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 discloses a method for tracking user engagement with digital media presentations. The method involves a first computer system providing a web page, identifier data, and a "timer applet" to a user's computer. This applet periodically sends tracking data back to the first system while media is streamed to the user from a second, distinct computer system.

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 media streaming system that meets nearly all claim limitations. In Jacoby, a first computer system (a mediaframe server) provides a web page with a media player and a "metering URL" to a user. A second, distinct computer system (a streaming server) streams the media file to the user's media player. The system uses ActiveX controls—which Petitioner asserted constitute an "applet"—to cause the user's computer to periodically send metering data back to the first system, which then decrements a user meter to track usage. This addresses the limitation of tracking media streaming time. Bland was introduced to teach the explicit tracking of the cumulative time an object, such as a web page itself, is active on the user's computer via a browser applet. The combination of Jacoby and Bland therefore allegedly discloses tracking both the media streaming time and the cumulative web page display time, as required by claim 1.
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine Bland's well-known technique of using an applet to track object activity time with Jacoby's media delivery system. The motivation would be to obtain a "better picture of service performance," as described by Bland, thereby enhancing Jacoby's system. This represents a simple substitution of one known tracking method (Bland) into a known system (Jacoby) to yield predictable results.
    • Expectation of Success: A POSITA would have had a high expectation of success, as both references describe using common web technologies (like ActiveX) to deploy client-side software that periodically reports data to a server.

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

  • Prior Art Relied Upon: Mcternan (WO 01/89195) and Robinson (EP Application # 939,516).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Mcternan discloses a system where a first computer system (including web and security servers) delivers a media player plug-in (argued to be an "applet") to a user's computer. This plug-in generates "heartbeat packets" at regular intervals while the user watches a show streamed from a distinct second computer system (a show server). The heartbeats are sent back to the first system to calculate the total viewing time of the show. Robinson was cited for its disclosure of using a Java applet, delivered with a web page, to send periodic "heartbeats" to a server for the express purpose of tracking the total time a visitor spends on that web page. Petitioner argued that combining these references satisfies the claim limitations requiring tracking of both media presentation time (from Mcternan) and cumulative web page display time (from Robinson).
    • Motivation to Combine: A POSITA would combine these references to create a more comprehensive tracking system. Incorporating Robinson's method of tracking page view duration into Mcternan's system for tracking media consumption is an obvious way to improve the system by gathering more detailed usage statistics. The proposed combination applies a known technique (Robinson's page tracking) to a known system (Mcternan's media delivery architecture) to enhance its functionality.
    • Expectation of Success: The combination would yield predictable results because both systems are based on the same principle: a client-side applet sending periodic heartbeat signals to a server. The similarity of the data packets would make integration straightforward for a POSITA.

4. Key Claim Construction Positions

  • "applet": Petitioner proposed construing this term broadly as "a software component that runs in the context of another program." This construction is not limited to Java applets and would encompass other client-side technologies like the ActiveX controls disclosed in Jacoby and the media player plug-in disclosed in Mcternan, making them applicable as prior art.
  • Timing-related limitations (1[g] and 1[h]): Petitioner argued that claim 1 recites two distinct and independent timing metrics. Element 1[g] ("amount of time the...data is streamed") was argued to relate to the duration of media playback. Element 1[h] ("cumulative time the corresponding web page was displayed") was argued to relate to the total time the web page is open on the user's computer, irrespective of whether the media is playing. This distinction was central to Petitioner's strategy of combining primary references that teach media tracking with secondary references that teach page-presence tracking.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-3 of Patent 8,407,609 as unpatentable.