PTAB

IPR2015-01031

Apple Inc v. OpenTV Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System And Method For Utilizing User Profiles In An Interactive Television System
  • Brief Description: The ’229 patent discloses a system that creates and maintains a common user profile based on a user’s activities across multiple devices. The system updates the profile based on a first activity on a first device (e.g., cell phone usage) and uses that profile to select and transmit data to the user on a second, different device (e.g., a set-top box).

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 14-16, 19, 21, 24, 26, 28, 30-31 under 35 U.S.C. §102 by Tomioka

  • Prior Art Relied Upon: Tomioka (European Publication No. EP 1 100 268 A2).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Tomioka discloses every element of the challenged claims. Tomioka describes a system for making user preferences portable across various multimedia devices, including television sets, car stereos, and web browsers, using a centralized user profile. This profile is updated based on user behavior (e.g., viewing habits, browsing history) on one device and is then used to personalize content on another device. Petitioner asserted that Tomioka explicitly teaches updating the profile based on both television-related activities (viewing programs) and activities unrelated to television (web browsing), performed on different devices. This directly maps to the key claim limitations of updating a profile based on a first activity to affect content delivered in response to a second activity. Tomioka also discloses location-based preferences and non-requested data transmission (e.g., alerts for programs of interest), anticipating the dependent claims.

Ground 2: Obviousness of Claims 14-16, 19, 21, 24, 26, 28, 30-31 under 35 U.S.C. §103 over Tomioka in view of Schiller

  • Prior Art Relied Upon: Tomioka (European Publication No. EP 1 100 268 A2) and Schiller (a 2000 textbook, "Mobile Communications").
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Tomioka teaches the core system of a portable, cross-device user profile. Schiller, a textbook on mobile communications and Digital Video Broadcasting (DVB), was introduced to explicitly disclose elements that might be considered implicit in Tomioka. Specifically, Schiller describes a DVB architecture where the "centre point" is an "integrated receiver-decoder (set-top box)" that communicates over multiple channels. Schiller also details how portable devices like mobile phones, known to have location-tracking capabilities (e.g., GPS), are used in wireless communication systems.
    • Motivation to Combine: A POSITA would combine the teachings because both references address the same technical field: the convergence of media, device portability, and interoperability. A POSITA would have been motivated to implement Tomioka's advanced user profiling system using the well-known DVB architecture and mobile communication technologies described in the Schiller textbook to create a commercially viable product.
    • Expectation of Success: The combination involved applying Tomioka’s profiling logic to the standard, well-understood hardware and network components described by Schiller. This integration of known elements to achieve their intended functions would have yielded predictable results with a high expectation of success.

Ground 3: Anticipation of Claims 14-16, 19, 21, 24, 26, 28, 30-31 under 35 U.S.C. §102 by Cristofalo

  • Prior Art Relied Upon: Cristofalo (Patent 7,305,691).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended that Cristofalo discloses a system for selecting and transmitting targeted programming that anticipates all challenged claims. Cristofalo describes a system with "presentation devices" (including cellular phones, PDAs, and computers) and a "set-top box." It explicitly teaches updating a user profile based on different activities on different devices—for example, updating a profile based on an online purchase (an activity unrelated to television viewing) made on a computer, and then using that updated profile to select television programming delivered to a set-top box. This directly teaches the claimed interaction between activities on separate devices affecting a common profile. Cristofalo further discloses pushing non-requested data (e.g., targeted advertising) based on the profile and updating the profile based on the user's "reception site information" (i.e., physical location), thereby anticipating the dependent claims.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds that all claims are obvious over Tomioka alone, Tomioka in view of Kotani, Cristofalo alone, and Cristofalo in view of Eldering, relying on similar theories of combining known elements for predictable results.

4. Key Claim Construction Positions

  • "activity related to television viewing" and "activity unrelated to television viewing": Petitioner argued that these terms, which were added during prosecution to overcome prior art, are indefinite because the patent fails to provide a clear boundary between them. For the purposes of the inter partes review (IPR), Petitioner proposed that the terms should be construed to at least include the examples the Patent Owner admitted were disclosed in the prior art during prosecution.
    • "Activity related to television viewing" should include watching TV, setting favorite channels, scheduling reminders, and using a program guide.
    • "Activity unrelated to television viewing" should include web browsing, shopping, e-mail, and banking.
    • This construction was central to Petitioner's argument, as it allowed them to map a wide range of activities disclosed in the prior art directly onto these key claim limitations.

5. Relief Requested

  • Petitioner requested the institution of an IPR for claims 14-16, 19, 21, 24, 26, 28, 30, and 31 of the ’229 patent and the cancellation of those claims as unpatentable.