PTAB

IPR2014-00267

Netflix Inc v. OpenTV Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Enhanced Video Programming System and Method for Incorporating and Displaying Retrieved Integrated Internet Information Segments
  • Brief Description: The ’437 patent describes a computer-based system for receiving a video program that contains embedded uniform resource locators (URLs). The system extracts the URLs and directs a web browser to retrieve the corresponding web pages, which are then displayed concurrently with the video program.

3. Grounds for Unpatentability

Ground 1: Claim 1 is obvious over Throckmorton in view of Romesburg.

  • Prior Art Relied Upon: Throckmorton (Patent 5,818,441) and Romesburg (Patent 5,113,259).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Throckmorton taught all elements of claim 1 except for the specific display format. Throckmorton disclosed a system that receives a primary data stream (video program) and an associated data stream containing URLs that point to related online information. Throckmorton’s system could extract the URL, connect to the source via a web browser, and retrieve the information for display, making the data an "integral part of the experience." To meet the final limitation, Petitioner asserted that Romesburg taught displaying a primary video signal concurrently with a secondary image received from a remote computer in a "picture-in-picture" (PIP) format.
    • Motivation to Combine: A POSITA would combine Romesburg’s known PIP display technique with Throckmorton’s system to improve it. This modification would allow users to concurrently view the related online information without completely obscuring the main video signal, which was a predictable and desirable result for integrating data with a television program.
    • Expectation of Success: The petition argued success was expected because PIP, split screens, and overlay displays were commonplace in the industry for displaying multiple information sources.

Ground 2: Claims 2 and 3 are obvious over Throckmorton in view of Batchelor.

  • Prior Art Relied Upon: Throckmorton (Patent 5,818,441) and Batchelor (Patent 5,724,103).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner relied on Throckmorton for the base system of receiving video with embedded addresses and retrieving online content, as in Ground 1. Batchelor was introduced to teach the specific display formats recited in claims 2 and 3. Petitioner asserted that Batchelor explicitly disclosed displaying a television program on one half of a screen with related text and graphics on the other half (the "split screen display format" of claim 2). Batchelor also taught displaying the television image in a first window and the related information in a separate, second window (the "multiple window display format" of claim 3).
    • Motivation to Combine: A POSITA would have been motivated to modify Throckmorton's system with Batchelor's display formats to improve the user experience. Batchelor provided a specific motivation, stating it was desirable to show information related to a television program alongside the program itself. Since both systems taught extracting address data from a video signal's vertical blanking interval (VBI) to retrieve related information, the combination was presented as straightforward and logical.
    • Expectation of Success: Petitioner contended that since displaying content in split-screen and multi-window formats were well-known techniques, a POSITA would have had a high expectation of success in applying them to Throckmorton's system.

Ground 3: Claim 1 is obvious over Palmer in view of Romesburg.

  • Prior Art Relied Upon: Palmer (Patent 5,905,865) and Romesburg (Patent 5,113,259).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued Palmer served as an alternative primary reference to Throckmorton, teaching a method for "connecting a computer to electronic addresses in sync with an audio/video broadcast." Palmer disclosed embedding a URL in a television broadcast (e.g., in the VBI), extracting the URL at a receiver, and providing it to a computer. An internet browser would then "automatically contact" the desired website to retrieve information that could be displayed to "simultaneously correspond with" the television programming. As in Ground 1, Romesburg was cited for its teaching of a PIP display format.
    • Motivation to Combine: A POSITA would combine these references to simplify Palmer’s system and reduce costs. Palmer taught displaying the retrieved internet information on a computer screen, which could be separate from the television screen. A POSITA would have been motivated to modify Palmer's system to incorporate the television signal itself onto the same screen using the well-known PIP format taught by Romesburg, thus requiring only a single display.
    • Expectation of Success: The combination involved applying a standard display technology (PIP) to a system for displaying related content, which Petitioner argued would have been a predictable implementation for a POSITA.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 4 is obvious over Throckmorton alone, and that claims 2-4 are obvious over Palmer in view of Batchelor, relying on similar mapping and motivation arguments.

4. Key Claim Construction Positions

  • "a processor which automatically directs the web browser..." (claims 1-4): Petitioner proposed this term be construed to mean that "the specific act of directing the web browser occurs without human intervention." Petitioner argued the specification provides no special definition but that the ordinary meaning of "automatic" from a standard technical dictionary supports this construction. This interpretation was central to arguing that the prior art systems, which automatically retrieved web content upon receiving a URL, met this limitation.

5. Relief Requested

  • Petitioner requested the Board institute an inter partes review of claims 1-4 of the ’437 patent and cancel those claims as unpatentable.