Netflix Inc v. OpenTV Inc

1. Case Identification

• Case #: IPR2014-00252
• Patent #: 8,107,786
• Filed: December 16, 2013
• Petitioner(s): Netflix, Inc.
• Patent Owner(s): OpenTV, Inc.
• Challenged Claims: 1-7

2. Patent Overview

• Title: Systems and Methods to Modify Playout or Playback
• Brief Description: The ’786 patent relates to a system for modifying the playback of audio/visual content. The system delivers primary content at a normal speed and, in response to a user request for accelerated playback such as a fast-forward, renders secondary content that is not derived from the primary content.

3. Grounds for Unpatentability

Ground 1: Anticipation over Plotnick - Claims 1-6 are anticipated under 35 U.S.C. § 102(b) by Plotnick.

• Prior Art Relied Upon: Plotnick (Application # 2005/0097599).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Plotnick, which discloses a video-on-demand system, teaches every limitation of independent claims 1 (system) and 4 (method), as well as dependent claims 2, 3, 5, and 6. In Plotnick’s system, when a viewer fast-forwards through or skips a default advertisement ("primary content"), an alternative, brief advertisement is displayed instead. Petitioner contended this alternative advertisement, which Plotnick describes as potentially "entirely unrelated" to the original content, meets the "secondary non-derivative content" limitation. Plotnick’s disclosure of a head-end system with servers ("communication module") that transmit program streams to a PVR-enabled set-top box ("receiving device") was argued to meet the system and method limitations for communicating content, associating it with secondary information (e.g., the alternative ad), and having the receiving device render the content based on user commands.

Ground 2: Obviousness over Plotnick and Eldering - Claim 7 is obvious over Plotnick in view of Eldering.

• Prior Art Relied Upon: Plotnick (Application # 2005/0097599) and Eldering (Patent 6,820,277).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Plotnick teaches all functional steps recited in independent claim 7, which is directed to a tangible machine-readable medium storing executable instructions. To the extent Plotnick did not explicitly disclose that its server-based ad management system (AMS) comprises software on a tangible medium, Petitioner argued Eldering supplied this teaching. Eldering discloses an AMS that operates on server-based technology and is explicitly realized as software on a machine-readable medium. This software manages the insertion of targeted advertisements, directly corresponding to the functionality of the AMS described in Plotnick.
  • Motivation to Combine: Petitioner presented multiple motivations for why a POSITA would combine the references. The primary motivation argued was that Plotnick itself incorporates Eldering by reference, and Eldering is a named inventor on the Plotnick application, indicating the technologies are directly related and intended to be used together. A POSITA seeking to implement Plotnick’s AMS would naturally consult Eldering for specific details on its software-based operation. Additional motivations included improved system security (server-side software is less prone to tampering), reduced cost of consumer equipment by centralizing processing power on the server, and easier maintenance and upgrades.
  • Expectation of Success: Petitioner argued the combination involved applying a known technique (implementing server functionality as software on a machine-readable medium, as taught by Eldering) to a known system (the ad management system of Plotnick) to achieve a predictable result.

4. Key Claim Construction Positions

• Petitioner argued for the construction of "secondary non-derivative content" based on its explicit definition in the ’786 patent specification. The proposed construction was "secondary content that is not generated from the associated primary content" and explicitly excludes samples (audio or visual) from the primary content. This construction was critical to Petitioner's argument that Plotnick's "entirely unrelated" alternative advertisements met the claim limitation, a key point of novelty asserted during the patent's prosecution.

5. Relief Requested

• Petitioner requested the institution of an inter partes review of claims 1-7 and the cancellation of those claims as unpatentable.