Netflix Inc v. GoTV Streaming LLC

1. Case Identification

• Case #: IPR2023-00757
• Patent #: 8,478,245
• Filed: April 7, 2023
• Petitioner(s): Netflix, Inc.
• Patent Owner(s): GoTV Streaming, LLC
• Challenged Claims: 1-33

2. Patent Overview

• Title: Method and System for Rendering Content on a Wireless Device
• Brief Description: The ’245 patent relates to a method of rendering content on a wireless device within a client-server system. The method involves the device receiving a "custom configuration" associated with a specific application, which configures a plurality of "rendering blocks" to customize the application's appearance, and also receiving "compiled content" generated by the application to be rendered using the custom configuration.

3. Grounds for Unpatentability

Ground 1: Claims 1-33 are obvious over Hariki in view of Harris.

• Prior Art Relied Upon: Hariki (Application # 2007/0150617) and Harris (Application # 2003/0023755).
• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that the combination of Hariki and Harris taught all limitations of the challenged claims. Hariki was asserted to disclose the core client-server framework for rendering content on a wireless device. Petitioner mapped Hariki's teaching of a downloadable "UI content package" containing "UI skins" to the claimed "custom configuration" that customizes "rendering blocks." Hariki's UI skins alter display and sound aspects like backgrounds, title bars, and buttons, which Petitioner argued correspond to the claimed rendering blocks. The mobile device in Hariki receives these UI content packages from a server, fulfilling the limitations of receiving a custom configuration associated with an application (e.g., a web browser) to customize rendering.

  • Petitioner contended that Hariki alone teaches receiving content (HTML pages) from a server, but Harris was necessary to fully disclose the nature of the "compiled content" and its "generic syntax." Harris taught a system for authoring content in a generic markup language (WAX) and then translating it into a device-specific language (like HTML) tailored to the device's capabilities. Petitioner argued this process disclosed generating "compiled content" (the HTML files) from an application's execution. The WAX language itself was presented as the "syntax that is generic to said wireless device."

  • The limitation in independent claims 1, 12, and 23 requiring the receipt of "first" and "second" compiled content specific to different pages of an application was allegedly taught by Harris's disclosure of a mobile client making multiple "page requests" and the server returning corresponding pages. Petitioner argued the custom configuration taught by Hariki (the UI skin) would be applicable to both pages, as it defines the overall look and feel of the application environment. Dependent claims were addressed by arguing the combination taught elements like audio/display content, remote server operation, and specific UI components (tickers, buttons) through Hariki's customizable "UI content objects" and Harris's content generation methods.

  • Motivation to Combine (for §103 grounds): Petitioner asserted a person of ordinary skill in the art (POSITA) would combine Hariki and Harris to improve the delivery of customized content to mobile devices. A POSITA looking to enhance Hariki's system for customizing a device's look and feel would have been motivated to incorporate Harris's more advanced method for generating and tailoring the actual content (e.g., HTML pages) for specific device capabilities, as Hariki did not detail this content generation process.

  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because both references described standard client-server architectures. Integrating Harris's content generation and translation framework into Hariki's customization system was argued to be a predictable combination of known technologies, such as rendering HTML files and using APIs for expanded functionality.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on Fintiv factors was not warranted.
• Key arguments included that the trial date in the parallel district court litigation was uncertain and likely to occur after the Final Written Decision (FWD) in this inter partes review (IPR).
• Petitioner stipulated that it would not pursue the same invalidity grounds in the district court if the IPR is instituted.
• Petitioner further contended that the petition presents a compelling, meritorious challenge, and because the prior art relied upon was not considered during prosecution, denial under §325(d) would also be inappropriate.

5. Relief Requested

• Petitioner requests institution of an IPR trial and cancellation of claims 1-33 of Patent 8,478,245 as unpatentable under 35 U.S.C. §103.