Apple Inc v. OpenTV Inc

1. Case Identification

• Case #: IPR2016-00992
• Patent #: 6,233,736
• Filed: April 29, 2016
• Petitioner(s): Apple Inc.
• Patent Owner(s): OpenTV, Inc.
• Challenged Claims: 1-3 and 8-12

2. Patent Overview

• Title: Media Online Service Access System and Method
• Brief Description: The ’736 patent discloses a system and method for providing users with automatic and direct access to online information. The technology involves embedding an address for an online information source within a video or audio program, electronically extracting that address, and automatically establishing a direct communication link to the source in response to a user command.

3. Grounds for Unpatentability

Ground 1: Obviousness over Throckmorton alone or in view of Rhoads - Claims 1-3 and 8-12 are obvious over Throckmorton in view of Rhoads.

• Prior Art Relied Upon: Throckmorton (Patent 5,818,441) and Rhoads (Patent 5,841,978).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Throckmorton alone renders the claims obvious. Throckmorton discloses a system that delivers "associated data," such as URLs for online services, along with a "primary data stream" like a television broadcast. It teaches extracting this data (e.g., from the Vertical Blanking Interval) and, in its two-way communication embodiment, connecting to an online source when a user clicks on a URL from a displayed menu. This, Petitioner asserted, teaches indicating an address, extracting it, and automatically establishing a direct link upon user command. Rhoads was introduced to cure any perceived deficiency, particularly regarding the "indicating" step. Rhoads discloses steganographically embedding URLs into graphical objects like videos, creating "hot objects." A visible icon apprises the user that the object is clickable, and clicking it routes the user's browser to the linked site, teaching a seamless, on-screen indication and linking process.
  • Motivation to Combine: A POSITA would combine Throckmorton and Rhoads because both address the same problem of linking media content to related online information. A POSITA would be motivated to substitute Rhoads’s more integrated "hot object" icon for Throckmorton’s menu-based system to create a more seamless user experience, save screen space, and reduce interruption of the video program. This combination involves applying a known technique (on-screen icons from Rhoads) to a known system (Throckmorton) to achieve a predictable improvement.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in this combination, as it involved integrating two known, compatible methods for linking media to online content.

Ground 2: Obviousness over Eisen in view of Rhoads - Claims 1-3 and 8-12 are obvious over Eisen in view of Rhoads.

• Prior Art Relied Upon: Eisen (Patent 5,440,678) and Rhoads (Patent 5,841,978).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Eisen discloses the core invention. Eisen teaches a method for creating "multi-media footnotes" in video data. During video playback, a footnote icon appears; if a user clicks it, the system automatically accesses and displays linked reference material from a separate "on-line" source. This meets the claim limitations of indicating the availability of online information and automatically establishing a link upon user command. While Eisen teaches the concept, Rhoads was cited for its more explicit disclosure of the underlying mechanism. Rhoads teaches an enhanced web browser capable of analyzing video files to extract an embedded URL address and then routing the user to that address, fully disclosing the "extracting" limitation.
  • Motivation to Combine: A POSITA would combine Eisen and Rhoads out of common sense and the desire for a functional implementation. To implement Eisen's concept of linking a video footnote to an "on-line" source, a POSITA would naturally turn to known web technologies. Using the browser and URL extraction method from Rhoads would be a predictable and straightforward way to build the linking functionality described conceptually in Eisen, allowing a user to view the online reference material using the familiar interface of a web browser.
  • Expectation of Success: There would be a high expectation of success, as the combination merely involves using a known, practical web-linking technology (Rhoads) to implement a system for linking from video to online content (Eisen).

4. Key Claim Construction Positions

• "automatically establishing... a direct communication link": Petitioner argued for adopting the Board's construction from a prior inter partes review (IPR), defining the term as "in response to a command from a user, establishing, withoutfurther input from the user, a communication link directly between the user and the online information source." This construction supports the argument that a single user action, like clicking a link in Throckmorton or Eisen, satisfies the "automatic" requirement.
• "so that the user has direct access": Petitioner again advanced the Board's prior construction: "the system establishes a communication link directly between the user and the online information source, without any intervening intermediary that is not inherent to Internet traffic routing." This construction was used to counter the Patent Owner's anticipated argument that "direct access" precludes the user from "leaving the screen" or navigating a menu, limitations Petitioner argued are not required by the claims or specification.
• Means-Plus-Function Terms (Claims 9-10): For several means-plus-function terms, Petitioner proposed constructions consistent with those previously adopted by the Board in a prior IPR, arguing against the Patent Owner's attempts in district court to improperly add limitations (e.g., "automatic") to the corresponding structures.

5. Arguments Regarding Discretionary Denial

• Petitioner noted that the Board previously instituted an IPR (IPR2014-00269) on the ’736 patent based on Throckmorton, but that proceeding was terminated due to settlement. Petitioner argued that the grounds in the present petition were non-cumulative and should be considered because the key additional references, Rhoads and Eisen, were not considered during the original prosecution or the prior IPR. These new references were argued to disclose limitations that the Patent Owner previously alleged were missing from Throckmorton.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-3 and 8-12 of Patent 6,233,736 as unpatentable.