Uniloc 2017 LLC

Patent Trials and Appeals Board

Dec 28, 2020

IPR2019-01363 (P.T.A.B. Dec. 28, 2020)

Trials@uspto.gov Paper: 29
571-272-7822 Date: December 28, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SLING TV L.L.C.,
Petitioner,

v.

UNILOC 2017 LLC,
Patent Owner.
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____________

Before KEVIN F. TURNER, JENNIFER S. BISK, and NEIL T. POWELL,
Administrative Patent Judges.

BISK, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
35 U.S.C § 318(a)

I. INTRODUCTION
Sling TV L.L.C. (“Petitioner”) filed a Petition requesting an inter
partes review of claims 1–3 of U.S. Patent No. 9,721,273 B2 (Ex. 1001, “the
’273 patent”). Paper 1 (“Pet.”). Uniloc 2017 LLC, identified as the owner
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of and real party in interest to the ’273 patent (Paper 4), filed a Preliminary
Response to the Petition. Paper 6 (“Prelim. Resp.”). We instituted this
review as to all challenged claims. Paper 7 (“Inst. Dec.”).
Subsequent to institution, Patent Owner filed a Patent Owner
Response. Paper 13 (“PO Resp.”). Petitioner filed a Reply. Paper 14
(“Reply”). And Patent Owner filed a Sur-Reply. Paper 15 (“Sur-Reply”).
An oral hearing was held on October 14, 2020. Paper 28 (“Tr.”). Based on
discussions at the hearing, the panel authorized, and each party filed,
additional briefing on claim construction issues. Paper 26 (“Pet. Post-
Hearing Br.”); Paper 27 (“PO Post-Hearing Br.”).
This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
For the reasons that follow, Petitioner has not demonstrated by a
preponderance of the evidence that claims 1–3 of the ’273 patent are
unpatentable.
II. BACKGROUND
A. Related Matters
The parties identify several district court cases involving the ’273
patent. Pet. v; Prelim. Resp. 2. With its Response, Patent Owner filed a
Markman ruling issued by the Central District of California on March 9,
2020. Ex. 2001 (Markman ruling in Uniloc 2017 LLC v. Netflix, Inc., 8:18-
cv-02055) (“Netflix Decision”).
B. The ’273 Patent
The ’273 patent, titled System and Method for Aggregating and
Providing Audio and Visual Presentations Via a Computer Network, issued
August 1, 2017. Ex. 1001, codes (45), (54). It addresses the problem of
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locating content on the Internet for the purpose of business productivity and
consumer education and entertainment. Id. at 1:51–55, 2:6–10. In
particular, the ’273 patent discusses storing and aggregating audio/visual
presentation data for delivery via a computer network using a common web
page. Id. at 2:15–3:11.
Figure 2 is reproduced below.

Figure 2 “illustrates an electronic document according to an embodiment of
the present invention.” Id. at 3:22–23. Web page 200 “aggregates audio
and/or video content for presentation to users of computers 20.” Id. at 5:4–
6. It displays a row for each of three presentations 265, 270, and 275, each
row including particular content graphics 230, particular content information
240, and indicator 235. Id. at 5:16–20. “A user may select such a
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presentation for display by selecting an individual presentation for streaming
or downloading, such as by clicking on an indicator . . . .” Id. at 5:20–23.
The ’273 patent describes an embodiment, process 800, which is
“suitable for automatically aggregating and linking to presentations housed
elsewhere in memory so as to be accessible to a [user’s computer] via [a]
network.” Id. at 10:56–62. According to the ’273 patent, “Really Simple
Syndication (‘RSS’) is a family of [standardized] Internet feed formats used
to publish content that may be frequently updated, such as podcasts (RSS
2.0).” Id. at 10:64–66.
Figure 8 is reproduced below.

Figure 8 shows a flow diagram of process 800. Id. at 10:56–58. After a user
provides log on information at a client computer (step 805) and a server
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computer logs the user on (step 810), the logged on user, at step 815,
requests to link an RSS feed by interacting with a web page. Id. at 11:20–
30. The server then requests information about the content to be created,
including title and description (step 820), and the user provides at least a
portion of the requested information (step 825). Id. at 11:30–41. The
information provided may be screened, filtered, or verified (step 830) and
stored (step 850). Id. at 11:41–52. At step 855, the server “may determine if
new content exists for one or more feeds stored at block 850” using “any of
a number of conventional manner[s], including periodically checking when
the feed was last updated.” Id. at 11:63–12:1. Any new or changed content
may be appended to the data stored in step 850. Id. at 12:1–3.
C. Illustrative Claim
Claims 1 and 2 are independent, and claim 3 depends from claim 2.
Claim 1 is illustrative of the subject matter at issue and reads as follows:
1. A method for providing content via a computer network and
computing system, the method comprising:
[a] storing presentation data that represents content
of a first collection of one or more presentations using
the computer system;
[b] storing data indicative of the first collection of
presentations so as to be associated with the presentation
data;
[c] storing feed data that represents a collection of
one or more feeds using the computer system, wherein
each of the feeds identifies a corresponding second
collection of one or more presentations being accessible
via the computer network and includes no data
representing content of the second collection of
presentations;
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[d] automatically and periodically accessing each
of the feeds to identify each of the corresponding second
collection of presentations, using the computer system;
[e] storing data associated with a third collection of
one or more presentations; and
[f] aggregating each of the first, identified second,
and third collections of presentations for delivery via the
computer network using a common web page.
Ex. 1001, 12:39–59 (bracketed lettering added) (emphasis added to
disputed limitation). Claim 2—and, therefore, all challenged
claims—contains a limitation identical to that emphasized above. See
id. at 13:7–11.
D. Proposed Grounds of Unpatentability
We instituted inter partes review on the following grounds of
unpatentability under 35 U.S.C. § 103. Inst. Dec. 11.
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Claim(s)
Challenged
35 U.S.C. § Reference(s)/Basis
1–3 1031 Li2, knowledge of a person of skill in the art3
1–3 103 Li, Motte4
Pet. 2, 19–63. Petitioner also relies on the Declaration of James A. Storer,
Ph.D. (Ex. 1002).
III. ANALYSIS
A. Level of Skill in the Art
The level of skill in the art is a factual determination that provides a
primary guarantee of objectivity in an obviousness analysis. See Al-Site
Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham
v. John Deere Co., 383 U.S. 1, 17–18 (1966)). The level of skill in the art
also informs the claim construction analysis. See Teva Pharm. USA, Inc. v.
Sandoz, Inc., 574 U.S. 318, 332 (2015) (explaining that claim construction
seeks the meaning “a skilled artisan would ascribe” to the claim term “in the
context of the specific patent claim” (emphasis omitted)).

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
2013. Because the application from which the ’273 patent issued was filed
before this date, the pre-AIA version of § 103 applies.
2 U.S. Patent Appl. Publication No. 2008/0256443 A1 (filed April 16, 2007;
published Oct. 16, 2008) (Ex. 1006).
3 Petitioner states that a person of ordinary skill in the art at the time of the
’273 patent “would have knowledge of the webpage, Internet, and feed
technology” discussed in Section V of the Petition. Pet. 8 (referring to
Pet. 2–4).
4 U.S. Patent Appl. Publication No. 2008/0071929 A1 (filed Sept. 18, 2006;
published March 20, 2008) (Ex. 1007).
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Petitioner asserts that
A POSA as of the August 21, 2008 priority date would
have had a bachelor’s degree in electrical engineering, computer
science, or a similar field with at least two years of experience in
web page and Internet technology or . . . a master’s degree in
electrical engineering, computer science, or a similar field with a
specialization in web page and Internet technology. A person
with less education but more relevant practical experience may
also meet this standard.
Pet. 13 (citing Ex. 1002 ¶ 49). Patent Owner “does not offer a competing
definition for purposes of this proceeding.” PO Resp. 10.
Because we find Petitioner’s proposed definition generally consistent
with the subject matter of the ’273 patent and cited references, we adopt it
for purposes of this analysis.
B. Summary of the Case
To understand this Decision, it is helpful to begin with a summary of
how the proceedings have developed. In particular, at the oral hearing it
became apparent that our Institution Decision was based on a misreading of
the Petition. See, e.g., Tr. 6:5–25. Patent Owner also appears to have based
its initial briefing (the Preliminary Response and the Patent Owner
Response) on a similar misreading. The misunderstanding centers on what
Petitioner relies upon in Li as disclosing the feed recited in limitation 1[c].
We understood Petitioner to be relying on Li’s link to an RSS channel as the
claimed feed. However, as described in more detail below, Petitioner’s
actual position relies on Li’s link to an RSS channel as the claimed feed data
and the RSS channel, itself, as the claimed feed. As also will be addressed
in more detail below, Petitioner’s actual position requires a certain claim
construction—that metadata are encompassed by “no data representing
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content”—for limitation 1[c], which is not addressed in the Petition. This
claim construction is also not explicitly addressed in the Reply brief.
Instead, like Petitioner’s position on what disclosure of Li was relied upon
for the recited feed, Petitioner’s position on claim construction only became
clear at the hearing.
The Petition asserts that Li discloses limitation 1[c] by first stating
that a person of ordinary skill in the art “would understand this limitation to
encompass storing data for accessing an RSS feed (e.g., RSS feed address)
from which a second collection of one or more presentations can be
identified.” Pet. 28. We understood, from this statement, Petitioner’s
position to be that Li’s link to an RSS channel is equivalent to the claimed
feed. This understanding was not altered by the rest of the Petition’s
discussion of limitation 1[c], which mainly focuses on Li’s disclosure of
links. For example, the Petition states that a person of ordinary skill in the
art “would understand that a link, such as a URL address, allows for
accessing content via a network.” Id. at 31. More importantly, in the
subsection explaining that Li discloses “no data representing content,” as
recited in limitation 1[c], the Petition states that “links to RSS channels
provide no data representing content of the items” and these links “are not
specific to any particular item, but instead provide a means for identifying
items that may change over time.” Id. at 32. Because the claim language is
“wherein each of the feeds identifies a second collection . . . and includes no
data representing content . . .” the Petition’s language implies that the
claimed feed is a link to an RSS channel. Nothing in this section of the
Petition discusses metadata. See id. at 28–32.
Upon reflection, we see that this section of the Petition also states that
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“Li discloses feed data, such as the addresses of RSS feeds” (id. at 29), “Li
discloses storing feed data (addresses of RSS feeds) that represents a
collection of one or more feeds (the user’s subscribed feeds)” (id. at 30), and
“RSS feeds include RSS channels (i.e., feeds) and items (i.e., second
collection of presentations)” (id. at 32). These statements are indications of
Petitioner’s actual position that the claimed feed data in limitation 1[c] is the
link to the RSS channel and the claimed feed is the RSS channel itself.
Unfortunately, the importance of this language did not become apparent
until after institution. In fact, we did not fully comprehend this to be
Petitioner’s position until the hearing.
In discussing the claim construction of limitation 1[c], the Petition
asserts that a person of ordinary skill in the art would understand the entire
limitation to “encompass storing data for accessing an RSS feed (e.g., RSS
feed address) from which a second collection of one or more presentations
can be identified.” Pet. 18. The rest of the claim construction section points
out that the ’273 patent discusses the RSS standard and its embodiments
“link to an RSS feed in a ‘conventional manner.’” Id. at 19. Nothing in the
claim construction section discusses the phrase “no data representing
content” or whether or not it applies to metadata. Id. at 18–19. In fact, as
will be discussed in the claim construction section below, the only portion of
the Petition to explicitly discuss data that represent content implies that
metadata do represent content. Id. at 23–24 (discussing limitation 1[a]).
Patent Owner appears to have misread the Petition in the same manner
we did. For example, in the Preliminary Response, Patent Owner argues that
Li does not disclose the claimed feed including “no data representing
content,” as recited in claims 1 and 2. Prelim. Resp. 5–6. Specifically,
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based on the Petition’s statement that “links to RSS channels provide no data
representing content of items,” Patent Owner argues that “links to RSS
channels are not what Li teaches constitutes the ‘feed.’” Id. at 5 (quoting
Pet. 32). Patent Owner also states that “Petitioner arbitrarily designates at
most a portion of the feed (or its address) as the feed itself to attempt to
shoehorn Li’s teachings into the claim.” Id. Consistent with these
statements and with our understanding of the Petition, the Preliminary
Response does not address Li’s RSS channel as the claimed feed or the fact
that Li’s RSS channel includes metadata. Id. at 5–6.
In the Institution Decision, we did not agree with Patent Owner’s
position that “in Li, the feed is the content” (Prelim. Resp. 5). Inst. Dec. 9–
10. Instead, we were persuaded that “a person of ordinary skill in the art
would understand Li to at least suggest using an RSS feed comprised solely
of a link to an RSS channel,” and that link would qualify as not including
“data representing content.” Id. at 10. Based on our current understanding
of Petitioner’s position, this statement is not relevant to whether Li discloses
limitation 1[c]. Because Petitioner relies on the link to an RSS channel as
the feed data, it is immaterial that a link does not include “data representing
content.” Instead, the outcome of this case depends on whether the RSS
channel itself includes “data representing content.” Because Petitioner
agrees that Li’s RSS channel includes a title or description of content—also
called metadata—the outcome turns on whether metadata qualifies as “data
representing content.” See, e.g., Tr. 6:22–25 (“So, that feed data is the link
to the RSS feed. Within—you know, if you were to access that link and
look what’s inside the RSS feed itself, what you would find would be a
couple things. One is either a title or description of some piece of content.”).
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The importance of this claim construction to the outcome of this case
began to emerge for the first time in the Reply Brief. Although the Reply
Brief’s claim construction section does not expand upon the Petition’s
construction for limitation 1[c], in its analysis of limitation 1[c], Petitioner
makes statements revealing that this construction is required for Petitioner’s
position to prevail. Reply Br. 3–4, 6–16. First, Petitioner states that “the
RSS feed found at the RSS feed address contains only URL links to the
underlying audio/video content to be presented, and the meta data regarding
that content, rather than containing the content itself.” Id. at 6. This
statement reveals that Petitioner understands Li’s RSS channel to include
both links to content and metadata. However, Petitioner continues to assert
that because Li’s RSS channel retrieves content of a feed through a link
rather than obtaining the content directly from the feed, Li discloses a feed
that includes “no data representing content.” Id. at 7; see also id. at 8–9
(stating “Li’s disclosure of a standard RSS structure conveying audio/video
data . . . does not include the underlying content, only a link thereto, together
with certain meta data about that content.”), 10 (“The links to underlying
content (e.g., URLs, item addresses) obtained from the feed in Li do not
‘represent content.’”); 11 (“Because Li discloses that the RSS feed does not
itself contain the underlying content, but only meta data regarding and link
to that underlying content, Li’s feed satisfies the claim limitation: ‘includes
no data representing content of the second collection of presentations.’”).
Later, Petitioner asserts that RSS feeds necessarily result in feeds that
include no data representing content, explaining that “[i]n the RSS standard,
the item element includes certain meta data regarding the item of content,”
which “cannot be considered ‘data representing the content.’” Id. at 13–14.
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In addition to the oblique discussion of claim construction, the Reply
continues to confuse the issue of what Petitioner is relying on for the
claimed feed. For example, the Reply, in responding to Patent Owner’s
argument that the Petition only considered part of Li’s feed, states that “the
Petition considers both the feed (link to an RSS channel accessed via the feed
address) and the information provided from the feed (a link to underlying
content and certain meta data about that content).” Id. at 11 (emphasis
added). This statement suggests that Li’s link to an RSS channel, and not
the RSS channel itself, is being relied upon for the claimed feed. We note
that at no point in the Reply Brief, or at any other point in this case, did
Petitioner point out our misreading of the Petition in our Institution
Decision.
Based on the content of the Reply, one of our first questions at the
hearing was a request that Petitioner clarify what it relies on in Li for the
claimed feed. Tr. 6:6–10. At this point, it became clear that Petitioner
(1) relies on the RSS channel, not a link to that channel, as the claimed feed,
and (2) requires a claim construction of “no data representing content” that
encompasses metadata.
As discussed in more detail below, the Petition did not sufficiently
clarify its claim construction position or, for that matter, what disclosure in
Li it was relying upon to show obviousness. Patent Owner, therefore, did
not have notice and fair opportunity to present arguments and evidence
rebutting Petitioner’s theory. For this reason, we find that Petitioner has not
demonstrated by a preponderance of the evidence that claims 1–3 of the ’273
patent are unpatentable.
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C. Claim Construction
For petitions filed on or after November 13, 2018, such as the one in
this case, we interpret claims in the same manner used in a civil action under
35 U.S.C. § 282(b), “including construing the claim in accordance with the
ordinary and customary meaning of such claim as understood by one of
ordinary skill in the art and the prosecution history pertaining to the patent.”
37 C.F.R. § 42.100(b) (2019). Only terms that are in controversy need to be
construed, and then only to the extent necessary to resolve the controversy.
Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
1017 (Fed. Cir. 2017).
The Petition proposes constructions for several claim terms. Pet. 13–
19. In the Preliminary Response, Patent Owner states that it is unnecessary
to expressly construe any claim term. Prelim. Resp. 4. In the Institution
Decision, we discussed the construction of the “wherein each of the feeds
identifies a corresponding second collection of one or more presentations
being accessible via the computer network and includes no data representing
content of the second collection of presentations” (“the wherein limitation”)
portion of limitation 1[c]. Inst. Dec. 7–8. In particular, for purposes of
institution, we construed the wherein limitation to “encompass links to RSS
channels” and to “allow storing of data representing content of the second
collection of presentations, as long as those data are not included in a feed.”
Id. We note that neither party disputes this interpretation. However, as
summarized above and discussed in detail below, the parties disagree over
other aspects of the scope of the wherein limitation.
In the Response, Patent Owner continues to assert that “the Board
need not expressly construe any claim term in a particular manner” and
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“Patent Owner does not propose a comprehensive construction, as it would
not be necessary to resolve the controversy and deny the Petition.” PO
Resp. 12. With its Response, Patent Owner files, but does not address, the
contents of the Netflix Decision issued on March 9, 2020, after the Petition
was filed. Id. at 10 (citing Ex. 2001). Relevant to this Decision, the Netflix
Decision expressly construed together two terms—“presentation data that
represents content of a first collection of . . . presentations” (a portion of
limitation 1[a]) and “data representing content of the second collection of
presentations” (a portion of limitation 1[c]) (we refer to these two terms as
“the data representing content limitations”)—as recited by claims 1 and 2.
Ex. 2001, 18–19. The parties did not appear to argue, nor did the District
Court appear to contemplate, that the two data representing content
limitations may have different definitions. Id. at 18–20.
According to the District Court, the parties in the case before it
disputed “whether the phrase ‘data representing content’ is limited to the
content itself or also describes a broader category of data such as ‘particular
content information 240.’” Id. at 19. In particular, Netflix argued that
construing the term broadly as proposed by Uniloc would render the
limitation “storing data indicative of the first collection of presentations so
as to be associated with the presentation data”—claim 1[e]—superfluous.
Id. at 19–20. Netflix also emphasized the phrase “presentation data” in the
phrase “data indicative of the first collection of presentations so as to be
associated with the presentation data” would lose meaning if the
presentation data could simply refer to the content itself. Id. Uniloc, on the
other hand, argued that the data representing content terms and “data
indicative of the first collection of presentations” do not have exactly the
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same meaning, but simply overlap, even if both are construed to cover
particular content information. Id. According to Uniloc, the data
representing content terms might include “MPAA ratings” and “data
indicative of the first collection of presentations” “might include file
information, url, and content ID,” and that all three terms may include “the
title, description, content graphics, and content itself.” Id.
The District Court agreed with Netflix, stating it would be improper to
interpret the data representing content terms as proposed by Uniloc because
that would “render the next phrase in the same claim entirely redundant and
superfluous” and “would undercut the plain language itself and ignore the
full import of the phrase ‘presentation data.’” Id. at 20. Thus, the district
court construed the data representing content terms as “the data, or a portion
of the data, of the audiovisual content itself within the first / second
collection of presentations.” Id. at 21.
In the Reply Brief, Petitioner again does not explicitly propose that
any particular claim term requires construction. See Reply 3–5; see also id.
at 16 (stating “[t]o the extent that the Board uses the Netflix Court’s
construction,” without suggesting we do so). However, in showing that Li
discloses the wherein limitation, Petitioner implies that the wherein
limitation must be construed such that metadata are not encompassed by data
representing content. Id. at 11 (“Because Li discloses that the RSS feed does
not itself contain the underlying content, but only meta data regarding and a
link to that underlying content, Li’s feed satisfies the claim limitation:
‘includes no data representing content of the second collection of
presentations.’”).
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Further, in the Reply, Petitioner argues that RSS feeds, such as those
disclosed in Li, necessarily result in feeds that include no data representing
content. Reply 12–13; see also Pet. 32 (“[A] POSA would understand that
the feature of ‘no data representing content’ is inherent to an RSS feed, such
as that disclosed by Li.”) (citing Ex. 1002 ¶ 143). According to Petitioner,
RSS feeds must not include “data representing content” because “[i]n the
RSS standard, the item element includes certain meta data regarding the item
of a content.” Reply 13. According to Petitioner, because the ’273 patent
discusses RSS as “the preferred (and only) embodiment of a data feed,” if
the metadata obtained by an RSS feed are considered “data representing
content,” the claims would improperly exclude the preferred embodiment.
Id. at 14. Thus, according to Petitioner, because Li also discusses RSS
feeds, it must also disclose “no data representing content.” Id.
We do not find this argument by Petitioner persuasive. First,
Petitioner does not properly support the assertion that RSS feeds necessarily
include no data representing content. In fact, in the hearing, Petitioner
concedes that “there is the possibility that you could put an entirety of a text
story into an RSS feed and that would have data representing the content.
That would be within the standard.” Tr. 15:20–23. Second, as Patent Owner
points out (PO Resp. 15–16; PO Post-Hearing Br. 1–2), the ’273 patent does
not limit its disclosure of feeds to RSS feeds. Ex. 1001, 11:15–19
(“Embodiments of the present invention will be discussed with regard to
RSS 2.0 feeds for non-limiting purposes of explanation only. It should be
recognized that embodiments of the present invention may be suitable for
use with other types of content (e.g., audio/video) feeds.”). We are,
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therefore, not persuaded that the ’273 patent’s discussion of RSS feeds leads
to a conclusion that metadata do not qualify as data representing content.5
In the hearing and its Post-Hearing Brief, Petitioner’s proposed claim
construction gets more complicated. Specifically, for the first time at the
hearing, Petitioner explicitly asserts that the two data representing content
limitations—“presentation data that represents content of a first collection of
. . . presentations” and “data representing content of the second collection of
presentations”—should be construed differently. Tr. 9:19–12:20.
According to Petitioner, the first term “presentation data that represents
content” “is in the context of presentation data” and, therefore, may include
metadata such as a title. Tr. 10:24–11:3; see Pet. (explaining that “Li
discloses particular content graphics (thumbnails) and particular content
information (titles) representing the data files (e.g., videos) of the first
collection”). In contrast, Petitioner explains that “data representing content”
in element 1(c) “is in the context of trying to understand what is this feed all
about” and, therefore, does not include metadata such as a title. Id. Such
differing definitions for the two terms would not be consistent with the
Netflix Decision, which did not distinguish between the two data
representing content limitations. Ex. 2001, 18–21; Tr. 14:4–6.

5 In the Institution Decision, we appear to agree with Petitioner’s assertion
that RSS feeds inherently teach “no data representing content.” Inst. Dec. 7–
8. This conclusion, however, was based on our misunderstanding that the
Petition was relying on a feed made up solely of a link to an RSS channel.
See Inst. Dec. 7–8 (“We understand Petitioner [in asserting that ‘no data
representing content’ is inherent to an RSS feed] to be asserting that a link to
an RSS channel is encompassed by the wherein limitation. We find this
assertion reasonable . . . and do not understand Patent Owner to dispute this
assertion.”).
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In its Post-Hearing Brief, Petitioner continues to propose this reading
of the claim terms. Pet. Post-Hearing Br. 1–3. Petitioner purports to be
asserting this argument in response to Patent Owner arguing “for the first
time” in its Sur-Reply that the two data representing content limitations
should have the same meaning. Id. at 1; Tr. 9:14–17. However, we note
that although the Petition does not explicitly make this argument, such
construction must be implicit in the Petition’s analysis of how Li discloses
the claim limitations. Compare Pet. 23 (“Li discloses ‘presentation data that
represents content of a first collection of one or more presentations’ in the
form of thumbnails and titles that represent content of the data files.”)
(emphasis added), with Pet. 32 (“Li discloses ‘each of the feeds . . . includes
no data representing content of the second collection of presentations.’”)
(emphasis added). Although the Petition does not explicitly state that
metadata such as titles are not “data representing content,” this is simply
because the Petition does not clearly spell out that it is Li’s RSS channel, as
opposed to the link to the RSS channel, that is being relied upon for the
claimed data feed. See Pet. 32 (“The links to the RSS channels provide no
data representing content of the items.”). We see nowhere in the Petition
that explicitly addresses the metadata included in an RSS channel in the
context of the wherein limitation. See Pet. 28–33. However, in the hearing,
Petitioner clarifies that the Petition is relying on Li’s RSS channel, which
includes metadata, for the claimed data feed. Tr. 6:18–26.
Crediting Petitioner’s explanation at the hearing of the meaning of the
Petition leads to a conclusion that the Petition implicitly construes the two
data representing content limitations differently. As we have mentioned,
however, the Petition does not explicitly mention this issue. To the contrary,
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in the claim construction section that specifically addresses limitation 1(c),
the Petition discusses only that data feeds must include RSS feeds and
implies that no other aspect of the limitation need be construed. See Pet. 18–
19.
Finally, in its Post-Hearing Brief, Petitioner asks that “[t]o the extent
that the Board concludes that the same meaning applies to both terms and
believes an express construction is necessary,” that we “adopt the Netflix
Court’s construction.” Pet. Post-Hearing Br. 9–10.
Patent Owner disagrees with the district court’s construction and
argues that metadata “describing the content to a user represents the content
to a user” and, thus, is included in “data representing content.” Sur-Reply 1;
PO Post-Hearing Br. 4–8. In addition, Patent Owner disagrees that the two
data representing content limitations should have different interpretations.
PO Post-Hearing Br. 3–4.
We decline to adopt Petitioner’s asserted construction that metadata
do not qualify as “data representing content” or that “presentation data that
represents content” should be construed differently, with respect to
metadata, as “data representing content.” Petitioner did not make either
position clear in the Petition. See Pet. 18–19; 28–33; see also PO Post-
Hearing Br. 2 (“For the first time in its Reply, Sling argues that Li discloses
the ‘no data representing content’ limitation because Li is alleged to disclose
a data feed that ‘contains only meta data and “one or more URL links” to the
“underlying content.” (emphasis omitted)). Nor did Petitioner sufficiently
clarify this position in the Reply Brief. See Reply 18 (“[T]he Petition
contemplates that a title may ‘represent content’ of a first collection of
presentations when storing the title using a computer system and storing data
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indicative of the first collection so as to be associated with the title, as
recited in claim elements 1[a] and 2[a].”). In fact, not only did Petitioner
neglect to explicitly clarify this position until the hearing, it only did so in
response to Patent Owner pointing out an apparent conflict in the Petition.
Tr. 9:14–17; Pet. Post-Hearing Br. 1; Sur-Reply 3 (“Petitioner’s Reply
admits that content titles are examples of data that ‘represents content.’”)
(citing Reply 17). This post-hearing clarification of a claim construction
position that is central to understanding Petitioner’s case comes too late to
allow Patent Owner sufficient notice or a fair opportunity to present
arguments and evidence rebutting this theory. See 5 U.S.C. § 554(b)(3); In
re Magnum Oil Int’l, 829 F.3d 1364, 1381 (Fed. Cir. 2016) (“[T]he Board
must base its decision on arguments that were advanced by a party, and to
which the opposing party was given a chance to respond.”).6
Finally, we do not adopt the Netflix Decision’s construction of the
data representing content limitations because neither party proposed that we
do so until Petitioner mentioned it as an alternative construction in briefing
after the hearing.7 See Pet. Post-Hearing Br. 9–10. Again, this proposal
comes much too late to ensure due process to Patent Owner.

6 We also decline Petitioner’s request that, in the alternative, if we were to
construe the two data representing content limitations to have the same
meaning, we should retroactively ignore the Petition’s assertion that Li’s use
of titles qualify as presentation data recited by limitation 1[a], and instead
rely solely on the Petition’s use of thumbnails. Pet. Post-Hearing Br. 9.
Such selective reading of the Petition would be improper, especially in light
of the Petition’s muddled disclosure of Petitioner’s actual position on claim
construction.
7 We note that even if we were to adopt the district court’s construction of
the data representing content terms, the Petition would then fail to show
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In sum, for purposes of this Decision, we continue to construe the
wherein limitation to “encompass links to RSS channels” and to “allow
storing of data representing content of the second collection of presentations,
as long as those data are not included in a feed.” See Inst. Dec. 8.
D. Obviousness over Li
Petitioner contends that claims 1–3 of the ’273 patent are unpatentable
because their subject matter would have been obvious over the disclosure of
Li combined with the knowledge of a person of ordinary skill in the art.
Pet. 19–49. As discussed above, this case turns on whether the Petition
shows by a preponderance of the evidence that Li discloses limitation 1[c].
As became clear after the hearing, for limitation 1[c] the Petition relies on
Li’s disclosure of links to RSS channels as the recited feed data and the RSS
channel itself. However, we did not understand this position from the
Petition itself.

“presentation data that represents content of a first collection,” as recited in
claim 1[a], because the Petition does not show that either titles or thumbnails
constitute “the data, or a portion of the data, of the audiovisual content
itself” as construed by the district court. Ex. 2001, 21. Petitioner concedes
that titles do not qualify as data or a portion of the data. Pet. Post-Hearing
Br. 9 (stating “title information for audio/video content merely describes that
content”). Petitioner, however, asserts that Li’s thumbnails disclose
claim 1[a] because they “are taken directly from the content data.” Reply 17
(citing Ex. 1002 ¶ 127; Ex. 1006 ¶ 64). However, we see nothing in the
record, including in the cited paragraphs of Dr. Storer’s declaration or Li, to
support a finding that thumbnails are a portion of the data as opposed to
being a picture created by manipulating the data. Ex. 1002 ¶ 127 (stating
that “Li discloses particular content graphics (thumbnails)”); Ex. 1006 ¶ 64
(stating that “only part of the retrieved items [may be] either sent or
displayed . . . [f]or pictures and videos, it might be for example thumbnails
(i.e. miniature of the pictures or videos) and a title.”).
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In determining whether to institute this review, we considered Patent
Owner’s argument, in its Preliminary Response, that Petitioner had not
shown that Li disclosed the wherein limitation. Inst. Dec. 9–10 (citing
Prelim. Resp. 5–6). We, however, were “persuaded that a person of ordinary
skill in the art would understand Li to at least suggest using an RSS feed
comprised solely of a link to an RSS channel, which meets the wherein
limitation under our construction.” Id. at 10. This conclusion was based on
our understanding that the Petition was relying on Li’s use of RSS
aggregators such that the claimed feed was disclosed by Li’s link to an RSS
channel. Id. at 10 (stating “we are persuaded that a person of ordinary skill
in the art would understand Li to at least suggest using an RSS feed
comprised solely of a link to an RSS channel, which meets the wherein
limitation under our construction”).
Although Petitioner did not explicitly point out, in post-institution
briefing (see Reply 1–11), that the Institution Decision’s underlying
assumption of Petitioner’s position was incorrect, during the hearing it
became clear that the Petition was not relying on Li’s link to an RSS channel
as the claimed feed. Tr. 6:5–25. Instead, the Petition relies on the link to an
RSS channel as the claimed feed data and the claimed feed is the RSS
channel itself, which Petitioner agrees includes at least a “title or description
of some piece of content” along with a link to the content itself. Tr. 6:18–
7:16; see also Reply 2 (citing Ex. 1006 ¶ 46) (“[T]he portion of Li relied
upon in the Petition as disclosing the ‘storing feed data’ limitation expressly
discloses a data feed that . . . contains only meta data and ‘one or more URL
links’ to the ‘underlying content.’”), 6 (“Li meets this limitation by
disclosing the storage of an RSS feed address (feed data), where the RSS
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24
feed found at the RSS feed address contains only URL links to the
underlying audio/video content to be presented, and meta data regarding that
content, rather than containing the content itself.”) (citing Pet. 28–33;
Ex. 1002 ¶¶ 139–144). For purposes of this analysis, we credit Petitioner’s
statement that the Petition relies on Li’s RSS channel. The analysis in our
Institution Decision, therefore, is based on a mistaken reading of the Petition
and is not relevant to our current analysis.
Further, Petitioner agrees that Li’s RSS channel, which it asserts is
equivalent to the recited “feed,” includes metadata. Tr. 8:13–17; see
Ex. 1006 ¶ 46 (“For each item of content, the data feed may include meta
data, e.g. summary of information like an abstract, a title, name of the
authors, the initial source, and one or more URL links to a corresponding
underlying content.”). Thus, in order for Li to disclose the wherein
limitation, including that the feed “includes no data representing content of
the second collection of presentations,” Petitioner agrees that metadata
cannot qualify as data representing content. Reply 11 (“Because Li
discloses that the RSS feed does not itself contain the underlying content,
but only meta data regarding and a link to that underlying content, Li’s feed
satisfies the claim limitation: ‘includes no data representing content of the
second collection of presentations.’”); Tr. 8:21–9:5.
As discussed above, however, we do not adopt Petitioner’s belated
clarification of its claim construction position asserting that metadata do not
qualify as data representing content. Thus, because Petitioner concedes that
Li’s RSS channel discloses metadata along with a link to underlying content,
Petitioner has not sufficiently shown that Li’s RSS channel discloses a feed
that “includes no data representing content of the second collection of
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presentations” as recited by the wherein limitation in claim 1[c]. Because
Petitioner did not sufficiently show that Li discloses claim 1[c], we conclude
that Petitioner has not shown by a preponderance of the evidence that claim
1 would be obvious in view of Li.
Claim 2 recites a limitation identical to 1[c]. Ex. 1001, 13:6–11.
Claim 3 depends from claim 2. Id. at 13:20–22. Petitioner relies on the
same arguments as made for claim 1[c]. See Pet. 47. These challenges,
therefore, suffer from the same deficiencies, and Petitioner has not shown by
a preponderance of the evidence that claims 2 and 3 would have been
obvious in view of Li.
E. Obviousness over Li and Motte
Petitioner contends that claims 1–3 of the ’273 patent are unpatentable
because their subject matter would have been obvious over the disclosure of
Li combined with Motte. Pet. 49–63. Specifically, Petitioner relies on
Motte for its description of three collections of presentations as satisfying
the limitation “aggregating each of the first, identified second, and third
collections of presentations for delivery via the computer network using a
common web page,” recited in independent claims 1 and 2. Pet. 49–59, 63.
Because these challenges rely on Li in the same manner as discussed above
with respect to claim 1(c), they fail for the same reasons.
Accordingly, we conclude that Petitioner has not demonstrated a
reasonable likelihood of establishing that claims 1–3 would have been
obvious over Li and Motte.
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IV. CONCLUSION
For the reasons expressed above, we determine that Petitioner has not
demonstrated by a preponderance of the evidence that claims 1–3 of the ’273
patent would have been obvious over Li or the combination of Li and Motte.

V. ORDER
Accordingly, it is:
ORDERED that claims 1–3 of the ’273 patent have not been shown to
be unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–3 103 Li 1–3
1–3 103 Li, Motte 1–3
Overall
Outcome
1–3
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For PETITIONER:

Eliot D. Williams
G. Hopkins Guy III
Ali Dhanani
BAKER BOTTS LLP
eliot.williams@bakerbotts.com
hop.guy@bakerbotts.com
ali.dhanani@bakerbotts.com

For PATENT OWNER:

Ryan Loveless
Brett Mangrum
James Etheridge
Jeffrey Huang
ETHERIDGE LAW GROUP PLLC
ryan@etheridgelaw.com
brett@etheridgelaw.com
jim@etheridgelaw.com
jeff@etheridgelaw.com