Huluv.Intertainer, Inc.Download PDFPatent Trial and Appeal BoardOct 15, 201513495884 (P.T.A.B. Oct. 15, 2015) Copy Citation Trials@uspto.gov Paper 11 571-272-7822 Entered: October 15, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD HULU, LLC, Petitioner, v. INTERTAINER, INC., Patent Owner. Case IPR2014-01456 Patent 8,479,246 Before MICHAEL W. KIM, BRIAN P. MURPHY, and JENNIFER MEYER CHAGNON, Administrative Patent Judges. CHAGNON, Administrative Patent Judge. DECISION Petitioner’s Request for Rehearing 37 C.F.R. § 42.71 I. INTRODUCTION Hulu, LLC (“Petitioner”) filed a Request for Rehearing (Paper 9, “Rehearing Request” or “Reh’g Req.”) of the Institution Decision dated March 6, 2015 (Paper 8, “Dec.”). Pursuant to our authorization, IPR2014-01456 Patent 8,479,246 2 Intertainer, Inc. (“Patent Owner”) filed an Opposition (Paper 10, “Opp.”) to the Rehearing Request. No reply was authorized. Petitioner requests reconsideration of the Institution Decision’s denial of claim challenges advanced by Petitioner in the Petition, as listed in the following chart (Reh’g Req. 1): Reference(s) Basis Claim(s) Challenged Wallenius1 § 102(e) 1, 4–9, 12–15, 22, 24, 26, 30 Wallenius, Realplayer2 § 103 2, 3 Wistendahl3 § 102(e) 1, 4–7, 10, 12–14, 22, 24, 26, 30 Wistendahl, Hartanto4 § 103 15 Wistendahl, Realplayer § 103 2, 3 For the reasons stated below, Petitioner’s request is denied. II. STANDARD OF REVIEW When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1 U.S. Patent No. 7,139,813 B1 (Ex. 1005). 2 Realplayer G2 User Manual, Chapter 4 (1998–1999) (Ex. 1003). 3 U.S. Patent No. 6,496,981 B1 (Ex. 1004). 4 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) (Ex. 1010). IPR2014-01456 Patent 8,479,246 3 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d). III. ANALYSIS Petitioner’s arguments are separated into “grounds based on Wallenius” and “grounds based on Wistendahl.” Reh’g Req. 4–13. We address Petitioner’s arguments regarding each of these sets of grounds in turn. A. Grounds Based on Wallenius Petitioner asserts that we erred in denying the grounds based on Wallenius under 35 U.S.C. § 325(d) because our determination that “the same or substantially the same prior art or arguments previously were presented to the Office” was “factually erroneous.” Reh’g Req. 4. In this regard, Petitioner asserts that “arguments regarding [the] adequacy of the inventors’ declarations were not ‘presented to the Office’ and there is no evidence that the examiner handling ex parte prosecution properly considered those arguments when allowing the claims.” Id. Petitioner further notes that these arguments were “submitted for the first time on April 8, 2013 [in the ’592 reexamination proceeding5], which is at least 5 days after the ex parte examiner had accepted the inventors’ declarations and 5 Reexamination proceeding of related U.S. Patent No. 7,870,592. IPR2014-01456 Patent 8,479,246 4 allowed the claims of the ‘246 patent.” Id. at 4–5 (citing Ex. 1002, 25 (’884 application,6 Notice of Allowability); Pet. 15). Patent Owner argues that the ex parte examiner did, in fact, consider the arguments presented in the ’592 reexamination proceeding, and points to an Information Disclosure Statement dated May 14, 2013 submitting these arguments to the Examiner of the ’884 application, and the IDS initialed by the examiner on May 28, 2013, both prior to issuance of the ’246 patent. Opp. 1–3 (citing Ex. 1002, 5, 12, 18, 19); see also Ex. 1001, at [56] (listing “Third Party Requesters Comments After Patent Owner Response Pursuant to 37 CFR § 1.947 for Reexamination Control No. 95/002,358, filed Apr. 8, 2013, 66 pages,” as one of the “References Cited” (see page 5)). Petitioner further asserts that, “[a]t the very least, the [Central Reexamination Unit’s (“CRU”)] findings in the ’592 reexamination [proceeding] demonstrate a reasonable likelihood that the Wallenius reference is prior art.” Reh’g Req. 7. Petitioner argues that the panel “appears to have failed to apply the proper [reasonable likelihood] institution standard in its Decision,” because “[a]t this stage of the proceeding[], [it] need not establish by a preponderance of the evidence that Wallenius is prior art. It must only show a reasonable likelihood that it is available as prior art.” Id. at 8–9. According to Petitioner, we “should have considered whether there was a ‘reasonable likelihood’ that the inventors’ declarations were insufficient to antedate Wallenius,” and that “[u]nder that standard, Petitioner submits that there is more than sufficient evidence in the record to 6 U.S. Patent Application No. 13/495,884, from which the ’246 patent issued. IPR2014-01456 Patent 8,479,246 5 conclude that there is a reasonable likelihood that Wallenius would qualify as prior art against the claims of the ’246 Patent.” Id. at 8 (citing 35 U.S.C. § 314(a)). Regarding Petitioner’s assertion that it “must only show a reasonable likelihood that [Wallenius] is available as prior art” (Reh’g Req. 8–9), Petitioner does not provide any citation or support for applying a “reasonable likelihood” standard with respect to each underlying factual determination in determining whether to institute inter partes review. As set forth in 35 U.S.C. § 314(a), the standard for institution of an inter partes review is whether there is a “reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” (emphasis added). Further, the language of 35 U.S.C. § 325(d) provides the Board with discretion, “[i]n determining whether to institute or order a[n inter partes review] proceeding . . . , [to] 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.” Further still, while we recognize other panels of the Board in other proceedings may have determined an affidavit or declaration submitted during prosecution to be “insufficient to antedate a prior art reference during an inter partes review, where adversarial evidence and argument [were] presented,” as argued by Petitioner (Reh’g Req. 9), each such determination is an intensely fact-specific inquiry, and in this case, the Petition did not include any substantive arguments with respect to the prior art status of Wallenius in terms of the ’246 patent claims. See Pet. 14–16. Instead, the Petition merely argues that the CRU Examiner in the ’592 reexamination proceeding “accepted the . . . argument that the inventor declarations did not IPR2014-01456 Patent 8,479,246 6 support reduction to practice of those limitations prior to the priority date of Wallenius,” and, “[t]herefore, for the same reasons outlined by the Examiner in the ‘592 [reexamination proceeding], the Applicant cannot use the inventor declarations to antedate Wallenius, and Wallenius is proper prior art in this Request.” Id. at 15–16 (emphasis added). Because no substantive arguments were presented in this proceeding regarding the claim limitations of the ’246 patent,7 which are different from the claim limitations at issue in the ’592 reexamination proceeding, we could not have overlooked Petitioner’s arguments in this regard. For the foregoing reasons, we are not persuaded that we overlooked Petitioner’s arguments with respect to whether Wallenius is valid prior art. Rather, relying on our discretion under 35 U.S.C. § 325(d), we determined the Office had already decided the issue of the sufficiency of the adequacy of the inventors’ declarations antedating Wallenius with regard to the claims of the ’246 patent. B. Grounds Based on Wistendahl Independent claim 1 recites “interrupting, at the first site, the streaming of the video in response to receiving the indication of the interaction with the link program.” Ex. 1001, 9:65–67 (emphases added). Independent claim 16, from which challenged claims 22, 24, 26, and 28 7 At best, Petitioner’s arguments amount to an attempt to incorporate the CRU Examiner’s findings by reference, which is impermissible under our rules. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”); Cisco Sys., Inc. v. C-Cation Techs., LLC, Case IPR2014-00454, slip op. at 7–10 (PTAB Aug. 29, 2014) (Paper 12) (informative). IPR2014-01456 Patent 8,479,246 7 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). In our Institution Decision, we concluded “Petitioner does not point us to persuasive evidence that Wistendahl discloses an embodiment in which the interruption of the video stream occurs both at the remote site and in response to receiving the indication of the interaction with the link program.” Dec. 12. Petitioner argues that this conclusion is in error, and that the “disclosure in Wistendahl[,] as shown in the Petition and accompanying expert declaration[,] show[s] a single embodiment of Wistendahl which meets at least the claim limitations” of claim 1 of the ’246 patent. Reh’g Req. 10. In its Petition, Petitioner relied 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, 9:33–48. IPR2014-01456 Patent 8,479,246 8 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 the subscriber and rescheduling the sending of content segments as requested by the subscriber. Id. at 17:7–13. The second cited portion of Wistendahl, set forth above, teaches a pause command is initiated by the user operating “familiar VCR-like controls,” which allow the user to “stop, pause, rewind, or otherwise control the playback” of the video. See Ex. 1004, 16:66–17:6. Petitioner asserts in its Rehearing Request that “[t]here is no indication that these ‘familiar VCR- like controls’ in Wistendahl are limited to buttons with which the user must interact, as the Board apparently concludes, rather than functionality that takes place when a user interacts with a hot-spot.” Reh’g Req. 11. Petitioner points to the Declaration of V. Michael Bove, Jr. (Ex. 1008), in which he testifies “one of ordinary skill in the art of interactive video would understand the passage above to encompass pausing of the video . . . in response to selection of a hyperlink without requiring further action by the viewer.” Reh’g Req. 11–12 (citing Ex. 1008 ¶ 40). Beyond a bare citation to this paragraph of Mr. Bove’s Declaration, however, Petitioner did not present this argument in the Petition. See Pet. 34, 36–37. Instead, the Petition included only citations to the two portions of Wistendahl reproduced above, with no such accompanying explanation. Id. In any event, as described in Wistendahl, any interaction with the program (e.g., the selection of hotspots, etc.) appears to happen after the user pauses the video using the “VCR-like controls.” See Ex. 1004, 16:66–17:6 (“When media content is rendered interactive with an IDM program using IPR2014-01456 Patent 8,479,246 9 ‘hot spot’ position data, it may be desirable to stop, pause, rewind, or otherwise control the playback with familiar VCR-like controls to allow the user time to interact with the program, such as for reading information, making choices, inputting information, following a hyperlink from the hot spot, or saving a marked hot spot for later review.”) (emphasis added). We are not persuaded that Wistendahl discloses the hotspot itself acting as the VCR-like controls to thus pause the video, as asserted by Petitioner. Reh’g Req. 11–12. Petitioner also asserts, in its Rehearing Request, that the first cited portion of Wistendahl, set forth above, discloses pausing at the network server (e.g., at the claimed first site/remote location), contrary to our findings in the Institution Decision. Id. at 12–13. While we agree with Petitioner’s characterization that Wistendahl discloses the video is sent from the network server, we do not agree that Wistendahl necessarily discloses that “any pause commands issued by video processor 48 cause[ ] an interruption in the streaming of videos from network server 30 to video processor 48,” as asserted by Petitioner. Id. at 13. Wistendahl simply discloses that the video processor slows down or pauses the running of the movie. Ex. 1004, 9:45–48. The cited portion of Wistendahl does not disclose slowing down or pausing the transmitting of the movie, which is discussed separately from the running of the movie. Id. at 9:4–10. For the foregoing reasons, we are not persuaded that we overlooked or misapprehended Petitioner’s arguments with respect to whether Wistendahl discloses the interrupting limitation of the challenged claims. IPR2014-01456 Patent 8,479,246 10 IV. CONCLUSION For the reasons discussed above, because Petitioner has not shown that the Board abused its discretion in declining to institute inter partes review on the ’246 patent based on the Petition in this case, the rehearing request is denied. V. ORDER Accordingly, it is ORDERED that Petitioner’s Request for Rehearing is denied. IPR2014-01456 Patent 8,479,246 11 PETITIONER: Eliot Williams Harper Batts BAKER BOTTS LLP eliot.williams@bakerbotts.com harper.batts@bakerbotts.com PATENT OWNER: Amedeo F. Ferraro Thomas H. Martin MARTIN & FERRARO, LLP aferraro@martinferraro.com tmartin@martinferraro.com docketing@martinferraro.com Copy with citationCopy as parenthetical citation