PTAB

IPR2014-00274

Netflix Inc v. OpenTV Inc

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Petition
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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 ’768 patent describes a system for concurrently displaying video programming and related Internet information. The system receives video and audio signals along with one or more Uniform Resource Locators (URLs), decodes the URLs to retrieve information from the Internet, and presents the video and Internet content together.

3. Grounds for Unpatentability

Ground 1: Claims 1-3 and 19 are obvious over Throckmorton

  • Prior Art Relied Upon: Throckmorton (Patent 5,818,441).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Throckmorton, a single reference, disclosed all limitations of independent claims 1 and 19. Throckmorton taught a system for broadcasting a primary data stream (e.g., a TV program) along with an associated data stream containing URLs relevant to the program. The system included a receiver, a decoder, a processor (controller), a web browser for retrieving the Internet content using the URLs, and a display for presenting the TV program and the Internet content concurrently. For claim 19, Throckmorton's "data stream creation unit" was argued to be the claimed "production computer," and its "data synchronizing sub-system" that creates a script with timecodes and URLs met the "means for creating a playlist."
    • Motivation to Combine (for §103 grounds): Petitioner asserted that Throckmorton itself provided the motivation to combine its own disclosed one-way and two-way communication embodiments. Combining the URL-retrieval feature of the two-way system with the simultaneous video/web page display of the one-way system was presented as a predictable combination to create an integrated viewing experience, a stated goal of Throckmorton.
    • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success as the combination involved known elements from a single reference to achieve a predictable and desirable result taught by that same reference.

Ground 2: Claims 4-11 are obvious over Throckmorton in view of Hendricks

  • Prior Art Relied Upon: Throckmorton (Patent 5,818,441) and Hendricks (Patent 5,559,549).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground focused on independent claim 4, which specified "a digital cable box." Petitioner contended that while Throckmorton disclosed that its receiving equipment could be a cable box and could receive digital signals, Hendricks explicitly taught integrating computer functionality into a digital set-top box. Hendricks described upgrading existing converter boxes with "computer cards" to provide access to online services and interactive multi-media. The remaining limitations of claims 4-11 were argued to be met by Throckmorton for the same reasons as in Ground 1.
    • Motivation to Combine (for §103 grounds): A POSITA would combine these references to enhance the functionality of Throckmorton's system. Hendricks provided a known method for upgrading a digital cable box to include the online access capabilities central to Throckmorton's invention. This modification would yield the predictable result of an enhanced digital set-top terminal that could retrieve and display both video and related online information, thereby lowering cost and complexity by eliminating the need for a separate computer.
    • Expectation of Success (for §103 grounds): The combination was portrayed as a straightforward upgrade of a known component (a cable box) with known technology (computer cards for online access) to achieve a predictable improvement.

Ground 3: Claim 20 is obvious over Throckmorton in view of Moncreiff

  • Prior Art Relied Upon: Throckmorton (Patent 5,818,441) and Moncreiff (Patent 5,828,839).

  • Core Argument for this Ground:

    • Prior Art Mapping: This challenge targeted claim 20, which depends on claim 19 and adds a "chat dialogue frame interface" to the user workstations. Petitioner argued that while Throckmorton taught using a web browser (like Netscape) to view information related to a TV program, Moncreiff taught integrating online chat interfaces directly into such web browsers. Moncreiff's system was specifically designed to allow users to exchange messages about concurrently broadcast TV programs, enhancing the user experience.
    • Motivation to Combine (for §103 grounds): A POSITA would be motivated to modify Throckmorton's web browser to include Moncreiff's browser-based chat interface. Moncreiff explicitly stated that real-time chat associated with a broadcast program enhances user enjoyment. Adding this known feature to Throckmorton's system would predictably allow users to not only view related information but also to discuss the program with others in real-time, a desirable enhancement.
    • Expectation of Success (for §103 grounds): Integrating a known web browser plug-in or feature (chat) into an existing web browser platform was a well-understood and predictable modification at the time.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including claims 12-18 over Throckmorton in view of a 1989 Fortune magazine article by Schlender (teaching a television with a built-in computer). Petitioner also presented a parallel set of challenges (Grounds 5-8) that were identical to Grounds 1-4 but added Montulli (Patent 5,774,670). Montulli was introduced to address a potential construction of the "controller means... for interpreting" limitation, arguing Montulli taught using cookies to check if a URL had been seen before, thus disclosing a specific "interpreting" function.

4. Key Claim Construction Positions

  • Petitioner argued that several key claim limitations were means-plus-function limitations under 35 U.S.C. §112, paragraph 6.
  • "a controller means... for interpreting the uniform resource locators" (claims 1, 4, 12, 19): This term was central to the petition. Petitioner initially proposed that the function was "interpreting the uniform resource locators" and the structure was "hardware and/or software." However, anticipating a narrower construction from the Patent Owner based on prior litigation, Petitioner prophylactically introduced the Montulli reference in Grounds 5-8. Montulli was argued to disclose specific software methods for "interpreting" a URL by checking it against a list of previously seen URLs stored in cookies, thereby addressing a more specific potential structural requirement for the "interpreting" function.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-20 of the ’768 patent as unpatentable.