Ex Parte 7870592 et alDownload PDFPatent Trial and Appeal BoardSep 29, 201595002358 (P.T.A.B. Sep. 29, 2015) Copy Citation 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 patentâ€) issued to Ron J. Hudson, Terrence T. Coles, Craig D. Berry, and Allen D. Easty, entitled Method for Interactive Video Content Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 2 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 patentâ€) 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. Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 3 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. Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 4 (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 Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 5 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) (“Herrmannâ€) F. Pereira and P. Koenen, MPEG-4 - opening new frontiers to broadcast services, EBU Technical Review, pp. 1–14 (Spring 1999) (“Pereiraâ€) 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 Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 6 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 Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 7 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.’â€). 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). Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 8 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. Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 9 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. Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 10 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 Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 11 “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 Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 12 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. Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 13 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.â€) 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. Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 14 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 Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 15 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 Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 16 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). Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 17 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. Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 18 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.â€), 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 Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 19 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. Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 20 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 Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 21 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, Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 22 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. Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 23 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 Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 24 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. Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 25 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 claimâ€) 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 Appeal 2015-005565 Control 95/002,358 Patent 7,870,592 B2 26 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 Copy with citationCopy as parenthetical citation