PTAB

IPR2020-00677

Vudu, Inc. 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. The system uses a "timer applet," provided to a user's computer from a first computer system, to periodically report tracking data about a media presentation that 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 system for tracking streamed media that maps to the claimed invention. In Jacoby, a first computer system (mediaframe server) provides a user with a web page containing a media player and a metering URL. Media content is streamed from a second, distinct computer system (streaming server). Jacoby's system uses ActiveX controls, functioning as a "metering applet," to send periodic metering events that track the amount of streaming time. Bland was cited for its explicit disclosure of using an applet (an ActiveX "add-on") to periodically track the amount of time an object, such as a webpage or video, is active on a client computer and report that timing data to a server.
    • Motivation to Combine: A POSITA would combine Bland's explicit applet-based tracking mechanism with Jacoby's media streaming system as a simple substitution of one known element for another to achieve predictable results. Petitioner asserted this combination would improve service performance monitoring—a stated goal of Bland—and could simplify Jacoby’s system by removing the need to embed metering events directly into the media stream. The combination was also presented as an "obvious to try" solution, as applets were a well-known and finite number of methods for adding functionality to a web browser.
    • Expectation of Success: A POSITA would have had a high expectation of success. Both references describe browser-based tracking using similar technologies (ActiveX controls). Integrating Bland’s method into Jacoby’s system would involve conventional web development techniques to achieve the predictable result of tracking user activity.

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 where a first computer system (containing web and security servers) provides a web page and a media player plug-in to a user. This plug-in, functioning as an applet, generates periodic "heartbeat packets" while the user views a show streamed from a second, distinct computer system (show servers). These heartbeats are sent back to the first system to calculate total viewership time. Robinson was introduced for its teaching of a user communication system where a server provides a client with a Java applet upon visiting a webpage. The applet sends periodic heartbeats to the server to continuously monitor the user's presence on that page.
    • Motivation to Combine: A POSITA would be motivated to incorporate Robinson's technique for tracking time on a webpage into Mcternan's system for tracking media viewership. This would create a more robust tracking system capable of monitoring both metrics, thereby furthering Mcternan's stated goal to "more effectively track the use of content by consumers." The combination represents an application of a known technique (Robinson's page tracking) to a known, analogous system (Mcternan's media tracking) to yield predictable and improved results.
    • Expectation of Success: A POSITA would have expected success in combining these references. Both systems operate on the same principle of using periodic heartbeat packets for tracking. Petitioner argued that Mcternan’s system would require little to no modification to receive and process Robinson's similar heartbeat packets, and Robinson explicitly teaches how to deploy its applet on any existing web server.

4. Key Claim Construction Positions

  • "applet" (Claim 1): Petitioner proposed that "applet" 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 critical because it encompasses technologies like the ActiveX controls in Jacoby and the media player plug-in in Mcternan, which are not strictly "Java applets" but perform the same function as described in the ’609 patent.
  • Timing-related limitations (Claim 1): Petitioner argued that claim 1 contains two distinct timing limitations: element 1[g], which relates to the "amount of time the digital media presentation data is streamed," and element 1[h], which relates to the "cumulative time the corresponding web page was displayed." This distinction is central to the invalidity arguments, as the prior art combinations are alleged to disclose methods for tracking both types of time, either directly or by using one as a proxy for the other.

5. Arguments Regarding Discretionary Denial

  • Petitioner requested joinder with an already-instituted IPR, Sling TV L.L.C. v. Uniloc 2017 LLC, IPR2019-01367, which challenges the same claims of the ’609 patent. The petition asserted that it is "substantively identical to the Sling IPR's petition," presenting the same grounds based on the same prior art. This posture was presented as a strong reason to grant institution and joinder, as the Board had already determined the arguments were sufficient for trial, and joinder would promote efficiency and consistency.

6. Relief Requested

  • Petitioner requested institution of an inter partes review, joinder with IPR2019-01367, and cancellation of claims 1-3 of Patent 8,407,609 as unpatentable under 35 U.S.C. §103.