PTAB

IPR2019-01367

Sling TV LLC v. Uniloc 2017 LLC

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1. Case Identification

2. Patent Overview

  • Title: Tracking the Provision of Audio and Visual Presentations via a Computer Network
  • Brief Description: The ’609 patent describes a method for tracking user engagement with digital media streamed over a network. The system provides a web page containing a timer applet to a user's computer, which then periodically transmits identifier data back to a first computer system to track both the media streaming time and the total time the web page is displayed.

3. Grounds for Unpatentability

Ground 1: Claims 1-3 are obvious over Jacoby in view of Bland

  • Prior Art Relied Upon: Jacoby (Application # 2004/0254887) and Bland (Patent 5,732,218).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Jacoby discloses a system that streams media to a client and uses a metering applet (an ActiveX control) to track usage. A first computer system (mediaframe server) sends a web page with a media player and a metering URL to the user. The client periodically sends metering events back to the server, which decrements a user meter, tracking the amount of streaming time. Petitioner asserted this meets most limitations of claim 1, including tracking the media presentation time (limitation 1[g]). However, to meet the limitation of tracking the "cumulative time the corresponding web page was displayed" (limitation 1[h]), Petitioner relied on Bland. Bland was said to disclose a system for gathering performance data by using an applet (e.g., ActiveX "add-on") to track the amount of time an object, such as a web page, is active at the client, and periodically reporting this information back to a server.
    • Motivation to Combine: A POSITA would combine Bland’s web page tracking mechanism with Jacoby’s media tracking system. The petition asserted this would be a simple substitution of one known element for another to obtain a more complete picture of service performance, a goal stated in Bland. A POSITA would be motivated to use Bland's known technique of tracking object/page activity to improve Jacoby’s system, which was ready for such improvement. This combination would have yielded the predictable result of tracking both media consumption and web page viewing time.
    • Expectation of Success: Since both Jacoby and Bland taught using browser-based software components (like ActiveX controls) to periodically report data, a POSITA would have had a high and reasonable expectation of success in combining their respective timing and tracking functionalities.

Ground 2: Claims 1-3 are obvious over Mcternan in view of Robinson

  • Prior Art Relied Upon: Mcternan (WO 01/89195) and Robinson (EP 939,516).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Mcternan discloses a system for tracking viewership of streamed media. A first computer system (including a web server and security server) provides a client with a web page and a media player plug-in. This plug-in generates periodic "heartbeat packets" containing a session ID while a show is playing, which are sent back to the security server to calculate the total time the user watches the show. This was argued to satisfy the limitation of tracking media presentation time (1[g]). To satisfy the separate limitation of tracking cumulative web page display time (1[h]), Petitioner turned to Robinson. Robinson was said to disclose a monitoring system where a server provides a client with an applet (e.g., a Java applet) upon visiting a web page. The applet sends periodic "heartbeat" pulses back to a host to directly measure the user's visit duration on that page.
    • Motivation to Combine: A POSITA would combine Robinson's page-level tracking with Mcternan's media-level tracking. The motivation was to apply a known technique (Robinson's heartbeat-based page tracking) to a known system (Mcternan's heartbeat-based media tracking) to improve it. This combination would further Mcternan's stated goals of more effective content tracking and providing a secure delivery mechanism. The two systems were highly compatible, as both relied on periodic heartbeat packets to track user activity.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination merely involved adding Robinson's page-tracking functionality to Mcternan's existing architecture. Both systems used a similar heartbeat mechanism, and a POSITA would have known how to use identifiers (as taught by both references) to distinguish between heartbeats for media viewership and heartbeats for page presence, making the integration straightforward.

4. Key Claim Construction Positions

  • "applet": Petitioner argued this term should be construed broadly as "a software component that runs in the context of another program," consistent with the patent's own definition. This construction is not limited to Java applets and would encompass other components like the ActiveX controls and plug-ins disclosed in the prior art (Jacoby, Bland, Mcternan).
  • Timing-Related Limitations (Claim 1): Petitioner argued that claim 1 contains two distinct and independent timing limitations that must be separately considered.
    • 1[g] "amount of time the digital media presentation data is streamed": This was construed to mean the amount of time the media content itself is presented to the user.
    • 1[h] "cumulative time the corresponding web page was displayed": This was construed to mean the total amount of time the user's computer spent on the web page, regardless of whether the media presentation was actively playing, paused, or stopped. This distinction was critical to the invalidity arguments, as Petitioner used primary references (Jacoby, Mcternan) to meet limitation 1[g] and secondary references (Bland, Robinson) to meet limitation 1[h].

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-3 of Patent 8,407,609 as unpatentable under 35 U.S.C. §103.