PTAB

IPR2020-00041

Netflix Inc v. Uniloc 2017 LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Tracking Digital Media Presentations
  • Brief Description: The ’609 patent describes a method for tracking user engagement with digital media. The system tracks both the duration that media is streamed to a user's computer from a second computer system and the cumulative time that the corresponding webpage is displayed on the user's computer, using a timer applet sent from a first computer system.

3. Grounds for Unpatentability

Ground 1: Claims 1-3 are obvious over Davis in view of Choi.

  • Prior Art Relied Upon: Davis (Patent 5,796,952) and Choi (Application # 2003/0236905).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Davis disclosed most of the claimed elements, including a method for tracking how long a user remains on a webpage. Davis taught a system where a first computer system (Server A and B) provides a webpage and a downloadable Java applet to a user's computer. This applet acts as a timer to monitor the display time of the webpage and reports this duration back to the server for storage. However, Davis did not explicitly teach streaming the media content or having the timer applet report back periodically. Petitioner asserted that Choi supplied these missing elements, describing a system for tracking streamed media that uses periodic "heartbeat" messages from the client to a server to report viewing statistics.
    • Motivation to Combine: A POSITA would combine the teachings of Davis and Choi to arrive at the claimed invention. By the ’609 patent’s priority date, streaming was a well-known and preferred method for delivering audio and video content, making it an obvious modification to Davis’s system which already contemplated delivering such content. Similarly, Choi’s periodic reporting was a well-known and predictable alternative to Davis’s method of reporting duration only after the user navigates away from the page. This "heartbeat" approach provided more robust tracking and was one of a limited number of known solutions.
    • Expectation of Success: A POSITA would have had a high expectation of success in this combination. The technologies taught by Choi (streaming, periodic reporting) were designed to work with the standard Internet protocols (e.g., HTTP, TCP/IP, RTSP) that formed the basis of the system disclosed in Davis.

Ground 2: Claims 1-3 are obvious over Siler in view of Davis.

  • Prior Art Relied Upon: Siler (Application # 2004/0133467) and Davis (Patent 5,796,952).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Siler disclosed a system that tracked how long users received a particular media stream. Siler’s system used a periodic timer to send tracking information from a client computer to a web server (the first computer system), and the media was streamed from a separate streaming server (the second computer system). However, Siler's timer was part of an installed software application, and Siler did not explicitly teach tracking the display time of the webpage itself. Petitioner argued Davis supplied these missing features by teaching the use of a downloadable applet to provide timer functionality within a webpage and disclosing the benefits of tracking webpage display duration for advertisers.
    • Motivation to Combine: A POSITA would combine the teachings of Siler and Davis for several reasons. Siler itself suggested an alternative embodiment where its player application could be implemented as a webpage rather than installed software. A POSITA implementing this alternative would be motivated to use Davis's well-known downloadable applet approach to provide timer functionality, as it is a standard method for adding custom logic to a webpage and avoids requiring users to pre-install software. Furthermore, because Davis taught the value of tracking webpage display time for monetization, a POSITA would be motivated to add this capability to Siler’s system to provide more valuable tracking data to advertisers.
    • Expectation of Success: Implementing a downloadable applet for timer functions within a web-based system, as taught by Davis, was a routine and predictable design choice for a POSITA at the time. A POSITA would have had a reasonable expectation of successfully integrating Davis's applet-based tracking into Siler’s web-based alternative architecture.

4. Key Claim Construction Positions

  • "Computer System": Petitioner argued this term should be construed according to its express definition in the ’609 patent as "single computing devices or collections of computing devices having a common operator or under common control." This construction allowed Petitioner to map multiple servers in the prior art (e.g., Server A and Server B in Davis) to the claimed "first computer system."
  • "Streamed": Petitioner proposed construing this term based on the patent’s definition as a technique for "transferring data such that it can be processed as a substantially steady or continuous stream," allowing presentation to begin before the entire file is transmitted. Petitioner noted that it presented its invalidity arguments under this construction, as well as under an alternative construction focusing on "presentation" that was proposed in a separate IPR against the same patent.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise its discretion to deny institution. The petition asserted that its grounds were entirely separate from those in a previously filed IPR by Sling TV (IPR2019-01367), as it relied on different prior art references. Petitioner also contended that the co-pending district court litigation was not in an advanced state, with a Markman hearing scheduled but no trial date set, weighing against discretionary denial under the Board's guidance.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-3 of the ’609 patent as unpatentable.