Huluv.Intertainer, Inc.

Patent Trial and Appeal Board

Oct 15, 2015

13495884 (P.T.A.B. Oct. 15, 2015)

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,
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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).
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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.
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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.
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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
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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).
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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.
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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
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‘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.
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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.

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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