PTAB

IPR2016-01004

Apple Inc v. OpenTV Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Supporting Common Interactive Television Functionality Through Presentation Engine Syntax
  • Brief Description: The ’169 patent discloses methods and systems for handling the presentation of audio, video, and graphic resources in interactive television services. The core technology involves using “prerequisite directives” within a presentation document (e.g., an HTML file) to control rendering, either by prohibiting the presentation until certain essential resources are acquired or initiating it immediately if no prerequisites are designated.

3. Grounds for Unpatentability

Ground 1: Obviousness over Beri, alone or in view of Harrington - Claims 1-2, 12, 22-23 are obvious over Beri, with claims 12 and 22 additionally obvious in view of Harrington.

  • Prior Art Relied Upon: Beri (Patent 6,141,018) and Harrington (Patent 7,120,871).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Beri discloses all limitations of independent claim 1. Beri teaches a system for displaying animated images (a graphic presentation) in a web page marquee using an ActiveX object. This object is controlled by directives (attributes) within an HTML document. Petitioner identified Beri’s DrawImmediately directive as a prerequisite directive. When this directive is disabled (set to VALUE=0), it instructs the web browser to prohibit rendering the animation until all associated image resources are downloaded, satisfying the “prohibiting initiation” limitation. Conversely, if DrawImmediately is enabled, the presentation initiates immediately, satisfying the “initiating said presentation” limitation. Dependent claim 2 is met because Beri’s directives are implemented in HTML, a markup language. Claim 23, a computer-readable medium claim, is met by Beri’s disclosure of a computer memory storing a web browser.
    • Motivation to Combine (for §103 grounds): For claims 12 and 22, Petitioner asserted that Harrington teaches a timer feature for web page rendering. Harrington discloses a system that synchronizes web content with video programming, using a timer to control exactly when a pre-fetched webpage is displayed. A Person of Ordinary Skill in the Art (POSITA) would combine Harrington's timer with Beri's rendering system to solve the common problem of controlling web page display timing. Both references address rendering web pages in compatible software environments (e.g., Microsoft Windows web browsers), making the combination straightforward and predictable. The combination would add a timer to Beri’s system to control presentation initiation after a set period, as claimed.
    • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success because combining a standard timer function (Harrington) with a web page animation system (Beri) involves integrating known elements to achieve a predictable result in compatible software environments.

Ground 2: Obviousness over Armstrong, alone or in view of Harrington - Claims 1-2, 12, 22-23 are obvious over Armstrong, with claims 12 and 22 additionally obvious in view of Harrington.

  • Prior Art Relied Upon: Armstrong (a 1997 book, Designing and Using ActiveX Controls) and Harrington (Patent 7,120,871).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Armstrong, a foundational text on ActiveX technology, teaches the core concepts of claim 1. Armstrong explains that web pages can contain both “embedded” resources and resources linked via a “data path property” (e.g., a URL). Armstrong explicitly teaches that when a resource is embedded, the web browser prohibits the presentation of the web page until that resource is fully downloaded. Petitioner argued that embedding a resource is therefore an inherent prerequisite directive. In contrast, resources loaded via a data path property are downloaded asynchronously, allowing the presentation to be initiated immediately for "progressive rendering." This binary functionality directly maps to the initiating/prohibiting steps of claim 1.
    • Motivation to Combine (for §103 grounds): The motivation to combine Armstrong with Harrington is analogous to the Beri combination. A POSITA would be motivated to add Harrington's well-understood timer functionality to Armstrong's fundamental web rendering framework. This would allow for precise, timed display of web content, a known objective in the art, particularly for synchronizing web pages with other media like television broadcasts. The use of common software platforms (web browsers) would make the integration predictable.
    • Expectation of Success (for §103 grounds): Success was expected because both references operate in the same technical field of web page rendering and use compatible technologies. Adding a timer to control the display of a webpage built with Armstrong's principles was a routine programming task.

4. Key Claim Construction Positions

  • "Directive": Petitioner proposed this term be construed as "declaration or instruction." This construction is based on the patent's specification, which refers to directives as "declarations or other statements," and is consistent with the plain and ordinary meaning of the term.
  • "Prerequisite directive ...": For the IPR, Petitioner proposed this phrase be construed as "a declaration or instruction that indicates a subset of the resources required for initiating the presentation." This construction is central to mapping the prior art, which uses mechanisms like flags or embedding to indicate that certain resources must be loaded before rendering.
  • "Subset of Said Set of Resources": Petitioner proposed the construction "a set that is some or all of said set of resources." This construction is critical because it allows the "subset" of prerequisite resources to encompass all resources for a presentation, which aligns with prior art systems that wait for all content to download before displaying anything.

5. Relief Requested

  • Petitioner requests institution of an inter partes review for claims 1–2, 12, and 22–23 of the ’169 patent and cancellation of these claims as unpatentable.