent Owner”) timely filed a Preliminary Response. Paper 7
(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314. The
standard for instituting inter partes review is set forth in 35 U.S.C. § 314(a),
which provides that inter partes review may not be instituted unless “there is
a reasonable likelihood that the petitioner would prevail with respect to at
least 1 of the claims challenged in the petition.”
Patent Owner indicates that claims 16–21, 23, 25, and 27–29 of the
’246 patent were disclaimed via a “Disclaimer in Patent Under 37 C.F.R.
§ 1.321(a)” filed September 16, 2014. See Prelim. Resp. 5; Ex. 2002.
Accordingly, because Patent Owner has disclaimed claims 16–21, 23, 25,
and 27–29, inter partes review may not be instituted based on those claims.
See 35 U.S.C. § 253(a); 37 C.F.R. § 42.107(e).
For the reasons discussed below, we do not authorize institution of
inter partes review as to any of the challenged claims.
A. Related Proceedings
Petitioner has been sued for infringement of the ’246 patent in a
district court case titled, Intertainer, Inc. v. Hulu, LLC, No. 2:13-cv-05499
(C.D. Cal.). Pet. 2. A covered business method patent review of the ’246
patent is currently pending before the Board. Id.; see Hulu, LLC v.
Intertainer, Inc., Case CBM2014-00052 (PTAB). In addition, Petitioner has
filed a petition for inter partes review of certain claims of Patent Owner’s
IPR2014-01456
Patent 8,479,246

3
U.S. Patent No. 8,468,099 B2. See Paper 6, 3; Hulu, LLC v. Intertainer,
Inc., Case IPR2014-01455 (PTAB).
B. The ’246 Patent
The ’246 patent, titled “System and Method for Interactive Video
Content Programming,” issued on July 2, 2013. Ex. 1001, at [45], [54]. The
’246 patent relates to a method for creating an interactive video, which
includes one or more interface links associated with video content being
displayed. Id. at 1:59–60, 2:27–28. When a user interacts with an interface
link, the video content is paused, and the user is able to view ancillary
content linked to the interface link over a network. Id. at 2:27–48, 6:59–
7:22. When the user elects to continue viewing the video content, the video
is un-paused. Id. at 7:22–26.
C. Illustrative Claim
Of the challenged claims, claim 1 is independent. Claims 2–15
depend from claim 1. Claims 22, 24, 26, and 30 depend from independent
claim 16.
1
Claim 1 of the ’246 patent, reproduced below, is illustrative of
the challenged claims:
1. A method for creating an interactive video, the method
comprising:
encoding and storing the video onto a remote storage
medium at a first site;

1
Claim 16 has been statutorily disclaimed by Patent Owner, as discussed
above.
IPR2014-01456
Patent 8,479,246

4
creating a link program adapted to both:
(a) interrupt streaming of the video at the remote
storage medium to prevent streaming of the video over an
Internet Protocol (IP)-based network to a second site; and
(b) access ancillary content accessible over the
network with a universal resource locator (URL) to a
remote site where the ancillary content is stored, the link
program linking the ancillary content and the video to a
point in time when the streaming of the video from the
remote storage medium is interrupted;
associating the link program with the video;
streaming the video over the network for display;
providing the link program over the network;
receiving an indication of an interaction with the link
program;
interrupting, at the first site, the streaming of the video in
response to receiving the indication of the interaction with the
link program; and
continuing the streaming of the video over the network
from the point in time when the streaming of the video was
interrupted.
Ex. 1001, 9:45–10:3.
D. Applied References
Petitioner relies upon the following references. Pet. 4.
Patent No./Publication Information Date of Issuance/
Publication
Exhibit No.
Realplayer G2 User Manual, Chapter 4
(“Realplayer”)
© 1998–1999 Ex. 1003
U.S. Patent No. 6,496,981 B1
(“Wistendahl”)
Dec. 17, 2002 Ex. 1004
U.S. Patent No. 7,139,813 B1
(“Wallenius”)
Nov. 21, 2006 Ex. 1005
IPR2014-01456
Patent 8,479,246

5
Patent No./Publication Information Date of Issuance/
Publication
Exhibit No.
Felix Hartanto & Harsha Sirisena,
Hybrid Error Control Mechanism for
Video Transmission in the Wireless IP
Networks, Proceedings of the IEEE
Tenth Workshop on Local and
Metropolitan Area Networks (Nov.
1999)
(“Hartanto”)
Nov. 1999 Ex. 1010
EP 0 840 241 A1 (“Chen”) May 6, 1998 Ex. 1014
U.S. Patent No. 5,796,952 (“Davis”) Aug. 18, 1998 Ex. 1015
Petitioner further relies on the Declaration of V. Michael Bove, Jr.
(“Bove Declaration,” Ex. 1008).
E. Asserted Grounds
Petitioner challenges claims 1–15, 22, 24, 26, and 30 on the following
grounds. Pet. 4, 12–59.
Reference(s) Basis Claim(s) Challenged
Wallenius § 102(e) 1, 4–9, 12–15, 22, 24, 26, 30
Wallenius, Realplayer § 103 2, 3
Wistendahl § 102(e) 1, 4–7, 10, 12–14, 22, 24, 26, 30
Wistendahl, Hartanto § 103 15
Wistendahl, Realplayer § 103 2, 3
Chen, Davis § 103 1–3, 5, 8, 10, 11, 13, 14
II. ANALYSIS
A. Claim Construction
In an inter partes review, a “claim in an unexpired patent shall be
given its broadest reasonable construction in light of the specification of the
patent in which it appears.” 37 C.F.R. § 42.100(b); In re Cuozzo Speed
Tech., LLC, No. 2014-1301, 2015 WL 448667, at *5–*8 (Fed. Cir. Feb. 4,
2015). No issue in this Decision, however, requires explicit claim
IPR2014-01456
Patent 8,479,246

6
construction of any term. See, e.g., Wellman, Inc. v. Eastman Chem. Co.,
642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be
construed ‘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))).
B. Asserted Grounds Based on Wallenius, Alone or in
Combination with Realplayer
Petitioner asserts that claims 1, 4–9, 12–15, 22, 24, 26, and 30 are
unpatentable under 35 U.S.C. § 102(e) as anticipated by Wallenius, and that
claims 2 and 3 are unpatentable under 35 U.S.C. § 103(a) as obvious in view
of Wallenius and Realplayer. Pet. 12–30. Patent Owner asserts that
Wallenius is not a valid prior art reference as to the ’246 patent. Prelim.
Resp. 19.
The ’246 patent issued from U.S. Patent Application No. 13/495,884
(“the ’884 application”). Ex. 1001, at [21]. With the ’884 application,
Applicants filed four Declarations under 37 C.F.R. § 1.131, one from each
inventor of the ’246 patent, in order to show the claimed invention was
reduced to practice prior to September 16, 1999.
2
Ex. 1002, 330–462, 475–
519. In a first Office Action, the Examiner rejected all of the claims under
35 U.S.C. § 112, ¶ 1, and under 35 U.S.C. §§ 102(e), 103 as being
anticipated by Wallenius or obvious in view of Wallenius and additional
references. Id. at 249–264. Applicants amended claim 1 and presented
arguments addressing the 35 U.S.C. § 112, ¶ 1 rejection. Id. at 159–166. In
response to the art rejections, Applicants pointed the Examiner’s attention to

2
The filing date of Wallenius is November 1, 1999. Ex. 1005, at [22].
IPR2014-01456
Patent 8,479,246

7
the Declarations under 37 C.F.R. § 1.131 filed with the application, arguing
that “the rejection in view of Wallenius are moot in view of the Declarations
under 37 C.F.R. § 1.131.” Id. at 166. In response to a subsequent Final
Rejection maintaining each of the rejections (id. at 127–143), Applicants
submitted a Declaration under 37 C.F.R. § 1.132 providing additional
evidence with respect to the Examiner’s claim construction, and that one of
skill in the art would have understood the claimed invention to have been
reduced to practice prior to the filing date of Wallenius. Id. at 79–85. Based
on the evidence submitted by Applicants, the Examiner issued a Notice of
Allowance (id. at 23–28), indicating that the “affidavit[s] filed on 6/13/12
under 37 CFR 1.131 [are] sufficient to overcome [Wallenius].” Id. at 26.
Petitioner asserts that the inventor’s 37 C.F.R. § 1.131 Declarations
submitted during prosecution of the ’884 application are deficient, and that
Wallenius is, in fact, valid prior art as to the ’246 patent. Pet. 14–16. In
particular, Petitioner argues that the inventor Declarations submitted during
prosecution of the ’884 application do not support a finding of reduction to
practice of the subject matter recited in the challenged claims. Id. Petitioner
further argues that the Examiner in a reexamination proceeding of related
U.S. Patent No. 7,870,592 (“the ’592 patent”) determined that similar
37 C.F.R. § 1.131 Declarations filed in that proceeding failed to show
reduction to practice. Id.
Under 35 U.S.C. § 325(d), “[i]n determining whether to institute or
order a proceeding under this chapter, chapter 30, or chapter 31, 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.” As discussed, the same prior art (i.e., Wallenius)
IPR2014-01456
Patent 8,479,246

8
and arguments (i.e., Wallenius is a valid prior art reference that anticipates
the challenged claims) were presented previously to the Office. Further, the
Examiner of the ’884 application was aware of the related reexamination
proceeding of the ’592 patent (“the ’592 reexamination”). See, e.g.,
Ex. 1002, 168–170. The Examiner, however, determined that the inventor’s
37 C.F.R. § 1.131 Declarations submitted in the ’884 application were
sufficient to show reduction to practice of the subject matter recited in the
claims ultimately issued in the ’246 patent, and the Examiner withdrew
Wallenius as prior art thereto. Id. at 26. We have reviewed independently
the 37 C.F.R. § 1.131 Declarations submitted in the ’884 application, and
determine that the Examiner’s reliance on the contents of the Declarations to
support a showing of reduction to practice was reasonable. Further,
Petitioner’s arguments with respect to the Examiner’s findings in the ’592
reexamination proceeding are inapposite, because the claims at issue in the
’592 reexamination proceeding were not identical to the claims of the ’246
patent.
For the foregoing reasons, we exercise our discretion and deny the
asserted grounds based on Wallenius, alone and in combination with
Realplayer, under 35 U.S.C. § 325(d).
C. Asserted Grounds Based on Wistendahl, Alone or in
Combination with Hartanto or Realplayer
Petitioner asserts that claims 1, 4–7, 10, 12–14, 22, 24, 26, and 30 are
unpatentable under 35 U.S.C. § 102(e) as anticipated by Wistendahl (Pet.
32–45), that claim 15 is unpatentable under 35 U.S.C. § 103(a) as obvious in
view of Wistendahl and Hartanto (Pet. 45–47), and that claims 2 and 3 are
unpatentable under 35 U.S.C. § 103(a) as obvious in view of Wistendahl and
IPR2014-01456
Patent 8,479,246

9
Realplayer (Pet. 47–49). As support, Petitioner provides detailed
explanations as to how each claim limitation is disclosed in, or taught or
suggested by, the cited references, as well as the Bove Declaration
(Ex. 1008). Id. at 32–49. Patent Owner responds that Wistendahl does not
disclose every claim limitation of independent claims 1 and 16. Prelim.
Resp. 23–32.
We have reviewed the parties’ contentions and supporting evidence.
For the reasons discussed below, we are not persuaded that Petitioner has
shown a reasonable likelihood of prevailing on its assertion that claims 1, 4–
7, 10, 12–14, 22, 24, 26, and 30 are anticipated by Wistendahl, or that claims
2 and 3, and 15 would have been obvious in view of Wistendahl in
combination with Realplayer or Hartanto, respectively.
1. Overview of Wistendahl
Wistendahl relates to a system for converting media content to be
used as an interactive media program. Ex. 1004, Abstract. Media content
(e.g., movies, TV programs, etc.) may be mapped with “hot spots” that link
the TV content to Internet addresses. Id. at 3:32–45, 5:27–50. “The
coordinate/address data of the ‘hot spots’ are preferably in a standard format
that can be accessed by any interactive digital media (IDM) program written
to run with that media presentation.” Id. at 5:38–41. The IDM program can
be stored, for example, in a user’s TV set-top box, and operates to allow the
user to interact with an interactive media program. Id. at 8:9–9:56,
Figs. 3, 4.
2. Analysis
Independent claim 1 recites “interrupting, at the first site, the
streaming of the video in response to receiving the indication of the
IPR2014-01456
Patent 8,479,246

10
interaction with the link program.” Ex. 1001, 9:65–67 (emphases added).
Claim 16, from which challenged claims 22, 24, 26, and 28 depend, recites a
similar limitation, “in response to receiving the indication [of an interaction
with the interface link] . . . interrupting, at the remote location, the streaming
of the video at a point in time so as to interrupt the streaming of the video
over the network.” Id. at 10:56–59 (emphases added). We are not
persuaded Petitioner has shown sufficiently that Wistendahl discloses either
of these limitations.
None of the portions of Wistendahl cited by Petitioner discloses an
interrupting of the video stream at the remote site and in response to
receiving the indication of the interaction with the link program, as claimed.
For example, Petitioner relies on the following passages of Wistendahl as
disclosing the interrupting limitation of claim 1 (see Pet. 34, 36–37):
To illustrate, upon the user clicking on the Maltese falcon, the
hyperlink established in the “Movie Trivia Info” program can
initiate a linked display of text or graphics explaining the
Maltese origins of the falcon in a pop-up window on the
television screen, or may execute another program function
such as initiating an Internet connection to a World Wide Web
service which offers a replica of the falcon for purchase. . . .

[U]pon selection by a user clicking on an object, the IDM
program can issue an instruction via the console processor 40 to
the video processor 48 to slow down or pause the running of the
movie to allow time for the user to absorb the IDM program
response.
Ex. 1004, 9:33–48.
For example, in video-on-demand or media-on-demand
systems, “streaming” content supplied in segments of digital
data packets can be controlled with VCR-like controls by
interrupting the content stream upon sending a command from
IPR2014-01456
Patent 8,479,246

11
the subscriber and rescheduling the sending of content
segments as requested by the subscriber.
Id. at 17:7–13.
In the first passage, although the IDM program issues an instruction to
pause the movie upon a user clicking on an object, this pausing occurs at
video processor 48, which is located in TV set-top box 32 (e.g., at the
claimed second site), and not at network server 30 (e.g., the claimed remote
storage medium at the first site). See id. at 9:33–48, Figs. 3, 4. In the
second passage, discussing other applications/embodiments of Wistendahl,
the pause command (e.g., the claimed interrupting) is not initiated in
response to the user clicking on any hot-spot in the video; instead, the pause
command comes from the user operating the “VCR-like controls” which
allow the user to “stop, pause, rewind, or otherwise control the playback . . .
to allow the user time to interact with the program.” Id. at 16:66–17:6.
A claim is unpatentable under 35 U.S.C. § 102 only if a single prior
art reference expressly or inherently describes each and every limitation set
forth in the claim. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368,
1375 (Fed. Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628,
631 (Fed. Cir. 1987). Further, a reference cannot anticipate “unless [it]
discloses within the four corners of the document not only all of the
limitations claimed[,] but also all of the limitations arranged or combined in
the same way as recited in the claim.” Net MoneyIn, Inc. v. VeriSign, Inc.,
545 F.3d 1359, 1371 (Fed. Cir. 2008). “[I]t is not enough that the prior art
reference discloses part of the claimed invention, which an ordinary artisan
might supplement to make the whole, or that it includes multiple, distinct
teachings that the artisan might somehow combine to achieve the claimed
invention.” Id. (citations omitted).
IPR2014-01456
Patent 8,479,246

12
Petitioner does not point us to persuasive evidence that Wistendahl
discloses an embodiment in which the interrupting of the video stream
occurs both at the remote site and in response to receiving the indication of
the interaction with the link program. Accordingly, we are not persuaded
that Petitioner has demonstrated a reasonable likelihood of prevailing on its
assertion that independent claims 1 and 16, or claims 4–7, 10, 12–14, 24, 26,
and 30 which depend therefrom, are anticipated by Wistendahl. Petitioner
does not assert that claims 1 and 16 would have been obvious over
Wistendahl, or that Hartanto or Realplayer remedies the deficiencies
discussed above. Therefore, we are not persuaded that Petitioner has
demonstrated a reasonable likelihood of prevailing on its assertion that
claims 2, 3, and 15 would have been obvious over the combination of
Wistendahl with Realplayer or Hartanto, respectively.
D. Asserted Ground Based on Chen and Davis
In Hulu, LLC v. Intertainer, Inc., Case CBM2014-00052 (PTAB June
23, 2014) (Paper 10), we instituted a covered business method patent review
of, inter alia, each of claims 1–3, 5, 8, 10, 11, 13, and 14 under 35 U.S.C.
§ 102(b) as anticipated by Chen. CBM2014-00052 is currently pending
before the Board; an oral hearing was held on February 3, 2015. See Hulu,
LLC v. Intertainer, Inc., Case CBM2014-00052 (PTAB Jan. 13, 2015)
(Paper 28).
In the instant proceeding, Petitioner asserts that claims 1–3, 5, 8, 10,
11, 13, and 14 are unpatentable under 35 U.S.C. § 103(a) as obvious in view
of Chen and Davis. Pet. 51–59. As pointed out by Patent Owner (Prelim.
Resp. 3), Petitioner does not contend that the newly cited reference Davis
was not known or available to it at the time it filed its petition in CBM2014-
IPR2014-01456
Patent 8,479,246

13
00052. The asserted ground of unpatentability is nearly identical to the
ground of unpatentability pending decision in CBM2014-00052.
3
Compare
Pet. 53–59, with CMB2014-00052 (Paper 1), 16–24. We, therefore, exercise
our discretion and decline to institute inter partes review on this ground.
See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(a).
III. CONCLUSION
For the foregoing reasons, we conclude that the information presented
in the Petition does not establish a reasonable likelihood that claims 1, 4–7,
10, 12–14, 22, 24, 26, and 30 of the ’246 patent are anticipated by
Wistendahl, or that claims 2 and 3, and 15 of the ’246 patent would have
been obvious in view of Wistendahl in combination with Realplayer or
Hartanto, respectively. Further, taking into account the particular facts of
this case, we exercise our discretion and decline to institute inter partes
review on the asserted grounds based on Wallenius, alone and in
combination with Realplayer, and on the asserted ground based on Chen and
Davis.
IV. ORDER
Accordingly, it is
ORDERED that the Petition is denied, and no trial is instituted.

3
Davis is relied upon only to “disclose and render obvious sending the
decoder over the network to the user’s computer.” Prelim. Resp. 32–33
(quoting Pet. 55–56).
IPR2014-01456
Patent 8,479,246

14
PETITIONER:
Eliot Williams
Harper Batts
BAKER BOTTS LLP
eliot.williams@bakerbotts.com
harper.batts@bakerbotts.com

PATENT OWNER:
Amedeo F. Ferraro
Thomas H. Martin
MARTIN & FERRARO, LLP
aferraro@martinferraro.com
tmartin@martinferraro.com
docketing@martinferraro.com