Ex Parte 7870592 et al

Patent Trial and Appeal Board

Sep 29, 2015

95002358 (P.T.A.B. Sep. 29, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/002,358 09/14/2012 7870592 108.0004-00REX 3538
22882 7590 09/29/2015
MARTIN & FERRARO, LLP
1557 LAKE O'PINES STREET, NE
HARTVILLE, OH 44632
EXAMINER
CAMPBELL, JOSHUA D
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/29/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEALS BOARD
____________________

HULU, LLC.
Requester,

v.

INTERTAINER, INC.,
Owner

____________________

Appeal 2015-005565
Reexamination Control 95/002,358
Patent 7,870,592 B2
Technology Center 3900
____________________

Before STEPHEN C. SIU, DENISE M. POTHIER, and
ANDREW J. DILLON, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF CASE
Hulu, Inc., made a request for inter partes reexamination of U.S. Patent No.
7,870,592 B2 (“the ’592 patent”) issued to Ron J. Hudson, Terrence T. Coles,
Craig D. Berry, and Allen D. Easty, entitled Method for Interactive Video Content
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Programming. The ’592 patent issued January 11, 2011 and is assigned to
Intertainer, Incorporated.
Owner appeals from the decision in the RAN, rejecting claims 1, 2, 4–6,
8–12, 14–18, 21, 22, 24–26, 28–32, 34–38, 76–81, and 83–91 of the ’592 patent.
App. Br. 2.1 Claims 3, 13, 19, 23, 33, 39, 41–43, 45, 46, 49, 50, 52, 53, 55, 56,
58–60, 62–74,2 and 92 have been cancelled; claims 7, 20, 27, 40, 44, 47, 48, 51, 54,
57, 61, 75, and 82 are not subject to reexamination. Id. Requester filed a
Respondent Brief, and Owner filed a Rebuttal Brief. See generally Resp. Br. and
Reb. Br.
The Examiner’s Answer relies on the RAN, incorporating it by reference.
See Ans. 1.
An oral hearing occurred on September 17, 2 015. A transcript will be made
of record.
We have been informed that U.S. Patent No. 8,479,246 (“the ’246 patent”) is
(1) related to the ’592 patent, (2) the subject of Petition for Covered Business
Method Review No. CBM2014-00052, and (3) the subject of Intertainer, Inc. v.
Hulu, LLC, Nos. 2:13-cv-05499-CJC-RNB and 8:11-cv-01208-CJC-RNB (C.D.
Cal.) and Intertainer, Inc. v. Viacom, Inc., No. 2:12-cv-05129-CJC-RZ (C.D. Cal.)

1 Throughout this opinion, we refer to the Appeal Brief (App. Br.) filed March 24,
2014; (2) the Respondent Brief (Resp. Br.) filed May 27, 2014; (3) the Examiner’s
Answer (Ans.) mailed September 3, 2014; (4) the Rebuttal Brief (Reb. Br.) filed
October 3, 2014; (5) the Examiner’s Right of Appeal (RAN) mailed December 24,
2013, and (6) the Action Closing Prosecution (ACP) mailed June 28, 2013.
2 Notably, the RAN mistakenly lists canceled claims 62–65 as rejected. RAN 1
(Box 1a); see also August 28, 2013 Amendment, page 7. We will not address
these canceled claims further and App. Br. 2.
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App. Br. 2. On September 14, 2015, we were informed of a Petition for Inter
Partes Review No. IPR2014-01456 related to the ’246 patent. We additionally
note two other proceedings filed with the Board for U.S. Patent No. 8,468,099,
CBM2014-00053 and IPR2014-01455, both of which were denied institution.3
We have jurisdiction under 35 U.S.C. §§ 134(b) and 315.
We AFFIRM the Examiner’s decision to reject claims 1, 2, 4–6, 8–12,
14–18, 21, 22, 24–26, 28–32, 34–38, 76–81, and 83–91.
Illustrative, original claims 1 and 83 read as follows with emphasis added:   
1. A method for using an interactive video, the method
comprising:
streaming the video from a remote location over an Internet
protocol-based network and displaying the video on a visual display
for a user, the video having at least one interface link associated
therewith, the interface link adapted to be displayed on the visual
display and being linked by a universal resource locator (URL) to
ancillary content accessible over the network;
interacting, during the streaming of the video, in a single
interaction with the interface link to both:
(a) interrupt, at the remote location, the streaming of the
video at a point in time so as to prevent streaming of the video over
the network; and

3 Hulu, LLC v. Intertainer Inc., Case CBM2014-00052, 2015 WL 3763640 (PTAB
June 12, 2015) (final written decision for U.S. Patent No. 8,479,246), Hulu, LLC
v. Intertainer Inc., Case CBM2014-00053, 2014 WL 3347511 (PTAB June 23,
2014) (denying institution for U.S. Patent No. 8,468,099), Hulu, LLC v.
Intertainer Inc., Case IPR2014-01456, 2015 WL 1050481 (PTAB March 6, 2015)
(denying institution for U.S. Patent No. 8,479,246), Hulu, LLC v. Intertainer Inc.,
Case IPR2014-01455, 2015 WL 1050480 (PTAB March 6, 2015) (instituting for
claims 13–18 and 18 of U.S. Patent No. 8,468,099). IPR2014-01455 and
IPR2014-01456 were filed on September 5, 2014; CBM2014-00052 and
CBM2014-00053 were filed December 20, 2013.
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(b) transmit a request of the user for the ancillary content
over the network to a remote site of the URL where the ancillary
content is stored;
delivering the ancillary content over the network and displaying
the ancillary content on the visual display; and
continuing the streaming of the video over the network from the
point in time when the streaming of the video was interrupted after the
interacting with the interface link.

83. A method for creating an interactive video, the method
comprising:
encoding and storing the video onto a remote storage medium
at a first site;
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-
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 and the link program over the network;
displaying the video on the visual display;
interrupting, at the first site, the streaming of the video in
response to interacting with the link program so as to prevent
streaming of the video over the network; and
continuing the streaming of the video over the network from the
point in time when the streaming of the video was interrupted.
App. Br., Claims App’x.

A. Prior Art Relied Upon
The Examiner relies on the following as evidence of unpatentability:
Chen US 6,175,840 B1 Jan. 16, 2001
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Wistendahl US 6,496,981 B1 Dec. 17, 2002
Wallenius US 7,139,813 B1 Nov. 21, 2006 (filed Nov. 1, 1999)

Laurent Herrmann, MPEG-4 Interactive Services over IP, Telecom 99 +
Interactive 99 Forum, pp. 1–6, Laboratoires d’Electronique Phillips (LEP), France
(October 1999) (“Herrmann”)

F. Pereira and P. Koenen, MPEG-4 - opening new frontiers to broadcast services,
EBU Technical Review, pp. 1–14 (Spring 1999) (“Pereira”)

B. Adopted Rejections
The Examiner maintains the following rejections:
Reference(s) Basis Claims RAN
Chen § 102(e)
1, 2, 4, 6, 9, 15, 16, 21, 22,
24, 26, 29, 35, 36, 83–85,
87–89
3
Chen and Wistendahl § 103(a) 5, 25, 86 3
Chen and Herrmann § 103(a) 76 and 78 4
Wallenius § 102(e)
1, 2, 4, 5, 8, 9, 12, 15, 16,
18, 21, 22, 24, 25, 28, 29,
32, 35, 36, 38, 83–89, 91
4
Wallenius and Chen § 103(a) 6 and 26 4
Wistendahl and
Herrmann § 103(a)
1, 2, 4, 5, 9–12, 14–18, 21,
22, 24, 25, 29–32, 34–38,
76–81, 83, 84, 86–91
4–5
Wistendahl, Herrmann,
and Chen § 103(a) 6, 26 5
Wistendahl and Pereira § 102(e)
1, 2, 4, 5, 8–12, 14–16, 18,
21, 22, 24, 25, 28–32,
34–36, 38, 76–78, 80, 83,
84, 86–89, 91

5
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Reference(s) Basis Claims RAN
Wistendahl, Pereira, and
Chen § 103(a) 6, 26 5–6
App. Br. 5–6.

II. ISSUES ON APPEAL
We review the appealed rejections for error based upon the issues identified
by Owner in its appeal brief, and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). “Any arguments or
authorities not included in the briefs permitted under this section or [37 C.F.R.] §§
41.68 and 41.71 will be refused consideration by the Board, unless good cause is
shown.” 37 C.F.R. § 41.66(c)(1)(vii).
Based on the disputed errors presented by Owner, the main issues on appeal
are whether the Examiner erred in finding the cited prior art discloses or teaches:
[(1)] interacting, during the streaming of the video, in a single interaction
with the interface link to both:
(a) interrupt, at the remote location, the streaming of the video at a
point in time so as to prevent streaming of the video over the network; and
(b) transmit a request of the user for the ancillary content over the
network to a remote site of the URL where the ancillary content is stored

as recited in independent claim 1 and similarly in claim 21; and

[(2)] 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-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
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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”

as recited in claim 83?
III. ANALYSIS
As a preliminary matter, an amendment under 37 C.F.R. § 41.63(a) was filed
on September 14, 2015, requesting cancellation of claims 1, 2, 4–6, 9, 15, 16, 21,
22, 24–26, 29, 35, and 36. Amendments to the claims may be entered by the
Examiner. See MPEP § 2675, 9th ed. (March 2014). At this juncture, the
Examiner has not entered the amendment. Accordingly, we will address all claims
currently pending on appeal.
A. Claim Construction
During examination of a patent application, a claim is given its broadest
reasonable construction “in light of the specification as it would be interpreted
by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004) (internal citations and quotations omitted). We
presume that claim terms have their ordinary and customary meaning. See In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (internal
quotations omitted) (“The ordinary and customary meaning ‘is the meaning that
the term would have to a person of ordinary skill in the art in question.’”).
However, patentees may rebut this presumption by acting as their own
lexicographer, providing a definition of the term in the specification with
“reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994).
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1. “interacting . . . in a single interaction with the interface face to
both: (a) interrupt . . . and (b) transmit” step
Illustrative claim 1 recites
interacting, during the streaming of the video, in a single interaction with
the interface link to both:
(a) interrupt, at the remote location, the streaming of the video at a
point in time so as to prevent streaming of the video over the network;
and
(b) transmit a request of the user for the ancillary content over the
network to a remote site of the URL where the ancillary content is stored.
App. Br., Claims App’x (emphasis added).

Owner “does not[] contend that independent claims 1 and 21 require that (a) and
(b) happen in any particular order” but does “submit[] that both (a) and (b) must
occur solely due to the single interaction with the interface link.” App. Br. 7. We
agree that steps (a) and (b) do not require any particular order. As indicated by
Requester (Resp. Br. 5), the ’592 patent states that steps 404–422 “need not occur
in a particular order, or include all steps.” The ’592 patent 7:23–25.
On the other hand, we disagree that the steps (a) and (b) must occur solely or
directly due to the single interaction with the interface link. App. Br. 7. First,
claims 1 and 21 do not recite the words “solely” or “directly” as part of the step of
interacting with the interface link. Second, as Requester notes (Resp. Br. 4), the
disclosure of the ’592 patent does not provide many details related to mechanism
for interrupting the video stream. Resp. Br. 4–5 (citing the ’592 patent 6:63–64,
7:22–25 and Bove Decl.4 ¶¶ 9–10); see also RAN 10 (citing these passages of the
’592 patent). Figure 4 and its accompanying description states the video stream

4 The Declaration of Dr. V. Michael Bove, Jr., dated April 7, 2013.
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can be interrupted “[o]nce an interaction with the interface link has been
detected[,]” a user request is then sent to the Uniform Resource Locator (URL) for
the hub page in step 410, and the hub page and associated metadata are delivered
to the user in step 412. The ’592 patent 6:63–63; 6:65–7:4; Fig. 4. In this
particular example, the step of transmitting the request for the ancillary content
over a network to a remote URL site occurs as a result of the interaction with the
interface link, but does not occur immediately after or directly due to the single
interaction. See id.
Furthermore, as noted above, the ’592 patent states that the order of steps
404–422, which includes the step of detecting whether there has been a new
interaction with an interface link at step 404, need not occur in any particular
order. The ’592 patent 7:22–25; Fig. 4. This passage further supports that the
broadest scope of claims 1 and 21 in light of the disclosure does not require a sole
or direct relationship between the interaction and the steps of interrupting and
transmitting a request. Id. Given the disclosure, the interrupting step can occur
after and be the result of both interacting with the interface link and delivering
ancillary content to the user.5 As such, contrary to Owner’s position (App. Br. 7–
8), we construe the phrase “interacting . . . in a single interaction with the interface
link to both: (a) interrupt . . . and (b) transmit . . .” broadly, but reasonably in light
of the disclosure to include that steps (a) and (b) in independent claims 1 and 21

5 Although providing no support in the disclosure for the example, Owner states
that video streaming is interrupted when there is an error in delivering content. See
App. Br. 7. Owner contends that the interruption in this example is independent of
delivering the content, but this example appears to support that interruption occurs
due to both interacting with a link interface and the delivery error. See id.
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are the result of interacting with an interface link but need not be solely or directly
due to the single interaction with the interface link.
2. “a link program”
Illustrative claim 83 recites

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-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;
App. Br., Claims App’x (emphasis added).

This language differs from claim 1, requiring the creation of a link program that is
adapted to perform both interrupting a video stream and accessing ancillary
content. Id.
Notably, courts have “repeatedly emphasized that an indefinite article ‘a’ or
‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims
containing the transitional phrase ‘comprising.’” KCJ Corp. v. Kinetic Concepts,
Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). Claim 83 uses both the transitional
phrase, “comprising” and recites “a link program.” Also, “[u]nless the claim is
specific as to the number of elements, the article ‘a’ receives a singular
interpretation only in rare circumstances when the patentee evinces a clear intent to
so limit the article.” Id. We do not see a clear intent by Owner to limit the claim
to singular interpretation. In fact, contrary to Owner’s assertions, claim 83 recites
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“a link program” and not a single link program. See Reb. Br. 5 (stating “claim 83
requires a single program adapted to” perform steps (a) and (b)).
Turning to the disclosure of the ’592 patent, the specification contains
similar language to claim 83 with no further explanation. The ’592 patent 2:41–44
(describing “a link program” performing steps (a) and (b)). The only other portion
of the ’592 patent to discuss the delivery of the link program to the client software
provides no details of the instructions, including that such instructions are part of a
single program. The ’592 patent 6:16–27. The ’592 patent even further discloses
pausing a video stream and accessing ancillary data without any specific details
related to a single program. The ’592 patent 6:63–7:25. Thus, we do not see a
clear intent to limit the link program to a single program having the instructions to
perform steps (a) and (b).
This understanding is also consistent with a related proceeding for U.S.
Patent No. 8,479,246 (the ’246 patent), in which the phrase “link program” was
construed. Hulu, LLC v. Intertainer Inc., Case CBM2014-00052, 2015 WL
3763640 at *4–6. In this opinion, the Board found the claim language of the ’246
patent does not require a single program to perform two similar steps to that recited
in claim 83 of the ’592 patent when considering the claim itself and its disclosure.
Hulu, LLC v. Intertainer Inc., Case CBM2014-00052, 2015 WL 3763640 at *4–5.
Likewise, claim 83 does not recite a single link program, and the disclosure merely
repeats similar language to that found in the claim. App. Br., Claims App’x.
The decision for CBM2014-00052 also addresses the prosecution history of
the underlying patent (i.e., the ’246 patent). Hulu, LLC v. Intertainer Inc., Case
CBM2014-00052, 2015 WL 3763640 at *5. Although the Office is under no
obligation to accept a claim construction proffered as a prosecution history
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disclaimer (Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir.
2014)), the prosecution history of the ’592 patent does not limit the construction of
the link program to a single link program, such that a link program cannot include
a collection of computer instructions. See November 9, 2010 Notice of Allowance
12 (discussing only that prior art fails to disclose creating a link program that both
interrupts content and accesses ancillary content when addressing claim 59, which
became claim 83 when issued into the ’592 patent).
As such, the broadest, reasonable construction of “the link program” in
claim 83 in light of the disclosure of the ’592 patent includes a collection of
instructions that perform steps (a) and (b), whether or not the instructions are part
of a single program or several programs that collectively form and perform the
instruction collection.
B. The Rejections
1. Chen
A. Claims 1, 2, 4, 6, 9, 15, 16, 21, 22, 24, 26, 29, 35, and 36
Claims 1, 2, 4, 6, 9, 15, 16, 21, 22, 24, 26, 29, 35, 36, 83–85, and 87–89
have been rejected under 35 U.S.C. § 102(e) based on Chen. RAN 3 (citing
Request 24–26, Exhibit 31, and December 7, 2012 Non-Final Act. 4). Owner
admits that the Chen discloses a linked page to be displayed by clicking on a
hotspot. App. Br. 7. As such, there is no dispute in the record that the interacting
with an interface link (e.g., a hotspot) in Chen “transmit[s] a request of the user for
ancillary content over a network to a remote site of the URL where the ancillary
contend is stored” as recited in claims 1 and 21. Owner, however, argues that
Chen does not disclose interrupting the video streaming in direct response to
clicking on the hotspot. App. Br. 7. We are not persuaded.
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To repeat, as stated above, the broadest, reasonable construction of the
phrase, “interacting . . . in a single interaction with the interface link to both: (a)
interrupt . . . the streaming of the video . . . and (b) transmit a request of the user
for the ancillary content . . .” includes that steps (a) and (b) are the result of the
interacting with the interface link but these steps do not have be a direct response
to the interaction. Additionally, there is nothing in the claim that limits the steps
such that they are the exclusive result of the interaction with the interface link and
may be the result of additional, other actions.
Chen discloses that the linked page is displayed and the video is paused
(e.g., interrupted), when the user interacts with an interface link (e.g., “clicks the
mouse while the cursor is inside a hot link indicator.”) Chen 6:21–24; RAN 11.
Contrary to Owner’s position, this passage does not support a particular ordering of
events — displaying occurs first, and then pausing of the video. See App. Br. 10.
Rather, this passage discloses that both displaying the ancillary content and
pausing of the main video occur in response to interact with an interface link.
Chen 6:21–24.
Chen further states that, after the user clicks inside the hot-link, the video is
paused by a pause command or request while the new data is displayed. Chen
3:49–57. Owner contends that this passage is “at least ambiguous as to what
generates the [] pause request.” App. Br. 9. Based on this purported ambiguity,
Owner argues that the pause command or request in Chen is not the result of the
user interaction with an interface link. App. Br. 8. Owner, in supporting this
position, focuses on the statement in Chen stating “[w]hile this new data is being
displayed, the video is paused.” App. Br. 9 (citing Chen 3:56–57). We are not
persuaded.
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Owner argues that Chen supports that the video is paused “while the new
data is already being displayed.” App. Br. 9. However, Chen does not state
interrupting the video, while the new data is already being displayed. Chen 3:56–
57. Even assuming Owner’s understanding is an accurate reading of Chen, we
determine that Chen discloses that the video is paused as a result of the user
clicking inside the hot link. Chen 3:49–61, Fig. 1; Resp. Br. 6. Also, Chen
discloses that if the user clicks in the region of the hot link indicator, the linked
page is displayed and the video is paused. Chen 6:21–24; Resp. Br. 7. We find no
uncertainty in this statement that Chen describes a causal relationship between the
user interacting with an interface link and both (1) a resulting video stream
interruption and (2) a resulting ancillary content request transmission as recited.
See id. Chen, thus, discloses interacting with an interface link to both interrupt a
video stream and transmit a request for ancillary content as recited. See id.
Owner further discusses columns 4 and 5 in Chen to support that there are
ambiguities regarding whether the video stream is interrupted due to the user
interacting with the interface link. App. Br. 9 (citing Chen 4:66–5:40).
Specifically, Owner argues that columns 4 and 5 of Chen teach how to create the
hot video content and fail to mention how to pause the video. App. Br. 10. Owner
further relies on the Declaration of Dr. Gareth Loy, dated March 6, 2013, and the
Bove Declaration to support this position. App. Br. 10 (citing to Loy Decl. ¶ 15 on
page 6; Bove Decl. ¶ 16). Once again, we are not persuaded.
Dr. Loy discusses a passage in Chen concerning inserting a pointer to the
URL when creating hot video content. Loy Decl. ¶ 15 (discussing Chen 4:66–
5:40). Because this passage fails to discuss inserting a command to interrupt the
streaming video, Dr. Loy argues that the pointer does not convey an interrupt video
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command. Id. Thus, in Dr. Loy’s opinion, one skilled in the art would have
recognized the “instructions to interrupt [in Chen] would have come from
somewhere,” but that the source of interrupt instruction is ambiguous. Id. Even
so, Dr. Loy argues the order of events in Chen “support the conclusion the
instructions to send the pause request are contained in the html file.” Id. Dr. Bove
states this discussed portion of Chen “is not even relevant to the pause operation.”
Bove Decl. ¶ 16 (citing Chen 4:66–5:40); Reb. Br 4 (citing Bove Decl. ¶ 16). In
Owner’s view, this statement made by Dr. Bove supports the understanding that
the pause operation does not relate to interacting with the interface link. See App.
Br. 10; Reb. Br. 7 (citing Bove Decl. ¶ 16); see also Reb. Br. 3–4 (discussing the
Appeal Brief, claim 83, Chen 4:66–5:50, and the Loy Declaration), 6–7 (quoting
Loy Decl. ¶ 15).
Weighing the declaratory evidence and considering Chen, we are not
persuaded by Owner’s contentions. Chen discusses how to create hot video
content with hot-link information using a hot video editing system and indicating
the desired region to be hot. Chen 4:66–5:40. Yet, we agree with the Examiner
that this passage focuses on the hot video content creation and is not intended to
describe the steps taken when a user clicks on a hot link (e.g., interacts with the
interface link). See ACP 9–10 (agreeing with Requester). Dr. Bove also discusses
in Paragraph 16 how hot links are placed in the video program not how the hot
links function once a link is selected and the video is being played. Bove Decl. ¶
16.
Additionally, as Dr. Bove explains, one skilled in the art would have
recognized that the operations performed during the viewing of a main video and
selection of a hot link are detailed in another portion of Chen which discusses the
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hot video decoder. Bove Decl. ¶ 17 (citing Chen 5:49–6:31). We agree that the
discussion of the hot video decoder is more relevant to what occurs when a user
interacts with an interface link. Chen 5:49–6:31. And as discussed above, Chen
discusses in this passage that both displaying the linked page and interrupting the
video occur as the result of the user interacting with an interface link. Chen
6:21–24.
Additionally, when arguing that the video with the requested content is
delivered and displayed prior to pausing the main video stream, Owner further
states that a pause request travels faster than requesting a file. App. Br. 9. We find
no supporting evidence for this position. Nonetheless, even assuming Owner is
correct, an assumption that a pause requests purportedly travels faster than file
requests would support the conclusion that Chen’s pause requests or commands
occur prior to any delivery of ancillary content. See id. Yet, Owner argues that
this “finding” supports that Chen’s pause request and ancillary content request are
not sent at the same time, would be contained in the html file delivered to the user
(e.g., the ancillary content), and thus would not be in response to interacting with
an interface link. Id. We find these assertions are merely attorney arguments with
insufficient supporting evidence to support these conclusions, including that one
skilled in the art would have understood Chen to teach a pause request can only be
issued after the displaying of the ancillary content. See Bove Decl. ¶ 14.
For the above reasons, we are not persuaded that the Examiner erred in
rejected claims 1 and 21 and claims 2, 4, 6, 9, 15, 16, 22, 24, 26, 29, 35, and 36 not
separately argued (App. Br. 14).

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B. Claims 83–85 and 87–89
Given the above-discussed claim construction, we find any contention
presented by Owner that Chen does not pause “by utilizing instructions encoded in
the video itself” unpersuasive. See App. Br. 13. That is, a collection of
instructions in Chen, whether in a single program or several programs considered
collectively as the link program can be mapped to the recited “link program.” As
such, even assuming Owner is correct that pause instructions are written into the
hot video decoder and not the video itself (see App. Br. 13–14), the collective
instructions can reasonably be interpreted as “the link program” as broadly as
recited and contrary to Owner’s arguments.
Also, even though language in claim 83 (e.g., reciting “a link program
adapted to” perform steps (a) and (b)) differs from claim 1 (e.g., reciting the step of
interacting “in a single interaction with the interface link to” perform steps (a) and
(b)), we disagree that the Examiner erred by relying on the same reasoning in
rejecting claims 1, 21, and 83. See App. Br. 12–13; Reb. Br. 3. First, Owner
provides no cite in the RAN to support that the Examiner “relies on the exact same
arguments . . . .” App. Br. 12. Second, assuming Owner is referring to page 11 of
the RAN, the actual rejection cites to the Request, which separately addresses the
limitations of claims 1 and 83. RAN 3 (citing Request 24–26 and Exhibit 31);
compare Request, Exhibit 31, pp. 2–3 with Request, Exhibit 31, pp. 24–26 . Third,
Owner does not contend that steps (a) and (b) in these claims differ, such that
reliance on the discussion of claim 1’s steps (a) and (b) by the Examiner does not
address claim 83’s steps (a) and (b). We refer above to responses for any similar
contentions made by Owner for claim 83.
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For the first time in the Rebuttal Brief, Owner introduces a deposition of Dr.
Bove taken September 4, 2014 in a related proceeding, CBM2014-00052 for the
’246 patent, arguing that the statements made by Dr. Bove during the deposition
require a conclusion that Chen does not anticipate claim 83 and destroys Dr.
Bove’s credibility. Reb. Br. 2–12. Notably, evidence filed after the date of filing
an appeal will not be admitted, except as permitted by reopening under 37
C.F.R. § 41.77(b)(1). 37 C.F.R. § 41.63(c). Although Owner filed a response
requesting entry of an amendment to the claims under 37 C.F.R. § 41.63(a), Owner
did not request reopening of the proceeding before the Examiner. See Amendment
Under 37 C.F.R. § 41.63(a) filed September 14, 2015. Also, there is no evidence
in the record that this amendment has been entered by the Examiner.
Importantly, the rebuttal brief shall not include any new affidavit or other
evidence. 37 C.F.R. § 41.71(c)(4). A petition to waive this rule was filed
concurrently with the Rebuttal Brief. On March 23, 2015, the Office rendered a
decision dismissing the petition and indicating the deposition transcript has not
been entered. See March 23, 2015 Decision on Petitions Under §§ 1.182 and
1.183 (“Dec. on Pet.”), page 1. The decision indicates the deposition can be
entered using an information disclosure statement (IDS). Dec. on Pet. 5–6. The
Examiner has yet to consider the IDS or reopened prosecution to consider this
evidence; thus, at this juncture, the evidence has not been entered into the record.
Accordingly, the Bove deposition of September 4, 2015 and its contents are
untimely, and we will afford Dr. Bove’s declaratory testimony of record probative
value. We will not address any argument in the rebuttal brief related to the Bove
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deposition for CBM2014-00052 and purported inconsistencies between this
deposition and his other testimony for the ’592 patent.6 Reb. Br. 2–12. .
For the above reasons, we are not persuaded that the Examiner erred in
rejected claim 83 and claims 84, 85, and 87–89 not separately argued (App. Br.
14).
C. Chen and Wistendahl or Herrmann
Claims 5, 25, and 86 are rejected under § 103(a) based on Chen and
Wistendahl. RAN 3. For this rejection, Owner contends these claims are
patentable due to their dependency on claims 1, 21, and 83. App. Br. 14. We are
not persuaded for reasons previously discussed and sustain the rejection.
Claims 76 and 78 are rejected under § 103(a) based on Chen and Herrmann.
RAN 4. For this rejection, Owner repeats the argument that “any pause request
issued in Chen comes from the accessed ancillary content, not from interacting
with an interface link.” App. Br. 15. For reasons previously discussed, we are not
persuaded by this assertion and sustain the rejection.
D. Wistendahl and Herrmann or Pereira
Claims 1, 2, 4, 5, 9–12, 14–18, 21, 22, 24, 25, 29–32, 34–38, 76–81, 83, 84,
and 86–91 are rejected under 35 U.S.C. § 103(a) based on Wistendahl and
Herrmann; Claims 1, 2, 4, 5, 8–12, 14–16, 18, 21, 22, 24, 25, 28–32, 34–36, 38,
76–78, 80, 83, 84, 86–89, and 91 are rejected based on Wistendahl and Pereira.

6 The petition decision further indicates that Owner has not demonstrated with
sufficient evidence that the Bove deposition and Declaration conflict. Dec. on Pet.
6–7. In particular, the decision states that the Bove deposition concerns a different
proceeding, CBM2014-00052, for the ’246 patent, and the Bove Declaration
concerns the instant re-examination of the ’592 patent. Id.
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RAN 4–5. Owner presents the same arguments for these rejections. App. Br.
25–30.
Regarding Wistendahl, Owner asserts the cited portions fail to teach or
suggest the limitation of interacting in a single interaction with the interface link to
perform both steps (a) and (b) as recited in claim 1. App. Br. 25–26. Specifically,
Owner contends that the relied upon portion of Wistendahl fails to support that
Wistendahl recognizes the desire to interrupt or pause a video when a user selects a
hot spot without additional user input. App. Br. 25 (citing RAN 23 (quoting from
Wistendahl 16:66–17:7)). Owner posits that Wistendahl cites to Hooper (U.S.
Patent No. 5,442,390), which discloses how the VCR-like viewing functions are
performed in Wistendahl and which includes the customer entering commands.
App. Br. 25–26 (citing Wistendahl 17:22–28 and Hooper 3:31–41, 49–53), 29.
Additionally, Owner argues that Wistendahl does not state any pause or interrupt
functions occur remotely when interacting with the hot spot but rather at the local
set top box. App. Br. 26–28 (citing RAN 23–24 and Wistendahl 7:1–10, 9:44–48).
We are not persuaded.
Regarding whether a streaming video can be interrupted in Wistendahl
without additional user interaction, Wistendahl teaches that when the user clicks on
an object (e.g., a Maltese falcon in Figure 2), the interactive digital media (IDM)
program can issue an instruction to slow down or pause the video. Wistendahl
9:33–40, 44–48 (cited at Resp. Br. 19 and Request 19); Wistendahl, Figs. 2, 4;
RAN 24 (citing Wistendahl 9:44–48). Thus, whether or not other discussions in
Wistendahl state that the video stream can be interrupted without additional input
(App. Br. 25–26 (discussing Wistendahl 16:66–17:7, 17:22–28)), Wistendahl
teaches in column 9 that the program — not the user— issues an instruction to
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interrupt the video stream when the user interacts with a hot spot (e.g., interacts
with an interface link in a single interaction). Wistendahl 9:44–48. This is further
supported in the record by Dr. Bove’s discussion of how one of ordinary skill in
the art would have understood this passage in Wistendahl. See Resp. Br. 20–21
(citing Bove Decl. ¶ 22).   Moreover, we agree with the Examiner that the
discussion in Wistendahl to pause the video stream through “VCR-like controls”
does not mean that the user interacts with stop or pause buttons. RAN 24. Rather,
Wistendahl teaches IDM program uses “VCR like commands.” Id.
Wistendahl also teaches the IDM program causes other files or functions to
be performed when a user clicks on a designated hot spot. Wistendahl 7:1–10
(cited at App. Br. 27). Wistendahl specifically states other program functions
launched using the IDM program when the user selects a hot spot include
connecting to an external network, such as launching another application, initiating
the operation of another system, or a webpage or Internet service. Wistendahl
5:42–50 (cited at Request 17 and Bove Decl. ¶ 20). Thus, Wistendahl also teaches
a single interaction of clicking on a hot spot performs multiple operations.
Accordingly, Wistendahl suggests a single interaction with an interface link (e.g.,
selecting a hot spot) that both interrupts a streaming video and transmits a request
for ancillary content.
Owner further argues that Wistendahl teaches that any interruption in the
video stream occurs locally and not “at the remote location” as required by claim 1.
App. Br. 26–28. Owner focuses on Wistendahl’s teaching of the IDM program
issuing an instruction that slows down or pauses the video streaming to processor
48 at set top box 32 when a user clicks on a hotspot object. App. Br. 27 (citing
RAN 23–24 and Wistendahl 9:44–48); Wistendahl, Fig. 4. Given this teaching,
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Owner contends Wistendahl does not interrupt the streaming video at a remote
location at recited in claim 1.
To be sure, Wistendahl discloses an instruction to interrupt (e.g., slow down
or pause) the video stream occurs locally at a set top box. However, Wistendahl
also discusses streaming videos-on-demand, media-on-demand system, and live
television programs. Wistendahl 17:7–13 (cited in part at RAN 24); Wistendahl
5:60–63. In these scenarios, streaming video occurs from a remote location and, in
the case of live broadcasting, suggests continual streaming. As such, the source of
the video content is at a remote server. See RAN 25 and Resp. Br. 22 (indicating
“the source of the ‘streaming’ is the video server). Moreover, Wistendahl further
teaches an example of controlling the streaming of content from a remote server by
sending an interrupt command from a subscriber. Wistendahl 17:7–13. Based on
the above discussions, Wistendahl teaches and suggests to one skilled in the art
that there a predictable number of solutions within an ordinarily skilled artisan’s
grasp as to where to interrupt the video stream (e.g., locally or remotely) and an
ordinarily skilled artisan would have had a good reason to pursue either known
option. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Moreover, the rejections further rely on Herrmann and Pereira to teach the
limitations of claim 1, including the recitation of “interacting . . . with the interface
link to . . . interrupt, at a remote location, the streaming of the video . . . so as to
prevent streaming of the video over the network.” RAN 4–5 (citing Request 29–
30, Exhibit 33 and Request 31, Exhibit 357). For example, one rejection discusses
Herrmann teaches video streamed over the network can be paused at the server —

7 RAN 5 lists Exhibit 34, but Request at page 31 correctly refers to Exhibit 35.
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a finding that Owner has not disputed. Request 30. Additionally, although not
relied upon in affirming the rejection based on Wistendahl and Herrmann,
Herrmann expresses a concern to avoid buffering locally large amounts of data
received from a server. See Herrmann, p. 2 (cited at Request, Exhibit 33, pp. 3–4).
This further demonstrates that one skilled in the art would have recognized a
reason to pursue the option of interrupting streaming videos remotely. As such,
Wistendahl in combination with Herrmann suggests interrupting streaming at a
remote location as recited in claim 1. RAN 22.
Lastly, for the first time at oral hearing, Owner indicates IPR2014-01456
considered Wistendahl and a similar limitation of interrupting at remote location.
In denying institution, the Board found that “[n]one of the portions of Wistendahl
cited by Petitioner discloses an interrupting of the video stream at the remote site . .
. .” Hulu, LLC v. Intertainer Inc., Case IPR2014-01456, 2015 WL 1050481 at *6.
However, these proceedings are distinguishable for several reasons. First, the
decision states Wistendahl does not “disclose[] 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.” Id. (emphasis
omitted and added). Thus, the determination in IPR2014-01456 that Wistendahl
does not anticipate claim 1 or 16 of the ’246 patent was not based solely on
Wistendahl failing to disclose interrupting the video stream at the remote site, but
rather on both failing to disclose interrupting the video stream at the remote site
along with in response to the receiving an indication of the interaction with the link
program.
Second and importantly, the proposed ground in the IPR was based on an
anticipation rejection, where Wistendahl on its own must describe expressly or
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inherently each and every limitation in the claims. Hulu, LLC v. Intertainer Inc.,
Case IPR2014-01456, 2015 WL 1050481 at *6–7. Here, the rejection is based on
obviousness using Wistendahl. Thus, we must consider not only what Wistendahl
discloses but also what the reference teaches or suggests. As explained above,
when considering Wistendahl’s teachings collectively, we determine that one
skilled in the art would have recognized at least a suggestion to interrupt video
streaming at a remote location. Also, as discussed above, the rejections here are
based on a secondary reference, and at least in the case of the rejection based on
Wistendahl and Herrmann, this rejection further relies upon the teachings and
suggestions of Herrmann when addressing the recitation related to interrupting
video streaming from a remote location.
For the above reasons, we are not persuaded that the Examiner erred in
rejected claims 1, 2, 4, 5, 8–12, 14–18, 21, 22, 24, 25, 28–32, 34–38, 76–81, 83,
84, and 86–91.
E. Wistendahl, Herrmann or Pereira, and Chen
Claims 6 and 26 of the ’592 patent are rejected under 35 U.S.C. § 103(a)
based on Wistendahl, Herrmann or Pereira, and Chen. RAN 5–6. Owner contends
that these claims are patentable due to their dependency on claims 1 and 21. We
are not persuaded that the Examiner erred in rejected claims 6 and 26 for the
above-stated reasons.
F. Remaining Rejections
Our conclusion that the Examiner did not err in rejecting claims 1, 2, 4–6,
8–12, 14–18, 21, 22, 24–26, 28–32, 34–38, 76–81, and 83–91 based on the adopted
rejections discussed above renders it unnecessary to reach the propriety of the
remaining rejections. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed.
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Cir. 1984); cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). See also 37
C.F.R. 41.77 (a) (“The Patent Trial and Appeal Board … may affirm or reverse
each decision of the examiner on all issues raised on each appealed claim”) and
Gleave, 560 F.3d at 1338.

IV. CONCLUSIONS
Owner did not demonstrate that the Examiner erred in rejecting claims 1, 2,
4–6, 8–12, 14–18, 21, 22, 24–26, 28–32, 34–38, 76–81, and 83–91.
The Examiner’s decision to reject claims 1, 2, 4–6, 8–12, 14–18, 21, 22,
24–26, 28–32, 34–38, 76–81, and 83–91 is affirmed.

V. TIME PERIOD FOR RESPONSE
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable
under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See 37 C.F.R.
§§ 90.1 and 1.983
AFFIRMED

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FOR PATENT OWNER:

Brent D. Martin
MARTIN & FERRARO, LLP
5151 Headquarters Drive, Suite 170
Plano, TX 75024

FOR THIRD-PARTY REQUESTERS:

David L. Fehrman
MORRISON & FOERSTER LLP
555 West Fifth Street, Suite 3500
Los Angeles, CA 90013