Netflix, Inc.v.OpenTV, Inc.

Patent Trial and Appeal Board

Jun 30, 2014

09109945 (P.T.A.B. Jun. 30, 2014)

Trials@uspto.gov Paper 12
Tel: 571-272-7822 Entered: June 30, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

NETFLIX, INC.
Petitioner

v.

OPENTV, INC
Patent Owner
_______________

Case IPR2014-00274
Patent 6,018,768
_______________

Before SALLY C. MEDLEY, JAMES T. MOORE, and JUSTIN BUSCH,
Administrative Patent Judges.

MOORE, Administrative Patent Judge

DECISION
Denying Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
The Petitioner, Netflix, Inc., filed a Petition requesting an inter partes
review of claims 1-20 of Patent No. US 6,018,768 (the “’768 Patent” or Ex.
1001). Paper 1 (“Pet.”). Patent Owner, OpenTV, Inc., filed a Patent Owner
Preliminary Response. Paper 10 (“Prelim. Resp.”). We have jurisdiction
under 35 U.S.C. § 314.
The standard for instituting an inter partes review is set forth in
35 U.S.C. § 314(a):
THRESHOLD – The Director may not authorize an inter partes
review to be instituted unless the Director determines that the
information presented in the petition filed under section 311
and any response filed under section 313 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.

Pursuant to § 314(a), the Board does not institute an inter partes
review of claims 1-20 of the ’768 Patent.
A. Related Proceedings
The ’768 Patent is involved in litigation in the U.S. District Court for
the District of Delaware. See Pet. 1 (citing OpenTV Inc. v. Netflix, Inc., 1-
12-cv-01733 (D. Del.)). The Petitioner describes the Delaware litigation as
an infringement action asserted against the Petitioner’s real party in interest,
Netflix, Inc. Pet. 1. In addition to this proceeding, related inter partes
review petitions 2014-00252 of Patent US 8,107,786 B2; 2014-00267 of
Patent US 7,409,437 B2; and 2014-00269 of Patent US 6,233,736 B1 are
before the Patent Trial and Appeal Board (the “Board”) involving the same
parties and related patents.
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B. The ’768 Patent
The ’768 Patent describes a system for integrating video programming
with the information resources of the Internet. A computer-based system
receives a video program with embedded uniform resource locators “URLs,”
which are the electronic addresses of locations on the internet. The URLs
are interpreted by the system and direct the system to the Web site locations
to retrieve related Web pages, which then may be synchronized to the video
content for display. See Ex. 1001, Abstract.
C. Claims
Claims 1, 4, 12, and 19 are each independent claims. They are all
system claims with each including means-plus-function language under
35 U.S.C. § 112, paragraph 6. Claim 1 is illustrative:
1. A system for presenting integrated video programming and
corresponding related Internet information segments obtained from Web
sites on the Internet, the system comprising:
a means for receiving programming, wherein the programming
contains a video and audio signals and one or more uniform resource
locators, wherein the uniform resource locators specify one or more
Internet addresses of the information segments which relate
specifically to the content of the video and audio signals of the
programming;
a means for decoding, connected to the receiving means, the
uniform resource locators to determine the specified Internet
addresses;
a controller means, connected to the decoding means, for
interpreting the uniform resource locators;
a web browser, connected to the decoding means and the
controller means, for sending message requests to specific Internet
sites located at the Internet addresses corresponding to the uniform
resource locators and consequently receiving the one or more
requested Internet information segments residing at the determined
Internet addresses, the browser retrieves the requested Internet
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information segments under the direction and control of the controller
means; and
a display means, connected to the controller and receiving
means, for presenting the video and audio signals concurrently with or
independently from the Internet information segments.

Claims 4 and 12 recite roughly the same limitations, differing
principally in the means for receiving programming.
Claim 4 recites that the system comprises a digital cable box
comprising a receiver.
Claim 12 recites that the system comprises a digital television
comprising a receiver.
Claim 19 recites a system for providing integrated video and internet
information, also including a production computer, playlist, and server.
D. References Relied Upon
The Petitioner relies upon the following references:

Hendricks, US 5,559,549 , Sept. 24, 1996, filed Dec. 2, 1993, Ex. 1008
Montulli, US 5,774,670, June 30, 1998, filed Oct. 6, 1995, Ex. 1011
Throckmorton, US 5,818,441, Oct. 6, 1998, filed June 15, 1995, Ex. 1007
Moncreiff, US 5,828,839, Oct. 27, 1998, filed Nov. 14, 1996, Ex. 1010

Brenton R. Schlender, COUCH POTATOES! NOW IT'S SMART TV The
marriage of television’s images and personal computers’ brains is giving
birth to dazzling offspring that could revolutionize both industries, Fortune
Magazine, November 20, 1989 (Ex. 1009).

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E. The Asserted Grounds

The Petitioner asserts the following grounds of unpatentability under
35 U.S.C. § 103:
Reference[s] Basis Challenged Claims
Throckmorton § 103 1-3 and 19
Throckmorton and Hendricks § 103 4-11
Throckmorton and Schlender § 103 12-18
Throckmorton and Moncreiff § 103 20
Throckmorton and Montulli § 103 1-3 and 19
Throckmorton, Hendricks, and Montulli § 103 4-11
Throckmorton, Schlender, and Montulli § 103 12-18
Throckmorton, Moncreiff, and Montulli § 103 20

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); see also Office Patent
Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012) (Claim
Construction).
The Petitioner proposes definitions for the means-plus-function terms
in the claims as follows:
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The “means for receiving programming wherein the programming
contains a video and audio signals and one or more uniform resource
locators,” as found in claim 1. The Petitioner proposed that the
corresponding structure in the ’765 patent encompass one or more receiver
stations such as a computer, cable set top box, television, or equivalent.
(Pet. 7, citing Ex. 1003, Declaration of Kramer, pp. 11- 13.)
The “means for decoding . . . the uniform resource locators” as found
in claims 1, 4, 12, and 19. The proposed structure is hardware or software.
(Pet. 7-8, citing Ex. 1003, Declaration of Kramer, pp. 17-20.)
The “display means . . . for presenting the video [and audio signals]
concurrently with or independently from the internet information segments”
as found in claims 1, 5, 12, and 19. The proposed structure is one or more of
a computer monitor and PC speakers, a television, or other display monitor,
or equivalent. (Id., citing Ex. 1003, pp. 17-20.)
The “means for creating a playlist” as found in claim 19. The
proposed structure is hardware or software. (Pet. 9, citing Ex. 1003, pp. 20-
21.)
The Patent Owner does not present a claim construction for any claim
term. For purposes of the decision, we adopt the Petitioner’s construction
for the above terms.
B. Asserted Grounds of Unpatentability
1. Claims 1-3 and 19 as obvious under 35 U.S.C. § 103(a) over
Throckmorton.

Claim 1, reproduced above, is representative for this ground.
According to the Petitioner, Throckmorton describes presenting a primary
data stream, where the primary data stream may be a television broadcast, to
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a consumer with a cathode ray tube screen, or possibly a liquid crystal
display screen and audio provided by an audio amplifier and speakers. (Pet.
13, citing Ex. 1007, 6:36-43). Further, the Petitioner asserts that
Throckmorton describes “‘retriev[ing] data from remote computers . . . for
presentation to the consumer,’” where the data from the “online services or
the Internet [] are particularly relevant to the television program.” (Id.,
citing Ex. 1007, 8:30-34; Abstract.) In general, this describes the system of
the Ullman ’768 patent.
Claim 1 also recites some particular means for accomplishing the
delivery of additional content to the primary data stream. They include:
a controller means, connected to the decoding means, for
interpreting the uniform resource locators;
a web browser, connected to the decoding means and the
controller means, for sending message requests to specific Internet
sites located at the Internet addresses corresponding to the uniform
resource locators and consequently receiving the one or more
requested Internet information segments residing at the determined
Internet addresses, the browser retrieves the requested Internet
information segments under the direction and control of the controller
means… Ex. 1001, claim 1.

The Petitioner urges that Throckmorton describes these elements.
In the Petition, the Petitioner asserts that Throckmorton discloses a
controller means, connected to the decoding means, for interpreting the
uniform resource locators because it teaches a microprocessor in the
computer (citing Ex. 1007, 6:13-14) that controls an associated data protocol
manager 60 to perform the function of extracting the different forms of
associated data from the incoming digital data stream and converting them to
a form that can be used by the communications manager, citing Ex. 1007,
4:27-33. The resulting data is then said to be displayed. Pet. 16-17.
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The Petitioner then asserts that this description equates to a teaching
of (i) a web browser executing on a system (comprising the web browser, a
decoder and a microprocessor); (ii) that the web browser is under the control
of the microprocessor; and (iii) that the web browsing system connects to
and retrieves WWW pages corresponding to the URL and displays the
pages, thereby disclosing “a web browser, connected to the decoding means
and the controller means, for sending message requests to specific Internet
sites located at the Internet addresses corresponding to the uniform resource
locators and consequently receiving the one or more requested Internet
information segments residing at the determined Internet addresses, the
browser retrieves the requested Internet information segments under the
direction and control of the controller means,” as recited in the claim. We
are pointed to the Declaration of Kramer, Ex. 1003, pp. 33-35.
The problem we find with the Petitioner’s showing is that a plain
reading of Throckmorton reveals that it has very distinct embodiments for
use in particular situations involving the type of communication desired. All
of Figures 1, 2, and 3, with their associated description, relate principally to
one-way broadcast communications. Figures 4 and 5 relate to a preferred
embodiment including interactive (two-way) communications. See Ex.
1007, 3:16-32.
The Petitioner has conflated the discussion of the microprocessor as
shown in Figure 3 with the two-way model and control of what is sought and
retrieved.
Figure 3 is reproduced below:
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As Figure 3 describes, all of the communication is incoming through
the receiver 36. The receiver 36 has a microprocessor 38 connected to
RAM. But the RAM contents are not received from Internet addresses under
the control of a controller. Rather, those contents were downloaded over the
media by the receiver into local memory and then accessed locally by a user.
See Ex. 1006, 6:4-20 and 8:10-15. The data protocol manager is connected
by the one-way path to receive and handle web pages, closed captioning,
stock quotes, sports scores, control commands for the microprocessor, etc.
Id. at 6:54-63. A more personalized broadcast into memory, but a broadcast
nonetheless. There cannot be a description of a control means specifically
controlling the web pages being sought from the internet, because that
function is handled at the broadcast location in this embodiment.
The problem with the argument made in the Petition is brought into
sharper focus because the two-way interactive version of Throckmorton’s
Figures 4 and 5 then adds a two-way communications channel to the
microprocessor to provide interactive access to other remote computers over
other communications links. Id. at 8:16-24. But so far as we can tell, the
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reason the access is called interactive is because it requires the interaction of
a human operator through the interface. Id. at 8:27-34.
Figure 4 of Throckmorton is the closest description we have been able
to find to the claimed subject matter. This Figure shows the processor 38
tied directly to the two-way communications channel.

Throckmorton is sparse in its description of Figure 4, but it is evident
that this addition provides interactive access for the user to enjoy at their
command and control. We do not, however, see this functionality as
describing web pages being retrieved under the specific direction and control
of a controller means as claimed:
a controller means, connected to the decoding means, for
interpreting the uniform resource locators;
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a web browser, connected to the decoding means and the
controller means, for sending message requests to specific Internet
sites located at the Internet addresses corresponding to the uniform
resource locators and consequently receiving the one or more
requested Internet information segments residing at the determined
Internet addresses, the browser retrieves the requested Internet
information segments under the direction and control of the
controller means….

Claim 1, emphasis added.
The Patent Owner states:
But the petition cites disparate portions of the art for the
“controller means” and “web browser” limitations, failing to
explain how the alleged “web browser” is under the direction
and control of the alleged “controller means.” The petition thus
never identifies where the “web browser” limitation is found in
the cited art, as required by Rule 42.104(b)(4) to satisfy 35
U.S.C. § 312.

Prelim. Resp. 7-8. We agree with the patent owner that the showing fails to
provide sufficient persuasive evidence that Throckmorton’s browser
retrieves the requested Internet segments under the direction and control of
the controller means.

By way of contrasting example, in the present ’768 patent, a
description of a general functioning of the system is as follows:
System Operation

Once the URLs have reached the personal computer 16,
system operation is similar for all of the embodiments
diagramed [sic] in FIGS. 1, 2, and 4.
In a preferred embodiment, a JAVA enabled browser 98
as well as specialized software 106 for performing part of the
method of the present invention are installed on the computer
16. The JAVA enab1ed browser 98 allows the computer 16 to
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retrieve the Web pages 102 and is preferred software, since it is
platform independent, and thus, enables efficient and flexible
transfer of programs, images, etc., over the Internet 20. The
specialized interface software 106 (hereinafter, “client
software”), attached as Appendix A, acts as an interface
between the video programming and the Internet functions of
the present invention. The client software 106 retrieves URLs
from the video program (embodiment of FIG. 1) or directly
from the Internet connection (embodiments of FIGS. 2 and 4),
interprets these URLs and directs the JAVA enabled browser 98
to retrieve the particular relevant Web pages 102, and
synchronizes the retrieved Web pages to the video content for
display on the user's computer 16, as shown in FIGS. 3 and 4
and explained in more detail below.

Ex. 1001, 7:30-53.

This passage cited above makes it clear there is software acting as the
“controller means” of claim 1, and that “the browser retrieves the requested
Internet information segments under the direction and control of the
controller means” of claim 1, and acts as an interface between the video and
the Internet. We do not read the claim language as encompassing a user
driving the presentation of the web pages in the system of the ’768 patent.
The heart of the Petitioner’s argument is found in the Declaration,
paragraphs 64 and 65, reproduced below.
64. A person of ordinary skill in the art, when reading
Throckmorton would be motivated to combine the features of
the two systems in Throckmorton for a number of reasons. For
example, the combination amounts to simply combining
elements contained in the same reference in precisely the
manner described in the reference. Combining the retrieving-
internet-information-using-a-URL as described in the two-way
embodiment, with the known method of displaying a web page
simultaneously with a video program as described in the one-
way embodiment, yields the predictable result of displaying a
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web page retrieved with a URL simultaneously with a video
program. This result is predictable because Throckmorton
specifically teaches such a result.

65. This implementation of the teachings of Throckmorton
would be desirable because it would allow the user to have
direct access to relevant online information during the program
reception without the need for changing screens. Throckmorton
specifically provides a motivation to make this combination,
because it states that it was desirable to make an experience for
viewers that integrated data with television program reception.

Ex. 1003, Declaration of Kramer, pages 24-25, citing Ex. 1007, 1:59-67.)

The relevant evidentiary portion cited reads as follows:
Up until now, there has been no way for producers of
mass market broadcast programming to deliver data associated
by its relevancy to its subject matter that could be interactively
displayed and manipulated by consumers on a real time basis.
What is meant by real time is that the consumer receives and
has access to the relevant data during the process of program
reception. Therefore the data becomes an integral part of the
experience desired by the program producers.

Ex. 1007, 1:59-67.
We agree that the simple addition of selected, manipulated, relevant
data sent to a user to be cached on their computer for viewing is suggested
by this passage. We also agree that the simple addition of a two-way
channel for interactivity likely would also have been suggested with the
predictable result of further enhancing the user experience. However, we are
unable to find sufficient evidence presented by the Petitioner for us to make
the final logical connection that this combination of embodiments teaches
the claimed
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… controller means, connected to the decoding means, for
interpreting the uniform resource locators;
a web browser, connected to the decoding means and the
controller means, for sending message requests to specific Internet
sites located at the Internet addresses corresponding to the uniform
resource locators and consequently receiving the one or more
requested Internet information segments residing at the determined
Internet addresses, the browser retrieves the requested Internet
information segments under the direction and control of the
controller means….

Accordingly, we decline to institute a trial on this ground.
2. Claims 4-11 as obvious under 35 U.S.C. § 103(a) over
Throckmorton and Hendricks.

This ground as asserted by the Petitioner relies on Throckmorton as
above. Hendricks is relied upon for the description of upgrading existing
digital set top boxes with computer cards to enhance the performance of the
boxes. Such upgrades are said to include online data base services and
interactive multimedia services. The Petitioner then concludes that one of
ordinary skill in the art would have therefore been motivated to upgrade the
digital cable box in Throckmorton’s system so that it included computer
cards, thus enhancing its performance to include online services. (Pet. 29-
30).
However, Hendricks does not cure the deficiency present in the
Petitioner’s interpretation of Throckmorton. Accordingly, we decline to
institute a trial on this ground.

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3. Claims 12-18 as obvious under 35 U.S.C. § 103(a) over
Throckmorton and Schlender.

Schlender is said to describe integrating computer functionality such
as the retrieval of online information into a television. Schlender is urged to
describe a television with a built-in computer that not only displays
television programming but also performs computer-centric tasks such as
retrieving online information. (See Ex. 1009). It is urged that one of
ordinary skill in the art would therefore have been motivated to modify the
digital television in Throckmorton’s system to include additional
components to retrieve and display online information in addition to video
programming. (Pet. 39-40.)
However, Schlender does not cure the deficiency present in the
Petitioner’s interpretation of Throckmorton. Accordingly, we decline to
institute a trial on this ground.
4. Claim 20 as obvious under 35 U.S.C. § 103(a) over Throckmorton
and Moncreiff.

The Petitioner urges that Moncreiff describes including online chat
interfaces that were implemented in web browsers such as Netscape, to
allow users to exchange messages about concurrently broadcasted television
programs. The Petitioner concludes that one of ordinary skill in the art
would have been motivated to modify the web browsers on Throckmorton’s
personal computers to include Moncreiff’s web browser based chat
interfaces. Pet. 48-49, citing Ex. 1010 and 1003.
However, Moncreiff does not cure the deficiency present in the
Petitioner’s interpretation of Throckmorton. Accordingly, we decline to
institute a trial on this ground.
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5. Claims 1-3 and 19 as obvious under 35 U.S.C. § 103(a) over
Throckmorton and Montulli; 6. Claims 4-11 as obvious over Throckmorton
in view of Hendricks and Montulli; 7. Claims 12-18 as obvious over
Throckmorton, Schlender, and Montulli; and 8. Claim 20 as obvious over
Throckmorton, Moncreiff, and Montulli.

Grounds 5 through 8 are said to be the same as grounds 1-4, with the
addition of Montulli. Montulli is said to describe receiving a URL at a client
and comparing the URL against a list of URLs contained in cookies
associated with previously visited web pages. (Pet. 53.) This last reference
does not cure the deficiency either. Accordingly, we decline to institute a
trial on these four grounds.
III. CONCLUSION
The Petitioner does not demonstrate a reasonable likelihood of
prevailing on the following grounds of unpatentability of the ’768 Patent:
1. Claims 1-3 and 19 as obvious under 35 U.S.C. § 103(a) over
Throckmorton.
2. Claims 4-11 as obvious under 35 U.S.C. § 103(a) over
Throckmorton and Hendricks.
3. Claims 12-18 as obvious under 35 U.S.C. § 103(a) over
Throckmorton and Schlender.
4. Claim 20 is obvious under 35 U.S.C. § 103(a) over Throckmorton
and Moncreiff.
5. Claims 1-3 and 19 as obvious under 35 U.S.C. § 103(a) over
Throckmorton and Montulli.
6. Claims 4-11 as obvious over Throckmorton in view of Hendricks
and Montulli.
7. Claims 12-18 as obvious over Throckmorton, Schlender, and
Montulli.
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8. Claim 20 as obvious over Throckmorton, Moncreiff, and Montulli.
IV. ORDER
In consideration of the foregoing, it is hereby
ORDERED that pursuant to 35 U.S.C. § 314, the Petition for an inter
partes review is hereby denied as to all grounds.

FOR PETITIONER:

Andrew Ehmke
Andy.ehmke.irp@haynesboone.com

Scott Jarratt
Scott.jaratt.ipr@haynesboone.com

FOR PATENT OWNER:

Erika Arner
Erika.arner@finnegan.com

Joshua Goldberg
Joshua.goldberg@finnegan.com

Russell Levine
Russell.levine@kirkland.com

Eugene Goryunov
Eugene.goryunov@kirkland.com