PTAB

CBM2016-00066

Apple Inc v. OpenTV Inc

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Key Events
Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: Interactive Television Systems
  • Brief Description: The ’169 patent relates to interactive television systems that provide services like commerce and video-on-demand. The claimed technology involves a method and system for managing the presentation of content by receiving "directives" which may include a "prerequisite directive," and then prohibiting the presentation until a required set of resources has been acquired.

3. Grounds for Unpatentability

Ground 1: Ineligibility Under § 101 - Claims 1, 2, 12, 22, and 23 are invalid under 35 U.S.C. § 101

  • Prior Art Relied Upon: N/A - Ground is based on patent ineligibility under 35 U.S.C. § 101.
  • Core Argument for this Ground: Petitioner argued that the challenged claims are invalid under the two-step framework from Alice Corp. v. CLS Bank Int'l.
    • Step 1 (Directed to an Abstract Idea): Petitioner asserted the claims are directed to the abstract idea of "ensuring that necessary resources are available before commencing a presentation." This concept was argued to be a fundamental, long-standing practice of human activity, analogous to a student ensuring they have a required toy before a show-and-tell presentation or a lawyer preparing a slideshow before a hearing. Petitioner contended that the process of claim 1 could be performed manually by a person using pen and paper, which is a hallmark of an abstract idea. The dependent claims were argued to add only further abstract concepts, such as specifying the prerequisite in a certain language type (claim 2) or checking for an expiration time (claim 12), without altering the fundamentally abstract nature of the overall process.
    • Step 2 (Lacks an Inventive Concept): Petitioner argued the claims lack an inventive concept sufficient to transform the abstract idea into a patent-eligible application. The claims simply recite the abstract idea implemented using conventional technology.
      • Method claims 1, 2, and 12 were argued to be untethered to any specific machine or apparatus. Petitioner asserted that merely limiting the abstract idea to the technological environment of "interactive television" does not confer patent eligibility, as it represents only a field-of-use limitation. These claims fail the machine-or-transformation test as they are not tied to a particular machine and do not transform any article into a different state or thing.
      • Apparatus claim 22 and computer-readable medium claim 23 were argued to be nothing more than reformatted versions of the abstract method in claim 1. Claim 22 recites generic hardware components, such as a "client device," a "receiver," and a "processing unit," which the patent specification describes as conventional, general-purpose computer components like a standard "set top box." Petitioner argued that the addition of a generic computer to implement an abstract idea does not provide an inventive feature. Claim 23, a Beauregard-style claim, was argued to be equivalent to a process claim for eligibility purposes and fails for the same reasons.
    • Key Aspects: Petitioner contended the claims do not offer a technical solution to a problem rooted in computer technology, and therefore do not meet the patent eligibility standard articulated in DDR Holdings, LLC v. Hotels.com, L.P. The problem of ensuring resource availability is not unique to the internet or interactive television, and the claimed solution—using "directives" or instructions—is not a technical one.

4. Key Claim Construction Positions

  • Petitioner dedicated a section to construing the key term "directive" (recited in claims 1, 2, 22, and 23).
    • "Directive": Petitioner proposed the broadest reasonable construction is "declaration or instruction."
    • Rationale: This construction was supported by the patent specification, which refers to directives as "declarations or other statements," and by dictionary definitions. Petitioner argued that while the specification provides examples of computer languages (HTML, JavaScript) that can implement directives, the claims are not limited to these examples. Adopting this broad, non-technical construction was central to Petitioner's argument that the claims are directed to an abstract mental process untethered to any specific technology, rather than a specific, patent-eligible computer implementation.

5. Relief Requested

  • Petitioner requested the institution of a Covered Business Method (CBM) patent review and the cancellation of claims 1, 2, 12, 22, and 23 of the ’169 patent as unpatentable for claiming ineligible subject matter under 35 U.S.C. § 101.