PTAB

IPR2017-02092

NFL Enterprises LLC v. OpenTV Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Media Online Service Access System and Method
  • Brief Description: The ’736 patent describes systems and methods for providing a user with direct, automated access to online information through an address or link embedded within a video or audio program. The system indicates the availability of the link to the user and establishes a direct connection to the online 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 are obvious under 35 U.S.C. §103 over Throckmorton alone or 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 teaches every element of the challenged claims. Throckmorton discloses embedding "associated data," such as URLs, into a "primary data stream" (e.g., a television program). A user can then access the associated data. Petitioner highlighted Throckmorton’s embodiment that adds a two-way communication channel to access online services directly by clicking on a reference. Alternatively, if Throckmorton is found not to teach every limitation, Petitioner contended that the combination with Rhoads renders the claims obvious. Rhoads teaches steganographically embedding URLs into data objects like videos to create "automated hot links," supplying a more detailed disclosure of automatically linking to an online source.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Throckmorton and Rhoads as both address the same problem of linking media content to online information. Petitioner asserted a POSITA would have been motivated to substitute Rhoads's "hot object" technique (e.g., a clickable icon) for Throckmorton's menu-based system to provide a more intuitive user interface, which was a known design choice with predictable results.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination, as it involved applying known methods (embedding links, responding to user commands) to known problems and would not have required significant hardware changes.
    • Key Aspects: Petitioner noted that while the ’736 patent examiner allowed the claims over Throckmorton, an examiner in a related continuation application found that Throckmorton did teach similar claim limitations. Petitioner argued this suggests the original examiner misinterpreted the reference, a point the Board previously recognized when instituting a prior inter partes review (IPR) on the ’736 patent.

Ground 2: Obviousness over Eisen in view of Rhoads - Claims 1-3 and 8 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 asserted that Eisen discloses a system for displaying a clickable "multi-media footnote" during a video program. A user command, such as clicking the footnote with a mouse, causes the system to display related reference material. Eisen specifies this reference material can be stored at and accessed from a separate online source. This was argued to teach the core of the claimed method. Petitioner asserted that Rhoads, with its disclosure of embedding "hot links" in video for direct, one-click access to a website, supplies any missing details regarding the automatic and direct nature of the link.
    • Motivation to Combine: A POSITA would have been motivated to apply the linking method from Rhoads to Eisen's footnote system as a matter of common sense. This combination would enhance Eisen's system by enabling a video playing on one site to link directly to reference material on another, thereby achieving the known benefits of hyperlinking as described in Rhoads.
    • Expectation of Success: Petitioner argued a POSITA would have had a reasonable expectation of success in combining the references. The combination represented a straightforward application of a known linking technology (Rhoads) to a similar system for accessing related content (Eisen) to produce a predictable, improved result.

4. Key Claim Construction Positions

  • Petitioner proposed that the Board adopt constructions from a prior IPR on the ’736 patent (IPR2014-00269, the "Netflix IPR"), as the patent is now expired and the ordinary and customary meaning standard applies.
  • "automatically establishing, in response to a user initiated command, a direct communication link with the online information source": Construed as "in response to a command from a user, establishing, without further input from the user, a communication link directly between the user and the online information source." Petitioner emphasized this implies the user does not need to go through the video provider or another intermediary.
  • "so that the user has direct access to the online information": Construed to mean 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."
  • "indicating": Petitioner argued this term is clear on its face and requires no specific construction. However, should the Board choose to construe it, Petitioner proposed "providing a visual, auditory, or tactile indication," consistent with the specification.

5. Relief Requested

  • Petitioner requested that the Board institute an inter partes review of claims 1-3 and 8 of Patent 6,233,736 and find those claims unpatentable.