PTAB

IPR2020-00677

Vudu Inc v. Uniloc 2017 LLC

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Key Events
Petition

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 delivered over a network. The system provides a user's computer with a web page, identifier data, and a "timer applet" from a first computer system, which tracks media streamed from a separate, second computer system by periodically sending data back to the first system.

3. Grounds for Unpatentability

Ground 1: Obviousness over Jacoby and Bland - 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 taught a system for streaming and metering media presentations from distinct server systems. A first "mediaframe" server provided a webpage with a media player and ActiveX controls, while a second "streaming" server delivered the media. The ActiveX controls acted as a timer applet, causing metering events to be sent periodically from the user's computer to track the "amount of streaming time remaining." Bland taught a management-data-gathering system using applets (e.g., ActiveX "add-ons") to track the amount of time an object, such as a webpage, is active on a client computer and periodically report that timing data to a server. Petitioner contended that the combination of Jacoby and Bland disclosed all limitations of claims 1-3. Specifically, Jacoby taught most elements, and Bland provided explicit teachings on using an applet to track the duration an object (like a webpage) is active, which corresponds to the patent’s limitation of tracking the "cumulative time the corresponding web page was displayed."
    • Motivation to Combine: A POSITA would combine the teachings to improve Jacoby's system by incorporating Bland's well-understood method of tracking webpage activity. This would provide a more complete picture of service performance, a stated goal of Bland. The combination was argued to be a simple substitution of one known element (Jacoby's metering software) with a similar known element (Bland's explicit applet for tracking) to achieve predictable results. Furthermore, adding Bland's webpage tracking to Jacoby’s media tracking system was an obvious enhancement to gather more comprehensive user data.
    • Expectation of Success: A POSITA would have had a high expectation of success, as both references utilized common web technologies like ActiveX to deploy client-side software that reports data back to a server. Integrating Bland's timing mechanism into Jacoby's framework was presented as a straightforward application of known techniques.

Ground 2: Obviousness over Mcternan and Robinson - 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 asserted that Mcternan disclosed a system for tracking viewership of rich media streamed from a show server (a second computer system) to a client. A separate first computer system (including a web server and security server) provided a media player plug-in (the timer applet) that generated periodic "heartbeat packets" containing a session ID. These packets were sent back to the first system to calculate the total time a user watched a show. Robinson disclosed a system for monitoring a user's presence on a webpage using a Java applet. The applet, delivered with the webpage, sent periodic "heartbeat" pulses to a server, allowing for the calculation of total visit duration on that page. The combination of Mcternan's media-viewership tracking and Robinson's page-viewership tracking allegedly met all limitations.
    • Motivation to Combine: A POSITA would be motivated to apply the known technique from Robinson (using heartbeats to track time on a webpage) to the known system of Mcternan (which already used heartbeats to track media viewing). This would improve Mcternan's system by providing more comprehensive user analytics, furthering Mcternan's goal to "more effectively track the use of content by consumers." The similarity of the heartbeat mechanisms in both references would make the combination predictable and a matter of routine implementation. A POSITA could use distinct identifiers to differentiate between media-tracking and page-tracking heartbeats.
    • Expectation of Success: The proposed combination would have yielded predictable results due to the substantial similarities in the tracking methods of both references. Both systems relied on client-side software sending periodic heartbeat packets to a server. Modifying Mcternan's server to also process Robinson's page-based heartbeats was argued to be well within the skill of a POSITA.

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." This construction avoids limiting the term to only Java applets and is critical for mapping prior art disclosures of ActiveX controls and browser plug-ins to this claim limitation.
  • "computer system": Petitioner proposed this term means "one or more computing devices having a common operator or under common control." This construction was central to arguing that the prior art references, like the ’609 patent, describe distinct first and second computer systems (e.g., a service provider system and a content provider system).
  • Timing-related limitations (1[g] and 1[h]): Petitioner argued that the claim requires tracking two distinct metrics: 1[g] ("amount of time the digital media... is streamed") refers to the duration of media playback, while 1[h] ("cumulative time the corresponding web page was displayed") refers to the total time a webpage is open on the user's computer, irrespective of playback status. This distinction was key to mapping combinations where one reference taught media tracking and the other taught page-presence tracking.

5. Relief Requested

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