Paper Entered: March 6, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

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1 Paper Entered: March 6, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD HULU, LLC, Petitioner, v. INTERTAINER, INC., Patent Owner. Case Before MICHAEL W. KIM, BRIAN P. MURPHY, and JENNIFER M. MEYER, Administrative Patent Judges. MEYER, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R

2 I. INTRODUCTION Hulu, LLC ( Petitioner ) filed a Corrected Petition for inter partes review of claims 1 22 and ( the challenged claims ) of U.S. Patent No. 8,479,246 (Ex. 1001, the 246 patent ). Paper 1 ( Pet. ). Intertainer, Inc. ( Patent Owner ) timely filed a Preliminary Response. Paper 7 ( Prelim. Resp. ). We have jurisdiction under 35 U.S.C The standard for instituting inter partes review is set forth in 35 U.S.C. 314(a), which provides that inter partes review may not be instituted unless there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. Patent Owner indicates that claims 16 21, 23, 25, and of the 246 patent were disclaimed via a Disclaimer in Patent Under 37 C.F.R (a) filed September 16, See Prelim. Resp. 5; Ex Accordingly, because Patent Owner has disclaimed claims 16 21, 23, 25, and 27 29, inter partes review may not be instituted based on those claims. See 35 U.S.C. 253(a); 37 C.F.R (e). For the reasons discussed below, we do not authorize institution of inter partes review as to any of the challenged claims. A. Related Proceedings Petitioner has been sued for infringement of the 246 patent in a district court case titled, Intertainer, Inc. v. Hulu, LLC, No. 2:13-cv (C.D. Cal.). Pet. 2. A covered business method patent review of the 246 patent is currently pending before the Board. Id.; see Hulu, LLC v. Intertainer, Inc., Case CBM (PTAB). In addition, Petitioner has filed a petition for inter partes review of certain claims of Patent Owner s 2

3 U.S. Patent No. 8,468,099 B2. See Paper 6, 3; Hulu, LLC v. Intertainer, Inc., Case IPR (PTAB). B. The 246 Patent The 246 patent, titled System and Method for Interactive Video Content Programming, issued on July 2, Ex. 1001, at [45], [54]. The 246 patent relates to a method for creating an interactive video, which includes one or more interface links associated with video content being displayed. Id. at 1:59 60, 2: When a user interacts with an interface link, the video content is paused, and the user is able to view ancillary content linked to the interface link over a network. Id. at 2:27 48, 6:59 7:22. When the user elects to continue viewing the video content, the video is un-paused. Id. at 7: C. Illustrative Claim Of the challenged claims, claim 1 is independent. Claims 2 15 depend from claim 1. Claims 22, 24, 26, and 30 depend from independent claim the challenged claims: Claim 1 of the 246 patent, reproduced below, is illustrative of 1. A method for creating an interactive video, the method comprising: encoding and storing the video onto a remote storage medium at a first site; 1 Claim 16 has been statutorily disclaimed by Patent Owner, as discussed above. 3

4 creating a link program adapted to both: (a) interrupt streaming of the video at the remote storage medium to prevent streaming of the video over an Internet Protocol (IP)-based network to a second site; and (b) access ancillary content accessible over the network with a universal resource locator (URL) to a remote site where the ancillary content is stored, the link program linking the ancillary content and the video to a point in time when the streaming of the video from the remote storage medium is interrupted; associating the link program with the video; streaming the video over the network for display; providing the link program over the network; receiving an indication of an interaction with the link program; interrupting, at the first site, the streaming of the video in response to receiving the indication of the interaction with the link program; and continuing the streaming of the video over the network from the point in time when the streaming of the video was interrupted. Ex. 1001, 9:45 10:3. D. Applied References Petitioner relies upon the following references. Pet. 4. Patent No./Publication Information Realplayer G2 User Manual, Chapter 4 ( Realplayer ) U.S. Patent No. 6,496,981 B1 ( Wistendahl ) U.S. Patent No. 7,139,813 B1 ( Wallenius ) Date of Issuance/ Exhibit No. Publication Ex Dec. 17, 2002 Ex Nov. 21, 2006 Ex

5 Patent No./Publication Information Felix Hartanto & Harsha Sirisena, Hybrid Error Control Mechanism for Video Transmission in the Wireless IP Networks, Proceedings of the IEEE Tenth Workshop on Local and Metropolitan Area Networks (Nov. 1999) ( Hartanto ) Date of Issuance/ Exhibit No. Publication Nov Ex EP A1 ( Chen ) May 6, 1998 Ex U.S. Patent No. 5,796,952 ( Davis ) Aug. 18, 1998 Ex Petitioner further relies on the Declaration of V. Michael Bove, Jr. ( Bove Declaration, Ex. 1008). E. Asserted Grounds Petitioner challenges claims 1 15, 22, 24, 26, and 30 on the following grounds. Pet. 4, Reference(s) Basis Claim(s) Challenged Wallenius 102(e) 1, 4 9, 12 15, 22, 24, 26, 30 Wallenius, Realplayer 103 2, 3 Wistendahl 102(e) 1, 4 7, 10, 12 14, 22, 24, 26, 30 Wistendahl, Hartanto Wistendahl, Realplayer 103 2, 3 Chen, Davis , 5, 8, 10, 11, 13, 14 II. ANALYSIS A. Claim Construction In an inter partes review, a claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R (b); In re Cuozzo Speed Tech., LLC, No , 2015 WL , at *5 *8 (Fed. Cir. Feb. 4, 2015). No issue in this Decision, however, requires explicit claim 5

6 construction of any term. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) ( [C]laim terms need only be construed to the extent necessary to resolve the controversy. (quoting Vivid Techs., Inc. v. Am. Sci. & Eng g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). B. Asserted Grounds Based on Wallenius, Alone or in Combination with Realplayer Petitioner asserts that claims 1, 4 9, 12 15, 22, 24, 26, and 30 are unpatentable under 35 U.S.C. 102(e) as anticipated by Wallenius, and that claims 2 and 3 are unpatentable under 35 U.S.C. 103(a) as obvious in view of Wallenius and Realplayer. Pet Patent Owner asserts that Wallenius is not a valid prior art reference as to the 246 patent. Prelim. Resp. 19. The 246 patent issued from U.S. Patent Application No. 13/495,884 ( the 884 application ). Ex. 1001, at [21]. With the 884 application, Applicants filed four Declarations under 37 C.F.R , one from each inventor of the 246 patent, in order to show the claimed invention was reduced to practice prior to September 16, Ex. 1002, , In a first Office Action, the Examiner rejected all of the claims under 35 U.S.C. 112, 1, and under 35 U.S.C. 102(e), 103 as being anticipated by Wallenius or obvious in view of Wallenius and additional references. Id. at Applicants amended claim 1 and presented arguments addressing the 35 U.S.C. 112, 1 rejection. Id. at In response to the art rejections, Applicants pointed the Examiner s attention to 2 The filing date of Wallenius is November 1, Ex. 1005, at [22]. 6

7 the Declarations under 37 C.F.R filed with the application, arguing that the rejection in view of Wallenius are moot in view of the Declarations under 37 C.F.R Id. at 166. In response to a subsequent Final Rejection maintaining each of the rejections (id. at ), Applicants submitted a Declaration under 37 C.F.R providing additional evidence with respect to the Examiner s claim construction, and that one of skill in the art would have understood the claimed invention to have been reduced to practice prior to the filing date of Wallenius. Id. at Based on the evidence submitted by Applicants, the Examiner issued a Notice of Allowance (id. at 23 28), indicating that the affidavit[s] filed on 6/13/12 under 37 CFR [are] sufficient to overcome [Wallenius]. Id. at 26. Petitioner asserts that the inventor s 37 C.F.R Declarations submitted during prosecution of the 884 application are deficient, and that Wallenius is, in fact, valid prior art as to the 246 patent. Pet In particular, Petitioner argues that the inventor Declarations submitted during prosecution of the 884 application do not support a finding of reduction to practice of the subject matter recited in the challenged claims. Id. Petitioner further argues that the Examiner in a reexamination proceeding of related U.S. Patent No. 7,870,592 ( the 592 patent ) determined that similar 37 C.F.R Declarations filed in that proceeding failed to show reduction to practice. Id. Under 35 U.S.C. 325(d), [i]n determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office. As discussed, the same prior art (i.e., Wallenius) 7

8 and arguments (i.e., Wallenius is a valid prior art reference that anticipates the challenged claims) were presented previously to the Office. Further, the Examiner of the 884 application was aware of the related reexamination proceeding of the 592 patent ( the 592 reexamination ). See, e.g., Ex. 1002, The Examiner, however, determined that the inventor s 37 C.F.R Declarations submitted in the 884 application were sufficient to show reduction to practice of the subject matter recited in the claims ultimately issued in the 246 patent, and the Examiner withdrew Wallenius as prior art thereto. Id. at 26. We have reviewed independently the 37 C.F.R Declarations submitted in the 884 application, and determine that the Examiner s reliance on the contents of the Declarations to support a showing of reduction to practice was reasonable. Further, Petitioner s arguments with respect to the Examiner s findings in the 592 reexamination proceeding are inapposite, because the claims at issue in the 592 reexamination proceeding were not identical to the claims of the 246 patent. For the foregoing reasons, we exercise our discretion and deny the asserted grounds based on Wallenius, alone and in combination with Realplayer, under 35 U.S.C. 325(d). C. Asserted Grounds Based on Wistendahl, Alone or in Combination with Hartanto or Realplayer Petitioner asserts that claims 1, 4 7, 10, 12 14, 22, 24, 26, and 30 are unpatentable under 35 U.S.C. 102(e) as anticipated by Wistendahl (Pet ), that claim 15 is unpatentable under 35 U.S.C. 103(a) as obvious in view of Wistendahl and Hartanto (Pet ), and that claims 2 and 3 are unpatentable under 35 U.S.C. 103(a) as obvious in view of Wistendahl and 8

9 Realplayer (Pet ). As support, Petitioner provides detailed explanations as to how each claim limitation is disclosed in, or taught or suggested by, the cited references, as well as the Bove Declaration (Ex. 1008). Id. at Patent Owner responds that Wistendahl does not disclose every claim limitation of independent claims 1 and 16. Prelim. Resp We have reviewed the parties contentions and supporting evidence. For the reasons discussed below, we are not persuaded that Petitioner has shown a reasonable likelihood of prevailing on its assertion that claims 1, 4 7, 10, 12 14, 22, 24, 26, and 30 are anticipated by Wistendahl, or that claims 2 and 3, and 15 would have been obvious in view of Wistendahl in combination with Realplayer or Hartanto, respectively. 1. Overview of Wistendahl Wistendahl relates to a system for converting media content to be used as an interactive media program. Ex. 1004, Abstract. Media content (e.g., movies, TV programs, etc.) may be mapped with hot spots that link the TV content to Internet addresses. Id. at 3:32 45, 5: The coordinate/address data of the hot spots are preferably in a standard format that can be accessed by any interactive digital media (IDM) program written to run with that media presentation. Id. at 5: The IDM program can be stored, for example, in a user s TV set-top box, and operates to allow the user to interact with an interactive media program. Id. at 8:9 9:56, Figs. 3, Analysis Independent claim 1 recites interrupting, at the first site, the streaming of the video in response to receiving the indication of the 9

10 interaction with the link program. Ex. 1001, 9:65 67 (emphases added). Claim 16, from which challenged claims 22, 24, 26, and 28 depend, recites a similar limitation, in response to receiving the indication [of an interaction with the interface link]... interrupting, at the remote location, the streaming of the video at a point in time so as to interrupt the streaming of the video over the network. Id. at 10:56 59 (emphases added). We are not persuaded Petitioner has shown sufficiently that Wistendahl discloses either of these limitations. None of the portions of Wistendahl cited by Petitioner discloses an interrupting of the video stream at the remote site and in response to receiving the indication of the interaction with the link program, as claimed. For example, Petitioner relies on the following passages of Wistendahl as disclosing the interrupting limitation of claim 1 (see Pet. 34, 36 37): To illustrate, upon the user clicking on the Maltese falcon, the hyperlink established in the Movie Trivia Info program can initiate a linked display of text or graphics explaining the Maltese origins of the falcon in a pop-up window on the television screen, or may execute another program function such as initiating an Internet connection to a World Wide Web service which offers a replica of the falcon for purchase.... [U]pon selection by a user clicking on an object, the IDM program can issue an instruction via the console processor 40 to the video processor 48 to slow down or pause the running of the movie to allow time for the user to absorb the IDM program response. Ex. 1004, 9: For example, in video-on-demand or media-on-demand systems, streaming content supplied in segments of digital data packets can be controlled with VCR-like controls by interrupting the content stream upon sending a command from 10

11 the subscriber and rescheduling the sending of content segments as requested by the subscriber. Id. at 17:7 13. In the first passage, although the IDM program issues an instruction to pause the movie upon a user clicking on an object, this pausing occurs at video processor 48, which is located in TV set-top box 32 (e.g., at the claimed second site), and not at network server 30 (e.g., the claimed remote storage medium at the first site). See id. at 9:33 48, Figs. 3, 4. In the second passage, discussing other applications/embodiments of Wistendahl, the pause command (e.g., the claimed interrupting) is not initiated in response to the user clicking on any hot-spot in the video; instead, the pause command comes from the user operating the VCR-like controls which allow the user to stop, pause, rewind, or otherwise control the playback... to allow the user time to interact with the program. Id. at 16:66 17:6. A claim is unpatentable under 35 U.S.C. 102 only if a single prior art reference expressly or inherently describes each and every limitation set forth in the claim. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Further, a reference cannot anticipate unless [it] discloses within the four corners of the document not only all of the limitations claimed[,] but also all of the limitations arranged or combined in the same way as recited in the claim. Net MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). [I]t is not enough that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention. Id. (citations omitted). 11

12 Petitioner does not point us to persuasive evidence that Wistendahl discloses an embodiment in which the interrupting of the video stream occurs both at the remote site and in response to receiving the indication of the interaction with the link program. Accordingly, we are not persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that independent claims 1 and 16, or claims 4 7, 10, 12 14, 24, 26, and 30 which depend therefrom, are anticipated by Wistendahl. Petitioner does not assert that claims 1 and 16 would have been obvious over Wistendahl, or that Hartanto or Realplayer remedies the deficiencies discussed above. Therefore, we are not persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that claims 2, 3, and 15 would have been obvious over the combination of Wistendahl with Realplayer or Hartanto, respectively. D. Asserted Ground Based on Chen and Davis In Hulu, LLC v. Intertainer, Inc., Case CBM (PTAB June 23, 2014) (Paper 10), we instituted a covered business method patent review of, inter alia, each of claims 1 3, 5, 8, 10, 11, 13, and 14 under 35 U.S.C. 102(b) as anticipated by Chen. CBM is currently pending before the Board; an oral hearing was held on February 3, See Hulu, LLC v. Intertainer, Inc., Case CBM (PTAB Jan. 13, 2015) (Paper 28). In the instant proceeding, Petitioner asserts that claims 1 3, 5, 8, 10, 11, 13, and 14 are unpatentable under 35 U.S.C. 103(a) as obvious in view of Chen and Davis. Pet As pointed out by Patent Owner (Prelim. Resp. 3), Petitioner does not contend that the newly cited reference Davis was not known or available to it at the time it filed its petition in CBM

13 The asserted ground of unpatentability is nearly identical to the ground of unpatentability pending decision in CBM Compare Pet , with CMB (Paper 1), We, therefore, exercise our discretion and decline to institute inter partes review on this ground. See 35 U.S.C. 314(a); 37 C.F.R (a). III. CONCLUSION For the foregoing reasons, we conclude that the information presented in the Petition does not establish a reasonable likelihood that claims 1, 4 7, 10, 12 14, 22, 24, 26, and 30 of the 246 patent are anticipated by Wistendahl, or that claims 2 and 3, and 15 of the 246 patent would have been obvious in view of Wistendahl in combination with Realplayer or Hartanto, respectively. Further, taking into account the particular facts of this case, we exercise our discretion and decline to institute inter partes review on the asserted grounds based on Wallenius, alone and in combination with Realplayer, and on the asserted ground based on Chen and Davis. IV. ORDER Accordingly, it is ORDERED that the Petition is denied, and no trial is instituted. 3 Davis is relied upon only to disclose and render obvious sending the decoder over the network to the user s computer. Prelim. Resp (quoting Pet ). 13

14 PETITIONER: Eliot Williams Harper Batts BAKER BOTTS LLP PATENT OWNER: Amedeo F. Ferraro Thomas H. Martin MARTIN & FERRARO, LLP 14