PTAB

IPR2018-01496

Amazon.com Inc v. CustomPlay LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Apparatus and Method for Processing Data
  • Brief Description: The ’346 patent discloses a system for providing viewers with information about a performer during video playback. Upon a user request, the system identifies the current location in the video, identifies a performer associated with that location, and provides the user with the performer's name and a visual depiction.

3. Grounds for Unpatentability

Ground 1: Claims 4-6 and 10-20 are obvious over Thomas

  • Prior Art Relied Upon: Thomas (Application # 2002/0042920).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Thomas discloses all limitations of the challenged claims. Thomas describes an interactive television application that provides supplemental, context-sensitive content. Petitioner asserted that Thomas’s "Cast Info" or "Actor Interviews" buttons meet the limitation of receiving a user request for performer information. The system's ability to provide information "relating to each actor that the user is currently watching" taught identifying the current location and the associated performer's name. Thomas's disclosure of providing actor interviews, images, or pictures as supplemental content was argued to meet the limitations of retrieving and providing a visual depiction of the performer.
    • Key Aspects: This ground asserted that a single prior art reference, which was not considered during prosecution, rendered all challenged claims obvious. Petitioner contended that the functions described in the ’346 patent were well-known and that Thomas taught a system with nearly identical functionality. For limitations not expressly disclosed, Petitioner argued they were inherent or would have been obvious modifications, such as including segment definitions to manage the context-sensitive display of information.

Ground 2: Claims 4-6 and 10-20 are obvious over McIntire in view of Thomas

  • Prior Art Relied Upon: McIntire (Application # 2007/0250901) and Thomas (Application # 2002/0042920).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that McIntire formed the primary reference, disclosing a system that provides supplemental content mapped to specific video segments. McIntire taught receiving a signal from a viewer to display content, identifying the current video segment, and displaying associated information, including an actress's name and image. Petitioner contended that McIntire disclosed all core functions of the claims. Thomas was introduced to teach any elements arguably missing from McIntire, such as a dedicated user interface button for requesting performer-specific information.
    • Motivation to Combine: Petitioner asserted a POSITA would combine Thomas's dedicated "Cast Info" button with McIntire's system to improve usability and reduce viewer confusion. Instead of a general request for supplemental content, Thomas’s more specific, dedicated button would allow a user to directly request only performer information, which was a predictable and desirable improvement. Petitioner also argued a POSITA would be motivated to modify McIntire's system to continuously update information as taught by Thomas to simplify the user experience by removing the need for repeated requests.
    • Expectation of Success: The combination was presented as the simple substitution of one known element (a specific request button) for another (a general request signal) to achieve predictable results. Petitioner argued that because both references operated in the same field of interactive television, a POSITA would have a reasonable expectation of success in combining their features.

Ground 3: Claims 4-6, 10-12, and 14-19 are obvious over Reimer in view of McIntire

  • Prior Art Relied Upon: Reimer (Patent 5,696,905) and McIntire (Application # 2007/0250901).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner alleged that Reimer disclosed a system for providing on-demand access to movie-related information. Reimer taught receiving a user query (e.g., "Who is this person?"), determining the time code of the current frame, and using an "Actor In Take" table to identify actors in that frame. Petitioner argued this met most claim limitations. McIntire was added primarily to teach the inclusion of a performer’s photo as part of the supplemental data. While Reimer disclosed "images," McIntire was cited for its explicit disclosure of retrieving and displaying "an image of the actress."
    • Motivation to Combine: A POSITA would be motivated to modify Reimer’s system to include actor photos as taught by McIntire to provide additional, valuable information to the viewer. Petitioner argued that adding an actor's photo would make identification easier, especially if a performer was in heavy makeup or costume. This combination was framed as the simple addition of a known element (a photo) to an existing system to obtain the predictable result of enhanced biographical information.
    • Expectation of Success: Petitioner asserted that retrieving and displaying a visual depiction based on a reference was a well-known and routine technique. Adding McIntire's photo feature to Reimer's existing framework for displaying actor information was a predictable modification with a high expectation of success.
  • Additional Grounds: Petitioner asserted additional obviousness challenges, including claims 13 and 20 over Reimer, McIntire, and Thomas, and all challenged claims over Clarke and Reimer. These grounds relied on similar arguments, substituting or adding references to teach features like continuous information updates or using time-based metadata for segmenting video content.

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 4-6 and 10-20 of Patent 8,494,346 as unpatentable.